Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/20/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 and 6-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 15 and 16 recite the entirety of the lower surface of the fourth layer directly contacts the roof. Applicant has cited Figures 2 and 3 as support for such an amendment. Examiner has not found support for such an amendment in Figures 2 and 3, nor elsewhere in the specification as originally filed. While it appears Applicant has support to recite the roofing underlayment is adhered without adhesive, this does not constitute the entirety of the lower surface of the fourth layer being directly in contact with the roof. One could have a nailing installation and overlap the roofing underlayment as is typical and not have an entirety of the fourth layer in direct contact with the roof. Applicant argues Fig. 2&3 shows the lower surface is in contact with the roof since layers 40 and 45 are optional. I agree with this part. Applicant goes on to argue that regardless of the fastening method, it would be obvious the entirety of the lower surface of the 4th layer is in contact with the roof. The spec has no other support for such an amendment. The Figures simply show the layer above one another, but in no way is there support
to state the entirety of the lower surface layer is secured and directly contact the roof. Therefore, support has not been found in the specification as originally filed.
Response to Arguments
Applicant has cited Figures 2 and 3 as support for such an amendment. Examiner has not found support for such an amendment in Figures 2 and 3, nor elsewhere in the specification as originally filed. While it appears Applicant has support to recite the roofing underlayment is adhered without adhesive, this does not constitute the entirety of the lower surface of the fourth layer being directly in contact with the roof. One could have a nailing installation and overlap the roofing underlayment as is typical and not have an entirety of the fourth layer in direct contact with the roof. Therefore, support has not been found in the specification as originally filed. Applicant argues Fig. 2&3 shows the lower surface is in contact with the roof since layers 40 and 45 are optional. I agree with this part. Applicant goes on to argue that regardless of the fastening method, it would be obvious the entirety of the lower surface of the 4th layer is in contact with the roof. The spec has no other support for such an amendment. The Figures simply show the layer above one another, but in no way is there support to state the entirety of the lower surface layer is secured and directly contact the roof.
Applicant is advised to amend the claims.
Art Not Used But Relevant
PG Pub. 2015/0099411 teaches a roofing underlayment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Shawn Mckinnon/Examiner, Art Unit 1789
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