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 § 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) 1-18, 20-22, 28-30 and 32-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub No. 20200399904 to Vido in view of USPN. 6,610,382 to Kobe.
Regarding Claims 1-19, 20-22, 28-30 and 32-35
Vido teaches a roofing underlayment comprising a reinforcement having a first reinforcement surface and a second reinforcement surface such as a glass matt and a first coating on the first reinforcement surface of thermoplastic material such as polyethylene at a basis weight of between 10 and 120 grams per square meter, which overlaps the claimed range of between 50 and 195 grams per square meter (Id., abstract, paragraph [0016], [0029], [0022]). Vido teaches that the composite may comprise a second coating and/or an adhesive coating and optional release liner on the second reinforcement surface, an asphalt adhesive coating would necessarily at least partially impregnate the nonwoven reinforcement layer (Id., paragraph [0036], [0044]).
Kobe teaches a friction control article for wet and dry applications such as for non-slip walking surfaces, deck surfaces, sheet structures, wraps, etc., comprising a coating layer of thermoplastic material such as polypropylene and polyethylene and a plurality of gripping structure formed in the coating (Kobe, abstract, column 1, lines 46-67, column 14, lines 19-67, column 16, lines 39-67, fig. 1). Kobe teaches that the gripping structures are included in a density of more than 54 stems per square centimeter which overlaps the claimed between 50 and 1,000 structures per square centimeter (Id., column 2, lines 4-18). Kobe teaches the stems have a height between 254 and 1,270 micrometers which overlaps the claimed range between 250 and 400 micrometers, a cross-sectional dimension between 76 and 760 micrometers which overlaps the claimed range of between 350 and 550 micrometers, a distance between adjacent gripping structure stems of between 254 micrometers and 2,540 micrometers which overlaps the claimed pitch of between 600 and 1,200 micrometers, and an aspect ratio of greater than 1.25:1 which overlaps the claimed range of between 0.3:1 and 1.5:1 (Id., column 9, lines 10-41). Kobe teaches a contact area of less than 45% which overlaps the claimed range of between 1 and 50% (Id., column 7, line 61- column 8, line 25). Kobe teaches the inclusion of a plurality of secondary gripping structures on the surface of the gripping structures which appear to be within 15% of an average height of the plurality of gripping structures (Id., fig. 2). Kobe teaches a thickness of approximately 254 micrometers which is within the claimed range of between 100 and 1,000 micrometers (Id., example 2). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the composite of Vido and to utilize as the coating layer, a coating comprising gripping elements of Kobe, motivated by the desire to form a conventional composite comprising improved gripping properties to increase safety and convenience (Id.).
Kobe teaches a Shore hardness of less than about 70D, more preferably less than about 90A (Kobe, column 8, lines 57-67). Although the two scales are not necessarily perfectly convertible, a hardness of about 70D is harder than a material having a Shore A hardness of greater than 90 (as exemplified by Estane 58091) and therefore would overlap the claimed limitation of a Shore A hardness greater than 90. Furthermore, Kove teaches that the more preferred range includes less than about 90, which overlaps the claimed range of greater than 90. The range of less than 70D also overlaps the claimed limitation of a shore D hardness of between 40 to 100.
Regarding the retention rate, coefficient of friction in dry conditions, wet conditions and sawdust conditions, although the prior art does not disclose the hardness and coefficient of friction, the claimed properties are deemed to naturally flow from the structure in the prior art since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding Claim 22
Regarding the length and width of the underlayment, these dimensions would be design choices based on the intended specific application and packaging/transport requirements. Alternatively, it should be noted that the length and width of the underlayment are result effective variables. As the dimensional size increases, the material covers a greater surface area at the expense of bulk and weight. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to optimize the length and width since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the length and width in order to balance both surface area coverage and ease of transport, storage and handling due to weight and bulk.
Claim(s) 36-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vido in view of Kobe as applied to claims 1-18, 20-22, 28-30 and 32-35 above, and further in view of CA-2832272 to Milne.
Regarding Claims 36-38
Although the prior art combination teaches that the material may comprise up to a Shore D hardness of 70 which provides a harder material than a Shore A of 90, the prior art combination does not specifically teach a range of Shore A between 95 and 100. However, Milne teaches a roofing underlayment having a plurality of protrusions on the surface thereof, wherein the protrusions preferably having a Shore A hardness between 91 and 100, which overlaps the claimed range of between 95 and 100, in order for the protrusions to resist compression during installation and to be sufficiently flexible to resist cracking in roll form prior to installation (Milne, abstract, page 7, page 10). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the roofing underlayment of the prior art combination having a shore A hardness within the claimed range as taught by Milne, motivated by the desire to form a conventional roofing underlayment which resists compression and deformation during installation while still being sufficiently flexible.
Response to Arguments
Applicant's arguments filed July 9, 2026 have been fully considered but they are not persuasive. Applicant argues that Kobe teaches away from a Shore A hardness greater than 90 since the bending of the stems contributes to their gripping performance. Examiner respectfully disagrees. As set forth above a Shore A hardness less than 90 is a narrower embodiment from the general teaching of Kobe, which states that a Shore D hardness less than 70 is appropriate for the invention. Thus, a much harder material than would measure above 90 on a Shore A scale is contemplated as being sufficient for the invention. In fact, the exemplary embodiment of a Shore D of 50 would also still correspond roughly to a Shore A of greater than 90. Furthermore, as set forth above the range of less than about 90 overlaps the claimed range of greater than 90.
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 VINCENT A TATESURE whose telephone number is (571)272-5198. The examiner can normally be reached Monday-Friday 7:30AM-4PM EST.
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/VINCENT TATESURE/Primary Examiner, Art Unit 1786
