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 .
Withdrawn Rejections
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated May 18, 2026. However, new rejections may have been made using the same prior art if still applicable to the newly presented amendments and/or arguments.
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 1 – 5, 8, 9, 13 – 17, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 5, 12, 16, 18 and 20 of U.S. Patent No. 12,188,513 to Early et al. Although the claims at issue are not identical, they are not patentably distinct from each other because they both are directed towards a system for sealing over fastener heads.
Early et al. disclose a system for sealing over fastener heads coupled to one or more building enclosure layers, the system comprising: a fastener patch comprising a first layer, a second layer, and a third layer, wherein the first layer comprises a conformable, air-tight, and water-tight material, wherein the second layer comprises an adhesive that is pressure-sensitive and hydrophobic, wherein the third layer at least partially comprises a thermally insulating material selected from the group consisting of a microsphere coating, a foam matrix, and an adhesive matrix, the third layer having a thermal conductivity lower than an underlying fastener, and wherein the first layer is disposed between the third layer and the second layer (Claims 1 and 2) as in claim 1. With respect to claim 2, the first layer further comprises a film selected from the group consisting of a topical film, a solid film, and a coatable film (Claim 2). Regarding claim 3,
the coatable film comprises a fabric matrix comprising a material conductive to retaining a liquid coating (Claim 3). For claim 4, the fabric matrix comprises a substance selected from the group consisting of a fleece and a felt, wherein the felt comprises a fiber selected from the group consisting of natural fibers and synthetic fibers (Claim 4). In claim 5, the liquid coating is selected from the group consisting of acrylic, silicone, and silane-modified polyether (Claim 5). With regard to claim 8, one or more of the first layer and the second layer comprises a material to reseal the fastener patch in response to receiving a puncture (Claim 12). As in claim 9, the adhesive is selected from the group consisting of an acrylic, a hot melt, a butyl, and a butyl hybrid (Claim 16). With respect to claim 13, the third layer is sized to be placed over a location selected from the group consisting of a head of the fastener, the one or more building enclosure layers, and a combination thereof (Claims 1 and 20). Regarding claim 14, the fastener patch is configured to be detachably coupled to a release liner (Claims 1 and 20). For claim 15, a plurality of fastener patches distributed along the release liner (Claims 1 and 20). In claim 16, the release liner is sized such that a single fastener patch is able to be placed within a width of the release liner (Claim 18). With respect to claim 17, the release liner is wrapped into a roll, such that unwinding of the roll exposes a single fastener patch at a time (Claim 18). Early et al. further disclose system for sealing over fastener heads coupled to one or more building enclosure layers, the system comprising: a fastener patch comprising a first layer, a second layer, and a third layer, wherein the first layer comprises a conformable, air-tight, and water-tight material, wherein the second layer comprises an adhesive that is pressure-sensitive and hydrophobic, wherein the third layer comprises a thermally insulating material having a thermal conductivity lower than an underlying fastener, and wherein the first layer is disposed between the third layer and the second layer (Claims 1 and 20) as in claim 20.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,188,513 to Early et al. in view of USPGPub 2005/0266198 A1.
Early et al. disclose a system for sealing over fastener heads coupled to one or more building enclosure layers, the system comprising: a fastener patch comprising a first layer, a second layer, and a third layer, wherein the first layer comprises a conformable, air-tight, and water-tight material, wherein the second layer comprises an adhesive that is pressure-sensitive and hydrophobic, wherein the third layer at least partially comprises a thermally insulating material selected from the group consisting of a microsphere coating, a foam matrix, and an adhesive matrix, the third layer having a thermal conductivity lower than an underlying fastener, and wherein the first layer is disposed between the third layer and the second layer, the fastener patch is configured to be detachably coupled to a release liner (Claims 1 and 2), However, Early et al. fail to disclose a dispenser for dispensing the fastener patch.
Downs et al. teaches a dispenser for dispensing adhesive patches (Figure 5) for the purpose of placing the patches on a surface (Figures 11 – 14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a dispenser in Early et al. in order to place the patches on a surface as taught by Downs et al.
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 6 and 7 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.
The phrase “the fabric matrix comprises structure to reduce creasing of the fastener patch” in claim 6 is unclear, which renders the claim vague and indefinite. The amendment to claim 6 is unclear as to what “structure” has to do with reducing the creasing. Doesn’t all material inherently have structure? Does it have to do with the type of the material? The thickness?
The phrase “the fabric matrix comprises structure to facilitate uniformly distributing stress through the fastener patch” in claim 7 is unclear, which renders the claim vague and indefinite. The amendment to claim 7 is unclear as to what “structure” has to do with distributing stress. Doesn’t all material inherently have structure? Does it have to do with the type of the material? The thickness?
Response to Arguments
Applicant’s arguments with respect to claims 1 – 20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Please see the newly presented rejection of claims 6 and 7 above.
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 Patricia L Nordmeyer whose telephone number is (571)272-1496. The examiner can normally be reached 10am - 6:30pm EST, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 June 2, 2026
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