DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-20 are pending.
Claim Objections
Claim 19 is objected to because of the following informalities: Claim 19 appears either incomplete or is grammatically incorrect. Appropriate correction is required.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,441,316. Although the claims at issue are not identical, they are not patentably distinct from each other because.
Re claim 1 of the pending application and claim 1 of ‘316, each discloses a roofing system, a roof deck, an underlayment, a roofing material, the underlayment between the roofing material and the roof deck, the underlayment comprising a non-woven layer, a polymer layer, a foil layer and an adhesive layer, the non-woven layer contacts the roofing material, the polymer layer contacts the non-woven layer. Although ‘316 does not explicitly recite that the foil layer is located between the polymer layer and the adhesive layer, and the adhesive layer is between the foil layer and the roof deck, the claimed relative positions in ‘316 results in the same locations claimed in the pending application, thus providing the same scope.
Re claim 3 of the pending application and claim 7 of ‘316, each discloses the non-woven layer comprises polymer fibers, natural fibers, glass fibers, or any combination thereof.
Re claim 8 of the pending application and claim 1 of ‘316, each discloses asphaltic adhesive or butyl adhesive.
Re claim 10 of the pending application and claim 4 of ‘316, each discloses the roofing material comprises a shingle, a waterproofing membrane, or a tile.
Re claim 16 of the pending application and claim 1 of ‘316, each discloses a reinforcement layer.
Re claim 20 of the pending application and claim 1 of ‘316, each discloses a roofing system, a roof deck, an underlayment, a roofing material, the underlayment between the roofing material and the roof deck, the underlayment comprising a non-woven layer, a polymer layer, a foil layer and an adhesive layer, the non-woven layer contacts the roofing material, the polymer layer contacts the non-woven layer. Although ‘316 does not explicitly recite that the foil layer is located between the polymer layer and the adhesive layer, and the adhesive layer is between the foil layer and the roof deck, the claimed relative positions in ‘316 results in the same locations claimed in the pending application, thus providing the same scope.
However, ‘316 fails to disclose installation in a method.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of ‘316 to be used in a method such as by obtaining and installing in order to provide a final assembled product, as is the normal and logical manner of assembly.
Claim(s) 2, 4-7, 9, 11-15, 17-19 are rejected as being dependent on a rejected claim.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,252,883. Although the claims at issue are not identical, they are not patentably distinct from each other because.
Re claim 1 of the pending application and claim 1 of ‘883, each discloses a roofing system, a roof deck, an underlayment, a roofing material, the underlayment between the roofing material and the roof deck, the underlayment comprising a non-woven layer, a polymer layer, a foil layer and an adhesive layer, the non-woven layer contacts the roofing material, the polymer layer contacts the non-woven layer. Although ‘883 does not explicitly recite that the foil layer is located between the polymer layer and the adhesive layer, and the adhesive layer is between the foil layer and the roof deck, the claimed relative positions in ‘883 results in the same locations claimed in the pending application, thus providing the same scope.
Re claim 3 of the pending application and claim 6 of ‘883, each discloses the non-woven layer comprises polymer fibers, natural fibers, glass fibers, or any combination thereof.
Re claim 8 of the pending application and claim 1 of ‘883, each discloses asphaltic adhesive or butyl adhesive.
Re claim 10 of the pending application and claim 4 of ‘316, each discloses the roofing material comprises a shingle, a waterproofing membrane, or a tile.
Re claim 15 of the pending application and claims 8-9 of ‘316, each discloses adhesive layers as breathable.
Re claim 16 of the pending application and claim 2 of ‘316, each discloses a reinforcement layer.
Re claim 18 of the pending application and claim 3 of ‘316, each discloses a scrim layer.
Re claim 20 of the pending application and claim 1 of ‘883, each discloses a roofing system, a roof deck, an underlayment, a roofing material, the underlayment between the roofing material and the roof deck, the underlayment comprising a non-woven layer, a polymer layer, a foil layer and an adhesive layer, the non-woven layer contacts the roofing material, the polymer layer contacts the non-woven layer. Although ‘883 does not explicitly recite that the foil layer is located between the polymer layer and the adhesive layer, and the adhesive layer is between the foil layer and the roof deck, the claimed relative positions in ‘883 results in the same locations claimed in the pending application, thus providing the same scope.
However, ‘883 fails to disclose installation in a method.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of ‘883 to be used in a method such as by obtaining and installing in order to provide a final assembled product, as is the normal and logical manner of assembly.
Claim(s) 2, 4-7, 9, 11-14, 17 and 19 are rejected as being dependent on a rejected claim.
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) 1-3, 6-7, 9-13, 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harkness (US 4,755,409) in view of Zhou et al (“Zhou”) (US 2015/0197884).
Re claim 1, Harkness discloses a roofing system (Fig. 1) comprising:
an underlayment (Fig. 1);
wherein the underlayment (Fig. 1) comprises:
a non-woven layer (12);
a polymer layer (10; 10 is bitumen which is a polymer; see Col 2 lines 45-50);
a foil layer (2; Col 4 lines 20-22); and
an adhesive layer (4),
wherein the non-woven layer (12) contacts the roofing material (as modified below, because 12 is on top);
wherein the polymer layer (10) contacts (Fig 1) the non-woven layer (12);
wherein the foil layer (2) is located between (Fig. 1) the polymer layer (10) and the adhesive layer (4);
wherein the adhesive layer (4) is located between (Fig. 1) the foil layer (2) and the roof deck (as modified below, as a roof deck is disposed on the bottom of 14),
but fails to disclose a roof deck, a roofing material, and the underlayment disposed between the roofing material and the roof deck.
However, Zhou discloses a roof deck (52), a roofing material ([0003], [0092]), and the underlayment ([0002], [0092]) disposed between the roofing material ([0003], [0092]) and the deck (52).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Harkness with a roof deck, a roofing material, and the underlayment disposed between the roofing material and the deck as disclosed by Zhou in order to provide a finished, protective roof, in manner that provides water, moisture, thermal and first resistance ([0003]).
Re claim 2, Harkness as modified discloses the roofing system of claim 1, wherein the non-woven layer (12) directly contacts (as modified below, because 12 is on top) the roofing material (Zhou: [0003], [0092]).
Re claim 3, Harkness as modified discloses the roofing system of claim 1, wherein the non-woven layer (12) comprises at least one of polymer fibers, natural fibers, glass fibers, or any combination thereof (Col 3 lines 34-50).
Re claim 6, Harkness as modified discloses the roofing system of claim 1, wherein the foil layer (2) comprises at least one of aluminum, copper, tin, zinc, bronze, steel, silver, gold, platinum, or any combination thereof (Col 4 lines 20-23 disclosing copper and aluminum).
Re claim 7, Harkness as modified discloses the roofing system of claim 1, but fails to disclose wherein the foil layer has a thickness of 1 μm to 100 μm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Harkness wherein the foil layer has a thickness of 1 μm to 100 μm in order to ensure sufficient thickness for desirable properties thereof while not overdesigning and wasting material and/or material costs. In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 9, Harkness as modified discloses the roofing system of claim 1, but fails to disclose wherein the adhesive layer has a thickness of 1 mil to 100 mils.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Harkness wherein the adhesive layer has a thickness of 1 mil to 100 mils in order to ensure sufficient thickness for desirable properties thereof while not overdesigning and wasting material and/or material costs. In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 10, Harkness as modified discloses the roofing system of claim 1, Zhou discloses wherein the roofing material ([0003]) comprises a shingle ([0003]), a waterproofing membrane, or a tile, or any combination thereof.
Re claim 11, Harkness as modified discloses the roofing system of claim 1, wherein the non-woven layer (12) directly contacts (Fig. 1) the polymer layer (10).
Re claim 12, Harkness as modified discloses the roofing system of claim 1, but fails to disclose wherein the polymer layer directly contacts the foil layer.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Harkness wherein the polymer layer directly contacts the foil layer in order to reduce material costs by eliminating the need for additional adhesive layer 6. It has been held that rearrangement of parts is considered within the level of ordinary skill in the art. In re Japikse, 181 F.2d 1019.
Re claim 13, Harkness as modified discloses the roofing system of claim 1, wherein the foil layer (2) directly contacts (Fig. 1) the adhesive layer (4).
Re claim 16, Harkness as modified discloses the roofing system of claim 1, but fails to disclose wherein the underlayment comprises a reinforcement layer.
However, Zhou discloses wherein the underlayment comprises a reinforcement layer (15).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Harkness with a reinforcement layer as disclosed by Zhou in order to increase strength and rigidity of the system.
Re claim 17, Harkness as modified discloses the roofing system of claim 16, but fails to disclose wherein the reinforcement layer is located between the foil layer and the adhesive layer.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to the roofing system Harkness wherein the reinforcement layer is located between the foil layer and the adhesive layer in order to sandwich the reinforcement layer therebetween, protecting the reinforcement layer and additional layers. It has been held that rearrangement of parts is considered within the level of ordinary skill in the art. In re Japikse, 181 F.2d 1019.
Re claim 18, Harkness as modified discloses the roofing system of claim 1, Zhou discloses wherein the reinforcement layer (15) comprises a scrim ([0081]).
Re claim 19, Harkness as modified discloses the roofing system of claim 16, but fails disclose wherein the reinforcement layer comprises a non-woven.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to the roofing system Harkness wherein the reinforcement layer comprises a non-woven (instead of fabric) in order to increase strength through use of additional, continuous, planar material.
Re claim 20, Harkness discloses a method of installation (Col 1 line 60-Col 2 line 2) comprising:
obtaining (Fig. 1 showing the underlayment obtained) an underlayment (Fig. 1);
wherein the underlayment (Fig. 1) comprises:
a non-woven layer (12);
a polymer layer (10; 10 is bitumen which is a polymer; see Col 2 lines 45-50);
a foil layer (2; Col 4 lines 20-22); and
an adhesive layer (4),
wherein the polymer layer (10) contacts (Fig 1) the non-woven layer (12);
wherein the foil layer (2) is located between (Fig. 1) the polymer layer (10) and the adhesive layer (4);
wherein the adhesive layer (4) of the underlayment (Fig. 1) is located between (Fig. 1) the foil layer (2) of the underlayment (Fig. 1) and the roof deck (as modified below, as a roof deck is disposed on the bottom of 14);
wherein the roofing material contacts (as modified below, because 12 is on top) the non-woven layer of the underlayment (Fig. 1).
but fails to disclose obtaining a roofing material, installing the underlayment on a roof deck, and installing the roofing material on the underlayment.
However, Zhou discloses obtaining ([0003], [0092] disclosing material obtained) a roofing material ([0003], [0092]), installing ([0002], [0092]) the underlayment ([0002], [0092]) on a roof deck (52), and installing ([0002], [0092]) the roofing material ([0002], [0092]) on the underlayment ([0002], [0092]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Harkness with obtaining a roofing material, installing the underlayment on a roof deck, and installing the roofing material on the underlayment as disclosed by Zhou in order to provide a finished, protective roof, in manner that provides water, moisture, thermal and first resistance ([0003]).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harkness (US 4,755,409) in view of Zhou et al (“Zhou”) (US 2015/0197884) and Mallick et al (“Mallick”) (US 2019/0292789).
Re claim 4, Harkness as modified discloses the roofing system of claim 1, but fails to disclose wherein the non-woven layer is configured to be at least one of UV resistant, IR reflective, or any combination thereof.
However, Mallick discloses wherein the non-woven layer (105) is configured to be at least one of UV resistant ([0025]), IR reflective, or any combination thereof.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Harkness wherein the non-woven layer is configured to be at least one of UV resistant, IR reflective, or any combination thereof as disclosed by Mallick in order to resist deterioration, which improves the useful life of the underlayment ([0025]).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harkness (US 4,755,409) in view of Zhou et al (“Zhou”) (US 2015/0197884) and Fensel et al (“Fensel”) (US 2002/0081924).
Re claim 5, Harkness as modified discloses the roofing system of claim 1, but fails to disclose wherein the polymer layer comprises at least one of a UV stabilizer, a thermal stabilizer, a fire retardant, or any combination thereof.
However, Fensel discloses wherein the polymer layer (Harness: 12; bitumen) comprises at least one of a UV stabilizer ([0007]), a thermal stabilizer, a fire retardant, or any combination thereof.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Harkness wherein the polymer layer comprises at least one of a UV stabilizer, a thermal stabilizer, a fire retardant, or any combination thereof as disclosed by Fensel in order to resist deterioration, which improves the useful life of the underlayment.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harkness (US 4,755,409) in view of Zhou et al (“Zhou”) (US 2015/0197884) and Hohmann JR (“Hohmann”) (US 2010/0227103).
Re claim 8, Harkness as modified discloses the roofing system of claim 1, but fails to disclose wherein the adhesive layer comprises at least one of an asphaltic adhesive, a butyl adhesive, or any combination thereof.
However, Hohmann discloses wherein the second layer (26) comprises at least one of an asphaltic adhesive, a butyl adhesive (Claim 5), or any combination thereof.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Harkness wherein the adhesive layer comprises at least one of an asphaltic adhesive, a butyl adhesive, or any combination thereof as disclosed by Hohmann in order to resist rot, crack and drool as is more common in typical roofing adhesives ([0026]).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harkness (US 4,755,409) in view of Zhou et al (“Zhou”) (US 2015/0197884) and Coglianese et al (“Coglianese”) (US 3,726,754)
Re claim 14, Harkness as modified discloses the roofing system of claim 1, but fails to disclose wherein the adhesive layer directly contacts the roof deck.
However, Coglianese discloses wherein the adhesive layer (106) directly contacts (Fig. 2) the roof deck (102).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Harkness wherein the adhesive layer directly contacts the roof deck as disclosed by Coglianese in order to provide additional, uniform, inexpensive securement across the entire bottom surface of the roofing underlayment.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harkness (US 4,755,409) in view of Zhou et al (“Zhou”) (US 2015/0197884), and Bess et al (“Bess”) (US 2015/0024159).
Re claim 15, Harkness as modified discloses the roofing system of claim 1, but fails to disclose wherein at least one of the polymer layer, the foil layer, the adhesive layer, or any combination thereof is breathable.
However, Bess discloses wherein at least one of the polymer layer, the foil layer, the adhesive layer, or any combination thereof is breathable ([0021]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Harkness wherein at least one of the polymer layer, the foil layer, the adhesive layer, or any combination thereof is breathable as disclosed by Bess in order to allow vapor to escape, air to circulate, while maintaining water resistance ([0021]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635
