DETAILED ACTION
This Office action is a reply to the amendment filed on 4/14/2025. Currently, claims 1-7 and 21-33 are pending. Claims 8-20 have been cancelled. No claims have been withdrawn. No new claims have been added.
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.
Claim(s) 1-7 and 21-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mohseen et al. (US 7776417) (‘Mohseen’) in view of Georgeau et al. (US 20070088137) (‘Georgeau’) and further in view of Townsend et al. (US 20080006363) (‘Townsend’).
Claim 1, Mohseen teaches a roofing system comprising:
a roofing substrate (“substrates other than plywood, such as concrete” col. 5, lines 54-55),
wherein the roofing substrate comprises concrete (“substrates other than plywood, such as concrete” col. 5, lines 54-55), and
wherein the roofing substrate comprises a top surface (top surface of the substrate to which the membrane is applied; col. 5, lines 54-67);
a roofing membrane adhered to the roofing substrate (col. 11, lines 25-43); and
an adhesive on the top surface of the roofing substrate (“the lower exposed surface 6 of the bottom layer 4 is a non-weathering surface adapted to be adhered directly to the underlying surface”; col. 10, lines 27-30),
wherein the adhesive adheres the roofing membrane to the roofing substrate (“the adhesive component that does not come into contact with the transfer agent adheres to the substrate” col. 7, lines 56-59; col. 10, lines 48-61),
wherein the adhesive has a pattern (an adhesive pattern is formed as a result of applying a non-adhesive transfer chemical such that the portion of the adhesive that is not covered by the non-adhesive transfer chemical forms a pattern; “a transfer chemical is applied in a desired pattern onto the surface of the release liner that is in contact with the adhesive component” and “[u]pon removal of the release liner from the covering material only the portion of the adhesive component that does not come into contact with the transfer agent adheres to the substrate” col. 7, lines 50-61; “[a]ny suitable pattern covering the desired area may be used” col. 11, lines 54-55),
wherein the pattern forms venting channels (“[u]pon removal of the release liner from the covering material only the portion of the adhesive component that does not come into contact with the transfer agent adheres to the substrate” and “[t]his results in partial adhesion, which allows for necessary venting of the substrate surface” col. 7, lines 55-61), and
wherein the venting channels are configured to provide a pathway to expel moisture between the roofing substrate and the roofing membrane (“[t]he ‘spot attachment’ provides a route for the escape of latent moisture or pressure that may build up between the material and the substrate” col. 8, lines 29-31).
Mohseen does not teach the adhesive being a sprayed on liquid adhesive comprising a silane-terminated polymer, and the pattern comprising a spatter pattern.
However, Georgeau teaches a sprayed on liquid adhesive comprising a silane-terminated polymer (sprayed on [0018]-[0019]; liquid [0014] and [0049]; silane-terminated polymer [0026], [0028]-[0029]) used as an adhesive between a roofing substrate and a roofing membrane [0014]. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try using a sprayed on liquid adhesive comprising a silane-terminated polymer for the adhesive, with the reasonable expectation of success of utilizing a known, readily available material to adhere the roofing membrane to the roofing substrate that is free of volatile organic compounds (VOCs), safe for chronic exposure, non-flammable, and that has a high peel strength, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Regarding the pattern, Mohseen teaches the pattern being any suitable pattern (Mohseen col. 11, lines 54-55). Townsend teaches a roofing system comprising a liquid adhesive that can be sprayed on and applied in spatter pattern (Townsend, liquid [011], spatter pattern [0015]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the pattern as a spatter pattern, with the reasonable expectation of success of utilizing a known way to apply adhesive quickly and efficiently with low adhesive application rates.
Claim 2, as modified above, the combination of Mohseen, Georgeau and Townsend teaches all the limitations of claim 1, and further teaches wherein the spatter pattern comprises a randomized pattern of adhesive (Townsend; the spatter pattern is obtained by ejecting fine strands and/or globules of adhesive from a nozzle in an irregular pattern at relatively high speeds, and thus comprises a randomized pattern of adhesive; [0011]).
Claim 3, Mohseen further teaches wherein the adhesive covers 40% to 60% of the top surface of the roofing substrate (“[t]he portion of adhesion is generally over 30% but less than 100%, preferably 40-80%, and most preferably about 50% col. 11, lines 43-47; since Mohseen’s range falls within or overlaps with the claimed range, Mohseen meets the claim).
Claim 4, as modified above, the combination of Mohseen, Georgeau and Townsend teaches all the limitations of claim 1, and further teaches wherein the adhesive is a moisture-cure adhesive (Georgeau [0014]).
Claim 5, Mohseen further teaches wherein the roofing membrane comprises at least one of thermoplastic polyolefin (TPO), polyvinyl chloride (PVC), styrene-butadien-styrene (SBS) modified bitumen, polymethylmethacrylate (PMMA), or any combination thereof (TPO col. 2, line 52 and col. 12, line 63).
Claim 6, as modified above, the combination of Mohseen, Georgeau and Townsend teaches all the limitations of claim 1, and further teaches the adhesive having a thickness (the adhesive of Mohseen has a thickness; Fig. 1) and the adhesive being applied at variable application rates (Townsend [0012]). A thickness of 10 mils to 100 mils is not specified. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the adhesive having a thickness of 10 mils to 100 mils, with the reasonable expectation of success of providing a sufficiently strong attachment between the membrane and the substrate.
Claim 7, as modified above, the combination of Mohseen, Georgeau and Townsend teaches all the limitations of claim 1, and further teaches the roofing substrate being applied to a roof (Mohseen, Georgeau and Townsend each teach roofing applications).The examiner takes the position that titling the roofing substrate as a low slope roofing substrate does not define what makes the roofing substrate a low slope roofing substrate and thus under the broadest reasonable interpretation, Mohseen’s roofing substrate could be considered a low slope roofing substrate, or a roofing substrate used on a low slope roof. Georgeau further teaches that it is known for such roofing assemblies to be used to cover low sloped roofs (Georgeau [0003]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try using the roofing substrate as a low slope roofing substrate, with the reasonable expectation of using the roofing substrate on a low slope roof.
Claim 21, as modified above, the combination of Mohseen, Georgeau and Townsend teaches all the limitations of claim 1, and further teaches the adhesive having a relatively low viscosity (Georgeau “less than 10,000 centipoise, more preferably less than 5,000 centipoise, and more typically about 3,500 centipoise or less as determined at room temperature). A viscosity at a temperature of 73 [degrees] C is not specified. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try using an adhesive having a viscosity from 500 cp to 500,000 cp at 73 [degrees] C, with the reasonable expectation of success of permitting the adhesive to be sprayable and create a sufficiently strong bond between the membrane and the substrate, since 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).
Claim 22, Mohseen further teaches wherein the adhesive provides the venting channels between the roofing membrane and the roofing substrate (col. 7, lines 50-61; col. 8, lines 29-31).
Claim 23, Mohseen teaches a roofing system comprising:
a roofing substrate (“substrates other than plywood, such as concrete” col. 5, lines 54-55), wherein the roofing substrate comprises concrete (“substrates other than plywood, such as concrete” col. 5, lines 54-55);
a roofing membrane (col. 11, lines 25-43); and
an adhesive between the roofing substrate and the roofing membrane (“the lower exposed surface 6 of the bottom layer 4 is a non-weathering surface adapted to be adhered directly to the underlying surface”; col. 10, lines 27-30), wherein the adhesive adheres the roofing membrane to the roofing substrate (“the adhesive component that does not come into contact with the transfer agent adheres to the substrate” col. 7, lines 56-59; col. 10, lines 48-61), and wherein the adhesive has a pattern (an adhesive pattern is formed as a result of applying a non-adhesive transfer chemical such that the portion of the adhesive that is not covered by the non-adhesive transfer chemical forms a pattern; “a transfer chemical is applied in a desired pattern onto the surface of the release liner that is in contact with the adhesive component” and “[u]pon removal of the release liner from the covering material only the portion of the adhesive component that does not come into contact with the transfer agent adheres to the substrate” col. 7, lines 50-61; “[a]ny suitable pattern covering the desired area may be used” col. 11, lines 54-55), wherein the pattern forms venting channels (“[u]pon removal of the release liner from the covering material only the portion of the adhesive component that does not come into contact with the transfer agent adheres to the substrate” and “[t]his results in partial adhesion, which allows for necessary venting of the substrate surface” col. 7, lines 55-61), and wherein the venting channels are configured to provide a pathway to expel moisture between the roofing substrate and the roofing membrane (“[t]he ‘spot attachment’ provides a route for the escape of latent moisture or pressure that may build up between the material and the substrate” col. 8, lines 29-31).
Mohseen does not teach the adhesive being a sprayed on liquid adhesive comprising a silane-terminated polymer, and the pattern comprising a spatter pattern, and does not specify that the roofing substrate is a low slope roofing substrate.
However, Georgeau teaches a sprayed on liquid adhesive comprising a silane-terminated polymer (sprayed on [0018]-[0019]; liquid [0014] and [0049]; silane-terminated polymer [0026], [0028]-[0029]) used as an adhesive between a roofing substrate and a roofing membrane [0014]. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try using a sprayed on liquid adhesive comprising a silane-terminated polymer for the adhesive, with the reasonable expectation of success of utilizing a known, readily available material to adhere the roofing membrane to the roofing substrate that is free of volatile organic compounds (VOCs), safe for chronic exposure, non-flammable, and that has a high peel strength, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Regarding the pattern, Mohseen teaches the pattern being any suitable pattern (Mohseen col. 11, lines 54-55). Townsend teaches a roofing system comprising a liquid adhesive that can be sprayed on and applied in spatter pattern (Townsend, liquid [0011], spatter pattern [0015]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the pattern as a spatter pattern, with the reasonable expectation of success of utilizing a known way to apply adhesive quickly and efficiently with low adhesive application rates.
Regarding the roofing substrate being a low slope roofing substrate, the examiner takes the position that such limitation does not define what makes the roofing substrate a low slope roofing substrate and thus under the broadest reasonable interpretation, Mohseen’s roofing substrate could be considered a low slope roofing substrate, or a roofing substrate used on a low slope roof. Georgeau further teaches that it is known for such roofing assemblies to be used to cover low sloped roofs (Georgeau [0003]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try using the roofing substrate as a low slope roofing substrate, with the reasonable expectation of using the roofing substrate on a low slope roof.
Claim 24, as modified above, the combination of Mohseen, Georgeau and Townsend teaches all the limitations of claim 23, and further teaches wherein the spatter pattern comprises a randomized pattern of adhesive (Townsend; the spatter pattern is obtained by ejecting fine strands and/or globules of adhesive from a nozzle in an irregular pattern at relatively high speeds, and thus comprises a randomized pattern of adhesive; [0011]).
Claim 25, Mohseen further teaches wherein the adhesive covers 40% to 60% of the top surface of the roofing substrate (“[t]he portion of adhesion is generally over 30% but less than 100%, preferably 40-80%, and most preferably about 50% col. 11, lines 43-47; since Mohseen’s range falls within or overlaps with the claimed range, Mohseen meets the claim).
Claim 26, as modified above, the combination of Mohseen, Georgeau and Townsend teaches all the limitations of claim 23, and further teaches wherein the adhesive is a moisture-cure adhesive (Georgeau [0014]).
Claim 27, Mohseen further teaches wherein the roofing membrane comprises at least one of thermoplastic polyolefin (TPO), polyvinyl chloride (PVC), styrene-butadien-styrene (SBS) modified bitumen, polymethylmethacrylate (PMMA), or any combination thereof (TPO col. 2, line 52 and col. 12, line 63).
Claim 28, as modified above, the combination of Mohseen, Georgeau and Townsend teaches all the limitations of claim 23, and further teaches the adhesive having a thickness (the adhesive of Mohseen has a thickness; Fig. 1) and the adhesive being applied at variable application rates (Townsend [0012]). A thickness of 10 mils to 100 mils is not specified. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the adhesive having a thickness of 10 mils to 100 mils, with the reasonable expectation of success of providing a sufficiently strong attachment between the membrane and the substrate.
Claim 29, Mohseen teaches a roofing system comprising:
a roofing substrate (“substrates other than plywood, such as concrete” col. 5, lines 54-55), wherein the roofing substrate comprises concrete (“substrates other than plywood, such as concrete” col. 5, lines 54-55);
a roofing component (membrane col. 11, lines 25-43); and
an adhesive (“the lower exposed surface 6 of the bottom layer 4 is a non-weathering surface adapted to be adhered directly to the underlying surface”; col. 10, lines 27-30) between the roofing substrate and the roofing component (col. 10, lines 27-30), wherein the adhesive adheres the roofing component to the roofing substrate (“the adhesive component that does not come into contact with the transfer agent adheres to the substrate” col. 7, lines 56-59; col. 10, lines 48-61), and wherein the adhesive has a pattern (an adhesive pattern is formed as a result of applying a non-adhesive transfer chemical such that the portion of the adhesive that is not covered by the non-adhesive transfer chemical forms a pattern; “a transfer chemical is applied in a desired pattern onto the surface of the release liner that is in contact with the adhesive component” and “[u]pon removal of the release liner from the covering material only the portion of the adhesive component that does not come into contact with the transfer agent adheres to the substrate” col. 7, lines 50-61; “[a]ny suitable pattern covering the desired area may be used” col. 11, lines 54-55), wherein the pattern comprises venting channels (“[u]pon removal of the release liner from the covering material only the portion of the adhesive component that does not come into contact with the transfer agent adheres to the substrate” and “[t]his results in partial adhesion, which allows for necessary venting of the substrate surface” col. 7, lines 55-61), and wherein the venting channels are configured to provide a pathway to expel moisture between the roofing substrate and the roofing component (“[t]he ‘spot attachment’ provides a route for the escape of latent moisture or pressure that may build up between the material and the substrate” col. 8, lines 29-31).
Mohseen does not teach the adhesive being a sprayed on liquid adhesive comprising a silane-terminated polymer, and the pattern comprising a spatter pattern, and does not specify that the roofing substrate is a low slope roofing substrate.
However, Georgeau teaches a sprayed on liquid adhesive comprising a silane-terminated polymer (sprayed on [0018]-[0019]; liquid [0014] and [0049]; silane-terminated polymer [0026], [0028]-[0029]) used as an adhesive between a roofing substrate and a roofing membrane [0014]. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try using a sprayed on adhesive comprising a silane-terminated polymer for the adhesive, with the reasonable expectation of success of utilizing a known, readily available material to adhere the roofing membrane to the roofing substrate that is free of volatile organic compounds (VOCs), safe for chronic exposure, non-flammable, and that has a high peel strength, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Regarding the pattern, Mohseen teaches the pattern being any suitable pattern (Mohseen col. 11, lines 54-55). Townsend teaches a roofing system comprising a liquid adhesive that can be sprayed on and applied in spatter pattern (Townsend, liquid [0011], spatter pattern [0015]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try forming the pattern as a spatter pattern, with the reasonable expectation of success of utilizing a known way to apply adhesive quickly and efficiently with low adhesive application rates.
Regarding the roofing substrate being a low slope roofing substrate, the examiner takes the position that such limitation does not define what makes the roofing substrate a low slope roofing substrate and thus under the broadest reasonable interpretation, Mohseen’s roofing substrate could be considered a low slope roofing substrate, or a roofing substrate used on a low slope roof. Georgeau further teaches that it is known for such roofing assemblies to be used to cover low sloped roofs (Georgeau [0003]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try using the roofing substrate as a low slope roofing substrate, with the reasonable expectation of using the roofing substrate on a low slope roof.
Claim 30, Mohseen further teaches wherein a material of the roofing component comprises at least one of thermoplastic polyolefin (TPO), polyvinyl chloride (PVC), styrene-butadien-styrene (SBS) modified bitumen, polymethylmethacrylate (PMMA), or any combination thereof (TPO col. 2, line 52 and col. 12, line 63).
Claim 31, as modified above, the combination of Mohseen, Georgeau and Townsend teaches all the limitations of claim 29, and further teaches wherein the spatter pattern comprises a randomized pattern of adhesive (Townsend; the spatter pattern is obtained by ejecting fine strands and/or globules of adhesive from a nozzle in an irregular pattern at relatively high speeds, and thus comprises a randomized pattern of adhesive; [0011]).
Claim 32, Mohseen further teaches wherein the adhesive covers 40% to 60% of the top surface of the roofing substrate (“[t]he portion of adhesion is generally over 30% but less than 100%, preferably 40-80%, and most preferably about 50% col. 11, lines 43-47; since Mohseen’s range falls within or overlaps with the claimed range, Mohseen meets the claim).
Claim 33, as modified above, the combination of Mohseen, Georgeau and Townsend teaches all the limitations of claim 29, and further teaches wherein the adhesive is a moisture-cure adhesive (Georgeau [0014]).
Response to Arguments
Applicant's arguments filed 4/14/2025 have been fully considered but they are not persuasive.
Rejection of claim(s) 1-7 and 21-33 under 35 U.S.C. 103 as being unpatentable over Mohseen et al. (US 7776417) (‘Mohseen’) in view of Georgeau et al. (US 20070088137) (‘Georgeau’) and further in view of Townsend et al. (US 20080006363) (‘Townsend’).
Re claim 1, applicant argues that combination of Mohseen, Georgeau and Townsend allegedly does not teach a sprayed on liquid adhesive, and that it allegedly would not have been obvious to modify Mohseen’s adhesive to be a sprayed on liquid.
In response, it is noted that claim 1 is a product claim and the method of applying the adhesive does not depend on the process of making it. The process of making the product (i.e. spraying a liquid adhesive) would not be expected to impart distinctive structural characteristics to the roofing system. A comparison of the recited process with the prior art processes does NOT serve to resolve the issue concerning patentability of the product. In re Fessman, 489 F2d 742, 180 USPQ 324 (CCPA 1974). Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. In re Klug, 333 F2d 905, 142 USPQ 161 (CCPA 1964). In an ex parte case, product-by process claims are not construed as being limited to the product formed by the specific process recited. In re Hirao et al., 535 F2d 67, 190 USPQ 15, see footnote 3 (CCPA 1976). The fact that Mohseen uses a transfer chemical to form the pattern does not preclude Mohseen’s adhesive from reading on the claimed invention. Applying the adhesive as a sprayed on a liquid adhesive would not result in a structural difference of the claimed roofing system. Therefore, the claimed roofing system is not a different and unobvious roofing system of the combination of Mohseen, Georgeau and Townsend.
In response to applicant’s argument against Mohseen individually not teaching the adhesive being a sprayed on adhesive, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Claims 2-7 and 21-33 stand or fall with claim 1 as above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M FERENCE whose telephone number is (571)270-7861. The examiner can normally be reached M-F 7-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached on 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/ Primary Examiner, Art Unit 3635