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 .
DETAILED ACTION
Claims 1-17 cancelled
Claims 18-35 new and 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claim(s) 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morris (PG Pub 2008/0138634 A1) in view of Wakamatsu (PG Pub 2011/0159301 A).
Consider Claim 34, Morris teaches the process of coating substrate from wooden roofing material [0076], where the surfaces are coating with tie coat having polysiloxane polymer [0008] and figures 1-2, as the polysiloxane film material is polysiloxane polymer has a terminal reactive group, that is hydroxyl [0011].
Morris does not teach salting out a substrate having a polysiloxane/silicone film.
However, Wakamatsu is in the prior art of coating wood with silicone film (abstract), process of coating includes coating the silicone (A) to (F), then treating the wood with a dispersion containing the silicone emulsion composition [I] and the di- or trivalent metal salt (G) by immersion, as immersing in metal salt bath (Claim 8).
A person having ordinary skill in the art before the effective date of the claimed invention would combine Morris with Wakamatsu to salt out the substrate coated with silicone/polysiloxane film, to provide with water repellency, water absorption prevention, dimensional stability, termite control and antifungal properties without altering the appearance and quality of wood (abstract).
Consider Claim 35, is product-by-process claim, which is a product claim that defines the claimed product in terms of the process by which it is made. As such, "even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) [MPEP 2113]. Furthermore, "[t]he Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product by process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). The combined Morris (with Wakamatsu) teaches a silicone roofing membrane prepared by salting out a substrate having coated thereon a hydroxyl-terminated polysiloxane, as product-by-process.
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 18-20, 22, 24-25, 28-35 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,577,801 B2 in view of Morris (PG Pub 2008/0138634 A1).
Claim 18 state “A method for preparing a silicone roofing membrane, the method comprising:
(i) providing an emulsion comprising of a hydroxyl-terminated polysiloxane, a crosslinker, and a catalyst;
(ii) applying the emulsion to a substrate to form an emulsion soaked substrate;
(iii) contacting the emulsion soaked substrate with an aqueous salt bath to form a cured substrate; and
(iv) drying the cured substrate.”
This disclose in claims 1 and 6 of Pat ‘801.
As Morris disclose the process of coating substrate from roofing material [0076], where the surfaces are coating with tie coat having polysiloxane polymer [0008] and figures 1-2, as the polysiloxane film material is polysiloxane polymer has a terminal reactive group, that is hydroxyl [0011].
Claim 34 “A method of forming a silicone roofing membrane, the method comprising: salting out a substrate having coated thereon a hydroxyl-terminated polysiloxane.
This disclose in claims 1 and 6 of Pat ‘801.
As Morris disclose the process of coating substrate from roofing material [0076], where the surfaces are coating with tie coat having polysiloxane polymer [0008] and figures 1-2, as the polysiloxane film material is polysiloxane polymer has a terminal reactive group, that is hydroxyl [0011].
Claim 35 “A silicone roofing membrane prepared by a process comprising: salting out a substrate having coated thereon a hydroxyl-terminated polysiloxane.”
This disclose in claims 1 and 6 of Pat ‘801.
As Morris disclose the process of coating substrate from roofing material [0076], where the surfaces are coating with tie coat having polysiloxane polymer [0008] and figures 1-2, as the polysiloxane film material is polysiloxane polymer has a terminal reactive group, that is hydroxyl [0011].
Claims 19-20, 22, 24-25, 28-33 are disclosed in claims 2-17 of Pat ‘801.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 11:00AM-7:00PM EST.
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/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718
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