DETAILED ACTION
This Office action follows the Restriction Requirement set forth on 5/29/2026 and is responsive to applicant’s reply filed on 7/29/2026. Claims 11-18 and 24-35 are pending. Claims 1-10 and 19-23 have been cancelled. New claims 32-35 have been added.
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 of Invention II, including claims 11-18 and 24-31 in the reply filed on 7/29/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
No claims have been withdrawn. Claims 1-10 and 19-23 have been cancelled. New claims 32-35 have been added.
Information Disclosure Statement
The IDS filed on 8/28/2024 is being considered.
Drawings
The drawings filed on 8/7/2024 are acceptable for examination.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract recites, “are disclosed” (line 1). This objection can be overcome by deleting “are disclosed”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 11-18 and 24-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,434,638 (‘reference patent’). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application and the claims of the reference patent are drawn to substantially the same subject matter, with minor differences in wording or phraseology, and thus the claims of the reference patent encompass the scope of or render obvious the claims of the instant application.
Claims 11-18 and 24-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,084,866 (‘reference patent’). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application and the claims of the reference patent are drawn to substantially the same subject matter, with minor differences in wording or phraseology, and thus the claims of the reference patent encompass the scope of or render obvious the claims of the instant application.
Claim Objections
Claim 11 is objected to because of the following informalities:
Claim 11, the semi-colon after “assemblies” in line 14 is objected to because it appears to contain a typo. This objection can be overcome by deleting the semi-colon.
Appropriate correction is required.
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 11 and 28-29 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.
Claim 11, “wherein the fabric includes a plurality of open areas” (third to last line of the claim) is indefinite because the claim previously defines the fabric having a plurality of open areas (lines 6-7) and thus the limitation appears to be drawn to a double inclusion. As is currently written, the claim requires two pluralities of open areas. Applicant is requested to clarify.
Claim 28, “the base” is indefinite because the limitation lacks antecedent basis. Note that claim 24 previously recites a base plate, but not a base. Does applicant intend for the limitation to refer to the base plate? See also claim 29.
Claim 29, “wherein the base has a washer-shape” is indefinite because the term, “washer-shape” is unclear as to what is required or not required. The term, “washer-shape” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This rejection can be overcome by further defining the shape of the base.
The remainder of claims in this section are rejected by virtue of dependency upon a rejected base claim.
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(s) 24, 28 and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lemke (US 5035028).
Claim 24, Lemke provides a roofing system, comprising:
a roof deck 34;
a plurality of fastening assemblies 10 installed on the roof deck (Fig. 7),
wherein each of the plurality of fastening assemblies includes a base plate (12, 14; Figs.1 and 4-5),
wherein the base plate includes an upper surface (upper surface of 12), and a first layer 14 on the upper surface of the base plate (Figs. 4-5); and
a sheet 39 installed over the plurality of fastening assemblies (Figs. 4-5 and 7),
wherein the sheet contacts the first layer of each of the plurality of roofing assemblies (Figs. 4-5).
Claim 28, Lemke further teaches wherein the base is composed of metal, plastic, ceramic, rubber, a composite, a synthetic material, or any combination thereof (“selected from a wide number of metals or plastic materials” col. 8, lines 7-12).
Claim 30, Lemke further teaches wherein the base and the first layer are preassembled with one another (Figs. 1 and 4-5).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 25-27, 29, 31 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lemke (US 5035028) as above in view of Bernardi et al. (US 20040187422) (‘Bernardi’).
Claim 25, Lemke teaches all the limitations of claim 24 as above. Lemke does not teach wherein the first layer includes a binding material, and wherein the binding material of each of the plurality of fastening assemblies secures the sheet to the roof deck. However, Bernardi teaches a roofing system comprising a base plate (“seam plates” claims 11 and 23; 726) comprising a first layer including a binding material (“adhesive” claims 11 and 23; 750, 752), and wherein the binding material secures a sheet (“substrate member” claims 11 and 23; 728) to a roof deck (“roof decking” claims 1 and 13). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the first layer including a binding material, wherein the binding material of each of the plurality of fastening assemblies secures the sheet to the roof deck, with the reasonable expectation of success of using known means to further secure the sheet to the roof deck and increase the strength of the connection of the sheet to the roof deck.
Claim 26, as modified above, the combination of Lemke and Bernardi teaches all the limitations of claim 25, and further teaches wherein the binding material is composed of a thermal plastic material, a thermoset material, a heat setting material, phenolic formaldehyde, epoxy, polyester, polyimide, phenolic neoprene, or any combination thereof (Bernardi “by means of a suitable adhesive material”; “the substrate member may be heat-sealed directly to the seam plate or membrane plate” [0040]).
Claim 27, Lemke teaches all the limitations of claim Bernardi teaches all the limitations of claim 24 as above. Lemke does not teach wherein the sheet is composed of plastic, metal, a foam material, a composite, a permeable mesh, a natural fibrous material, a synthetic fibrous material, a woven fabric, a nonwoven fabric, or combinations thereof. However, Bernardi teaches a roofing system, comprising a sheet composed of plastic, metal, a foam material, a composite, a permeable mesh, a natural fibrous material, a synthetic fibrous material, a woven fabric, a nonwoven fabric, or combinations thereof (“fabricated from a suitable thermoplastic film or sheet material” [0040]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify that material of the sheet to be plastic, with the reasonable expectation of success of utilizing readily available, well-known materials to form the sheet, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Claim 29, Lemke further teaches wherein the base has a washer-shape (under the broadest reasonable interpretation, washers can have different shapes and the shape of Lemke’s base constitutes a washer-shape, as exceedingly broadly claimed; Figs. 1 and 4). Lemke does not teach the first layer having a ring shape. However, Bernardi teaches a roofing system, comprising a base 726 that has a washer-shape (Fig. 9) and a first layer (750 or 752) that has a ring shape (Fig. 7). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the shape of the base to have a washer-shape that corresponds to a first layer that has a ring shape, with the reasonable expectation of success of matching the shape of the base to the shape of the first layer, such that the first layer covers the base in a corresponding manner, since it has been held that a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Claim 31, Lemke teaches all the limitations of claim 24 as above. Lemke does not teach wherein the first layer comprises a coating. However, Bernardi teaches a roofing system comprising a first layer comprising a coating (“adhesive” claims 11 and 23; 750, 752) for securing a sheet 728 to a roof deck. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to form the first layer comprising a coating, with the reasonable expectation of success of using known means to further secure the sheet to the roof deck and increase the strength of the connection of the sheet to the roof deck.
Claim 34, Lemke teaches all the limitations of claim 24 as above. Lemke does not teach the base plate including an opening (opening in the base plate; Figs. 1 and 4-5), wherein the first layer includes an opening aligned with the opening of the base plate (opening in the first layer aligned with the opening in the base plate; Figs. 1 and 4-5), and wherein each of the plurality of fastening assemblies further includes a fastener (36 or 46) extending through the aligned openings and into the roof deck (Figs. 4-5).
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lemke (US 5035028) as above in view of Kim (US 6460304).
Claim 32, Lemke teaches all the limitations of claim 24 as above. Lemke does not teach a liquid applied roof coating applied over the sheet, wherein the liquid applied roof coating at least partially penetrates the sheet. However, Kim teaches a roofing system, comprising a liquid applied roof coating applied over a sheet, wherein the liquid applied roof coating at least partially penetrates the sheet (col. 5, lines 18-39). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the roofing system such that a liquid applied roof coating is applied over the sheet, wherein the liquid applied roof coating at least partially penetrates the sheet, with the reasonable expectation of success of using known means to make the roofing system waterproof.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lemke (US 5035028) as above in view of Wortelboer (US 20120094068).
Claim 33, Lemke teaches all the limitations of claim 24 as above. Lemke does not teach wherein the sheet comprises crisscrossing strands defining open areas, and wherein the first layer is configured to soften and flow through the open areas to bind to the crisscrossing strands. However, Wortelboer teaches a roofing system, comprising a sheet comprising crisscrossing strands defining open areas (“mesh” [0056]), and wherein a first layer is configured to soften and flow through the open areas to bind to the crisscrossing strands [0056]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the roofing system such that the sheet comprises crisscrossing strands defining open areas, and wherein the first layer is configured to soften and flow through the open areas to bind to the crisscrossing strands, with the reasonable expectation of using known means to form a sheet that is strong, waterproof and cost efficient (Wortelboer [0008]).
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lemke (US 5035028) as above in view of Tomaszewski (US 4617771).
Claim 35, Lemke teaches all the limitations of claim 34 as above. Lemke does not teach wherein the base plate includes a central depression, and wherein a head of the fastener resides within the central depression. However, Tomaszewski teaches a roofing system comprising a base plate 6 including a central depression (central depression 13; Figs. 2-3), and wherein a head of a fastener 26 recites within the central depression (Figs. 2-4). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the roofing system such that the base plate includes a central depression, and wherein a head of the fastener resides within the central depression, with the reasonable expectation of success of permitting the fastener head to lie in the depression to create a flatter surface for receiving the sheet.
Allowable Subject Matter
Claims 11-18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and double patenting set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record, specifically Lemke (US 5035028) and Bernardi et al. (US 20040187422) (‘Bernardi’) do not teach or disclose, alone or in combination, all the elements of the claimed invention as a whole, including the position, arrangement and orientation of the fabric comprising the open areas, the plurality of fastening assemblies including the first and second elements on the roof deck such that the fastening assemblies do not pierce the fabric and the liquid applied coating that is permitted to penetrate through the fabric, as claimed in claim 11. Lemke’s roofing system requires piercing the fabric (Figs. 1 and 4-5) and thus does not teach all the limitations of claim 11. Bernardi teaches a roofing system comprising at least one embodiment that utilizes adhesive (Fig. 9), but not a mesh. When a mesh is used in Bernardi, it is pierced with prongs. Thus, Bernardi does not teach all the elements and features of claim 11. Further, it would have been beyond the level of ordinary skill to combine Lemke and Bernardi to arrive at the claimed invention of claim 11 without destroying the intended purpose of the references. Claims 12-18 depend, directly or indirectly from claim 11.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M FERENCE whose telephone number is (571)270-7861. The examiner can normally be reached M-F 7-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635
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