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 .
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 1-5, 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-10 of U.S. Patent No. 11,597,185 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed limitations in the instant application can be transparently found in the patented claims.
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.
Claim 3 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.
In regard to claim 3, the claim is indefinite because “the third layer of aluminum foil” lacks proper antecedent basis.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 1, 6, 7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Xiang Li US 2015/0354221 A1 (hereinafter ‘Li’).
In regard to claim 1, Li teaches a method comprising:
obtaining an underlayment (10 -fig. 3), wherein the underlayment comprises:
a first layer of nonwoven material (24);
a second layer of lamination coating (22) adjacent to the first layer;
a third layer of a substrate layer (18) adjacent to the second layer;
a fourth layer (other 24 in 20’ -see fig. 3) of polymeric lamination coating (see [0031]) adjacent to the third layer, wherein the second layer and fourth layer directly contact the third layer (fig. 3); and
a fifth layer (other 22 in 20’) of nonwoven material (see [0030]) adjacent to the fourth layer,
wherein the underlayment is non-breathable (see [0005]),
installing the underlayment on a roof structure and installing a plurality of roofing shingles on the underlayment, thereby to form a roofing system (see [0022]),
wherein the underlayment is between the roof structure and the plurality of roofing shingles (see [0022] “on top of a wood deck and under roof coverings such as shingles”).
Li is silent regarding any testing results. However, the underlayment of Li meets all the structural limitations being claimed therefore the claimed properties (i.e. when tested) are presumed to be inherent (see MPEP 2112.01). Nevertheless, it would have been obvious to one of ordinary skill in the art to make the roofing system of Li compliant for passing a test with a classification for Class A roof coverings of ASTM E108 so as to make it commercially available.
In regard to claim 6, Li teaches the second layer is composed of one or more polymers such as of a thermoplastic polyolefin (see [0030]).
In regard to claim 7, Li teaches the fourth layer is composed of one or more polymers such as of a thermoplastic polyolefin (see [0031]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Li.
In regard to claim 2, Li is silent regarding the weight product of the nonwoven material.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the instant application, to arrive at a value within the claimed weight range (from 10 to 50 gr per sq. meter) as a matter of routine experimentation. See MPEP 2144.05. (In the instant case, weight differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distance is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claims 3 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Kim US 2004/0081789 A1 (hereinafter ‘Kim’).
In regard to claims 3 and 9, Li does not explicitly teach the third layer is a layer of aluminum foil having a thickness of 5 to 15 microns.
Kim teaches a roof underlayment (see Abstract) comprising a layer of aluminum film (13).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide an aluminum film in the third layer of Li, as taught by Kim, so as to enhance the fireproofing mechanism while being waterproof (see Kim [0025]).
With respect to the thickness of the film, Kim teaches the thickness can be 0.01 to 0.1 mm (see [0043]), which overlaps the claimed range (5-15 microns). It would have been obvious to use a thickness within the claimed range to as to maintain the fireproofing properties of Kim (see MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art to arrive at a value within the claimed weight range (from 10 to 50 gr per sq. meter) as a matter of routine experimentation. See MPEP 2144.05. (In the instant case, weight differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distance is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claims 4, 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Di Pede US 2004/0148887 A1 (hereinafter ‘Pede’).
In regard to claim 4, Li does not explicitly teach the top side has a coefficient of friction of 0.4 to 1.4.
Pede teaches a roof underlayment (see Abstract) having a friction coefficient of 0.8 or greater (see [0005]).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide the top surface of Li having a friction coefficient between 0.4 and 1.4 as taught by Pede (0.8) so as to make it safe for an applicator to walk upon (see Pede [0005]).
In regard to claim 5, Li does not explicitly teach the back side has a coefficient of friction of 0.4 to 0.99.
Pede teaches a roof underlayment (see Abstract) having a friction coefficient of 0.8 or greater in the top side (see [0005]) and a “high” COF on the back side.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide the back surface of Li having a high coefficient of friction as taught by Pede so as to avoid slippage between the underlayment and the roof deck (see Pede [0039]).
Further, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to arrive at a value within the claimed weight range (0.4-0.99) as a matter of routine experimentation. See MPEP 2144.05. (In the instant case, COF differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distance is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
In regard to claim 8, Li does not explicitly teach a sixth layer of backside coating.
Pede teaches a roof underlayment (see Abstract) comprising a plurality of layers including a backside coating added to a bottom layer of an underlayer.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide a backside coating to the underlayer of Li, as taught by Pede so as to improve the coefficient of friction of Li’s underlayer (see Pede [0039]).
Claims 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Li and Kim as applied to claim 9 and in further view of Pede.
In regard to claim 10, the combination of Li/Kim does not explicitly teach the top side has a coefficient of friction of 0.4 to 1.4.
Pede teaches a roof underlayment (see Abstract) having a friction coefficient of 0.8 or greater (see [0005]).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide the top surface of the combination having a friction coefficient between 0.4 and 1.4 as taught by Pede (0.8) so as to make it safe for an applicator to walk upon (see Pede [0005]).
In regard to claim 11, the combination of Li/Kim/Pede teaches a roof underlayment having a friction coefficient of 0.8 or greater in the top side (see Pede [0005]) and a “high” COF on the back side.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide the back surface of the combination having a high coefficient of friction as taught by Pede so as to avoid slippage between the underlayment and the roof deck (see Pede [0039]).
Further, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to arrive at a value within the claimed weight range (0.4-0.99) as a matter of routine experimentation. See MPEP 2144.05. (In the instant case, COF differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distance is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
In regard to claim 12, the combination of Li/Kim/Pede teaches the second layer is composed of one or more polymers such as of a thermoplastic polyolefin (see Li [0030]).
In regard to claim 13, the combination of Li/Kim/Pede teaches the fourth layer is composed of one or more polymers such as of a thermoplastic polyolefin (see Li [0031]).
In regard to claim 14, Pede teaches a roof underlayment (see Abstract) comprising a plurality of layers including a backside coating added to a bottom layer of an underlayer.
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide a backside coating to the underlayer of the combination, as taught by Pede so as to improve the coefficient of friction of Li’s underlayer (see Pede [0039]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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/PAOLA AGUDELO/ Primary Examiner, Art Unit 3633
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