DETAILED ACTION
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 .
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 21-28 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.
With regard to claim 21: Lines 15-16 of the claim, the scope of the claim is unclear. The claim recites the reveal portion of the first roofing shingle is not overlapped by the first roof shingle, but there does not appear to be a configuration in which an overlapping could occur. The first roofing shingle does not appear to be able to overlap itself. For the purpose of examination, the reveal portion of the first roof shingle is not overlapped by the second roofing shingle.
Claims 21-28 are examined best understood.
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) 21-36 and 38-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cook et al. (US 2011/0239555 A1).
With regard to claim 21: Cook et al. discloses a roofing system (figs. 1-11), comprising:
a roof deck comprising a first area (non-shingled area) and a second area (shingled area) (figs. 1-11);
a first water shedding layer (22a, 24, 24a and/or 24b) installed on the first area (non-shingled area) of the roof deck, wherein the first water shedding layer (22a, 24, 24a and/or 24b) comprises a reveal portion (exposed portion) (figs. 6-11); and
a plurality of roofing shingles (52, 52a and 52b) installed on the second area (shingled area) of the roof deck (fig. 6), wherein the plurality of roofing shingles (52, 52a and 52b) comprises a first roofing shingle (52) and a second roofing shingle (52a) (fig. 6),
wherein ends of the first roofing shingle (52) and the second roofing shingle (52a) are adjacent to an end of the first water shedding layer (22a, 24, 24a and/or 24b) (fig. 6),
wherein the first roofing shingle (52) comprises an overlap (headlap) portion and a reveal (buttlap) portion,
wherein the overlap (headlap) portion of the first roofing shingle (52) is overlapped by the second roofing shingle (52a) (fig. 6),
wherein the reveal portion (buttlap) of the first roofing shingle (52) is not overlapped by the second roofing shingle (52a) (fig. 6), and
wherein the reveal portion (exposed portion) of the first water shedding layer (22a, 24, 24a and/or 24b) is not covered by the first roofing shingle (52) or the second roofing shingle (52a) (fig. 6).
With regard to claim 22: Cook et al. discloses at least one solar cell (28a) above the first water shedding layer (at 24, 24a or 24b) (figs. 1, 6 and 9).
With regard to claim 23: Cook et al. discloses a width of the reveal (exposed) portion of the first water shedding layer (24b) is greater than a width of the reveal portion of the first roofing shingle (52) (fig. 6).
With regard to claim 24: Cook et al. discloses that the first water shedding layer (22a, 24, 24a and/or 24b) comprises a sheet (figs. 1, 6 and 9-10).
With regard to claim 25: Cook et al. discloses that the first water shedding layer (24b) is a 24-26 gauge metal sheet (fig. 6; par. [0052], last six lines), which is capable of coming from a roll.
The sheet coming "from a roll" is a product by process limitation.
"[E]ven 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 Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.
With regard to claim 26: Cook et al. discloses at least one flashing member (20), wherein the at least one flashing member (20) is under the first water shedding layer (22a) on the first area (non-shingled area) of the roof deck and the first roofing shingle (52) on the second area (shingled area) of the roof deck (figs. 6-9).
With regard to claim 27: Cook et al. discloses that the at least one flashing (20) member comprises a plurality of flashing members (20) (figs. 6-10).
With regard to claim 28: Cook et al. discloses that there is no flashing between the first area
(non-shingled area) of the roof deck and the second area (shingled area) of the roof deck. Note that
elements 22a and 24a have been designated as the at least one water shedding layer according to the
claim construction.
With regard to claim 29: Cook et al. discloses a method (figs. 1-11), comprising:
obtaining a first water shedding layer (22a, 24, 24a and/or 24b) (figs. 6-11),
wherein the first water shedding layer (22a, 24, 24a and/or 24b) comprises a reveal portion (exposed portion) (figs. 6-11);
obtaining a first roofing shingle (52) and a second roofing shingle (52a), wherein the first roofing shingle (52) comprises an overlap portion (headlap portion) and a reveal portion (buttlap portion) (fig. 6);
installing the first water shedding layer (22a, 24, 24a and/or 24b) on a first area (non-shingled area) of a roof deck (fig. 6);
installing the first roofing shingle (52 or 52a) on a second area (shingled area) of the roof deck (fig. 6);
installing the second roofing shingle (52a when the first shingle is directed to shingle 52 and 52b when the first shingle is directed to shingle 52a) on the roof deck (fig. 6);
wherein the second roofing shingle (52a when the first shingle is directed to shingle 52 and 52b when the first shingle is directed to shingle 52a) is installed on the second area (shingled area) of the roof deck, such that the second roofing shingle (52a when the first shingle is directed to shingle 52 and 52b when the first shingle is directed to shingle 52a) covers the overlap portion of the first roofing shingle (52 or 52a) (fig. 6),
wherein ends of the first roofing shingle (52 or 52a) and the second roofing shingle (52a when the first shingle is directed to shingle 52 and 52b when the first shingle is directed to shingle 52a) are adjacent to an end of the first water shedding layer (22a, 24, 24a and/or 24b) (figs. 6-7),
wherein the reveal portion (buttlap portion) of the first roofing shingle (52 or 52a) is not covered by the second roofing shingle (52a when the first shingle is directed to shingle 52 and 52b when the first shingle is directed to shingle 52a) (figs. 6-11), and
wherein the reveal portion (exposed portion) of the first water shedding layer is not covered by the first roofing shingle and the second roofing shingle (figs. 6-11).
With regard to claim 30: Cook et al. discloses installing the first water shedding layer (24b) occurs before installing the first roofing shingle (52a) (figs. 6-7).
With regard to claim 31: Cook et al. discloses installing the first water shedding layer (24a or 24b) occurs after installing the first roofing shingle (52) (figs. 6-9).
With regard to claim 32: Cook et al. discloses installing the first water shedding layer (24) occurs after installing the first roofing shingle and the second roofing shingle found in lower shingle courses (see fig. 1).
With regard to claim 33: Cook et al. discloses installing the first water shedding layer (24b) occurs after installing the first roofing shingle (52) and before installing the second roofing shingle (52a) (figs. 6-7).
With regard to claim 34: Cook et al. discloses at least one solar cell (28a) above the first water shedding layer (24a or 24b) (figs. 6 and 9).
With regard to claim 35: Cook et al. discloses that the width of the reveal portion (exposed portion) of the first water shedding layer (24b) is greater than the width of the reveal portion (exposed portion) of the first roofing shingle (52) (fig. 6).
With regard to claim 36: Cook et al. discloses that the first water shedding layer (24a or 24b) is a sheet (figs. 6 and 9-10)
With regard to claim 38: Cook et al. discloses obtaining at least one flashing member (20) (figs. 6-9); and installing the at least one flashing member (20) on the roof deck, wherein the at least one flashing member (20) is installed under the first water shedding layer (22a) on the first area of the roof deck and the first roofing shingle (52a) on the second area of the roof deck (figs. 6-10).
With regard to claim 39: Cook et al. discloses that the at least one flashing (20) member comprises a plurality of flashing members (figs. 6-9).
With regard to claim 40: Cook et al. discloses that there is no flashing between the first area (non-shingled area) of the roof deck and the second area (shingled area) of the roof deck (figs. 6-10). Note that elements 22a and 24a have been designated as the at least one water shedding layer according to the claim construction.
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) 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cook et al. (US 2011/0239555 A1) in view of Wetmore (US 2012/0255250 A1).
With regard to claim 37: Cook et al. discloses that the first water shedding layer (24b) is a metal sheet (fig. 6; par. [0052], last six lines).
Cook et al. does not disclose the sheet is from a roll.
However, Wetmore discloses metal flashing shipped as a roll (par. [0017], lines 11-16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Cook et al. to have the sheet come from a roll such as taught by Wetmore in order to provide a convenient means of shipping, handling and dispensing flashing for use.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,191,796 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the instant claims can be found within the patented claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633
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