DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of claims 1-14 in the reply filed on 5-04-2026 is acknowledged.
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.
Claims 9 and 11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claim 9 states that the clearance is “sufficient to allow a clearance fit for a portion of a fastener,” but it is unclear what clearance distance would meet this limitation because the nature or size of the hypothetical “portion of a fastener” is not specified.
Claim 11 recites “one or more layers” and states that the protrusions are positioned between “adjacent ones of the one or more layers.” It is unclear what structure this is intended to convey. It is also unclear how the protrusions could be disposed between adjacent layers if only one layer is present.
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.
Claims 1-9 and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pollard, US 6865858 B1.
Regarding claim 1, Pollard teaches a substrate (10 of Fig. 3 and 4) comprising a polymer substrate (12 of Fig. 3 and 4, col. 3 ln. 53-59), an adhesive backing on a first side of the substrate to facilitate attachment of the substrate to a building structure (col. 4 ln. 7-11), and protrusions extending from the second side of the substrate (20 of Fig. 6-8).
Regarding claims 2-4 and 12, Pollard teaches that the protrusions may form channels or ridges extending between opposing edges of the substrate (Fig. 3, 6-8, col. 4 ln. 55 – col. 5 ln. 20).
Regarding claim 5, the first and second side of the substrate of Pollard are parallel (Fig. 6-8).
Regarding claim 6, Pollard teaches that the second side of the substrate may be contoured relative to the first side (Fig. 8).
Regarding claim 7, Pollard depicts protrusion patterns in which portions of the substrate proximate the opposing edges have a lower thickness than portions that are spaced apart from the opposing edged (Fig. 3-4, 6).
Regarding claim 8, Pollard teaches that the protrusions extend about the polymeric substrate by a predetermined distance (Fig. 8). Note that is it is unclear how a distance that was “predetermined” would materially differ from a distance that was not predetermined.
Regarding claim 9, as discussed above, it is unclear what clearance distance Applicant intends to claim. There is, however, no apparent reason why the clearance in the product of Pollard would be inadequate to allow a portion of a fastener to fit.
Regarding claim 13, Pollard teaches that the protrusions may be located in the central portion and that the edges may be free of protrusions (Fig. 8).
Regarding claim 14, Pollard teaches that the edge portions of the substrate may be foldable relative to the center portion, the center portion being configured to adhered to a second surface of the building structure (Fig. 1, 3).
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.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Pollard, US 6865858 B1, as applied above.
Regarding claim 10, Pollard teaches the substrate as discussed above. The teachings of Pollard differ from the present invention in that Pollard does not teach that the protrusions are formed separate from the substrate and extend through the substrate. To the extent that the claim addresses the manner which the product is formed, the claim is a product-by-process claim. Note that product-by-process claims are not limited to the recited method steps, and are instead limited only to the structure implied by the recited steps. As there is no apparent reason why the recited method of forming the protrusions would result in a product that materially differed from a product with similar protrusions that were formed according to any other method, the limitations cannot distinguish the claimed invention.
Regarding claim 11, as discussed above, it is unclear what structure Applicant intends to claim. Pollard does, however, teach a stack of multiple layers of substrate with protrusions between the layers (Fig. 11).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ian A Rummel whose telephone number is (571)270-5692. The examiner can normally be reached Monday - Thursday and alternating Fridays, 8:30-5:00.
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IAN A. RUMMEL
Examiner
Art Unit 1785
/IAN A RUMMEL/ Primary Examiner, Art Unit 1785
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