DETAILED ACTION
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 .
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 12 and 16 is 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.
Regarding claim 12, the claim recites that the geotextile layer is directly adhered to the chemical-resistant layer and the adhesive layer. The claim is dependent from claims 10 and 11, which require the adhesive layer between the geotextile and the barrier layer. However, the claim is additionally dependent from amended claim 1, which requires a thermoplastic resin layer between the chemical-resistant layer and the barrier layer. Applicants’ specification as originally filed does not appear to teach the claimed arrangement of layers.
Regarding claim 16, the claim recites that the seam layer is directly adhered to the thermoplastic resin layer. The claim is dependent from claim 14, which recites that the seam layer is between the multilayer article and the another multilayer article, and claim 1, which recites that thermoplastic resin layer is between the chemical-resistant layer and the barrier layer. Applicants’ specification as originally filed does not appear to teach the same layer simultaneously bonded between the multilayer article and another multilayer article, and directly adhered to the thermoplastic resin layer which is between the chemical-resistant layer and the barrier layer.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12, 14-18, and 20-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 12, the claim recites that the geotextile layer is directly adhered to the chemical-resistant layer and the adhesive layer. The claim is dependent from claims 10 and 11, which require the adhesive layer between the geotextile and the barrier layer. However, the claim is additionally dependent from amended claim 1, which requires a thermoplastic resin layer between the chemical-resistant layer and the barrier layer. It is unclear how claim 12 is consistent with the claims from which it depends.
Regarding claims 14-18 and 20-22, claim 14 recites an article comprising the multilayer article of claim 1, another multilayer article comprising another chemical-resistant layer and another barrier layer, and a seam layer. The recitation of “another multilayer article” appears to require another multilayer article of claim 1. However, amended claim 1 now requires a thermoplastic resin layer and the “another multilayer article” recited in claim 14 does not require a thermoplastic resin layer. Therefore, the verbiage of the claim is unclear.
Regarding claim 16, the claim recites that the seam layer is directly adhered to the thermoplastic resin layer. The claim is dependent from claim 14, which recites that the seam layer is between the multilayer article and the another multilayer article, and claim 1, which recites that thermoplastic resin layer is between the chemical-resistant layer and the barrier layer. It is unclear how the seam layer can simultaneously be bonded between the multilayer article and another multilayer article, and be directly adhered to the thermoplastic resin layer which is between the chemical-resistant layer and the barrier layer.
Regarding claims 17, 18, 21, and 22, claim 17 recites that each of X1, X2, X3, X4, X5 and X6 is independently the thermoplastic resin layer, the barrier layer, or the another barrier layer, wherein at least one is the barrier layer, and at least one amount the remaining of X1, X2, X3, X4, X5 and X6 is the another barrier layer. Claim 17 is dependent from claims 1 and 14, which only require a single thermoplastic resin layer, a single barrier layer and single another barrier layer. It is unclear how each of X1, X2, X3, X4, X5 and X6 (i.e. six layers) can comprise only the three single layers claimed. In other words, claims 1 and 14 only recite a singular thermoplastic resin layer, a singular barrier layer and a singular another barrier layer. However, the claim requires six layers. Therefore, it is unclear exactly what structure is required by the claim.
Additionally, claim 17 recites that each of X1, X3, X4 and X6 independently comprise at least one resin as claimed. It is unclear exactly how the recitations of X1, X3, X4 and X6 are consistent with the remainder of the claims, which requires each of X1, X2, X3, X4, X5 and X6 to be independently the thermoplastic resin layer, the barrier layer, or the another barrier layer. Note that the resins set forth in claim 17 are broader than the resins set forth in claim 1 for the thermoplastic resin layer.
Regarding claims 21 and 22, the claims recite that each of X1, X3, X4 and X6 comprises ethylene-vinyl alcohol copolymer (claim 21) or polyurethane (claim 22), wherein either X2 is the barrier layer and X5 is the another barrier layer, or vice versa. The claims are dependent from claim 17, which requires that each of X1, X2, X3, X4, X5 and X6 is independently the thermoplastic resin layer, the barrier layer, or the another barrier layer. It is unclear how claims 21 and 22 are consistent with claim 17, as claim 17 requires the thermoplastic resin layer to be X1, X2, X3, X4, X5 and X6. As claimed in claims 21 and 22, none of X1, X2, X3, X4, X5 and X6 is necessarily the thermoplastic layer.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 5-8, 10-15, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2012/0237747 to Tai in view of US Pub. No. 2004/0058603 to Hayes.
Regarding claims 1, 2, 5-8, 10-15, 19, and 20, Tai teaches a multilayered structure that includes no less than 8 resin-layers, the resin-layer including a layer A constituted with a resin composition containing a gas barrier resin, and a layer B constituted with a resin composition containing a thermoplastic resin (Tai, Abstract). Tai teaches that the gas barrier resin may be an ethylene-vinyl alcohol copolymer to further improve the gas barrier properties, wherein the content of ethylene units is preferably no less than 3 mol % and no greater than 70 mol % (Id., paragraphs 0020-0021). Tai teaches that the thermoplastic resin is at least one resin selected from the group consisting of thermoplastic polyurethane, polyamide, and an adhesive resin having a functional group capable of reacting with a group included in the gas barrier resin (Id., paragraphs 0029-0030). Tai teaches that it is desired that the thermoplastic resin includes the adhesive resin having a functional group, wherein the adhesive resin may be a carboxylic acid-modified polyolefin (Id., paragraph 0030). Tai teaches that layer A may be constituted with either a single resin composition or a plurality of types of resin composition, such as a carboxylic acid, and that layer B may be constituted with either a single resin composition or a plurality of types of resin composition (Id., paragraphs 0047, 0123, 0126-0127, 0153-0154, 0179-0183). Tai teaches that the order of lamination of the layer A and the layer B is not particularly limited, such as an alternately laminated structure (Id., paragraphs 0048-0054). Tai teaches that the multilayered structure is excellent in interlayer adhesiveness, has superior gas barrier properties, stretchability, thermoformability and the like (Id., paragraph 0007) which may be suitably used for architectural materials, agricultural sheet materials, and geomembrane applications (Id., paragraphs 0294, 0303-0305).
Tai teaches that the multilayered structure may include other layers in addition to the layer A and the layer B (Tai, paragraph 0307). Tai teaches that the multilayered structure may have a supporting layer laminated on either one or both faces of the laminate (Id., paragraph 0308). Tai does not appear to specifically teach the claimed chemical-resistant layer comprising a polyurea and including a polyurea-impregnated geotextile.
Hayes teaches a similar multilayer laminated material including a fabric layer sandwiched between two layers of polymer material comprising a vinyl(co)polymer and a polyurethane material (Hayes, Abstract), having sufficient strength, tear resistance, and weathering resistance (Id., paragraph 0001). Hayes teaches that the material can consist of optionally a fourth polymeric layer comprising a thermoplastic urethane, a third polymeric layer comprising a preformed polyurethane film, a second polymeric layer comprising a polyurethane, a textile, a first polymeric layer comprising a vinyl, an optional fourth polymeric layer comprising a urethane, a further fifth polymeric layer similar to the second polymeric layer disposed on the outside of the third polymeric layer, and a sixth polymeric layer which may or may not be of a similar composition and properties of the third layer, wherein the sixth polymeric is disposed exterior to the fifth polymeric layer and interior to the optional fourth polymeric layer (Id., paragraphs 0045-0070). Hayes teaches that the textile layer may be a scrim, woven, knitted, and non-woven fabrics comprising any suitable fabric material including polyurethane being particularly applicable (Id., paragraphs 0080-0089). Hayes teaches that the textile layer advantageously provides biaxial strength, tear resistance, and overall mechanical stability to the finished product (Id., paragraph 0080). Hayes teaches that the fabric may be pre-treated with aqueous dispersions of organic binders, especially with a polyurethane-based adhesive (Id., paragraph 0091). Hayes teaches that the first polymeric layer may comprise one or more vinyl sub-layers laminated one over another (Id., paragraph 0117). Hayes teaches that the second polymeric layer is preferably a polyurea-based primer layer, wherein the term “polyurethanes” also includes “polyureas” (Id., paragraph 0121). Note that based on the definition provided by Hayes, a “polyurethane” is alternatively a “polyurea”. Hayes teaches that a fourth layer of polymeric material is applied to provide increased wear resistance and chemical stability, which includes about 90% to 100% of a polyurea polymer (Id., paragraphs 0165-0174).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the multilayered geomembrane structure of Tai, wherein the supporting layers are 100% polyurea outer layers, as taught by Hayes, motivated by the desire of forming a conventional multilayered geomembrane structure having an outer layer known in the art to provide increased wear resistance and chemical stability suitable for similar applications.
Note that the layer A and layer B may each be constituted with either a single resin composition or a plurality of types of resin composition, such as a carboxylic acid, wherein layer A comprises ethylene-vinyl alcohol and layer B comprises polyurethane alternately laminated or in other suitable order, such as A, A, B, B. The layers A and B are within the scope of each of the barrier layer and thermoplastic resin layer, and tie layer.
Regarding claims 10, 11, and 13, the prior art combination teaches various arrangements including additional polyurea layers and adhesive layers. A patent for a combination, which only unites old elements with no change in their respective functions, obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men. Where the combination of old elements performed a useful function, but it added nothing to the nature and quality of the subject matter already patented, the patent fails under 35 U.S.C. 103. When a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the multilayered geomembrane structure of the prior art combination, and arranging the layers as claimed, as taught and suggested by Tai and Hayes, motivated by the desire of forming a conventional multilayered geomembrane structure having the desired arrangement of layers and the desired properties, based on the properties and characteristics of each of the layers as set forth in the prior art combination (see additionally Hayes, paragraphs 0177-0218).
Regarding claims 14, 15, and 20, Hayes teaches a multilayer laminated material including a fabric layer sandwiched between two layers of polymer material, wherein the textile layer may be a scrim, woven, knitted, and non-woven fabrics comprising any suitable fabric material including polyurethane being particularly applicable. Hayes teaches that the fabric may be pre-treated with aqueous dispersions of organic binders, especially with a polyurethane-based adhesive. Hayes teaches that the textile layer advantageously provides biaxial strength, tear resistance, and overall mechanical stability to the finished product.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the multilayered geomembrane structure of the prior art combination, and arranging the layers as claimed, as taught and suggested by Hayes, motivated by the desire of forming a conventional multilayered geomembrane structure having the desired arrangement of layers and the desired properties, such as biaxial strength, tear resistance, and overall mechanical stability, known in the art as being predictably suitable for similar structures.
Claims 17, 18, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Tai in view of Hayes, as applied to claims 1, 2, 5-8, 10-15, 19, and 20 above, and further in view of US Pub. No. 2005/0058838 to Markusch.
Regarding claims 17, 18, 21, and 22, as set forth above, the prior art combination teaches various arrangements including the claimed thermoplastic resin layers and barrier layers which may comprise ethylene-vinyl alcohol copolymers and polyurethanes within the scope of the claimed X1, X2, X3, X4, X5, and X6 layers, and T1, T2, T3, and T4 layers. Additionally, the prior art combination teaches and suggests sandwiching a textile layer treated with polyurethane or polyurea, and outer layers comprising polyurea.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the multilayered geomembrane structure of the prior art combination, and arranging the layers as claimed, as taught and suggested by Tai and Hayes, motivated by the desire of forming a conventional multilayered geomembrane structure having the desired arrangement of layers and the desired properties, based on the properties and characteristics of each of the layers as set forth in the prior art combination.
The prior art combination does not appear to teach that the outer layers are polyurea-impregnated geotextile layers. However, Markusch teaches geotextile/polyurea/composite liners prepared by soaking geotextiles with polyurethane compositions (Markusch, Abstract). Markusch teaches impregnating one or more geotextiles with a polyurethane to form a geotextile reinforced polyurethane composite (Id., paragraph 0016). Markusch teaches that one or more geotextiles may be used in combination with the number of layers and thickness being determined by the choice of geotextiles (Id., paragraph 0028) for higher strength and dimensional stability (Id., paragraph 0041). Markusch teaches that the geotextiles are used as liners, roof membranes, secondary containment, etc. (Id., paragraph 0012).
Since Markusch teaches several layers of the impregnated geotextile to obtain a composite of higher strength and dimensional stability, it is reasonable for one of ordinary skill in the geotextile art to expect that such properties are desirable in outer layers. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the multilayered geomembrane structure of the prior art combination, wherein the outer polyurea layers comprise polyurea impregnated geotextile layers, as taught by Markusch, motivated by the desire of forming a conventional multilayered geomembrane structure having the desired properties, based on the properties and characteristics of each of the layers as set forth in the prior art combination, including higher strength and dimensional stability.
Response to Arguments
Applicants’ arguments have been considered but are moot based on the new ground of rejection.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786