DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group II, claims 7-19, in the reply filed on 12/31/2025 is acknowledged.
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) or 35 U.S.C. U.S.C. 120, 121, 365(c), or 386(c) 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.(s) 13/789,413 and 61/755,666, from which the instant application is a continuation-in-part (CIP) 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, e.g. in claim 7 at least for the limitations “where the membrane composite is in the form of a roll”, “unrolling the membrane composite over a first portion of a roof surface”, similarly the roll and unrolling limitations regarding the additional membrane composite, and “the lap edge of the additional membrane composite overlaps the membrane composite; and (v) seaming the additional membrane composite to the membrane composite along the lap edge”. Further, the disclosure of the prior filed application, Application No.(s) 61/755,666, 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, e.g. in addition to that above further in claim 7 at least for the limitation “a fabric adhesively attached to at least a portion of the second planar surface of the roofing membrane” of the membrane composite and similarly the fabric adhesively attached limitation regarding the additional membrane composite. Thus, claims 7-19 appear to have priority only to Application No.(s) 17/505,030, 16/665,765, 15/354,009, 14/162,273 and 61/856,258 so that the priority filing date/effective filing date of claims 7-19 appears to be 7/19/2013.
The instant application, which has a filing date on or after March 16, 2013, is considered a transition application because the application claims domestic benefit of Application No.(s) 13/789,413 and 61/755,666, which have a filing date prior to March 16, 2013. Although the instant application does not contain a 37 CFR 1.55/1.78 statement indicating that this application should be examined under the AIA (First Inventor to File), a review of the disclosures of both the instant application and the parent applications, by the examiner, reveals that at least one claim presented or that has ever been presented in the instant application appears to be drawn to an invention having an effective filing date on or after March 16, 2013 as the claim(s) fail to have support in the earlier-filed applications (see above). Accordingly, this application is being examined under the AIA (First Inventor to File) statutory framework. Therefore, all forthcoming Office actions on the merits will be labeled “AIA (First Inventor to File) Status: Yes” (see upper right box on form PTOL-37/37D and/or PTOL-326/326AE).
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 .
Specification
The disclosure is objected to because of the following informalities: paragraph [0001] should be updated with the U.S. Patent No. 12,247,399 for U.S. Application No. 17/505,030.
Appropriate correction is required.
Claim Objections
Claims 8-17 are objected to because of the following informalities: in claim 8, line 22 delete “seeming” and insert therein - - seaming - - for form. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 recites the limitation “the first planar surface of the fabric” in line 6. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the first planar surface of the fabric” and insert therein - - a first planar surface of the fabric - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 7 recites the limitation “the first planar surface of the fabric” in line 17. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the first planar surface of the fabric” and insert therein - - a first planar surface of the fabric - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 7 recites the limitation “the lap edge” in line 24. There is insufficient antecedent basis for this limitation in the claim. It is suggested to delete “the lap edge” and insert therein - - a lap edge - - to overcome this rejection. This is the interpretation given the limitation for purposes of examination.
Claim 8 recites the limitations “unrolling a first membrane composite over a first portion of a roof surface” and “unrolling a second membrane composite over a second portion of the roof surface”. The limitations are unclear and confusing as to is the “a first membrane composite” the membrane composite of claim 7 or another membrane composite, is the “a first portion of a roof surface” the first portion of the roof surface of claim 7 or another first portion of another roof surface, is the “a second membrane composite” the additional membrane composite of claim 7 or another additional/second membrane composite, and is the “a second portion of the roof surface” the second portion of the roof surface of claim 7 or another second portion of another roof surface? Further, claim 18 recites the limitation “the first membrane composite” in line 2, and claim 19 recites the limitation “the second membrane composite” in line 2. There is insufficient antecedent basis for these limitation in the claims. The limitations “a first membrane composite” and “a second membrane composite” of claim 8 appear to be the membrane composite of claim 7 and the additional membrane composite of claim 7, respectively, including as is expressly set forth in claims 18 and 19 (see above and the lack of antecedent basis) so that the limitation “a first portion of a roof surface” and “a second portion of the roof surface” are similarly considered the first portion of the roof surface of claim 7 and the second portion of the roof surface of claim 7 respectively. It is suggested to delete in claims 8-19 “a first membrane composite” and insert therein “the membrane composite”, to delete “a first portion of a roof surface” and insert therein - - the first portion of the roof surface - -, to delete “a second membrane composite” and insert therein - - the additional membrane composite - -, and to delete “a second portion of the roof surface” and insert therein - - the second portion of the roof surface - - to overcome this rejection. This is the interpretation given the limitations in claims 8-19 for purposes of examination.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9 and 10 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 recites the limitation “the fabric of the first membrane composite is adhesively attached to the membrane of the first membrane composite” however claim 7 recites the limitation the membrane composite includes “a fabric adhesively attached to at least a portion of the second planar surface of the roofing membrane” (wherein as noted above the first membrane composite is considered the membrane composite). Claim 10 recites the limitation “the fabric of the second membrane composite is adhesively attached to the membrane of the second membrane composite” however claim 7 recites the limitation the additional membrane composite includes “a fabric adhesively attached to at least a portion of the second planar surface of the roofing membrane” (wherein as noted above the second membrane composite is considered the additional membrane composite). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 7-19 are rejected under 35 U.S.C. 103 as being unpatentable over Delaney et al. (U.S. Patent Application Publication 2012/0045623) in view of LaVietes et al. (U.S. Patent Application Publication 2011/0011021).
Regarding claim 7, Delaney discloses a method of forming a roof system, the method comprising: (i) providing a membrane composite (18) that includes a roofing membrane (16) having first and second planar surfaces, and a fabric (14) adhesively attached to at least a portion of the second planar surface of the roofing membrane, where the fabric includes first and second surfaces, where a first planar surface of the fabric is adhesively attached to the second planar surface of the membrane, where the fabric includes a coating layer disposed thereon, where the membrane composite is in the form of a roll (Figure 2); (ii) unrolling the membrane composite over a first portion of a roof surface (12) and attaching the membrane composite to the first portion of the roof surface; (iii) providing an additional membrane composite (i.e. membrane composite 18 is a first membrane composite and is attached to adjacent/additional/second membrane composites 18’ to form lap seams therebetween see Paragraph 0034 and Figure 4) that includes a roofing membrane (16’) having first and second planar surfaces; and a fabric (14’) adhesively attached to at least a portion of the second planar surface of the roofing membrane, where the fabric includes first and second surfaces, where a first planar surface of the fabric is adhesively attached to the second planar surface of the membrane, wherein the fabric includes a coating layer disposed thereon, where the additional membrane composite is in the form of a roll; (iv) unrolling the additional membrane composite over a second portion of the roof surface (12) and adjacent to the first portion of the roof surface upon which the membrane composite is attached so that a lap edge (24) of the additional membrane composite overlaps the membrane composite (Figure 4); and (v) seaming the additional membrane composite to the membrane composite along the lap edge (Figures 1, 2, and 4 and Paragraphs 0014, 0015, 0018, 0019, 0022, 0026-0029, and 0032-0036).
As to the limitations in claim 7 of in (i) “where the fabric includes expandable graphite disposed thereon, and wherein the expandable graphite is dispersed within a binder” and of in (iii) of “where the fabric includes expandable graphite disposed thereon, and wherein the expandable graphite is dispersed within a binder” and claims 18 and 19, Delaney teaches the fabrics include a fabric substrate and a coating layer disposed on one of the sides of the fabric substrate or both, the coating layer comprising a polymer binder and any known fillers (Paragraphs 0027-0029). Delaney is not limited to any particular fillers dispersed within the binder wherein expandable graphite is well understood as dispersed within the binder of similar coating layer as is particularly useful in providing a fire barrier as evidenced by LaVietes (Paragraph 0026). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include dispersed within the binder of the coating layer of the fabric of each of the membrane composite and the additional membrane composite(s) taught by Delaney expandable graphite (i.e. where the fabric includes expandable graphite disposed thereon, and wherein the expandable graphite is dispersed within a binder and regarding claim 18 the expandable graphite is dispersed in a binder that is disposed on the fabric of the first membrane composite/membrane composite (see the 35 U.S.C. 112(b) rejection above) and regarding claim 19 the expandable graphite is dispersed in a binder that is disposed on the fabric of the second membrane composite/additional membrane composite (see the 35 U.S.C. 112(b) rejection above)) not only as a simple substitution of one known filler to obtain predictable results but as is particularly useful as a fire barrier as evidenced by LaVietes.
Regarding claim 8, Delany as modified by LaVietes further teaches (i) unrolling a first membrane composite/the membrane composite (see the 35 U.S.C. 112(b) rejection above) over a first portion of a roof surface/the first portion of the roof surface (see the 35 U.S.C. 112(b) rejection above), wherein the first membrane composite/membrane composite includes a roofing membrane (16) having first and second planar surfaces and a fabric (14) attached to a portion of the second planar surface of the roofing membrane, where the fabric includes expandable graphite disposed thereon, and where the fabric is attached to a portion of the second planar surface of the membrane to thereby provide an exposed membrane surface along a lap edge (24) of the second planar surface of the roofing membrane; (ii) unrolling a second membrane composite/additional membrane composite (see the 35 U.S.C. 112(b) rejection above) over a second portion of the roof surface/the second portion of the roof surface (see the 35 U.S.C. 112(b) rejection above), where the second membrane composite/additional membrane composite includes a roofing membrane (16’) having first and second planar surfaces and a fabric (14’) attached to a portion of the second planar surface of the roofing membrane, where the fabric includes expandable graphite disposed thereon, and where the fabric is attached to a portion of the second planar surface of the membrane to thereby provide an exposed membrane surface along a lap edge (24) of the second planar surface of the roofing membrane; (iii) positioning the second membrane composite/additional membrane composite so that the lap edge of the roofing membrane of the second membrane composite/additional membrane composite overlaps a portion of the roofing membrane of the first membrane composite/membrane composite to thereby provide an overlapped portion; and (iv) seaming the second membrane composite/additional membrane composite to the first membrane composite/membrane composite along the overlapped portion (see Figures 2-4).
Regarding claims 9 and 10, Delaney teaches the fabric of the first membrane composite/membrane composite is adhesively attached to the membrane of the first membrane composite/membrane composite, and the fabric of the second membrane composite/additional membrane composite is adhesively attached to the membrane of the second membrane composite/additional membrane composite (Paragraph 0032).
Regarding claims 11 and 12, Delaney teaches the fabric of the first membrane composite/membrane composite is welded to the membrane of the first membrane composite/membrane composite, and the fabric of the second membrane composite/additional membrane composite is welded to the membrane of the second membrane composite/additional membrane composite (see Figures 2-4 and Paragraph 0032 of Delaney wherein “adhesively attached” as in claim 7 and “welded” as in claims 11 and 12 are interpreted as adhesively united closely or intimately).
Regarding claim 13, Delaney teaches the roof surface is wood (Paragraph 0015).
Regarding claim 14, Delaney teaches the fabric of the first membrane composite/membrane composite is a woven considered a fleece (Paragraph 0026).
Regarding claim 15, Delaney teaches the fabric of the first membrane composite/membrane composite is a glass mat (Paragraph 0026).
Regarding claim 16, Delaney teaches the fabric of the second membrane composite/additional membrane composite is a woven considered a fleece (Paragraph 0026).
Regarding claim 17, Delaney teaches the fabric of the second membrane composite/additional membrane composite is a glass mat (Paragraph 0026).
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Delaney and LaVietes as applied to claims 7-19 above, and further in view of Hubbard (U.S. Patent Application Publication 2007/0187017).
Delaney and LaVietes are each described above in full detail.
Regarding claims 14 and 16, as noted above, Delaney teaches the fabric is a woven considered a fleece. In the event it is considered a woven is not necessarily a fleece the following rejection is made. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the fabric (fabric substrate) taught by Delaney as modified by LaVietes is a fleece as a simple substitution of one known fabric for another to achieve predictable results as evidenced by Hubbard (Paragraph 0047).
Claims 7-19 are rejected under 35 U.S.C. 103 as being unpatentable over LaVietes in view of Delaney or Hubbard.
Regarding claim 7, LaVietes discloses a method of forming a roofing system, the method comprising: providing a membrane composite that includes a roofing membrane (330) having first and second surfaces; and a fabric (320), where the fabric includes first and second surfaces, where the fabric includes a fabric substrate (110) and a coating layer (120) disposed thereon, the coating layer including expandable graphite dispersed within a binder; and unrolling the fabric over a portion of a roof surface (310) and attaching the membrane composite to the portion of the roof surface (Figures 1 and 3 and Paragraphs 0008, 0009, 0012-0014, 0025-0027, 0030-0036, 0039-0041, and 0044-0046).
As to the limitations in claim 7 of “the method comprising: (i) providing a membrane composite that includes a roofing membrane having first and second planar surfaces; and a fabric adhesively attached to at least a portion of the second planar surface of the roofing membrane”, “where the first planar surface of the fabric is adhesively attached to the second planar surface of the membrane”, and “where the membrane composite is in the form of a roll; (ii) unrolling the membrane composite over a first portion of a roof surface and attaching the membrane composite to the first portion of the roof surface; (iii) providing an additional membrane composite that includes a roofing membrane having first and second planar surfaces; and a fabric adhesively attached to at least a portion of the second planar surface of the roofing membrane, where the fabric includes first and second surfaces, where the first planar surface of the fabric is adhesively attached to the second planar surface of the membrane, where the fabric includes expandable graphite disposed thereon, and where the expandable graphite is dispersed within a binder, where the additional membrane composite is in the form of a roll; (iv) unrolling the additional membrane composite over a second portion of the roof surface and adjacent to the first portion of the roof surface upon which the membrane composite is attached so that the lap edge of the additional membrane composite overlaps the membrane composite; and (v) seaming the additional membrane composite to the membrane composite along the lap edge”, LaVietes does not expressly teach the membrane composite comprises the fabric adhesively attached to at least a portion of the roofing membrane prior to installation on the roof surface and wherein the membrane composite is installed on the roof surface by unrolling the membrane composite as a first membrane composite from a roll over a first portion of the roof surface and providing an additional membrane composite as a second membrane composite same as the first, unrolling the additional membrane composite over a second portion of the roof surface from a roll and adjacent to the first portion of the roof surface upon which the membrane composite is attached so that a lap edge of the additional membrane composite overlaps the membrane composite, and seaming the additional membrane composite to the membrane composite along the lap edge. LaVietes does not teach away from attaching the roofing membrane and fabric prior to installation. LaVietes does not teach away from any particular installation method to form the roof system. It is known in the same art of forming the roof system as taught by Delaney described above in full detail and the same at taught by Hubbard (Figures 1 and 2 and Paragraphs 0007, 0019, 0025, 0027-0029, 0036, 0037, 0047, and 0049) the roofing membrane is attached to the fabric prior to positioning the membrane composite on the roof surface so that the roofing membrane and fabric are simultaneously positioned on the roof surface thereby eliminating a step required by conventional installation methods and installation comprises a first membrane composite and additional/second membrane composite(s) having covered/sealed seams to form a roof system of size greater than a single membrane composite by (i) providing a membrane composite that includes a roofing membrane (16 of Delaney and 252/114 of Hubbard) having first and second planar surfaces; and a fabric (14 of Delaney and 250 and 248/116 and 118 of Hubbard) adhesively attached (see Paragraph 0032 of Delaney and Paragraphs 0036, 0045, and 0047 of Hubbard wherein Hubbard teaches adhering using conventional methods wherein the only adhering methods disclosed in Hubbard comprise adhesively attaching and optionally further in view of LaVietes see Paragraph 0046 wherein conventional method to adhere thermoplastic membrane and fabric backing is adhesive means) to at least a portion of the second planar surface of the roofing membrane in a manner that provides at least one lap edge (32 of Delaney and 122 of Hubbard) where the second planar surface of the roofing membrane is exposed, where the membrane composite is in the form of a roll, (ii) unrolling the membrane composite over a first portion of a roof surface (12 of Delaney and 240 of Hubbard) and attaching the membrane composite to the first portion of the roof surface; (iii) providing an additional membrane composite(s)/second membrane composite(s) the same as the first membrane composite (18’ of Delaney and 212 of Hubbard), where the additional membrane composite is in the form of a roll; (iv) unrolling the additional membrane composite over a second portion of the roof surface and adjacent to the first portion of the roof surface upon which the membrane composite is attached so that the lap edge (32 of Delaney and 222 of Hubbard) of the additional membrane composite overlaps the membrane composite; and (v) seaming the additional membrane composite to the membrane composite along the lap edge. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the roofing membrane and fabric of the membrane composite taught by LaVietes are adhesively attached and in the form of a roll prior to installation on the roof surface by unrolling and attaching the membrane composite to the roof surface as a first membrane composite along with additional/second membrane composite(s) from a roll using the method taught by Delaney or Hubbard (i.e. the method comprising: (i) providing a membrane composite that includes a roofing membrane having first and second planar surfaces; and a fabric adhesively attached to at least a portion of the second planar surface of the roofing membrane, where a first planar surface of the fabric is adhesively attached to the second planar surface of the membrane, where the membrane composite is in the form of a roll; (ii) unrolling the membrane composite over a first portion of a roof surface and attaching the membrane composite to the first portion of the roof surface; (iii) providing an additional membrane composite that includes a roofing membrane having first and second planar surfaces; and a fabric adhesively attached to at least a portion of the second planar surface of the roofing membrane, where the fabric includes first and second surfaces, where a first planar surface of the fabric is adhesively attached to the second planar surface of the membrane, where the fabric includes expandable graphite disposed thereon, and where the expandable graphite is dispersed within a binder, where the additional membrane composite is in the form of a roll; (iv) unrolling the additional membrane composite over a second portion of the roof surface and adjacent to the first portion of the roof surface upon which the membrane composite is attached so that a lap edge of the additional membrane composite overlaps the membrane composite; and (v) seaming the additional membrane composite to the membrane composite along the lap edge) not only as a simple substitution of one known method to install the membrane composite and predictably form the roof system but wherein only a single step of positioning the membrane composite on the roof surface is required (i.e. so that the roofing membrane and fabric are simultaneously positioned on the roof surface thereby eliminating a step required by conventional installation methods) and the membrane composite is used to cover a roof surface of any size (limited only by the number of additional membrane composites lap seamed to a preceding unrolled membrane composite) having covered/sealed seams.
Regarding claim 8, LaVietes as modified by Delaney or Hubbard further teaches (i) unrolling a first membrane composite/the membrane composite (see the 35 U.S.C. 112(b) rejection above) over a first portion of a roof surface/the first portion of the roof surface (see the 35 U.S.C. 112(b) rejection above), wherein the first membrane composite/membrane composite includes a roofing membrane (330 of LaVietes as 16 of Delaney or 252/114 of 242 of Hubbard) having first and second planar surfaces and a fabric (320 of LaVietes as 14 of Delaney or 250 and 248/116 and 118 of 242 of Hubbard) attached to a portion of the second planar surface of the roofing membrane, where the fabric includes expandable graphite disposed thereon, and where the fabric is attached to a portion of the second planar surface of the membrane to thereby provide an exposed membrane surface along a lap edge (32 of Delaney or 122 of Hubbard) of the second planar surface of the roofing membrane; (ii) unrolling a second membrane composite/additional membrane composite (see the 35 U.S.C. 112(b) rejection above) over a second portion of the roof surface/the second portion of the roof surface (see the 35 U.S.C. 112(b) rejection above), where the second membrane composite/additional membrane composite includes a roofing membrane (330 of LaVietes as 16’ of Delaney or 252/114 of 212 of Hubbard) having first and second planar surfaces and a fabric (320 of LaVietes as 14’ of Delaney or 216 and 218 of 212 of Hubbard) attached to a portion of the second planar surface of the roofing membrane, where the fabric includes expandable graphite disposed thereon, and where the fabric is attached to a portion of the second planar surface of the membrane to thereby provide an exposed membrane surface along a lap edge (32 of Delaney and 122 of Hubbard) of the second planar surface of the roofing membrane; (iii) positioning the second membrane composite/additional membrane composite so that the lap edge of the roofing membrane of the second membrane composite/additional membrane composite overlaps a portion of the roofing membrane of the first membrane composite/membrane composite to thereby provide an overlapped portion; and (iv) seaming the second membrane composite/additional membrane composite to the first membrane composite/membrane composite along the overlapped portion.
Regarding claims 9 and 10, LaVietes as modified by Delaney or Hubbard teaches the fabric of the first membrane composite/membrane composite is adhesively attached to the membrane of the first membrane composite/membrane composite, and the fabric of the second membrane composite/additional membrane composite is adhesively attached to the membrane of the second membrane composite/additional membrane composite.
Regarding claims 11 and 12, LaVietes as modified by Delaney or Hubbard teaches the fabric of the first membrane composite/membrane composite is welded to the membrane of the first membrane composite/membrane composite, and the fabric of the second membrane composite/additional membrane composite is welded to the membrane of the second membrane composite/additional membrane composite (wherein “adhesively attached” as in claim 7 and “welded” as in claims 11 and 12 are interpreted as adhesively united closely or intimately).
Regarding claim 13, LaVietes teaches the roof surface is wood (Paragraph 0040).
Regarding claims 14 and 16, LaVietes as modified by Delaney or Hubbard teaches the fabric of each of the first membrane composite/membrane composite and the second membrane composite/additional membrane composite is a woven considered a fleece (Paragraph 0025 of LaVietes). In the event it is considered a woven is not necessarily a fleece the following rejection is made. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention each fabric (each fabric substrate) taught by LaVietes as modified by Delaney or Hubbard is a fleece as a simple substitution of one known fabric for another to achieve predictable results as evidenced by Hubbard (Paragraph 0047).
Regarding claim 15, LaVietes teaches the fabric of the first membrane composite/membrane composite is a glass mat (Paragraph 0025).
Regarding claim 17, LaVietes as modified by Delaney or Hubbard teach the fabric of the second membrane composite/additional membrane composite is a glass mat (Paragraph 0025).
Regarding claims 18 and 19, LaVietes as modified by Delaney or Hubbard teach the expandable graphite is dispersed in a binder that is disposed on the fabric of the first membrane composite/membrane composite, and the expandable graphite is dispersed in a binder that is disposed on the fabric of the second membrane composite/additional membrane composite (Paragraph 0026 of LaVietes)
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 7-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,168,479 in view of Delaney or LaVietes or Hubbard. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 of U.S. Patent No. 11,168,479 fully encompass claims 7-19 of the instant invention but for a specific teaching the fabric backing of each membrane composite is adhesively attached to the membrane layer/roofing membrane wherein claims 1-13 of U.S. Patent No. 11,168,479 teach attaching by heat welding wherein it is well understood by one ordinary skill in the art to perform the attaching alternatively by adhesive as evidenced by Delaney (Paragraph 0032) or LaVietes (Paragraph 0046) or Hubbard (Paragraphs 0036, 0045, and 0047). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the fabric backing of each membrane taught by claims 1-13 of U.S. Patent No. 11,168,479 is adhesively attached to the membrane layer/roofing membrane as a simple substitution of known attaching technique for another to yield predictable results as evidenced by Delaney or LaVietes or Hubbard.
Conclusion
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746