DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. 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.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 18 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Crook (US 2005/0217202) in view of Kelly (US 8,407,958) and Inzeo (US 6,851,229).
Crook teaches a method of covering a roof structure, the method comprising: providing strips (33,35) of heat shrinkable film, each strip having leading and trailing edges, applying the strips over a portion of a roof, attaching leading and trailing edges to respective front and rear edges (17,19) of the roof with suitable fasteners, and heating the sheet such that it shrinks and conforms to the roof (See Figures; [0022]-[0073]).
Crook does not expressly disclose battens around which the leading and trailing edges are wrapped for attachment to a roof structure.
Regarding the use of a batten, Kelly teaches a method of attaching a waterproof membrane to a roof assembly, the method comprising: wrapping a membrane (46) around a stiff member (40) and attaching the stiff member to a side face of a wall (12) with fasteners (42) (See Figs. 2A and 2B; col. 2, line 62 to col. 3, line 62). The stiff member is a batten as claimed.
It would have been obvious to one of ordinary skill in the art at the time of invention that the “suitable fasteners” disclosed by Crook for fastening the leading and trailing edges of strips would include battens functioning in the claimed manner because Kelly teaches that battens were recognized in the prior art as being suitable for fastening waterproof membranes on roof structures.
Crook and Kelly teach fastening to a wall and do not expressly disclose attachment to a fascia or eaves.
Inzeo teaches a method in which a membrane is attached to a fascia of a roof by an anchor (See Figures; col. 1, line 1 to col. 4, line 45).
It would have been obvious to one of ordinary skill in the art at the time of invention that the strips of Crook could be attached to a fascia of a roof rather than the wall. Since it was known in the prior art to attach membranes to walls (as taught by Crook and Kelly) or to fascia (as taught by Inzeo), the substitution of one known attachment point for another would have been obvious. Furthermore, it would be a routine matter of design choice for one of ordinary skill to select an attachment point for a membrane on a roofing structure. No new or unexpected result is achieved by attaching to eaves or fascia rather than a wall. As long as the point of attachment is structurally sound the result is predictable and does not materially change the claimed invention. Therefore any attachment point, including a wall, eaves, fascia, soffit, rafters, nailers, or any other sturdy roof structure would have been obvious to one of ordinary skill in the art.
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.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,168,484. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the instant claims are present in the reference patent with only minor changes in phrasing and order presented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARSON GROSS whose telephone number is (571)270-7657. The examiner can normally be reached Monday-Friday 9am-5pm Eastern.
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/CARSON GROSS/Primary Examiner, Art Unit 1746