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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/739,984, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 11 is not supported by the specification as there no mention of “configured to fill a space between a fastener and the one or more building enclosure layers”.
Claim 12 is not supported by the specification as there no mention of “the second layer is further configured to prevent air or moisture permeation within the space”.
Claim 13 is not supported by the specification as there no mention of “the third layer is sized and configured 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.”
Claim 14 is not supported by the specification as there no mention of “the fastener patch is configured to be detachably coupled to a release liner”.
Claim 16 is not supported by the specification as there no mention of “the release liner is sized and configured such that a single fastener patch is placed within a width of the release liner”.
Claim 17 is not supported by the specification as there no mention of “the release liner is configured to be wrapped into a roll, such that unwinding of the roll exposes a single fastener patch at a time”.
Claim 19 is not supported by the specification as there no mention of “the roll is configured to couple to the dispenser so as to unwind the roll”.
Accordingly, claims 11 – 14, 16, 17, and 19 are not entitled to the benefit of the prior application.
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 configured to receive 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, the fastener patch is configured to self-seal 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 and configured 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 and configured such that a single fastener patch is placed within a width of the release liner (Claim 18). With respect to claim 17, the release liner is configured to be 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. 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(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “configured to” in claims 3, 6, 7, 8, 10 – 14, 16, 17, and 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim limitation “configured to” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Paragraphs 0008, 0052, 0010, 0046 of the Patent Publication of Applicant’s specification discuss the individual layers of the invention but fail to show how it be able to perform such duties brought on by the language “configured to”. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Conclusion
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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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 February 13, 2026