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 1-16 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.
Regarding claims 1-16, claim 1 recites “a single layer geomembrane material” comprising at least one of a high density polyethylene, a medium density polyethylene, and a linear low density polyethylene; and polypropylene, wherein the single layer geomembrane material comprises a polyolefin blend. Applicants’ specification as originally filed neither recites a single layer geomembrane material nor a single layer geomembrane material comprising a polyolefin blend. Therefore, the limitations constitute new matter.
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 1-16 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 claims 1-16, claim 1 recites a multitier geomembrane product comprising “a single layer geomembrane material” comprising at least one of a high density polyethylene, a medium density polyethylene, and a linear low density polyethylene; and polypropylene, wherein the single layer geomembrane material comprises a polyolefin blend, the material further comprising the upper surface from which a plurality of friction spikes protrude. It is unclear how the geomembrane product is a multitier product based on a single layer geomembrane material including an uppers surface of friction spikes.
Additionally, as set forth above, Applicants’ specification does not recite “a single layer geomembrane material.” Therefore, it is unclear what the scope of a “single layer” necessarily entails. For example, it is unclear if the “single layer” is necessarily a single homogeneous material layer, or if a multi-layered material as a composite and unitary structure is a ”single layer material” for purposes of the claim. Applicants’ specification does not appear to provide any guidance as to the claimed structure.
Additionally, it is unclear if the recitation of “a polyolefin blend” is separate from the recited components or is referencing the previously recited components. Note that there is no antecedent basis for the aforementioned components being a blend.
Additionally, the claim recites a polyolefin blend configured to form a plurality of friction spikes including large friction spikes, micro friction spikes, and nano-friction spikes, the geomembrane further comprising the upper surface from which a plurality of friction spikes protrude, wherein at least a portion of the plurality of friction spikes vary in height from one another. The recitation of “configured to form a plurality of friction spikes” followed by the recitation of the upper surface from which a plurality of spikes protrude, renders the claim indefinite, as the claim only recites the blend being configured to form spikes and does not actually recite the formation of spikes. Additionally, it is unclear if the recitation of the upper surface from which “a plurality of friction spikes protrude” is a separate structure from the previously recited plurality of friction spikes. Additionally, it is unclear if the recitation of a plurality of friction spikes including large friction spikes, micro friction spikes, and nano-friction spikes, requires each of the large, micro, nano-friction spikes collectively or alternatively as options for the plurality of friction spikes.
Regarding claim 15, the claim recites that the large friction spikes carry an initial shear load and, as displacement increases, shear load is transferred to the micro friction spikes and the nano friction spikes. The claim is a product claim yet appears to require the large friction spikes in the final product to carry an initial shear load and displacement. It is unclear how such a characteristic applies to the final product, as the limitation appears to be either directed to a property without reciting conditions or use of the product.
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, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/000104 to Gilbert St-Pierre in view of US Pub. No. 2012/0027528 to Alfreds.
Regarding claims 1, 2, and 15, Gilbert St-Pierre teaches multilayer geomembrane liners with a textured surface showing high friction angles, comprising a plastic film formed of a layer and at least one skin layer, with the formulation of about 10% to about 70% of a polyethylene resin (e.g. LLDPE, MDPE, HDPE) and optionally about 20 to 50% of a polypropylene resin, wherein the plastic film has asperities (Gilbert St-Pierre, Abstract, paragraphs 0038-0040). Gilbert St-Pierre teaches that the skin layers may be monolayer, and have asperities being made of the same material of the skin layer, wherein the shape of asperities is mostly conical with the other asperities having mainly random shapes (Id., paragraphs 0035, 0044). Therefore, Gilbert St-Pierre appears to teach the claimed single layer membrane comprising a polyolefin blend and configured as claimed.
Gilbert St-Pierre does not appear to teach the claimed combination of spikes and the height ranges. However, Alfreds teaches a retaining wall system including an interconnecting member having an upper side and a lower side, wherein at least one of the upper and the lower side has a projection that includes a notch therein to engage geogrid (Alfreds, Abstract, paragraph 0020, claim 1). Alfreds teaches first and second projections, wherein the first projections are larger than the second projections in at least one of three main dimensions: height, width , and/or depth (Id., paragraphs 0113-0114). Alfreds teaches that using second projections in combination with first projections is believed to increase the strength of the attachment, and the overall strength of the retaining wall system is believed to be improved (Id., paragraph 0115). Alfreds teaches that the projections are spike-shaped, although projections of more than two different shapes may be used (Id., paragraph 0116). Alfreds teaches that projections of more than two different sizes may be used (Id.). Alfreds teaches that the height of the first projections is at least twice, or four times, or eight times, the height of the second projections (Id., paragraph 0119).
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 geomembrane product of Gilbert St-Pierre, wherein the asperities comprise a combination of projections of different height dimensions, such as within the claimed ranges, as suggested by Alfreds, motivated by the desire of forming a conventional geomembrane product having predictably increased strength, texture, and frictional properties suitable for the intended application.
The prior art combination does not appear to specifically teach that the product improves interfacial direct shear resistance. However, it is reasonable for one of ordinary skill to expect that the product of Gilbert St-Pierre would inherently behave in an identical or a substantially similar manner as claimed, as Gilbert St-Pierre teaches a substantially similar structure and composition as claimed. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Gilbert St-Pierre teaches that Figures 2 and 3 show types of textured surfaces, which would appear to be within the scope of the spikes varying in height. Alternatively, since Gilbert St-Pierre teaches asperities with different shapes, 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 geomembrane product of Gilbert St-Pierre, wherein the asperities comprise different heights, motivated by the desire of forming a conventional geomembrane product having the desired texture and high friction angles suitable for the intended application.
Claims 3-7, 10-12, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Gilbert St-Pierre in view of Alfreds, as applied to claims 1, 2, and 15 above, and further in view of USPN 8,440,289 to DeGiuseppe.
Regarding claims 3-7, 10-12, and 16, the prior art combination does not appear to teach the claimed height or diameter or ratio. Since the asperities necessarily comprise a height and diameter, and since prior art combination is silent as to those properties, it would have necessary and therefore obvious to one of ordinary skill in the art to look to the prior art for conventional characteristics for similar structures. DeGiuseppe provides this conventional teaching, showing that it was known in the geotechnical membrane art to form a sheet element having elements that protrude on the first and second faces, on at least one of the faces there being a layer that is integrally coupled to the protruding elements (DeGiuseppe, Abstract). DeGiuseppe teaches a sheet-like element advantageously constituted by a high- or medium-density polyethylene membrane, wherein the protruding elements are provided by means of the same material as the sheet-like element (Id., column 3 line 65 to column 5 line 5, column 4 lines 60-64). DeGiuseppe teaches that the protruding elements have a height that ranges from 4 to 10 mm and thickness (i.e. diameter) that can range from 1 to 5 mm, wherein the protruding elements can assume different shapes such as frustum-shaped and pyramid-shaped (Id., column 4 lines 6-12, column 5 lines 4-35). DeGiuseppe teaches that the composite forms two separate drainage and/or protection and/or grip systems adapted to withstand intense compression along a direction that is substantially perpendicular to the sheet element (Id., Abstract).
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 geomembrane product of prior art combination, and adjusting and varying the heights and thicknesses of the asperities, such as within the claimed ranges and the claimed ratios, as taught by DeGiuseppe, motivated by the desire of forming a conventional geomembrane product having asperities with heights and thicknesses and corresponding ratios known in the art as being predictably suitable for similar geomembranes to provide drainage and/or protection and/or grip systems.
Regarding claims 4-6 and 10-12, the prior art combination teaches that the protruding elements have a height that ranges from 4 to 10 mm and thickness (i.e. diameter) that can range from 1 to 5 mm, wherein the protruding elements can assume different shapes such as frustum-shaped and pyramid-shaped. Additionally, the prior art combination teaches that the height of the first projections is at least twice, or four times, or eight times, the height of the second projections. The prior art combination teaches that the composite forms two separate drainage and/or protection and/or grip systems adapted to withstand intense compression along a direction that is substantially perpendicular to the sheet element.
Although the prior art combination does not appear to teach the specific ratios and properties, a prima facie obviousness exists when the claimed range and the prior art do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties In re Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). For example, it is reasonable for one of ordinary skill to expect that the height of the elements may predictably vary, where increased drainage or gripping is required. Similarly, it is reasonable for one for one of ordinary skill to expect that the heights may be decreased, where less drainage or gripping is predictably required. 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 geomembrane product of prior art combination, and adjusting and varying the heights and thicknesses of the asperities, such as within the claimed ranges and the claimed ratios, as taught by DeGiuseppe, motivated by the desire of forming a conventional geomembrane product having values substantially similar to values known in the art to adequately provide drainage and/or protection and/or grip systems.
Regarding claim 15, the prior art combination does not appear to teach the claimed large friction spikes carrying an initial shear load and transfer. However, as set forth above, it is unclear exactly what is claimed. Since the prior art combination teaches a substantially similar structure and composition as claimed, including different heights, the invention of the prior art combination would appear to behave similarly as claimed.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Gilbert St-Pierre in view of Alfreds, as applied to claims 1, 2, and 15 above, and further in view of DeGiuseppe and USPN 5,258,217 to Lewis.
Regarding claims 4-6, as set forth above, the claimed height and ratios would appear to be obvious to one of ordinary skill. Alternatively, Lewis teaches a similar liner including a unitarily extruded sheet having a plurality of soil gripping protrusions projecting unitarily from a surface to engage the soil being protected (Lewis, Abstract). Lewis teaches that the protrusions may be disposed in rows, wherein the protrusions in each row may be offset laterally from the protrusions in the rows adjacent, to prevent a furrowing in the soil (Id., column 3 lines 17-39, column 5 lines 34-50). Lewis teaches supporting protrusions extending from the top surface to enable a flow of liquid along the top surface, and to further support additional layers (Id., column 3 line 57 to column 4 line 4). Lewis teaches that the supporting protrusions project approximately 3-8 mm from the top surface to enable sufficient support of subsequent layers and achieving optimum transmissivity in all directions (Id., column 6 lines 11-23).
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 geomembrane product of prior art combination, and adjusting and varying the heights and thicknesses of the asperities, such as within the claimed ranges and the claimed ratios, as taught by Lewis and DeGiuseppe, motivated by the desire of forming a conventional geomembrane product having values known in the art to adequately provide drainage and support.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Gilbert St-Pierre in view of Alfreds, as applied to claims 1, 2, and 15 above, and DeGiuseppe, as applied to claims 3-7, 10-12, and 16, and further in view of Lewis.
Regarding claims 8 and 9, the prior art combination teaches that the shape of the asperities is mostly conical and others have mainly random shapes, and that the asperities can be individual or interconnected (Gilbert St-Pierre, paragraph 0044). Additionally, based on the aforementioned paragraph and Figures 2 and 3 of Gilbert St-Pierre, including the absence of any requirement as to orienting the asperities in relation to each other, it is reasonable for one of ordinary skill to expect that the asperities are not in line and offset as claimed.
Additionally, Lewis teaches a similar liner including a unitarily extruded sheet having a plurality of soil gripping protrusions projecting unitarily from a surface to engage the soil being protected (Lewis, Abstract). Lewis teaches that the protrusions may be disposed in rows, wherein the protrusions in each row may be offset laterally from the protrusions in the rows adjacent, to prevent a furrowing in the soil (Id., column 3 lines 17-39, column 5 lines 34-50).
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 geomembrane product of the prior art combination, and adjusting and varying the location of the asperities at an offset angle, such as within the claimed ranges, as suggested by Lewis, motivated by the desire of forming a conventional geomembrane product having the desired textured surface including for gripping and preventing a furrowing in the soil.
Response to Arguments
Applicant’s arguments filed March 24, 2026, directed to Gilbert St-Pierre only are moot in view of the new grounds of rejection.
Applicant's remaining arguments filed March 24, 2026, have been fully considered but they are not persuasive. Applicant argues that DeGiuseppe discloses a very different structure, and that the Rejection does not explain why a person of ordinary skill would have treated DeGiuseppe’s protruding drainage elements as conventional dimensional guidance for Gilbert St-Pierre’s foamed skin asperities. Additionally, the dimensional data cited from DeGiuseppe does not teach several of the claimed ratios and dimensions.
Regarding Applicant’s arguments, Examiner respectfully disagrees. Preliminarily, based on the 35 U.S.C. 112(a) and (b) rejections above, it is unclear exactly what is claimed. However, the claimed invention is directed to a multitier geomembrane product. The claimed invention does not require any property values associated with the product. As set forth above, Gilbert St-Pierre teaches multilayer geomembrane liners with a textured surface showing high friction angles. Gilbert St-Pierre does not appear to teach the claimed height or diameter or ratio. Since the asperities necessarily comprise a height and diameter, and since Gilbert St-Pierre is silent as to those properties, it would have necessary and therefore obvious to one of ordinary skill in the art to look to the prior art for conventional characteristics for similar structures. DeGiuseppe provides this conventional teaching, showing that it was known in the geotechnical membrane art to form a sheet element having elements that protrude on the first and second faces, on at least one of the faces there being a layer that is integrally coupled to the protruding elements, having a height that ranges from 4 to 10 mm and thickness (i.e. diameter) that can range from 1 to 5 mm.
Additionally, it would have been obvious to one of ordinary skill in the art to make the geomembrane product of prior art combination, having heights and thicknesses of the asperities, such as within the claimed ranges and the claimed ratios, to form a geomembrane product having values substantially similar to values known in the art to adequately provide drainage and/or protection and/or grip systems.
Although Applicants argue that the prior art does not teach the specific layout of large friction spikes, the argument is moot in view of the new grounds of rejection.
Applicants argue that Alfreds is not directed to geomembrane surface texturing, interface direct shear performance, or large displacement shear strength of geomembrane liner systems. Examiner respectfully disagrees. Alfreds is directed to retaining walls which would appear to be within the scope of a geomembrane.
Applicants argue that Alfreds does not disclose the claimed height ranges. Examiner respectfully disagrees. The combined teachings of the prior art teach and suggest protruding elements have a height that ranges from 4 to 10 mm, including the height of the first projections being at least twice, or four times, or eight times, the height of the second projections.
Applicants argue that Alfreds is not concerned with geomembrane friction liner design. Examiner respectfully disagrees, in that the claimed invention is only directed to a geomembrane product.
Conclusion
The following prior art is made of record and not relied upon, but is considered pertinent to Applicant’s disclosure: “MicroDrain®” to AgruAmerica is cited to show a similar drainage system related to the current application, which recites MicroSpike technology. Applicant’s IDS did not cite the drainage system which appears to have been commercially available prior to the filing date of the current application by Applicants. 37 CFR 1.56(a) states that the "duty of candor and good faith" is owed "in dealing with the Office" and that all associated with the filing and prosecution of a patent application have a duty to disclose to the Office information material to the present application. Materiality is not limited to prior art but embraces any information that a reasonable examiner would be substantially likely to consider important in deciding whether to allow an application to issue as a patent. In response to the Action, Examiner requests Applicant provide disclosures of commercially available products by Applicant which were known and available prior to the filing date of the current application, unless such disclosures were unknown to Applicants.
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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786
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