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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,767,674. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1, 2 and 11-13, claims 1 and 11 of the ‘674 patent claim a system, comprising: a roof deck; a plurality of roofing shingles; and a roofing membrane installed above the roof deck, wherein the roofing membrane comprises: a calendered sheet, a resin lamination layer, and a scrim layer, wherein the calendered sheet comprises a resin; wherein the calendered sheet comprises: a) a plurality of elevated portions of random unbonded fibers, and b) bonded fibers in channels between the plurality of elevated portions; wherein the resin lamination layer is between the calendered sheet and scrim layer and wherein the roofing membrane is between the plurality of roofing shingles and the roof deck. Claims 1 and 11 of the ‘674 patent effectively anticipate the claims.
As to claims 3-5 and 15, claims 2 and 12 of the ‘674 patent claim the same polymers.
As to claims 6-8 and 16, determining the dimensions and spacing as claimed is understood to be a routine expedient in view of the teaching of the ‘674 claims and are rendered prima facie obvious in view of the teaching of the ‘674 claims. One having ordinary skill in the art would have readily determined the spacing necessary to achieve an effective and suitable roofing membrane from the claimed context.
As to claims 9 and 10, the construction of the claimed membrane as set forth in the ‘674 claims is understood to intrinsically or at least implicitly have the recited properties.
As to claim 14, claim the resin lamination layer as set forth in claims 6 and 7 comprises a polymer and as set forth in claim 1 extends from a first end to a second end. As such, it is understood to be waterproof to the required extent.
As to claims 17 and 18, claims 1 and 11 of the ‘674 patent claim the same claimed calendered sheet and claims 7-9 disclose a resin layer/barrier layer as claimed.
As to claim 19, claims 2 and 12 of the ‘674 patent claim the same polymers.
As to claim 20, determining the dimensions and spacing as claimed is understood to be a routine expedient in view of the teaching of the ‘674 claims and are rendered prima facie obvious in view of the teaching of the ‘674 claims. One having ordinary skill in the art would have readily determined the spacing necessary to achieve an effective and suitable roofing membrane from the claimed context.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,927,015. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1 and 17, claim 1 of the ‘015 patent claims a system, comprising: a roof deck; a plurality of roofing shingles; and a roofing membrane installed above the roof deck, wherein the roofing membrane comprises: a calendered sheet; wherein the calendered sheet comprises a resin; wherein the calendered sheet comprises: a) a plurality of elevated portions of random unbonded fibers, and b) bonded fibers in channels between the plurality of elevated portions; wherein the roofing membrane is between the plurality of roofing shingles and the roof deck. Claim 1 of the ‘015 patent also claims a reinforcing layer and a barrier layer.
As to claims 2-5 and 19, claims 2 and 3 of the ‘015 patent claim a polymer as claimed.
As to claims 6-8 and 20, determining the dimensions and spacing as claimed is understood to be a routine expedient in view of the teaching of the ‘015 claims and are rendered prima facie obvious in view of the teaching of the ‘015 claims. One having ordinary skill in the art would have readily determined the spacing necessary to achieve an effective and suitable roofing membrane from the claimed context.
As to claims 9 and 10, the construction of the claimed membrane as set forth in the ‘015 claims is understood to intrinsically or at least implicitly have the recited properties.
As to claims 11 and 13, claim 1 of the ‘015 patent claims a system, comprising: a roof deck; a plurality of roofing shingles; and a roofing membrane installed above the roof deck, wherein the roofing membrane comprises: a calendered sheet; wherein the calendered sheet comprises a resin; wherein the calendered sheet comprises: a) a plurality of elevated portions of random unbonded fibers, and b) bonded fibers in channels between the plurality of elevated portions; wherein the roofing membrane is between the plurality of roofing shingles and the roof deck. Claim 1 of the ‘015 patent also claims a reinforcing layer and a barrier layer. The barrier layer or the reinforcing layer of the ‘015 claims reasonably reads upon the claimed lamination layer absent further specificity.
As to claim 15, claims 2 and 3 of the ‘015 patent claim a polymer as claimed.
As to claims 12, 14, and 18, the claimed layers (e.g. reinforcing layer) as set forth in the claims of the ‘015 patent are understood to render the claimed limitations prima facie obvious. One having ordinary skill in the art would have found it prima facie obvious to utilize additional waterproof layers or scrim layers to provide additional strength and functionality to the system.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,286,790. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 1 of the ‘790 patent claims a system, comprising: a roof deck; a plurality of roofing shingles; and a roofing membrane installed above the roof deck, wherein the roofing membrane comprises: a calendered sheet; wherein the calendered sheet comprises a resin; wherein the calendered sheet comprises: a) a plurality of elevated portions of random unbonded fibers, and b) bonded fibers in channels between the plurality of elevated portions; wherein the roofing membrane is between the plurality of roofing shingles and the roof deck.
As to claims 2-5, claims 2 and 3 of the ‘790 patent claim the same claimed polymers.
As to claims 6 and 7, claims 4 and 5 of the ‘790 patent claim the same claimed widths.
As to claim 8, determining the dimensions and spacing as claimed is understood to be a routine expedient in view of the teaching of the ‘674 claims and are rendered prima facie obvious in view of the teaching of the ‘674 claims. One having ordinary skill in the art would have readily determined the spacing necessary to achieve an effective and suitable roofing membrane from the claimed context.
As to claims 9 and 10, the construction of the claimed membrane as set forth in the ‘790 claims is understood to intrinsically or at least implicitly have the recited properties.
As to claims 11-20, claim 1 of the ‘790 patent doesn’t claim the additional layers of materials as set forth in the claims. However, one having ordinary skill in the art would have found it prima facie obvious to have included additional and conventional layers of material to the claimed system of the ‘790 claims in order to provide additional strength and functionality to the system in a conventional manner. Further, as to claims 15 and 19, claims 2 and 3 of the ‘790 patent claim the same polymers. As to claims 16 and 20, claim 5 of the ‘790 patent claims the same channel width.
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.
Claim 8 is 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.
As to claim 8, the claim recites ‘the plurality of elevated positions”. The recitation lacks antecedent basis. It is not clear whether “elevated positions” is intended to be - - elevated portions - -, as set forth in claim 1, or whether something else is intended. Appropriate correction and clarification are required.
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.
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 1-3, 6, 7, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over McCormack et al. (US 5,964,742) alone or as evidenced by or further in view of Stokes et al. (US 5,858,515).
Regarding claims 1 and 2, McCormack et al. teach a protective covering/ awning/canopy/outdoor fabric (col. 1, lines 8-11; col. 5, lines 25-37), all of which are understood to disclose the same claimed and disclosed “membrane” structure, wherein the “membrane is a roofing underlayment” under a reasonable interpretation, comprising a calendered sheet; wherein the calendered sheet comprises a polymer resin; wherein the calendered sheet comprises: a) a plurality of elevated portions of random unbonded fibers, and b) bonded fibers in channels between the plurality of elevated portions (Abstract; col. 4, lines 17-51; col. 10, lines 13-67; Figures 1 and 4; by the disclosed method of forming the bonds in the fabric (e.g. using the same method of producing the configuration shown in Figure 4 and as is sufficiently described to one having ordinary skill in the art at col. 4, lines 17-51 and as further described in 08/754,419 – now US 5,858,515), the unbonded fibers of the configuration shown in Figure 1, for example, includes elevated unbonded fibers/fibers free for use and bonded fibers in channels between elevated unbonded portions).
As set forth above, McCormack et al. is understood to make it sufficiently clear that the unbonded fibers include a plurality of elevated portions. As such, McCormack et al. is understood to anticipate the claims. However, Stokes et al. (which is the patent that issued from application 08/754,419 referenced in McCormack et al.) further provide additional evidence and describe and disclose that the unbonded fibers form a plurality of elevated portions (Figures 1 and 2 (6) (8); Figures 4 and 5). As such, Stokes et al., in one understanding, provide additional evidence to further support the conclusion that McCormack et al. anticipate the claimed invention. Alternatively, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the unbonded fibers as elevated portions in the article of McCormack et al., as suggested by both McCormack et al. and Stokes et al., for the purpose, as suggested by the references, of forming a pattern/point unbonded fabric that has free fibers capable of being used/engaged in a desired application.
The recitation that “the membrane is a roofing underlayment” is a recitation of purpose or intended use for the product. The structure required for something to be “a roofing underlayment” in the context of the claim and the instant application is understood to be that which includes the positively recited calendered sheet structure. The recitation as claimed and disclosed is not understood to require any further structure beyond that which is positively recited. As such, a calendered sheet that reads upon the claimed structure is understood to be “a roofing underlayment” to the extent required by the claim under a reasonable interpretation in light of the specification. Further, to the extent “a roofing underlayment” may be arguably understood to add some additional structural requirements, a calendered sheet having the claimed structure is understood to read upon the claimed roofing underlayment if the calendered sheet is broadly and reasonably understood to be capable of being utilized as a membrane/layer/underlayment placed on or as part of any kind or type of structure reasonably considered to be a roof, whether the sheet is positioned in an exterior or internal position or whether the roof is located inside or outside. It is further noted that the roofing membrane of claim 1 is clearly not limited to a structure that includes a roof deck and a plurality of roofing shingles with the roofing underlayment positioned between the deck and the shingles because that is a scope of claims that corresponds with the claims in parent applications that have now issued as U.S. patents. Since the calendered sheet set forth above from the prior art reads upon the positively claimed structure and/or because the calendered sheet set forth above is reasonably understood to be capable of being utilized as a roofing membrane/underlayment, the rejection of the claims is understood to be proper.
As to claim 3, McCormack et al. teach the polymer resin comprises polypropylene (col. 8, lines 14-20).
As to claims 6 and 7, McCormack et al. disclose channels having a width within the claimed range (col. 9, lines 54-67; Figure 1) and further suggest and render prima facie obvious optimizing spacing and bond area to achieve desired physical properties of the membrane/fabric (col. 4, lines 17-50). Further, Stokes et al. provide additional teaching to suggest controlling the spacing to facilitate engagement of the fabric/membrane (Abstract; col. 11, lines 20-35; col. 12, line 55-col. 13, line 5). It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected channel widths as claimed in the membrane/fabric of McCormack et al., as suggested by Stokes et al., for the purpose, as suggested by Stokes et al. of facilitating suitable engagement of the fabric/membrane with hooks, if needed, and to produce a membrane/fabric having desired physical/mechanical properties.
As to claim 9, the elevated random unbonded fibers disclosed above in the rejection of claim 1 are understood to provide mechanical slip resistance to the required extent.
As to claim 10, the polymeric structure set forth by McCormack et al. is understood to provide chemical slip resistance to the required extent (e.g. no requirement for an additional coating is set forth in the claim).
Claims 4, 5, and 8 are rejected under 35 U.S.C. 103 as being obvious over McCormack et al. (US 5,964,742) in view of Stokes et al. (US 5,858,515), as applied to claims 1-3, 6, 7, 9 and 10.
As to claims 4 and 5, McCormack et al. do not explicitly teach the polymer comprises polyethylene or nylon. However, Stokes et al. analogously teach that the resin can comprise polyolefins, including polyethylene and/or polypropylene, and polyamides, of which nylons are the most well-known (col. 6, lines 50-col. 7, line 1; col. 8, lines 44-56; col. 16, lines 11-col. 17, line 59; Table).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of McCormack et al. (which incorporates Stokes et al. by reference into the disclosure) and Stokes et al. and to have utilized the polymers disclosed by Stokes et al. as the polymers of McCormack et al., for the purpose, as suggested by the references, of utilizing polymers suitable for melt-spinning a non-woven fabric having desired and suitable properties for a given application and that provides a desired basis weight and strength.
As to claim 8, McCormack et al. do not explicitly teach the height as claimed. However, Stokes et al. analogously teach and suggest the elevated portions having a height within or which overlap the claimed range (col. 10, line 48-col. 11, line 40).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of McCormack et al. (which incorporates Stokes et al. by reference into the disclosure) and Stokes et al. and to have produced an elevated position having a height as claimed in the membrane/sheet of McCormack et al., as suggested by Stokes et al., for the purpose, as suggested by Stokes et al. of producing a membrane/sheet having a desired surface integrity and durability for the application.
Claims 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over McCormack et al. (US 5,964,742) in view of Strait (US 2008/0020662) alone or further in view of Stokes et al. (US 5,858,515).
Regarding claims 11 and 12, McCormack et al. teach a protective covering/ awning/canopy/outdoor fabric (col. 1, lines 8-11; col. 5, lines 25-37), all of which are understood to disclose the same claimed and disclosed “membrane” structure, wherein the “membrane is a roofing underlayment” under a reasonable interpretation, comprising a calendered sheet; wherein the calendered sheet comprises a polymer resin; wherein the calendered sheet comprises: a) a plurality of elevated portions of random unbonded fibers, and b) bonded fibers in channels between the plurality of elevated portions (Abstract; col. 4, lines 17-51; col. 10, lines 13-67; Figures 1 and 4; by the disclosed method of forming the bonds in the fabric (e.g. using the same method of producing the configuration shown in Figure 4 and as is sufficiently described to one having ordinary skill in the art at col. 4, lines 17-51 and as further described in 08/754,419 – now US 5,858,515), the unbonded fibers of the configuration shown in Figure 1, for example, includes elevated unbonded fibers/fibers free for use and bonded fibers in channels between elevated unbonded portions).
As set forth above, McCormack et al. is understood to make it sufficiently clear that the unbonded fibers include a plurality of elevated portions. However, Stokes et al. (which is the patent that issued from application 08/754,419 referenced in McCormack et al.) further describe and disclose that the unbonded fibers form a plurality of elevated portions (Figures 1 and 2 (6) (8); Figures 4 and 5). It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the unbonded fibers as elevated portions in the article of McCormack et al., as suggested by both McCormack et al. and Stokes et al., for the purpose, as suggested by the references, of forming a pattern/point unbonded fabric that has free fibers capable of being used/engaged in a desired application.
McCormack et al. teach the calendered sheet alone or with a polymeric film/resin lamination layer located on the reverse side of the calendered sheet (col. 8, lines 11-37), but do not teach a resin lamination layer and a scrim layer; wherein the resin lamination layer is between the calendered sheet and scrim layer as claimed
However, Strait teaches an analogous structure wherein a roofing underlayment (Abstract; note: this reasonably corresponds with the protective covering/ awning/canopy/outdoor fabric/roofing membrane set forth in McCormack et al. and the claims) includes a scrim layer laminated to a fabric layer with a resin lamination layer located between the fabric/nonwoven layer and the scrim layer (Figure 1 – (8) is a fabric layer that corresponds with the calendered sheet of McCormack et al; (4) is a resin lamination layer located between (8) and the scrim layer (6); further). In another understanding, the exemplified laminate of McCormack et al. includes the calendered sheet and the resin lamination layer and Strait provides a scrim that is reasonably understood to include both (4) and (6) together or just (6) by itself. In the method of McCormack et al. the layers are continuously fed together into a nip between rollers (14) and (16) (Figures 1, 2, 5 and 6). This is understood to disclose or reasonably suggest the layers extend together from end to end.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of McCormack et al. and Strait and to have added a resin lamination layer and a scrim layer as claimed to the calendered sheet/fabric of McCormack et al., as suggested by Strait, for the purpose, as suggested by Strait, of further reinforcing, strengthening, and improving the properties (shear strength, abrasion resistance, lay flat quality) of the calendered sheet/fabric/article of McCormack et al for particular applications (paragraph [0006]-[0008], [0010], [0022]-[0026]).
The recitation that “the membrane is a roofing underlayment” is a recitation of purpose or intended use for the product. The structure required for something to be “a roofing underlayment” in the context of the claim and the instant application is understood to be that which includes the positively recited calendered sheet structure. The recitation as claimed and disclosed is not understood to require any further structure beyond that which is positively recited. As such, a calendered sheet that reads upon the claimed structure is understood to be “a roofing underlayment” to the extent required by the claim under a reasonable interpretation in light of the specification. Further, to the extent “a roofing underlayment” may be arguably understood to add some additional structural requirements, a calendered sheet having the claimed structure is understood to read upon the claimed roofing underlayment if the calendered sheet is broadly and reasonably understood to be capable of being utilized as a membrane/layer/underlayment placed on or as part of any kind or type of structure reasonably considered to be a roof, whether the sheet is positioned in an exterior or internal position or whether the roof is located inside or outside. It is further noted that the roofing membrane of claim 1 is clearly not limited to a structure that includes a roof deck and a plurality of roofing shingles with the roofing underlayment positioned between the deck and the shingles because that is a scope of claims that corresponds with the claims in parent applications that have now issued as U.S. patents. Since the calendered sheet set forth above from the prior art reads upon the positively claimed structure and/or because the calendered sheet set forth above is reasonably understood to be capable of being utilized as a roofing membrane/underlayment, the rejection of the claims is understood to be proper.
As to claims 13 and 14, Strait teaches an additional layer/resin coating layer/barrier layer on the scrim layer and that is coated onto the scrim layer in a process similar to that shown in Figure 2 (paragraph [0038]; Figure 5 (32) (33)). The reason to combine the references is the same as that set forth above, plus with the additional reason to realize the benefits of the additional layer set forth by Strait. Further, the lamination layer set forth above is waterproof.
As to claim 15, the polymer resin of the calendered sheet in McCormack et al. comprises polypropylene (col. 8, lines 14-20).
As to claim 16, McCormack et al. disclose channels having a width within the claimed range (col. 9, lines 54-67; Figure 1) and further suggest and render prima facie obvious optimizing spacing and bond area to achieve desired physical properties of the membrane/fabric (col. 4, lines 17-50). Further, Stokes et al. provide additional teaching to suggest controlling the spacing to facilitate engagement of the fabric/membrane (Abstract; col. 11, lines 20-35; col. 12, line 55-col. 13, line 5). It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected channel widths as claimed in the membrane/fabric of McCormack et al., as suggested by Stokes et al., for the purpose, as suggested by Stokes et al. of facilitating suitable engagement of the fabric/membrane with hooks, if needed, and to produce a membrane/fabric having desired physical/mechanical properties.
Regarding claims 17 and 18, McCormack et al. teach a protective covering/ awning/canopy/outdoor fabric (col. 1, lines 8-11; col. 5, lines 25-37), all of which are understood to disclose the same claimed and disclosed “membrane” structure, wherein the “membrane is a roofing underlayment” under a reasonable interpretation, comprising a calendered sheet; wherein the calendered sheet comprises a polymer resin; wherein the calendered sheet comprises: a) a plurality of elevated portions of random unbonded fibers, and b) bonded fibers in channels between the plurality of elevated portions (Abstract; col. 4, lines 17-51; col. 10, lines 13-67; Figures 1 and 4; by the disclosed method of forming the bonds in the fabric (e.g. using the same method of producing the configuration shown in Figure 4 and as is sufficiently described to one having ordinary skill in the art at col. 4, lines 17-51 and as further described in 08/754,419 – now US 5,858,515), the unbonded fibers of the configuration shown in Figure 1, for example, includes elevated unbonded fibers/fibers free for use and bonded fibers in channels between elevated unbonded portions).
As set forth above, McCormack et al. is understood to make it sufficiently clear that the unbonded fibers include a plurality of elevated portions. However, Stokes et al. (which is the patent that issued from application 08/754,419 referenced in McCormack et al.) further describe and disclose that the unbonded fibers form a plurality of elevated portions (Figures 1 and 2 (6) (8); Figures 4 and 5). It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the unbonded fibers as elevated portions in the article of McCormack et al., as suggested by both McCormack et al. and Stokes et al., for the purpose, as suggested by the references, of forming a pattern/point unbonded fabric that has free fibers capable of being used/engaged in a desired application.
McCormack et al. teach the calendered sheet alone or with a polymeric film/resin lamination layer located on the reverse side of the calendered sheet (col. 8, lines 11-37), but do not teach a resin lamination layer and a scrim layer; wherein the resin lamination layer is between the calendered sheet and scrim layer as claimed
However, Strait teaches an analogous structure wherein a roofing underlayment (Abstract; note: this reasonably corresponds with the protective covering/ awning/canopy/outdoor fabric/roofing membrane set forth in McCormack et al. and the claims) includes a scrim layer laminated to a fabric layer with a resin lamination layer located between the fabric/nonwoven layer and the scrim layer (Figure 1 – (8) is a fabric layer that corresponds with the calendered sheet of McCormack et al; (4) is a resin lamination layer located between (8) and the scrim layer (6); further). In another understanding, the exemplified laminate of McCormack et al. includes the calendered sheet and the resin lamination layer and Strait provides a scrim that is reasonably understood to include both (4) and (6) together or just (6) by itself. In the method of McCormack et al. the layers are continuously fed together into a nip between rollers (14) and (16) (Figures 1, 2, 5 and 6). Further, Strait teaches an additional layer/resin coating layer/barrier layer on the scrim layer and that is coated onto the scrim layer in a process similar to that shown in Figure 2 (paragraph [0038]; Figure 5 (32) (33)).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of McCormack et al. and Strait and to have added a resin lamination layer and an additional resin layer (both of which are reasonably understood to be barrier layers) and a scrim layer as claimed to the calendered sheet/fabric of McCormack et al., as suggested by Strait, for the purpose, as suggested by Strait, of further reinforcing, strengthening, and improving the properties (shear strength, abrasion resistance, lay flat quality) of the calendered sheet/fabric/article of McCormack et al for particular applications (paragraph [0006]-[0008], [0010], [0022]-[0026]).
The recitation that “the membrane is a roofing underlayment” is a recitation of purpose or intended use for the product. The structure required for something to be “a roofing underlayment” in the context of the claim and the instant application is understood to be that which includes the positively recited calendered sheet structure. The recitation as claimed and disclosed is not understood to require any further structure beyond that which is positively recited. As such, a calendered sheet that reads upon the claimed structure is understood to be “a roofing underlayment” to the extent required by the claim under a reasonable interpretation in light of the specification. Further, to the extent “a roofing underlayment” may be arguably understood to add some additional structural requirements, a calendered sheet having the claimed structure is understood to read upon the claimed roofing underlayment if the calendered sheet is broadly and reasonably understood to be capable of being utilized as a membrane/layer/underlayment placed on or as part of any kind or type of structure reasonably considered to be a roof, whether the sheet is positioned in an exterior or internal position or whether the roof is located inside or outside. It is further noted that the roofing membrane of claim 1 is clearly not limited to a structure that includes a roof deck and a plurality of roofing shingles with the roofing underlayment positioned between the deck and the shingles because that is a scope of claims that corresponds with the claims in parent applications that have now issued as U.S. patents. Since the calendered sheet set forth above from the prior art reads upon the positively claimed structure and/or because the calendered sheet set forth above is reasonably understood to be capable of being utilized as a roofing membrane/underlayment, the rejection of the claims is understood to be proper.
As to claim 19, the polymer resin of the calendered sheet in McCormack et al. comprises polypropylene (col. 8, lines 14-20).
As to claim 20, McCormack et al. disclose channels having a width within the claimed range (col. 9, lines 54-67; Figure 1) and further suggest and render prima facie obvious optimizing spacing and bond area to achieve desired physical properties of the membrane/fabric (col. 4, lines 17-50). Further, Stokes et al. provide additional teaching to suggest controlling the spacing to facilitate engagement of the fabric/membrane (Abstract; col. 11, lines 20-35; col. 12, line 55-col. 13, line 5). It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected channel widths as claimed in the membrane/fabric of McCormack et al., as suggested by Stokes et al., for the purpose, as suggested by Stokes et al. of facilitating suitable engagement of the fabric/membrane with hooks, if needed, and to produce a membrane/fabric having desired physical/mechanical properties.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Stokes et al. (US 5,858,515) alone or as evidenced by or further in view of Gardner et al. (US 6,506,695).
Regarding claims 1 and 2, Stokes et al. teach a polymeric nonwoven fabric/membrane (Abstract) comprising a calendered sheet (col. 12, lines 1-8; Figure 3 (40); Figure 4 (42) (44): Figure 5 (42); col. 10, line 9-col. 13, line 6) comprising a plurality of elevated portions (Figures 1 and 2 (8); col. 5, line 65-col. 6, line 13) comprised of random unbonded fibers, wherein adjacent ones of said plurality of elevated portions are separated from one another by channels of bonded fibers (Figures 1 and 2 (6); col. 5, line 65-col. 6, line 13).
The recitation that “the membrane is a roofing underlayment” is a recitation of purpose or intended use for the product. The structure required for something to be “a roofing underlayment” in the context of the claim and the instant application is understood to be that which includes the positively recited calendered sheet structure. The recitation as claimed and disclosed is not understood to require any further structure beyond that which is positively recited. As such, a calendered sheet that reads upon the claimed structure is understood to be “a roofing underlayment” to the extent required by the claim under a reasonable interpretation in light of the specification. Further, to the extent “a roofing underlayment” may be arguably understood to add some additional structural requirements, a calendered sheet having the claimed structure is understood to read upon the claimed roofing underlayment if the calendered sheet is broadly and reasonably understood to be capable of being utilized as a membrane/layer/underlayment placed on or as part of any kind or type of structure reasonably considered to be a roof, whether the sheet is positioned in an exterior or internal position or whether the roof is located inside or outside. It is further noted that the roofing membrane of claim 1 is clearly not limited to a structure that includes a roof deck and a plurality of roofing shingles with the roofing underlayment positioned between the deck and the shingles because that is a scope of claims that corresponds with the claims in parent applications that have now issued as U.S. patents. Since the calendered sheet set forth above from the prior art reads upon the positively claimed structure and/or because the calendered sheet set forth above is reasonably understood to be capable of being utilized as a roofing membrane/underlayment, the rejection of the claims is understood to be proper.
Alternatively, it is further noted that Stokes et al. disclose a range of basis weights for the calendered sheet (Table – see Examples D, H, K, P, R all with basis weights about 50 gsm; col. 23, lines 37-44 showing a range of basis weights between 20-100 gsm). As such, basis weights at the higher values (e.g. above 50 gsm) are even further understood to read upon the claimed roofing underlayment. As such, Stokes et al. is understood to anticipate the claimed roofing underlayment (e.g. also see paragraphs [0064]-[0065] of the published application that makes clear basis weights down to 50 gsm are in view) in the cited Examples and is also understood to disclose a range of basis weights that overlaps the disclosed values. Overlapping ranges are prima facie obvious.
Even further, Gardner et al. disclose analogous non-woven fabrics with a range of basis weights and disclose that basis weights can be selected based upon the application and that bais weights ranging from about 40 to about 150 gsm provide additional durability and are suitable for use as roofing underlayments (col. 8, lines 35-50). Therefore, Gardner et al. provide further evidence that the basis weights of Stokes et al. are suitable for use as a roofing underlayment. Further, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have chosen a range of suitable basis weights for the sheet of Stokes et al., as suggested by Gardner et al., for the purpose as suggested by Gardner et al., of providing sufficient strength and durability to the sheet of Stokes et al., for an intended application.
As to claims 3-5, Stokes et al. teach the thermoplastic comprises polymers as claimed (col. 6, lines 64-col. 7, line 1 col. 16, lines 12-47; polypropylene, polyethylene, polyamide).
As to claims 6 and 7, Stokes et al. teaching controlling the spacing to facilitate engagement of the fabric/membrane to values within or which overlap the claimed range and further suggest optimizing the spacing (Abstract; col. 10, line 48-col. 11, line 40; col. 12, line 55-col. 13, line 5).
As to claim 8, Stokes et al. teach and suggest the elevated portions having a height within or which overlap the claimed range (col. 10, line 48-col. 11, line 40).
As to claim 9, the elevated random unbonded fibers disclosed above in the rejection of claim 1 are understood to provide mechanical slip resistance to the required extent.
As to claim 10, the polymeric structure set forth by Stokes et al. is understood to provide chemical slip resistance to the required extent (e.g. no requirement for an additional coating is set forth in the claim).
As to claims 11, 13 and 14, the analysis of the calendered sheet and membrane is set forth above in the rejection of claim 1 and is incorporated here by reference. Further, Stokes et al. teach the calendered sheet as set forth can also include a lamination waterproofing layer (e.g. liquid impermeable outer cover/film (62) – col. 13, lines 6-47; col. 3, lines 54-60). Further, the additional layers set forth by Stokes et al. as cited et al. read upon the claimed barrier layer.
As to claim 12, the analysis of the calendered sheet and membrane is set forth above in the rejection of claim 1 and is incorporated here by reference. Stokes et al. teach outer cover (62) may be formed of a combination of a woven layer/reinforcing scrim in combination with the thermoplastic film/waterproofing layer (col. 13, lines 23-47).
As to claim 15 Stokes et al. teach the thermoplastic comprises polymers as claimed (col. 6, lines 64-col. 7, line 1 col. 16, lines 12-47; polypropylene, polyethylene, polyamide).
As to claim 16, Stokes et al. teaching controlling the spacing to facilitate engagement of the fabric/membrane to values within or which overlap the claimed range and further suggest optimizing the spacing (Abstract; col. 10, line 48-col. 11, line 40; col. 12, line 55-col. 13, line 5).
As to claim 17, the analysis of the calendered sheet and membrane is set forth above in the rejection of claim 1 and is incorporated here by reference. Further, Stokes et al. teach the calendered sheet as set forth can also include a lamination waterproofing layer and additional layers (e.g. liquid impermeable outer cover/film (62) – col. 13, lines 6-47; col. 3, lines 54-60). The films and additional layers set forth by Stokes et al. read upon the claimed barrier layer.
As to claim 18, the analysis of the calendered sheet and membrane is set forth above in the rejection of claim 1 and is incorporated here by reference. Stokes et al. teach outer cover (62) may be formed of a combination of a woven layer/reinforcing scrim in combination with the thermoplastic film/waterproofing layer (col. 13, lines 23-47).
As to claim 19 Stokes et al. teach the thermoplastic comprises polymers as claimed (col. 6, lines 64-col. 7, line 1 col. 16, lines 12-47; polypropylene, polyethylene, polyamide).
As to claim 20, Stokes et al. teaching controlling the spacing to facilitate engagement of the fabric/membrane to values within or which overlap the claimed range and further suggest optimizing the spacing (Abstract; col. 10, line 48-col. 11, line 40; col. 12, line 55-col. 13, line 5).
Claims 11- 20 are rejected under 35 U.S.C. 103 as being unpatentable over Stokes et al. (US 5,858,515) alone or as evidenced by or further in view of Gardner et al. (US 6,506,695), as applied to claims 1-20 above, and further in view of Strait (US 2008/0020662). Note: this is an alternative rejection of claims 11-20.
As to claims 11-14, 17, and 18, the analysis of the calendered sheet and membrane is set forth above in the rejection of claim 1 and is incorporated here by reference. Further, Stokes et al. teach the calendered sheet as set forth can also include a lamination waterproofing layer (e.g. liquid impermeable outer cover/film (62) – col. 13, lines 6-47; col. 3, lines 54-60). Further, the additional layers set forth by Stokes et al. as cited et al. read upon the claimed barrier layer.
Alternatively, Stokes et al., under a narrow interpretation, do not teach a resin lamination layer and a scrim layer as claimed.
However, Strait teaches an analogous structure wherein a roofing underlayment includes a scrim layer laminated to a fabric layer with a resin lamination layer located between the fabric/nonwoven layer and the scrim layer (Figure 1 – (8) is a fabric layer that corresponds with the calendered sheet; (4) is a resin lamination layer located between (8) and the scrim layer (6); further). Strait provides a scrim that is reasonably understood to include both (4) and (6) together or just (6) by itself. Further, Strait teaches an additional layer/resin coating layer/barrier layer on the scrim layer and that is coated onto the scrim layer in a process similar to that shown in Figure 2 (paragraph [0038]; Figure 5 (32) (33)).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Stokes et al. and Strait and to have added a resin lamination layer and an additional resin layer (both of or either of which are reasonably understood to be barrier layers depending on the claim) and a scrim layer as claimed to the calendered sheet/fabric of Stokes et al., as suggested by Strait, for the purpose, as suggested by Strait, of further reinforcing, strengthening, and improving the properties (shear strength, abrasion resistance, lay flat quality) of the calendered sheet/fabric/article of Stokes et al for particular applications (paragraph [0006]-[0008], [0010], [0022]-[0026]).
As to claims 15 and 19, Stokes et al. teach the thermoplastic comprises polymers as claimed (col. 6, lines 64-col. 7, line 1 col. 16, lines 12-47; polypropylene, polyethylene, polyamide).
As to claims 16 and 20, Stokes et al. teaching controlling the spacing to facilitate engagement of the fabric/membrane to values within or which overlap the claimed range and further suggest optimizing the spacing (Abstract; col. 10, line 48-col. 11, line 40; col. 12, line 55-col. 13, line 5).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references disclose analogous membranes/sheets.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
