RESPONSE TO AMENDMENT
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 .
Application Status
Amendments to claims 1, 5, 7, 8, 9, 11, 13-15, and 18-26, filed on 10 June 2026, have been entered in the above-identified application. Claims 27 and 28 have been added. Claims 1, 5, 7, 8, 9, 11, 13-15 and 18-28 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01 June 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
NEW AND REPEATED REJECTIONS
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 Rejections - 35 USC § 103
Claims 1, 5, 7-9, 11, 13-15, 18-22, 24, 25, 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/117326 A1 in view of Tang (U.S. Pub. 2017/0114543).
Regarding claim 1, WO ‘326 discloses polyolefin thermoplastic roofing membranes having multiple polymeric layers and an adhesive layer. See abstract and p. 3, [0013-0014] generally describing the membrane including having two or more laminated layers. Page 20, [0080] and FIG. 5 describe and depict the membrane with an adjacent adhesive layer. The membrane layers are formed from polyolefins, see p. 4, [0019] and thus are polymeric layers. WO ‘326 describes that the thermoplastic polyolefin resin forms a matrix that includes functional fillers including magnesium hydroxide and calcium carbonate dispersed within the matrix, see p. 2, [0006] and p. 4, [0016].
Blends of polymers are suitable for the membrane, see p. 10, [0038]. One or more of the layers of the membrane may include a functionalized thermoplastic resin , see p. 10, [0040]. The thermoplastic polymer has at least 0.2 wt. % and preferably at least 1.0 wt. % functionalization, most preferably from 1-2 wt. % functionalization. See p. 13, [0048]. Suitable functionalized polymers include maleated polypropylene based polymers, see p. 13, [0050]. This reads on the second polymeric layer having the claimed amount of maleated polyolefin.
The adhesive layer is described at p. 20-21, [0080] and p. 22, [0087] and may be a pressure-sensitive adhesive layer.
The membranes are fabricated to a desired thickness, see p. 20, [0076].
However, WO ‘326 does not specify using a cross-linked polyacrylate pressure-sensitive adhesive and does not specify the thickness of the laminate.
Tang similarly describes a polymeric roofing membrane having a polymeric membrane panel, adhesive layer, and release member in which the adhesive is a pressure-sensitive adhesive, see abstract. The thickness of the roofing membrane panels are from 500 microns to 3 mm (3,000 microns), see p. 2, [0019]. The membranes are thermoplastic materials, see p. 2, [0018]. The adhesive is a hot melt pressure sensitive adhesive which is applied to the membrane and subsequently cured, see p. 1, [0001]. The adhesive is preferably an acrylic based hot melt pressure-sensitive adhesive, see p. 2, [0020].
WO ‘326 and Tang are analogous as they are similar in structure, composition, and function as each describes multilayered polymeric roofing membranes with pressure-sensitive adhesive layers.
It would have been obvious to one of ordinary skill in the art at the time of the invention to have included a crosslinked polyacrylate pressure-sensitive adhesive layer as taught in Tang in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to use the cured adhesive layer as this provides the membranes with a higher operating temperature while allowing for greater tack at lower temperatures, see Tang at p. 2, [0015]. It is also desirable to have formulated the membranes to have a thickness of at least 500 microns to 3 mm as described in Tang as this is a conventional thickness for roofing membranes, see p. 2, [0019]. There is a reasonable expectation of success in the proposed combination as WO ‘326 teaches that pressure-sensitive adhesives are suitable for use with the roofing membrane, see p. 20-21, [0080] and p. 22, [0087].
Regarding claim 5, WO ‘326 teaches that suitable functionalized polymers include maleated polypropylene based polymers, see p. 13, [0050].
Regarding claim 7, WO ‘326 teaches that the membrane layers are coextruded, see p. 3, [0013].
Regarding claim 8, WO ‘326 teaches using an ethylene-propylene copolymer as the polyolefin thermoplastic resin, see claim 3. Tang also teaches using EPDM-based membranes, see p. 2, [0018].
Regarding claim 9, Tang teaches including a release member disposed on the pressure-sensitive adhesive layer opposite from the membrane layers, see p. 1, [0001] and [0011].
Regarding claim 11, WO ‘326 discloses polyolefin thermoplastic roofing membranes having multiple polymeric layers and an adhesive layer. See abstract and p. 3, [0013-0014] generally describing the membrane including having two or more laminated layers. Page 20, [0080] and FIG. 5 describe and depict the membrane with an adjacent adhesive layer. The membrane layers are formed from polyolefins, see p. 4, [0019] and thus are polymeric layers.
Blends of polymers are suitable for the membrane, see p. 10, [0038]. One or more of the layers of the membrane may include a functionalized thermoplastic resin , see p. 10, [0040]. Suitable functionalized polymers include maleated polypropylene based polymers, see p. 13, [0050]. This reads on the polymeric layer having maleated polyolefin.
WO ‘326 describes that the thermoplastic polyolefin resin forms a matrix that includes functional fillers including magnesium hydroxide and calcium carbonate dispersed within the matrix, see p. 2, [0006] and p. 4, [0016].
The adhesive layer is described at p. 20-21, [0080] and p. 22, [0087] and may be a pressure-sensitive adhesive layer.
However, WO ‘326 does not specify using a cross-linked polyacrylate pressure-sensitive adhesive or a release member.
Tang similarly describes a polymeric roofing membrane having a polymeric membrane panel, adhesive layer, and release member in which the adhesive is a pressure-sensitive adhesive, see abstract. The membranes are thermoplastic materials, see p. 2, [0018]. The adhesive is a hot melt pressure sensitive adhesive which is applied to the membrane and at least partially cured, see p. 2, [0015]. The adhesive is preferably an acrylic based hot melt pressure-sensitive adhesive, see p. 2, [0020]. Tang teaches including a release member disposed on the pressure-sensitive adhesive layer opposite from the membrane layers, see p. 1, [0001] and [0011].
WO ‘326 and Tang are analogous as they are similar in structure, composition, and function as each describes multilayered polymeric roofing membranes with pressure-sensitive adhesive layers.
It would have been obvious to one of ordinary skill in the art at the time of the invention to have included a crosslinked polyacrylate pressure-sensitive adhesive layer as taught in Tang in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to use the cured adhesive layer as this provides the membranes with a higher operating temperature while allowing for greater tack at lower temperatures, see Tang at p. 2, [0015]. There is a reasonable expectation of success in the proposed combination as WO ‘326 teaches that pressure-sensitive adhesives are suitable for use with the roofing membrane, see p. 20-21, [0080] and p. 22, [0087].
Regarding claim 13, WO ‘326 teaches using an ethylene-propylene copolymer as the polyolefin thermoplastic resin, see claim 3. Tang also teaches using EPDM-based membranes, see p. 2, [0018].
Regarding claim 14, WO ‘326 teaches using a thermoplastic polyolefin membrane, see p. 5, [0019].
Regarding claim 15, WO ‘326 teaches that blends of polymers are suitable for the membrane, see p. 10, [0038]. One or more of the layers of the membrane may include a functionalized thermoplastic resin , see p. 10, [0040]. Suitable functionalized polymers include maleated polypropylene based polymers, see p. 13, [0050].
Regarding claim 18, Tang teaches that the thickness of the roofing membrane panels are from 500 microns to 3 mm (3,000 microns), see p. 2, [0019].
Regarding claim 19, Tang teaches that the thickness of the roofing membrane panels are more preferably from 1000 microns to 2.5 mm (2,500 microns), or from 1,500 microns to 2 mm (2,000 microns). see p. 2, [0019]. These meet or exceed the claimed thickness of at least 1,000 microns.
Regarding claims 20 and 21, Tang teaches that the adhesive layer thickness is at least 51 microns and at most 381 microns, and most preferably from 127 to 254 microns. See p. 3, [0029]. These are each within the claimed ranges.
Regarding claim 22¸ Tang teaches using UV light to cure the adhesive layer, see p. 3, [0033] and [0034].
Regarding claims 24 and 25, WO ‘326 teaches that one or more of the layers of the membrane may include a functionalized thermoplastic resin, see p. 10, [0040] (emphasis added). Thus only one of the layers may include the maleated polyolefin and the other layer may be devoid of this component. This allows the second layer to include maleated polyolefin and the first layer to be devoid of maleated polyolefin, meeting the limitations of claims 24 and 25.
Regarding claims 27 and 28, Tang teaches that the adhesive layer is applied to the membrane as a UV-curable hot-melt adhesive composition such as by extrusion and the composition is subsequently crosslinked (cured) to form the cured pressure-sensitive adhesive layer. See p. 2, [0015] and p. 3, [0028] and p. 3, [0033].
Claims 23 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/117326 A1 in view of Tang (U.S. Pub. 2017/0114543) as applied above, and further in view of WO 2017/165868 A1.
Regarding claims 23 and 26, WO ‘326 and Tang are relied upon as described above in regards to claims 11 and 22. While Tang describes an acrylic hot melt pressure-sensitive adhesive which is at least partially cured, the reference does not specify the gel fraction of the adhesive as determined by solvent extraction with THF.
WO ‘868 describes polymeric membrane panels used for roofing covers, see p. 1, [0003] and p. 3, [0009]. The panels have a first and second polymer membrane and a UV-cured adhesive applied to the membrane so that the adhesive contacts the roof surface, see p. 3, [0009]. The adhesive is an acrylic UV cured pressure-sensitive adhesive, see p. 6, [0019-0020]. The adhesive has a substantially consistent degree of cure as measured by a gel content based on THF extraction of from 50-90%, see p. 9, [0029]. In its cured state, the adhesive provides sufficient tack to allow the membrane composites to be used in roofing systems, see p. 9, [0030].
The references are analogous because they are similar in structure and function, as each reference describes polymeric membranes with applied adhesives used for roofing covers. Tang and WO ‘868 both teach the use of partially cured UV-curable acrylic adhesives, see WO ‘868 at p. 8, [0028] and Tang at p. 2, [0015]. As Tang and WO ‘868 each teach the use of partially cured UV-curable acrylic hot melt pressure sensitive adhesives in the same service, there is a reasonable expectation of success in the combination.
It would have been obvious to one of ordinary skill in the art at the time of the invention to at least partially cure the UV-curable acrylic hot melt pressure sensitive adhesive of Tang to have a gel fraction of from 50-90 % as taught in WO ‘868 to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to achieve this desired level of cure as WO ‘868 teaches that this provides sufficient tack to allow the membrane composite to be used in roofing systems that meet industry standards for wind uplift resistance, see p. 9, [0030] and desired peel strength, see p. 10, [0031].
RESPONSE TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 10 June 2026 regarding the 35 U.S.C. § 103 rejection of claims 1, 2, 5, 7-9, 11-15, 18-22, 24, and 25 of record over WO 2017/117326 A1 in view of Tang (U.S. Pub. have been carefully considered but are deemed unpersuasive.
Applicant argues that while one of ordinary skill could have pieced together the teachings to arrive at the claimed invention, the threshold question is whether they would have (emphasis supplied), see p. 6 of the remarks. In particular, applicant notes that WO ‘326 teaches the use of certain additives in the polymeric layers including the functionalized polyolefins which improve adhesion to reactive adhesives, and that such reactive adhesives refer to polyurethane adhesives and alkyoxysilane adhesives rather than pressure-sensitive adhesives. See p. 6-7.
The Examiner is not persuaded, as WO ‘326 specifically teaches that the roofing membrane is suitable for use with several adhesive systems including liquid bond adhesive (butyl rubber adhesive), or a polyurethane adhesive or a pressure-sensitive adhesive, see p. 22, [0087]. Thus one of ordinary skill in the art would understand that typical pressure-sensitive adhesives suitable for roofing membranes would be expected to also be suitable for the roofing membrane of WO ‘326.
Applicant further argues that such a construction can only be attained from the use of hindsight reasoning, see p. 7-8 of the remarks. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The use of improper hindsight analysis is not required to reach this conclusion as the suggestion to use a pressure-sensitive adhesive is expressly taught in the WO ‘326 reference.
Applicant further argues that secondary considerations, in particular the evidence of unexpected results from paragraphs [0100-0103] and the accompanying Table, should be used to rebut the rejection. See p. 8 of the remarks.
The Examiner is not persuaded. MPEP § 716.02 describes the requirements to rebut a prima facie case of obviousness by relying upon unexpected results. In particular, MPEP § 716.02(d) notes that the unexpected results must be commensurate in scope with the claimed invention. To establish criticality of a claimed range, applicant should compare a sufficient number of tests both inside and outside the claimed ranges to show the criticality of the claimed range. See In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960); MPEP § 716.02(d)(II).
In the instant case, the data provided is not commensurate in scope with the claims. Claim 1 requires a multi-layered roofing membrane having a first and second polymeric layer, each with a thermoplastic polymer forming a polymeric matrix of the layer, and in which the second polymeric layer has from 1.0 to 25 wt. % of a maleated polyolefin. However, the examples use “thermoplastic membranes that included a functionalized thermoplastic polymer according to the present invention”, see paragraph [0100] of the original disclosure. It is unclear whether two layers are present, if the thermoplastic polymer forms a polymeric matrix as required, or if a maleated polyolefin is present and in what quantity. Even if these components are present, there are no examples which specify the quantity of maleated polyolefin and no comparative examples in which the quantity of maleated polyolefin is outside of the claimed range (such as not present, less than about 1 wt. %, or more than about 25 wt. %.). Thus the evidence of unexpected results is not commensurate in scope with the claims.
Applicant further argues that while Tang touts the fact that crosslinked polyacrylate elastomer provides membrane adhesion with higher operating temperature, Tang fails to recognize that crosslinked polyacrylates somehow have a synergistic effect with functionalized polyolefins to further improve the high temperature usefulness of the adhesion. Se p. 8 of the remarks. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., high temperature usefulness of the adhesion) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As the evidence of unexpected results is not commensurate in scope with the claims, the evidence of nonobviousness is insufficient to overcome the prima facie case of obviousness.
Accordingly, this 35 U.S.C. § 103 rejection is maintained.
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Wismans (U.S. Pub. 2020/0164624) describes a fiber-reinforced material comprising a polymeric matrix with maleated polyolefin but does not teach the use of this material for a roofing membrane.
Conclusion
All claims are rejected.
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 extension fee 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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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
