DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-15 and 17-18 and 21 are cancelled.
Claims 16, 19-20, 22-31 are pending.
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) 16, 19, 22-23, 29-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedict (EP2781669) in view of Kalwara et al (“Kalwara”) (US 5,520,761) and Levens (US 5,322,724).
Re claim 16, Benedict discloses a method ([0001]) for sealing adjacent roofing membranes (2a, 2b), the method ([0001]) comprising the steps of:
i. providing (Fig. 4 showing elements provided) a roof assembly (Fig. 4) comprising a roof substrate (1, and the unlabeled layer directly above 1), a first roofing membrane (2a) having a first upper surface (upper surface of 2a) and a first lower surface (lower surface of 2a), and a second roofing membrane (2b) having a second upper surface (upper surface of 2b) and a second lower surface (lower surface of 2b);
ii. laying (Fig. 4 showing 2a/2b laid) the first roofing membrane (2a) and the second roofing membrane (2b) onto a surface (top surface of 1) of the roof substrate (1) in such a manner that an edge (left edge of 2a) of the first roofing membrane (2a) is adjacent to (Fig. 4) an edge (right edge of 2b) of the second roofing membrane (2b), wherein the first roofing membrane (2a) is not in direct contact with (Fig. 4; via 3) the second roofing membrane (2b), wherein the first lower surface (lower surface of 2a) and the second lower surface (lower surface of 2b)are in direct contact with (Fig. 1) the roof substrate (1, and the unlabeled layer directly above 1);
iv. providing (Fig. 4 showing 4a and 4b provided) a sealing strip (4a, 4b) having an upper major surface (upper surface of 4a/4b) and a lower major surface (lower surface of 4a/4b) limited between short and long edges (length and width edges of 4a/4b);
v. adhesively bonding (via 5) the sealing strip (4a/4b) via the lower major surface (lower surface of 4a/4b) to at least a portion of (Fig. 4) the first polymer resin primer layer PR1 (as modified below) and at least a portion of (Fig. 4) the second polymer resin primer layer PR2 (as modified below) so that a connection gets established between (Fig. 4) the first roofing membrane (2a) and the second roofing membrane (2b);
vi. applying (Fig. 4 showing 7/8 applied) a water impermeable liquid applied membrane M1 (7/8) to the upper major surface (upper surface of 4a/4b) of the sealing strip (4a/4b), optionally the first polymer resin primer layer PR1 and the second polymer resin primer layer PR2 (as this language is “optional”),
but fails to disclose wherein the first roofing membranae comprises at least one polymer P1 selected from the group consisting of thermoplastic polyolefins (TPO) and ethylene propylene diene terpolymer (EPDM), and wherein the second roofing membrane comprises at least one polymer P2 that is polyvinyl chloride (PVC), iii. applying a first polymer resin primer layer PR1 to at least a portion of the first upper surface and a second polymer resin primer layer PR2 to at least a portion of the second upper surface; and vii. allowing the water impermeable liquid applied membrane M1 to cure in order to form a watertight seal between the first roofing membrane and the second roofing membrane.
However, Klawara discloses wherein the first roofing membranae (12a) comprises at least one polymer P1 selected from the group consisting of thermoplastic polyolefins (TPO) and ethylene propylene diene terpolymer (EPDM) (Col 6 line 61 – Col 7 line 15).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict with iii wherein the first roofing membranae comprises at least one polymer P1 selected from the group consisting of thermoplastic polyolefins (TPO) and ethylene propylene diene terpolymer (EPDM) as disclosed by Kalwara in order to provide a long lifespan with exceptional UV resistance, temperature resistance, and that is easy and cost effect, all well-known benefits of EPDM roofing materials. Moreover, EPDM roofing membranes are extremely well-known and common in the art.
In addition, Kalwara discloses iii. applying (Fig. 4 showing 14a applied) a first polymer resin primer layer PR1 (14a; Col 5 lines 38-39) to at least a portion of (Fig. 1) the first upper surface (12a; however, as modified, for use on the upper surface of 3a) and a second polymer resin primer layer PR2 (14b; Col 5 lines 38-39) to at least a portion of (Fig. 1) the second upper surface (upper surface of 12b).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict with iii. applying a first polymer resin primer layer PR1 to at least a portion of the first upper surface and a second polymer resin primer layer PR2 to at least a portion of the second upper surface as disclosed by Kalwara in order to obviate the need to initially clean surfaces to be joined (Col 3 lines 5-8), utilize a material which cleans the surfaces to be joined (Col 3 lines 8-10), and/or to increase peel strength (Col 3 lines 15-17).
In addition, Levens discloses wherein the second roofing membrane (32) comprises at least one polymer P2 selected from polyvinylchloride (PVC) (Col 1 lines 34-36).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the second roofing membrane comprises at least one polymer P2 selected from polyvinylchloride (PVC) as disclosed by Levens in order to utilize an inexpensive, durable, easily formable material. In addition, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331. Moreover, PVC roofing membranes are extremely well-known and common in the art.
In addition, Levens discloses vii. allowing (Col 6 lines 42-47) the water impermeable liquid applied membrane M1 (44; Col 7 lines 35-37) to cure (Col 6 lines 42-47) in order to form a watertight seal (Claim 22) between the first roofing membrane (30) and the second roofing membrane (32).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict vii. allowing the water impermeable liquid applied membrane M1 to cure in order to form a watertight seal between the first roofing membrane and the second roofing membrane as disclosed by Levens in order to provide a water impervious seal (Col 1 lines 13-14), applied in a simple manner which does not require specialized tools or skills.
Re claim 19, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the first roofing membrane and the second roofing membranes have a thickness of 0.5 - 5mm.
However, Levens discloses wherein the first roofing membrane (30) and the second roofing membranes (32) have a thickness of 0.5 - 5mm (Col 9 lines 17-19).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the first roofing membrane and the second roofing membranes have a thickness of 0.5 - 5mm as disclosed by Levens in order to provide sufficient durability and water impermeability while simultaneously allowing a degree of flexure for installation or shipping/supplying in roll form (Col 1 lines 37-42). In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 22, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the sealing strip is a self-adhesive sealing strip.
However, Kalwara discloses wherein the sealing strip (16) is a self-adhesive sealing strip (Col 3 lines 35-39).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the sealing strip is a self-adhesive sealing strip as disclosed by Kalwara in order to simplify installation by eliminating any need for use or installation of a separate adhesive composition.
Re claim 23, Benedict as modified discloses the method according to claim 16, wherein the water impermeable liquid applied membrane M1 (7/8, as modified by the liquidity of 44 of Levens) is applied to cover (Fig. 4; 7/8 being the uppermost layers) at least a portion of the first polymer resin primer layer PR1 (Kalwara: 14a), at least a portion of the second polymer resin primer layer PR2 (Kalwara: 14b) and the sealing strip (4a/4b).
Re claim 29, Benedict as modified discloses the method according to claim 16, wherein the first roofing membrane (2a) and the second roofing membrane (2b) are secured on the roofing substrate (1) but fails to disclose by adhesive and/or mechanically using screws, barbed plates or termination bars.
However, Levens discloses securement by adhesive and/or mechanically using screws (22), barbed plates or termination bars.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict with by adhesive and/or mechanically using screws, barbed plates or termination bars as disclosed by Levens in order to fasten in a simple, removable manner.
Re claim 30, Benedict discloses a roof system (Fig. 4) comprising,
- a roof substrate (1 and the unlabeled layer directly above 1);
- a first roofing membrane (2a) having a first upper surface (upper surface of 2a) and a first lower surface (lower surface of 2a);
- a second roofing membrane (2b) having a second upper surface (upper surface of 2b) and a second lower surface (lower surface of 2b), wherein the first roofing membrane (2a) and the second roofing membrane (2b) are laid on a surface (of 1) of the roof substrate (1 and the unlabeled layer directly above 1) so that an edge (left edge of 2a) of the first roofing membrane (2a) is adjacent to (Fig. 4) an edge (right edge of 2b) of the second roofing membrane (2b), wherein the first lower surface (lower surface of 2a) and the second lower surface (lower surface of 2b) are in direct contact with (Fig. 1) the roof substrate (1 and the unlabeled layer directly above 1), and wherein the first roofing membrane (2a) is not in direct contact with (Fig. 4; via 3) the second roofing membrane (2b);
- a sealing strip (4a, 4b) having an upper major surface (upper surface of 4a/4b) and a lower major surface (lower surface of 4a/4b) limited between short (width edge) and long edges (length edge), wherein the sealing strip (4a, 4b) is adhesively bonded (via 5) via the lower major surface (lower surface of 4a/4b) to at least a portion of the first polymer resin primer layer PR1 (as modified below) and at least a portion of the second polymer resin primer layer PR2 (as modified below) so that a connection gets established between (Fig. 4) the first roofing membrane (2a) and the second roofing membrane (2b); and
- a water impermeable liquid applied membrane M1 (7/8), wherein the water impermeable liquid applied membrane M1 (7/8) is applied to the upper major surface (top of 4a/4b) of the sealing strip (4a/4b), optionally the first polymer resin primer layer PR1 and the second polymer resin primer layer PR2 (as this language is optional),
but fails to disclose wherein the first roofing membranae comprises at least one polymer P1 selected from the group consisting of thermoplastic polyolefins (TPO) and ethylene propylene diene terpolymer (EPDM), and wherein the second roofing membrane comprises at least one polymer P2 that is polyvinyl chloride (PVC), wherein a first polymer resin primer layer PR1 is applied to at least a portion of the first upper surface, wherein a second polymer resin primer layer PR2 is applied to at least a portion of the second upper surface, and wherein the water impermeable liquid applied membrane M1 is allowed to cure in order to form a watertight seal between the first roofing membrane and the second roofing membrane.
However, Klawara discloses wherein the first roofing membranae (12a) comprises at least one polymer P1 selected from the group consisting of thermoplastic polyolefins (TPO) and ethylene propylene diene terpolymer (EPDM) (Col 6 line 61 – Col 7 line 15).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Benedict with iii wherein the first roofing membranae comprises at least one polymer P1 selected from the group consisting of thermoplastic polyolefins (TPO) and ethylene propylene diene terpolymer (EPDM) as disclosed by Kalwara in order to provide a long lifespan with exceptional UV resistance, temperature resistance, and that is easy and cost effect, all well-known benefits of EPDM roofing materials. Moreover, EPDM roofing membranes are extremely well-known and common in the art.
In addition, Kalwara discloses a first polymer resin primer layer PR1 (14a; Col 5 lines 38-39) is applied to at least a portion of (Fig. 1) the first upper surface (12a; however, as modified, for use on the upper surface of 3a) and a second polymer resin primer layer PR2 (14b; Col 5 lines 38-39) is applied to at least a portion of (Fig. 1) the second upper surface (upper surface of 12b).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Benedict wherein a first polymer resin primer layer PR1 is applied to at least a portion of the first upper surface, wherein a second polymer resin primer layer PR2 is applied to at least a portion of the second upper surface as disclosed by Kalwara in order to obviate the need to initially clean surfaces to be joined (Col 3 lines 5-8), utilize a material which cleans the surfaces to be joined (Col 3 lines 8-10), and/or to increase peel strength (Col 3 lines 15-17).
In addition, Levens discloses wherein the second roofing membrane (32) comprises at least one polymer P2 selected from polyvinylchloride (PVC) (Col 1 lines 34-36).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Benedict wherein the second roofing membrane comprises at least one polymer P2 selected from polyvinylchloride (PVC) as disclosed by Levens in order to utilize an inexpensive, durable, easily formable material. In addition, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331. Moreover, PVC roofing membranes are extremely well-known and common in the art.
In addition, Levens discloses wherein the water impermeable liquid applied membrane M1 (44; Col 7 lines 35-37) is allowed to cure (Col 6 lines 42-47) in order to form a watertight seal (Claim 22) between the first roofing membrane (30) and the second roofing membrane (32).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Benedict wherein the water impermeable liquid applied membrane M1 is allowed to cure in order to form a watertight seal between the first roofing membrane and the second roofing membrane as disclosed by Levens in order to provide a water impervious seal (Col 1 lines 13-14), applied in a simple manner which does not require specialized tools or skills.
Claim(s) 20 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedict (EP2781669) in view of Kalwara et al (“Kalwara”) (US 5,520,761) and Levens (US 5,322,724) and Yasuno et al (“Yasuno”) (US 2024/0262079).
Re claim 20, Benedict as modified discloses the method according to claim 16, Kalwara discloses wherein the first polymer resin primer layer PR1 (14a) is composed of a composition comprising synthetic rubber (Col 5 lines 38-43) and wherein the second polymer resin primer layer PR2 (14b) is composed of at least one amine hardener AH (Col 5 line 66 – Col 6 line 3), but fails to disclose wherein the second polymer resin primer layer PR2 is composed of a composition comprising at least one liquid epoxy resin LER.
However, Yasuno discloses wherein the second polymer resin primer layer PR2 ([0149]) is composed of a composition comprising at least one liquid epoxy resin LER ([0149]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the second polymer resin primer layer PR2 is composed of a composition comprising at least one liquid epoxy resin LER as disclosed by Yasuno in order to allow for simple application such as by a brush, roller, or spraying ([0150]). In addition, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 31, Benedict as modified discloses the roof system according to claim 30, Kalwara discloses wherein the first polymer resin primer layer PR1 (14a) is composed of a composition comprising synthetic rubber (Col 5 lines 38-43) and wherein the second polymer resin primer layer PR2 (14b) is composed of at least one amine hardener AH (Col 5 line 66 – Col 6 line 3), but fails to disclose wherein the second polymer resin primer layer PR2 is composed of a composition comprising at least one liquid epoxy resin LER.
However, Yasuno discloses wherein the second polymer resin primer layer PR2 ([0149]) is composed of a composition comprising at least one liquid epoxy resin LER ([0149]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Benedict wherein the second polymer resin primer layer PR2 is composed of a composition comprising at least one liquid epoxy resin LER as disclosed by Yasuno in order to allow for simple application such as by a brush, roller, or spraying ([0150]). In addition, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim(s) 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedict (EP2781669) in view of Kalwara et al (“Kalwara”) (US 5,520,761), Levens (US 5,322,724) and Houchin et al (“Houchin”) (US 2015/0354218).
Re claim 24, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the water impermeable liquid applied membrane M1 is applied by the application of a reactive composition RC1 in liquid form and letting the applied composition cure.
However, Houchin discloses wherein the water impermeable liquid applied membrane M1 (Levens: 44) is applied by the application of a reactive composition RC1 ([0080]) in liquid form ([0080]) and letting the applied composition cure ([0082]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the water impermeable liquid applied membrane M1 is applied by the application of a reactive composition RC1 in liquid form and letting the applied composition cure as disclosed by Houchin in order to simplify installation by incorporation of materials for adhesions on edges thereof using a chemically reactive cure system ([0004]).
Re claim 25, Benedict as modified discloses the method according to claim 24, Houchins discloses wherein the reactive composition RC1 ([0080]) is selected from the list consisting of reactive one-part polyurethane compositions, reactive two-part polyurethane compositions and reactive two-part polyurea compositions ([0081]).
Re claim 26, Benedict as modified discloses the method according to claim 24, Houchins discloses wherein the reactive composition RC1 ([0080]) has a water content of less than 10 wt.-%, based on the total weight of the reactive composition RC1 ([0080] discloses the compositions of A and B, none of which include water).
Claim(s) 24 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedict (EP2781669) in view of Kalwara et al (“Kalwara”) (US 5,520,761), Levens (US 5,322,724) and Miller et al (“Miller”) (US 2015/0337534).
Re claim 24, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the water impermeable liquid applied membrane M1 is applied by the application of a reactive composition RC1 in liquid form and letting the applied composition cure.
However, Miller discloses wherein the water impermeable liquid applied membrane M1 (Levens: 44) is applied by the application of a reactive composition RC1 ([0012]) in liquid form ([0029]) and letting the applied composition cure ([0029]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the water impermeable liquid applied membrane M1 is applied by the application of a reactive composition RC1 in liquid form and letting the applied composition cure as disclosed by Houchin in order to adhere utilizing sufficient strength, low VOC, and simple application ([0005]).
Re claim 27, Benedict as modified discloses the method according to claim 24, Miller discloses wherein the reactive composition RC1 ([0012]) is reactive one-part ([0011]) polyurethane composition ([0013]) containing:- an amount of isocyanate-functional polymers ([0020]); - an amount of latent hardener ([0026]); - an amount of plasticizers ([0018]); and - an amount of fillers ([0018]),
but fails to disclose the isocyanate-functional polymers in the range of 15 to 80 weight-% in relation to a total composition, the latent hardener in the range of 0.5 to 25 weight-% in relation to the total composition, the plasticizers in the range of 0 to 40 weight-% in relation to the total composition, and the fillers in the range of 0 to 80 weight-% in relation to the total composition.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict with the isocyanate-functional polymers in the range of 15 to 80 weight-% in relation to a total composition, the latent hardener in the range of 0.5 to 25 weight-% in relation to the total composition, the plasticizers in the range of 0 to 40 weight-% in relation to the total composition, and the fillers in the range of 0 to 80 weight-% in relation to the total composition in order to sufficiently alter liquid viscosity, optimize mixing, enhance air entrainment, improve wet out, and/or improve flow properties during application ([0018]). In additions, where 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.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedict (EP2781669) in view of Kalwara et al (“Kalwara”) (US 5,520,761), Levens (US 5,322,724) and Wiercisnski (US 2010/0173112).
Re claim 28, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the water impermeable liquid applied membrane M1 comprises a fiber reinforcement mesh.
However, Wiercinski discloses wherein the water impermeable liquid applied membrane M1 (1) comprises a fiber reinforcement mesh (2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the water impermeable liquid applied membrane M1 comprises a fiber reinforcement mesh as disclosed by Wiercinski in order to increase strength of the membrane, as fiber reinforcement meshes are very well-known and common in the art.
Response to Arguments
Objections to the Drawings: Applicant’s argument with respect to the drawings is persuasive and objection to the drawings is hereby withdrawn.
Claim Rejections 35 USC 112: Applicant’s argument with respect to the claims rejected under 35 USC 112 is persuasive and rejection of the claims pursuant to 35 USC 112 is hereby withdrawn.
Claim Rejections 35 USC 103: Applicant’s arguments with respect to all claims have been considered but are not persuasive.
Applicant argues that as amended, the language of the independent claims requires one membrane as a TPO or EPDM membrane, and the other membrane as a PVC membrane. Applicant argues that Benedict does not disclose sealing incompatible PVC and non-PVC membranes. It is true that Benedict does not disclose one membrane as a TPO or EPDM membrane and the other membrane as a PVC membrane. Applicant further contends that neither Kalwara nor Levens addressed sealing of incompatible membranes of different material. Again, it is true that neither reference itself discloses this feature. Applicant contends that a person of ordinary skill would not be motivated to combine the references in the manner suggested. The Examiner respectfully disagrees. All of TPO, EPDM and PVC membranes are extremely well-known materials in the art. A person of ordinary skill would select individual materials that are known to better suit specific purposes on varying areas of a roof. For example, if one side of a roof required properties better suited with TPO or EPDM, a person of ordinary skill would simply select that material. On the other side, if properties were better suited with PVC, a person of ordinary skill would simply select that material. Each of these materials are extremely well-known and well within the level of ordinary skill in the art for material selection. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Next, regarding claims 20 and 31, Applicant argues that the claims require chemically distinct primer compositions tailored to each membrane type. While this may be the case, the prior art discloses the claimed features of these claims as outlined in the above.
Next, Applicant argues that Kalwara’s primer is a synthetic rubber that is not an epoxy-amine hardener primer that functions as a plasticized barrier. Kalwara explicitly disclose synthetic rubber (Col 5 lines 38-43) and the second polymer resin primer layer PR2 (14b) being composed of at least one amine hardener AH (Col 5 line 66 – Col 6 line 3). Applicant argues that Kalwara uses the primer composition differently than the claimed invention. No intended use is claimed, at least in claims 20 and 31, directed to any manner of use. Moreover, any statement of intended use of the claimed invention and must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Thus, the prior art meets the claim.
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 KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
Prosecution Insights