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 § 103
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.
Claim(s) 28, 30-37 and 39-46 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pub. No. 20200399904 to Vido in view of USPN. 6,610,382 to Kobe.
Regarding Claims 28, 30-37, 39 and 41-46
Vido teaches a roofing underlayment comprising a reinforcement having a first reinforcement surface and a second reinforcement surface such as a glass matt and a first film having a first film surface and a second film surface wherein the first reinforcement surface is adhered to the second film surface (Id., abstract, paragraph [0016], [0022]-[0029]). Vido teaches that the composite may comprise a first adhesive layer on the second side of the reinforcement surface and a second adhesive layer opposite the glass mat, an asphalt adhesive coating would necessarily at least partially impregnate the nonwoven reinforcement layer (Id., paragraphs [0017], [0022], [0036]-[0038], [0044]). Vido teaches that the film may comprise a basis weight of between 10 and 120 grams per square meter, which overlaps the claimed range of between 50 and 195 grams per square meter and the reinforcement has a basis weight of between 100 and 250 gsm which overlaps the claimed range of between 10 and 200 gsm (Id., abstract, paragraphs [0006], [0016], [0029], [0022]).
Vido does not appear to teach the inclusion of gripping structures. However, Kobe teaches a friction control article for wet and dry applications such as for non-slip walking surfaces, deck surfaces, sheet structures, wraps, etc., comprising a coating layer of thermoplastic material such as polypropylene and polyethylene and a plurality of gripping structure formed in the coating (Kobe, abstract, column 1, lines 46-67, column 14, lines 19-67, column 16, lines 39-67, fig. 1). Kobe teaches the stems have a height between 254 and 1,270 micrometers which overlaps the claimed range between 50 and 400 micrometers, a cross-sectional dimension between 76 and 760 micrometers which overlaps the claimed range of between 350 and 550 micrometers and a distance between adjacent gripping structure stems of between 254 micrometers and 2,540 micrometers which overlaps the claimed pitch of between 600 and 1,200 micrometers (Id., column 9, lines 10-41). Kobe teaches a thickness of approximately 254 micrometers which is within the claimed range of between 100 and 1,000 micrometers (Id., example 2).Kobe teaches a dry coefficient of friction of between 1.3-2.5 which overlaps the claimed range of 1.2 to 1.8 and a wet coefficient of friction between 1.2-2.3 which overlaps the claimed range of between 0.8 and 1.5 (Id., table 3). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the composite of Vido and to utilize as the coating layer, a coating comprising gripping elements of Kobe, motivated by the desire to form a conventional composite comprising improved gripping properties to increase safety and convenience (Id.).
Kobe teaches that the shore A hardness of the gripping elements is less than about 90 which effectively overlaps the claimed range of greater than about 90. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Alternatively, it would have been obvious to one of ordinary skill to adjust, vary and optimize the range, such as within the claimed range, motivated by the desire to form a conventional friction control article based on the totality of the teachings of the prior art combination.
Regarding the tensile strength, retention rate, coefficient of friction in sawdust conditions, notched tear strength, trapezoidal tear strength, although the prior art does not disclose the hardness and coefficient of friction, the claimed properties are deemed to naturally flow from the structure in the prior art since the prior art combination teaches an invention with a substantially similar structure, physical dimensions and chemical composition as the claimed invention. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding Claim 40
The prior art combination teaches that the total thickness of the underlayment tis between 0.2 mm and 1.25 mm which is equivalent to between 200 micrometers and 1,250 micrometers which overlaps the claimed range of between 125 and 2,500 micrometers.
Regarding the length and width of the underlayment, these dimensions would be design choices based on the intended specific application and packaging/transport requirements. Alternatively, it should be noted that the length and width of the underlayment are result effective variables. As the dimensional size increases, the material covers a greater surface area at the expense of bulk and weight. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the length and width since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the length and width in order to balance both surface area coverage and ease of transport, storage and handling due to weight and bulk.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues that the prior art does not disclose or suggest any tensile strength or trapezoidal tear strength and therefore these values cannot be considered results effective variables or inherently taught by the prior art. Examiner respectfully disagrees. The claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINCENT A TATESURE whose telephone number is (571)272-5198. The examiner can normally be reached Monday-Friday 7:30AM-4PM EST.
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/VINCENT TATESURE/Primary Examiner, Art Unit 1786
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