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 .
Election/Restrictions
Applicant’s election without traverse of Species A, and Species I in the reply filed on May 11, 2026 is acknowledged. Thus, presently claims 4, 6-8 are withdrawn from examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5, 11-14, 16-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 6, 12-18 of U.S. Patent No. 12,654, 139 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the claims of the instant application and the claims of US 12,654,139 B2 overlaps.
Claim Rejections - 35 USC § 112
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 3, 13, and 17 is 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.
Claim 3 recites “in particular regenerated cellulose” in lines 2-3. The claim is indefinite because of the phrase “in particular.”
Claim 13 recites “or that the membrane is integrated into…” in line 4. The recitation is grammatically not clear.
Claim 17 recites “the two outer layers that in contact with the middle layer.” The recitation is grammatically not clear.
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) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schröer (US 2010/0221515 A1), in view of Sobieski (US 2006/0089073 A1).
With respect to claim 1, Schröer teaches a method comprising providing a vapor barrier membrane on an inner face of a wall of the building (0033), wherein the vapor barrier membrane is a humidity-regulating membrane (0002, 0033), comprising an active portion comprising a middle layer having a thickness – implied – and consisting of biopolymer, and on either side of the middle layer two outer layers having a thickness – implied, and consisting, independently of each other, of an organic polymer – the reference teaches that the functional layer – element 2, can consist of multiple layers next to one another (0029), wherein the functional layer comprises at least one biodegradable polymer and a conventional polymer (0021). The reference discloses starch and polyesters as polymers that can be used in the functional layer (0021). The total thickness of the functional layer is between 1 and 1000 microns (0027). Schröer is silent with respect to specifically the middle layer consisting of a biopolymer and the two outer layers consisting of an organic polymer. Sobieski discloses a laminate having high moisture vapor permeability (abstr.), the laminate including a middle layer consisting of a biopolymer – element 36 (0036-0042), and two outer layers – elements 32 and 38 comprising, independently of each other, an organic polymer (0025, 0043-45). The thickness of element 32 is from about 0.01 mm to 0.1 mm (0028), which overlaps the recited range; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the functional layer of Schröer of the laminate of Sobieski as such laminates are used for moisture vapor control in buildings (Sobieski, 0003). Since Schröer discloses that the total thickness of the functional layer is from 1 to 1000 micrometers (0027), it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that in the membrane of Schröer and Sobieski the thickness of the middle layer would overlaps the recited range. Overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding the specified water vapor permeability coefficients: P1 of the middle layer and P2 for the two outer layers, the references disclose thicknesses of the layers overlapping the recited thicknesses, as discussed above.
The materials of the two outer layers - thermoplastic polyester elastomer in Sobieski, 0026), and polyethylene terephthalate (Sobieski, 0044), polyethylene terephthalate correspond to the material disclosed in the instant specification, thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form both outer layers of the membrane of polyethylene terephthalate as it has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Thus, the materials of the middle layer and the outer layers correspond to the materials disclosed in the instant specification, and so it would be expected that coefficients P1 and P2 are satisfied.
Regarding the recitation in the preamble “for improving an airtightness of a building or room in a building”, that recitation is a recitation of intended use. Since the references disclose the membrane as disclosed in the instant specification, it would be expected that the membrane according to the references is capable to perform as intended.
Regarding claim 2, Schröer and Sobieski teach the method of claim 1. Schröer discloses the biopolymer forming the middle layer is a glycoside (Table, p. 2), Sobieski discloses glycosides (0041).
As to claim 3, Schröer and Sobieski teach the method of claim 2; Schröer discloses starch, Sobieski discloses cellulose, alginates, chitosan, chitin (0041).
With respect to claim 5, Schröer and Sobieski teach the method of claim 3. Sobieski discloses modified cellulose (0041).
Regarding claim 9, Schröer and Sobieski teach the method of claim 1. Sobieski teaches polyethylene terephthalate as the organic polymer of the outer layer (0044).
As to claim 10, Schröer and Sobieski teach the method of claim 1. Sobieski teaches the middle layer made of cellulose and the two outer layers consisting of polyethylene terephthalate as discussed above with respect to claim 1 (0041, 0044).
With respect to claim 11, Schröer and Sobieski teach the method of claim 1. The thickness of the active portion recited in claim 11 is within the thickness disclosed in Schröer (0027).
Regarding claim 12, Schröer and Sobieski teach the method of claim 1. Schröer discloses the membrane includes a reinforcing layer which is in contact with one of the outer layers of the active portion (0030).
As to claim 16, Schröer and Sobieski teach the method of claim 1. The thickness of element 32 of Sobieski is from about 0.01 mm to 0.1 mm (0029), and since Schröer discloses that the total thickness of the functional layer is from 1 to 1000 micrometers (0027), it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that in the membrane of Schröer and Sobieski the thickness of the middle layer would overlap the range recited in claim 16; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
With respect to claim 17, Schröer and Sobieski teach the method of claim 1. Schröer discloses two outer layers are in contact with the middle layer (0029, 0032).
As to claim 18, Schröer and Sobieski teach the method of claim 1. Sobieski does not disclose the thickness of the two outer layers as recited in the claim, however, Schröer discloses that the total thickness of the membrane is between 1 and 1000 microns (0027), thus, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to adjust the thickness of the two outer layers as changes in size are within the purview of a person skilled in the art (MPEP 2144.04).
Regarding claim 19, Schröer and Sobieski teach the method of claim 1.
The references disclose thicknesses of the layers overlapping the recited thicknesses, and the material of the middle layer is as disclosed in the instant specification, as discussed above. Regarding the two outer layers - thermoplastic polyester elastomer in Sobieski, 0026), and polyethylene terephthalate (Sobieski, 0044), polyethylene terephthalate corresponding to the material disclosed in the instant specification, it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form both outer layers of the membrane of polyethylene terephthalate as it has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Thus, materials of the middle layer and the outer layers correspond to the materials disclosed in the instant specification, so it would be expected that the value of coefficient P2 is satisfied.
As to claim 20, Schröer and Sobieski teach the method of claim 9. Sobieski teaches polyethylene terephthalate as the organic polymer of the outer layer (0044).
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schröer, in view of Sobieski and further in view of Blunt et al. (US 2020/0190793 A1) (“Blunt”).
As to claim 13, Schröer and Sobieski teach the method of claim 1. The claim recites elements that are not part of the membrane, such as a thermal insulation material with which the wall of the building is covered. The method includes a step of providing a vapor barrier membrane in an internal position relative to the thermal insulation material or the membrane being integrated into the thermal insulation material.
Blunt discloses a method wherein a wall of the building is covered with a thermal insulation – element 103, and the vapor barrier – element 102 - is applied in an internal position relative to the thermal insulation material (abstr., 0010, 0019, 0042, Fig. 1). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to cover the wall of the building with a thermal insulation material, and apply the vapor barrier membrane of Schröer and Sobieski in an internal position to the thermal insulation material as such method is known in the art of construction walls.
Regarding claim 14, Schröer, Sobieski and Blunt teach the method of claim 13. Blunt discloses the thermal insulation material is made of mineral or synthetic fibers (0042).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schröer (US 2010/0221515 A1), in view of Sobieski (US 2006/0089073 A1).
With respect to claim 1, Schröer teaches a humidity-regulating vapor barrier membrane (0002, 0033), comprising an active portion comprising a middle layer having a thickness – implied – and consisting of biopolymer, and on either side of the middle layer two outer layers having a thickness – implied, and consisting, independently of each other, of an organic polymer – the reference teaches that the functional layer – element 2, can consist of multiple layers next to one another (0029), wherein the functional layer comprises at least one biodegradable polymer and a conventional polymer (0021). The reference discloses starch and polyesters as polymers that can be used in the functional layer (0021). The total thickness of the functional layer is between 1 and 1000 microns (0027). Schröer is silent with respect to specifically the middle layer consisting of a biopolymer and the two outer layers consisting of an organic polymer. Sobieski discloses a laminate having high moisture vapor permeability (abstr.), the laminate including a middle layer consisting of a biopolymer – element 36 (0036-0042), and two outer layers – elements 32 and 38 comprising, independently of each other, an organic polymer (0025, 0043-0045). The thickness of element 32 is from about 0.01 mm to 0.1 mm (0029), which overlaps the recited range; overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form the functional layer of Schröer of the laminate of Sobieski as such laminates are used for moisture vapor control in buildings (Sobieski, 0003). Since Schröer discloses that the total thickness of the functional layer is from 1 to 1000 micrometers (0027), it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that in the membrane of Schröer and Sobieski the thickness of the middle layer would overlap the recited range. Overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). Regarding the specified water vapor permeability coefficients P1 of the middle layer, and P2 for the two outer layers, the references disclose thicknesses of the layers overlapping the recited thicknesses, as discussed above.
The materials of the two outer layers - thermoplastic polyester elastomer in Sobieski, 0026), and polyethylene terephthalate (Sobieski, 0044), polyethylene terephthalate correspond to the material disclosed in the instant specification, thus it would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form both outer layers of the membrane of polyethylene terephthalate as it has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Thus, materials of the middle layer and the outer layers correspond to the materials disclosed in the instant specification, and so it would be expected that coefficients P1 and P2 are satisfied.
Information Disclosure Statement
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
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/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783
Prosecution Insights