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 .
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,215,500. For double patenting to exist as between the rejected claims and patent claims, it must be determined that the rejected claims are not patentably distinct from the patent claims. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and patent claims and, if so, whether those differences render the claims patentably distinct.
Claims 1-18 recite a roofing product/method. It is clear that all the elements of the application claims are to be found in the patent claims. The difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus more specific (specifically, claims 1 and 9 of the patent claims includes the adhesive comprising a specific adhesive material). Thus, the invention of the patent claims is in effect a "species" of the "generic" invention of the application claims. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, the application claims are not patentably distinct from the patent claims.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3, 5-6, 9-12, 14, and 17-18 - are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Simonis (11,053,686).
Simonis teaches a roofing product comprising:
a roofing composite comprising: a cap layer 22,
and a reinforcing material 12;
an adhesive (silane adhesive, col. 3, lines 48-50, col. 7, lines 35-41, fig. 1),
wherein the adhesive comprises a moisture-cure adhesive (col. 3, lines 48-50); and a roofing membrane 20 with a coating 14,
wherein the roofing membrane comprises a styrene-butadiene-styrene modified bitumen membrane, a thermoplastic polyolefin membrane, or a polyvinyl chloride membrane, col. 10, lines 44-48;
wherein the coating is positioned between the adhesive and the roofing membrane, fog. 1, and
wherein the roofing membrane is capable of being formed as a roll good with sufficient force applied to roll the membrane.
2. Simonis teaches the roofing product according to claim 1, Simonis further teaching the adhesive directly contacts the roofing membrane, fig. 1.
3. Simonis teaches the roofing product according to claim 1, Simonis further teaching the adhesive excludes a foam adhesive (foam is not disclosed).
5. Simonis teaches the roofing product according to claim 1, Simonis further teaching the coating is selected so as to reduce oil migration from the roofing membrane to the roofing composite (abstract, col. 4, lines 33-36).
6. Simonis teaches the roofing product according to claim 1, Simonis further teaching the coating is an acrylic coating (“polyacrylonate”).
9. Simonis teaches a method of installation comprising:
obtaining a roofing membrane 20,
wherein the roofing membrane comprises:
a styrene-butadiene-styrene-modified bitumen membrane, a thermoplastic polyolefin membrane, or a polyvinyl chloride membrane (col. 10, lines 44-47), and
a coating 14,
wherein the coating is on a top surface of the roofing membrane, installing a bottom surface of the roofing membrane to a roofing substrate 18, fig. 3,
obtaining a roofing composite 12,22 that is separate from the roofing membrane,
wherein the roofing composite comprises: a cap layer 22, and a reinforcing material 12,
obtaining an adhesive (hot melt) that is separate from the roofing membrane and the roofing composite,
wherein the adhesive comprises a moisture-cure adhesive, applying the adhesive to the top surface of the roofing membrane that is installed on the roofing substrate, fig. 1, and
adhering the roofing composite to the adhesive that is applied to the top surface of the roofing membrane so as to form a composite roofing membrane on the roofing substrate.
10. Simonis teaches the method according to claim 9, Simonis further teaching applying the adhesive to the top surface of the roofing membrane comprises directly applying the adhesive to the top surface without any intervening layer, fig. 3.
11. Simonis teaches the method according to claim 9, Simonis further teaching the coating is selected so as to reduce oil migration from the roofing membrane to the roofing composite, abstract, col. 4, lines 33-37).
12. Simonis teaches the method according to claim 9, Simonis further teaching the coating is an acrylic coating (“polyacrylonate”).
14. Simonis teaches the method according to claim 9, Simonis further teaching the adhesive excludes a foam adhesive (foam is not taught).
17. Simonis teaches a roofing system comprising:
a composite roofing membrane comprising:
a roofing membrane 20;
a roofing composite comprising a cap layer 22, and a reinforcing material 12;
an adhesive, fig. 1, positioned between the roofing membrane and the roofing composite, wherein the adhesive comprises a moisture cure adhesive (col. 3, lines48-50), and
wherein the adhesive comprises a silane-terminated polymer, a polymethylmethacrylate or combinations thereof; and
a roofing substrate, fig. 1, wherein the composite roofing membrane is disposed on the roofing substrate.
18. Simonis teaches the roofing system according to claim 17, Simonis further teaching the composite roofing membrane further comprises a coating 14 on a top surface of the roofing membrane, and wherein the coating is an acrylic coating (“polyacrylonate”).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 4, 7-8, 13, and 15-16 - are rejected under 35 U.S.C. 103 as being unpatentable over Simonis.
4 and 15. Simonis does not expressly reach the adhesive has a thickness of 10 mils to 40 mils. It would have been an obvious matter of design choice to modify the Simonis composite roofing membrane to have the adhesive with the thickness as claimed for strength, since such a modification would have involved a mere change in the thickness of the layer of adhesive according to the required structural characteristics of the membrane.
7 and 13. Simonis does not expressly reach the coating has a thickness of 1 mils to 10 mils. It would have been an obvious matter of design choice to modify the Simonis composite roofing membrane to have the coating with the thickness as claimed for strength, since such a modification would have involved a mere change in the thickness of the layer of coating according to the required structural characteristics of the membrane.
8 and 16. Simonis does not expressly reach the roofing composite has a thickness from 10 mils to 40 mils. It would have been an obvious matter of design choice to modify the Simonis composite roofing membrane to have the composite thickness as claimed for strength, since such a modification would have involved a mere change in the thickness of the layer of coating according to the required structural characteristics of the membrane.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J KENNY whose telephone number is (571)272-9951. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL J KENNY/ Examiner, Art Unit 3633
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