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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 26, 2025 has been entered.
Examiner’s Note
The Examiner acknowledges the amendments of claims 1 & 10 – 11, the cancellation of claims 6, 8 – 9, & 12 – 20. Claims 1 – 5, 7, & 10 – 11 are examined herein.
Claim Rejections - 35 USC § 112
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.
Claim 7 is 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.
The subject matter of dependent claim 7 has been incorporated into amended independent claim 1. However, Applicant did not cancel claim 7. Therefore, claim 7 fails to further limit the subject matter of claim 1.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, 5, & 7 are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. (US 2014/0335750 A1), in view of Lee (App No KR 10-2017-0148958)*, Francis et al. (WO 98/318915) and Zalewski et al. (U.S. Patent No. 5,612,114).
*Reg. No. KR 101834521 B1 submitted by Applicant on 4/15/2024
**Martin (US 2016/265156 A1)
With regard to claim 1, Adams et al. teach a flexible composite system comprising a fiber reinforced layer is a scrim (i.e., “textile”) formed of a fabric with relatively large openings between yarns (paragraph [0033]), such as in the form of warp knit (paragraph [0072]). As evidenced by **Martin, yarns used in scrim fabric are defined in the art as multifilament elongated bodies (i.e., a yarn contains a plurality of fibers) (paragraph [0011]). The scrim is preferably formed of fiberglass or polyester fiber (UHPWPE) (paragraphs [0044] & [0061]). The fabric is coated to fully impregnate the fabric with an adhesive (i.e., “compatibility coating covering at least 95% of the surface area of the yarns of the textile”) (paragraph [0065]). A preferred embodiment of a thermoplastic adhesive is preferably urethane (i.e., “first chemistry is a polyurethane”) (paragraph [0063]).
The product is useful because it can be used in breathable membrane applications due to the adhesive/fiber free gaps (paragraph [0058]). Additionally, a membrane may be applied to the outer surfaces or layered within this composite material (paragraphs [0042] & [0059], Fig. 1 shown below). In other words, a first membrane may be applied to a first outer surface of the scrim reinforcement to form another layer within the composite material and a second membrane may be applied to a second outer surface of the scrim reinforcement to form another layer of the composite material.
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Adams et al. do not limit the intended use of the flexible composite system, but also does not teach the flexible composite system is a liquid applied roofing membrane. Furthermore, Adams et al. do not teach the scrim is fully embedded into the first membrane, and the membranes applied to the outer surfaces of the scrim comprise second and third chemistries comprising polyurethane.
Lee teaches a waterproof roofing comprising primer layer (20) & first midcoat layer (30), which when combined corresponds to Applicant’s “first membrane”, fiber mesh net (40) (“textile”), and second midcoat layer (50) (“second membrane”) (Fig. 2). The fibers are coated with a compatibility coating comprising a first coating layer (41) functioning as an adhesive with thermal resistance properties (Pg. 8), and a second coating (42) formed of polyurethane (Pg. 10) (see Figs 3 & 5 below).
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The primer layer (20) (“first membrane”) includes polyurethane resin for providing waterproof properties and has a thickness of 20 – 100 mm (pg. 5). First midcoat layer (30) (“first membrane”) formed of middle agent of polyurethane has a thickness of 0.3 – 5 mm (pgs. 5 & 11). Second midcoat layer (50) (“second membrane”) also composed of polyurethane middle agent for providing waterproof property of the layer (pg. 11). Second midcoat layer is 0.3 – 5 mm (see Fig. 2 below). The second midcoat layer (50) (“second membrane”) and the fiber mesh net (40) (“textile”) are installed (i.e., “fully embedded”) in the first midcoat layer (30) (“first membrane layer”) to prevent the fiber mesh from looking yellow and swollen (pgs. 5 & 12).
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Therefore, based on the teachings of Lee, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to fully embed the scrim into the first membrane of a roofing membrane in order to prevent the scrim from looking yellow and swollen.
Furthermore, it would have been obvious to one of ordinary skill in the art to use to form the first and second membranes taught by Adams et al. with polyurethane materials for providing waterproof properties when the flexible composite system is used as a waterproof roofing membrane.
The prior art cited above teaches the scrim fabric (textile) is composed of yarns and has a thickness. The thickness of a fabric is defined as the distance between the first surface and the second surface of the fabric.
However, Adams et al. and Lee do not teach wherein the plurality of yarns form a plurality of aperture regions defined as areas of the textile where no yarns are present between the first and second surfaces, wherein the aperture regions of the textile comprise between about 4 and 18% of the surface area along the first surface of the textile, and wherein at least 90% by number of the aperture regions larger than 0.01 mm2 have an aperture area of less than about 0.29 mm2.
Francis et al. teach a composite roof system comprising a fabric (i.e. textile) that is porous (apertures between strands of filaments), allowing penetration throughout its thickness of liquid adhesive, which reduces delamination of the water impermeable sheet (abstract). The openings between the strands of a woven fabric is greater than 0.5 mm, preferably in the range of 0.75 mm to 2.0 mm, more preferably 1.0 mm to 1.5 mm (pg. 3, lines 8 – 17). A diameter of 0.5 mm has a radius of 0.25 mm, when considering and therefore a minimum area (A = πr2) of 0.196 mm2, which overlaps Applicant’s claimed range of 0.01 – 0.29 mm2. It is understood by one of ordinary skill in the art that Francis et al. teaches a preference of greater than 0.5 mm diameter aperture between strands for 100% by number of the apertures.
Therefore, based on the teachings of Francis et al., it would have been obvious to one of ordinary skill in the art to form the scrim fabric taught by Adams et al. such that the size of the apertures between the strands of the fabric is 0.5 mm or greater, which is an area of about 0.196 mm2 or greater, which overlaps Applicant’s claimed range of 0.01 mm2 to 0.29 mm2, in order to allow liquid adhesive to penetrate the apertures reducing the probability of delamination between layers. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Adams et al. do not teach the knit fabric is a warp knit textile that has an areal weight of between about 2 and 6 oz/yd2 and consists of a set of laid in warp yarns, a set of laid in welt yarns, and a set of stitching yarns, wherein the stitching yarns have a denier of at least about 150 denier.
Zalewski et al. teach a textile composite comprising two or more than two layers of textile sheet material (Col. 2, Lines 20 – 22), joined by sewing or knitting or stitch-bonding with bonding yarn (i.e., “stitching yarn”) (Col. 2, Lines 25 – 32). The preferred bonding technique includes warp-knitting, including warp, weft, and stitching threads (yarns) for producing a composite having isotropic mechanical properties (Col. 3, Lines 3 – 15). Warp knitting can be produced at a high rate of production speed (Col. 3, Lines 41 – 45). The basis weight of the composite is customarily 140 – 250 g/m2 (4 – 7 oz/yd2) (Col. 3, Line Col. 3, Lines 36 – 40). Bonding yarns for joining the layers of the warp-knitting bonding technique have a linear density in the range of 80 – 2200 dtex (Col. 2, Lines 52 – 56). The composites are advantageously used as reinforcing layers for the production of roofing felts and tarpaulins having high perforation resistance and high tensile strength (Col. 1, Lines 1 – 45 & Col. 4, Lines 5 – 13).
Therefore, based on the teachings of Zalewski et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form a warp knit textile suitable for use as a scrim of high perforation resistance and tensile strength in a roofing membrane having a basis (areal) weight of 4 – 7 oz/yd2, wherein the wrap knit comprises warp, weft, and stitching yarns, wherein the bonding (stitching) yarns have a linear density of 80 – 2200 dtex.
Neither Adams et al. or Lee teach the percentage of the adhesive (i.e., “compatibility coating”) based on weight of the fabric (i.e., “textile”).
However, Lee teaches the thickness of the coating (41) should not be too thin such that the coating easily exfoliates from the fiber mesh net and is not too excess for hindering bending of the fiber mesh (Pg. 9). Additionally, the polyurethane layer (42) serves the purpose of improving adhesive force between the glass mesh net and the first/second midcoat layers (30 & 50) (“first membrane” and “second membrane”) (Pg. 10).
Therefore, based on the teachings of Lee, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the percentage of the adhesive (i.e., “compatibility coating (41 & 42)) based on the weight of the fabric through routine experimentation in order to achieve the optimum adhesion properties with the first and second midcoat layers (i.e. first and second membranes) and bending properties, without exfoliation. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Additionally, when reading the preamble in the context of the entire claim, the recitation “liquid applied roofing membrane” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
With regard to claim 3, as discussed for claim 1, Francis et al. teach about 100% of the aperture regions have a diameter of greater than 0.5 mm, which is about 0.196 mm2 or greater, which overlaps with Applicant’s claimed range of greater than 0.01 mm2 have an aperture of less than about 0.24 mm2.
With regard to claim 5, Lee teaches the second midcoat layer (50) (“second membrane”) and the fiber glass mesh net (40) (“textile”) are installed in the first midcoat layer (30) (“first membrane layer”) (pgs. 5 & 12).
With regard to claim 7, as discussed above for claim 1, neither Adams et al. or Lee teach the percentage of the adhesive (i.e., “compatibility coating”) based on weight of the fabric (i.e., “textile”).
However, Lee teaches the thickness of the coating (41) should not be too thin such that the coating easily exfoliates from the fiber mesh net and is not too excess for hindering bending of the fiber mesh (Pg. 9). Additionally, the polyurethane layer (42) serves the purpose of improving adhesive force between the glass mesh net and the first/second midcoat layers (30 & 50) (“first membrane” and “second membrane”) (Pg. 10).
Therefore, based on the teachings of Lee, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the percentage of the adhesive (i.e., “compatibility coating (41 & 42)) based on the weight of the fabric through routine experimentation in order to achieve the optimum adhesion properties with the first and second midcoat layers (i.e. first and second membranes) and bending properties, without exfoliation. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 2 & 4 are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al., Lee, Francis et al., & Zalewski et al., as applied to claim 1, and further in view of Martin (US 2016/0265156 A1).
With regard to claim 2, Adams et al. and Lee fail to teach the aperture regions of the textile comprise between about 5 – 16% of the surface area along the first surface of the textile
Martin teaches a polyester scrim fabric is preferably open, meaning that there are large amounts of open space between the yarns within the scrim layer for good adhesion between all of the layers within the scrim reinforced roofing member by adjusting the numbers of yarns per inch (paragraph [0010]).
Therefore, based on the teachings of Martin, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to adjust the amount of space between fibers (i.e. percentage of aperture regions along the first surface of the textile) through routine experimentation in order to achieve good adhesion between all the layers of the roofing member. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
With regard to claim 4, Adams et al. fail to teach the warp knit scrim is a knit textile having a tricot stich pattern.
Martin teaches a roofing membrane for roofing comprising a scrim fabric (textile) formed of multifilament yarn composed of fiber glass (paragraph [0011]) that is a knit scrim (textile) having a suitable stitch pattern, such as tricot stitch pattern (paragraph [0009]).
Therefore, based on the teachings of Martin, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to form the warp knit taught by Adams et al. with a tricot stitch pattern because it has shown to be suitable for the intended use as a roofing membrane taught by Lee.
Claim(s) 10 – 11 are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al., Lee, Francis et al., & Zalewski et al., as applied to claim 1, and further in view of Song (KR 20090087979 A).
With regard to claim 10, Adams et al. and Lee fail to teach the compatibility coating has a 100% modulus of at least about 5 MPa.
With regard to claim 11, Adams et al. and Lee fail to teach the compatibility coating has an elongation (at break) of less than about 500%.
Song teaches waterproof layer for roofing material comprising polyurethane (polyurea) waterproofing material having an elongation of 550% or more and an elastic modulus of 9 N/mm2 (9 MPa) (pg. 4 – 5) provides the layer with a strain energy corresponding to the repeated stretching behavior and excellent durability for use as a roofing material (pg. 8).
Therefore, based on the teachings of Song, it would have been obvious to a person of ordinary skill in the art prior to the effective filing date to form a polyurethane waterproofing adhesive, such as the polyurethane adhesive coating (42) taught by Adams et al., with an elongation of 550% and an elastic modulus of 9 MPa applied to a fabric for the necessary strain energy for repeated stretching and excellent durability.
Response to Arguments
Applicant argues, “Claims 10 – 11 were rejected under 35 U.S.C. 112(b) or 35 U.S.C. (pre-AIA ), second paragraph. Applicants have amended the dependency of the claims to fix the antecedent basis issue” (Remarks, Pg. 4).
EXAMINER’S RESPONSE: In light of Applicant’s amendments of claims 10 – 11, the rejection of claims 10 – 11 under 35 U.S.C. §112(b) has been withdrawn.
Applicant argues, “The Office Action states ‘with regard to claim 1, Adams et al. teach a flexible composite system comprising a fiber reinforced layer is a scrim (i.e., ‘textile’) formed of a fabric with relatively large openings between yarns (paragraph [0033]), such as in the form of warp knit (paragraph [0072]).’ Applicants respectfully disagree.
“Adams teaches a scrim reinforcement or one of more unidirectional fiber-reinforced layers as the textile layer within the composite being coated and placed between additional layers. A knit fabric is only discussed in paragraph [0072] which is under the heading ‘Addition of Plastic Film or Fabric on One or Both Sides.’ Paragraph [0071] reads ‘In preferred embodiments, at least one plastic film such as PET, PEN, Nylon, fluoropolymer, urethane, or others are laminated to one or both sides of the above-mentioned embodiments or alternately-preferably between layers of the above-mention embodiments prior to the curing process. In other preferred embodiments a non-impregnated fabric is preferably laminated to one or both sides of the previous embodiments or between layers of the above-mentioned embodiments prior to the curing process.
“Therefore, Applicants respectfully believe that Adams does not teach a knit fabric coated with a compatibility coating and sandwiched between two membranes” (Remarks, Pg. 5).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. Adams et al. teach the scrim is a light woven or non-woven fabric (paragraph [0033]). More specifically, Adams teaches a working example in which the laid scrim patterns contains two warp sheets (Table 0002).
Furthermore, paragraph [0071] discusses the plastic film or fabric on one or both sides.
Paragraph [0072] states following:
It is noted that preferred fabrics utilized within the preferred embodiments of the present system includes wovens, knits, imaginable square weave, basket weave, warp knit, fleece, and the like.
The phrase “preferred fabrics utilized within the preferred embodiments of the present system” implies all fabrics within “the present system,” including the scrim layer, not the additional fabric alone. In light of the disclosure of paragraphs [0071] – [0072], one of ordinary skill in the art would not assume the fabrics discussed in paragraph [0072] were limited to only the additional layer(s).
Furthermore, other references cited herein teach scrim fabric for reinforcing a roofing membrane that may be formed of warp knit. For example, Martin (US 2016/0265156 A1) teach a scrim fabric includes light-weight knit, preferably a warp knit scrim comprising a plurality of warp yarns, weft yarns, and stitching yarns including tricot stitches (paragraph [0009]). Newly cited reference of Zalewski et al. teach a reinforcement of roofing, wherein the reinforcement fabric is formed by a preferred bonding technique of warp-knitting, which has a high rate of production speed and has isotropic mechanical properties
Applicant argues, “Further, Applicants have amended independent claim 1 to add the following limitations of the warp knit textile having an area weight of between about 2 and 6 oz/yd2 and consisting of a set of laid in warp yarns, a set of laid in weft yarns, and a set of stitching yarns, and the stitching yarns having a denier of at least about 150 denier. Justification for these amendments can be found, for example, in paragraph [0018] and [0019]. Applicants respectfully believe that Adams does not teach this particular knit structure and that the additions of Lee, Francis, Song, and/or Martin fail to cure this deficiency” (Remarks, Pg. 5).
EXAMINER’S RESPONSE: In light of Applicant’s amendment of claim 1, a new rejection is included herein in view of the teachings of Zalewski et al.
Applicant argues, “Claims 2 and 4 were rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. in view of Lee and Francis et al., in further view of Martin. Applicants respectfully believe that the addition of Lee, Francis, and Martin fail to cure the deficiencies of Adams et al.” (Remarks, Pg. 5).
Applicant argues, “Claims 10 and 11 were rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. in view of Lee and Francis et al., in further view of Song. Applicants respectfully believe that the addition of Lee, Francis, and Song fail to cure the deficiencies of Adams et al.” (Remarks, Pg. 5).
EXAMINER’S RESPONSE: Applicant is directed to the discussion above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781