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 .
Response to Amendment
The remarks filed on 9/18/25 has been acknowledged. Claims 1-29 have been canceled. Claims 30-49 are pending rejection.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 30-38 and 40-48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wiercinski WO_2010048198_A1.
Regarding Claims 30-38, 40-48, Wiercinski discloses a waterproofing membrane having a layer C (bonding material; corresponds to claimed resin layer), followed directly by a layer D (protective coating; corresponds to claimed polymer cement layer, corresponds to instant Claims 33 and 41), followed by a layer A (adhesive; corresponds to claimed adhesive agent), and finally a layer B (carrier sheet; corresponds to claimed undercoat layer, corresponds to instant Claims 31 and 42); such that layer B (carrier sheet; corresponds to claimed undercoat layer) becomes the bottom layer in a winded roll (corresponds to claimed limitation of Claims 32 and 43) and rolls directly onto the substrate to which it is being affixed (paragraph 0027); such as a substrate having a surface made of concrete (paragraph 0002; corresponds to claimed structure); as is being claimed in instant claims 30 and 40. Wiercinski further discloses a method for constructing said arranged membrane (Claim 28). Wiercinski discloses that there is a known method used in the art, known as the “blind-side” or “pre-applied” method, comprises first applying said carrier sheet (corresponds to claimed undercoat layer) and adhesive (corresponds to claimed adhesive agent) directly to said concrete structure substrate (paragraph 0002); which teaches the method limitation of instant Claim 30. Wiercinski further discloses curing said concrete structure (paragraph 0083) as is being claimed in instant Claim 34. Furthermore, Wiercinski discloses that said protective coating (corresponds to claimed polymer cement layer) comprises cement and polymer resin (Claims 17 and 20) as is being claimed in instant claims 35 and 44. Wiercinski also discloses that each of said layers are single as is being claimed in instant Claims 36 and 45. Wiercinski further discloses that said bonding material layer (corresponds to claimed resin layer) can have a thickness of 50 microns (Claims 9 and 10) as is being claimed in instant Claims 38 and 48. Also, Wiercinski discloses using a method to ensure even thickness distribution (paragraph 0077) which would meet the limitations of instant Claims 37 and 47.
Finally, although Wiercinski does not disclose using a plurality of layers of its bonding layer or protective coating, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the structure to include more than one of these layers based on the end-user specifications. The use of a stacking of layers is commonly done in the art when needed.
Claim(s) 39 and 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wiercinski WO_2010048198_A1, as applied to Claims 30 and 40, and in view of Komada JP_2018059298_A (see machine English translation).
3. Regarding Claims 15 and 26-29, Wiercinski does not disclose the claimed water vapor transmission rate.
4. Komada discloses a corrosion proof film (corresponds to surface protection sheet) for concrete (Abstract) that exhibits barrier properties against CO2 and NaCl (Abstract) and comprises polymer layers and adhesives. Komada discloses a water vapor permeability of 28 g/m2day (Evaluation 1), which falls into the claimed range.
5. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the protection sheet, of Wiercinski, by adjusting the water vapor transmission rate to that of Komada. One of ordinary skill in the art would have been motivated in doing so in order to achieve what is known to be an adequate rate within the same field of endeavor.
Response to Arguments
Applicant's arguments filed 9/18/25 have been fully considered but they are not persuasive.
Applicants state: “The present application relates to the Type | method (bolded above) where the structure is already formed, whereas Wiercinski relates to the Type I| method (i.e. “blind-side” or “pre-applied” method, italicized above) where concrete is cast against the membrane. See, e.g., Wiercinski at claim 25 and paragraph [0010]. The difference between Wiercinski’s method and the traditional Type || method described in paragraph [0002], however, is that in Wiercinski’s method, it is not the adhesive portion (i.e. layer A) that is facing toward the cavity in which the concrete is poured, but rather a releasable bonding material (i.e. layer C). In each embodiment of Wiercinski’s disclosure (i.e., prior to being unrolled from a roll the laminated layers are arranged in the sequential order A-B-C-D, B-C-D-A, or C-D-A-B}, the laminated layers are arranged in the sequential order C-D-A-B when the membrane is unrolled from a roll. See Wiercinski at paragraphs [0009]-[0012]. This membrane (i.e. C-D-A-B) may then be affixed to a temporary substrate with layer B facing the temporary substrate and layer C facing the space where concrete structure will be poured or sprayed. See Wiercinski at paragraph [0012]. This is further evidenced by paragraphs [0043] and [0068] of Wiercinski…Therefore, it is clear that Wiercinski’s layer C is facing the structure, not layer A which is an interior layer. Accordingly, in Wiercinski’s method, there is no teaching or suggestion of applying an adhesive agent to a structure, let alone a attaching the structure protection sheet to the structure by bringing the polymer cement layer into contact with the adhesive agent.”
The Examiner respectfully submits that paragraphs 0008 and Claims 26-30 demonstrate an embodiment that does not use the temporary substrate. Furthermore, the “blind-side” method explicitly mentioned in paragraph 0002 was never discredited in any way that would make one of ordinary skill in the art believe that Wiercinski’s invention is against the use of such a method. Even if, arguendo, Wiercinski saw the blind-side method to be less desirable, the fact still remains that it suggests the claimed method, as admitted to by Applicants on page 6 of the Remarks. A non-preferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” See In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 September 26, 2025