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
Applicant's amendments and remarks filed on 5/5/26 have been entered and considered. Claims 1 and 11 have been amended and claims 1 – 19 are pending. In view of Applicant’s amendment to claims 1 and 11, the Examiner has withdrawn the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, rejection as failing to comply with the written description requirement rejection and rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite. Additionally, in light of Applicant’s amendments, the Examiner has withdrawn the 35 USC 103 rejection as being unpatentable over Wilson (US 5,019,315) alone and in view of Manrique et al. (EP 2,883,683). The invention as currently claimed is not found to be patentable for reasons herein below.
Response to Arguments
Applicant’s arguments with respect to claims 1 – 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
Claims 1 – 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant indicates in the arguments on page 7 of the Remarks dated 5/5/26 that the property of “melding” is a function of the membrane’s specialized polymer composition (here, a LLDPE formulation). Paragraph [0039] of Applicant’s Specification contains the only information regarding the nature of the LLDPE formulation shown below and this appears to be a description of any LLDPE:
The water impermeable membrane may comprise a linear low-density polyethylene (LLDPE), which is a substantially linear polymer (polyethylene), with significant numbers of short branches, commonly made by copolymerization of ethylene with longer-chain olefins. LLDPE polymer has a narrower molecular weight distribution than conventional LDPE and in combination with the linear structure, significantly different rheological properties.
No details have been provided regarding any other parameters for the LLDPE that would allow one to make or use the formulation to provide a membrane that “melds”. The prior art previously applied, Wilson (US 5,019,315), teaches LLDPE cling wrap but Applicant indicates this would not “meld” as claimed. The description does not provide any examples or information of such a combination that meets this requirement. The specification further provides exceptionally broad guidance which appears to be generic to any linear low-density LLDPE and not any detail which would create “meld” property as claimed. Thus, there is no information sufficient to show that Applicant was in possession of the claimed genus of any LLDPE membrane that has a meld function (see MPEP 2163-II-A-1-ii).
Claims 1 – 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Per MPEP 2164, the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Minerals Separation Ltd. V. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable?
The breadth of the claims
The independent claims read as follows:
(Currently amended) A large-width, single-ply temporary membrane for a roof comprising:a sheet of a linear low density polyethylene (LLDPE) having a modulus of elasticity of at least 4 megapascals and a stretch percentage of at least 5%;wherein said sheet is self-adhering to itself without application of heat and without application of an adhesive such that when overlapping portions of the sheet contact one another, they meld together and form one integrated portion of water impermeable membrane and wherein said sheet is water impermeable and ultraviolet (UV) light resistant.
(Currently amended) A large-width, single-ply temporary membrane for a roof comprising: a sheet of a linear low density polyethylene (LLDPE) having a modulus of elasticity of at least 4 megapascals and a stretch percentage of at least 5%;wherein said sheet is self-adhering to itself without application of heat and without application of an adhesive such that when overlapping portions of the sheet contact one another, they meld together and form one integrated portion of water impermeable membrane; and wherein said sheet is water impermeable, ultraviolet (UV) light resistant and has a Flame Spread Index of 0.
The state of the prior art and (D) The level of one of ordinary skill
The prior art as whole teach membranes/films comprising LLDPE that are attached by means of:
Mechanical attachments
Adhesives
Heat
Static cling
However, the prior art as a whole does not disclose how one would modify the chemical nature of LLDPE to “meld…and form one integrated portion of water impermeable membrane” as required by claims 1 and 11. Applicant provides a definition in the arguments of “meld” dated 5/5/26. It should be noted that this definition is newly provided and not disclosed in the Specification.
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According to Merriam Webster, the term “meld” is broader than as Applicant has construed it, namely, merge or blend (see included Merriam Webster definition with Office Action). Even with the broader definition of “meld”, a formulation of LLDPE would require additional modification which is not disclosed in the prior art or in Applicant’s Specification.
(F) The amount of direction provided by the inventor
The Specification provides minimal information regarding the nature of the temporary membrane for a roof. Specifically, in the bolded and underlined sections below is the only disclosure in the Specification regarding the LLDPE used to create the membrane. Additionally, in the arguments dated 5/5/26, Applicant discusses the nature of the membrane in relation to the newly claimed “meld” limitation. First, Applicant provides a definition in the arguments of “meld” as shown below.
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It should be noted that this definition is newly provided and not disclosed in the Specification. According to Merriam Webster, the term “meld” is broader than as Applicant has construed it, namely, merge or blend (see included Merriam Webster definition with Office Action).
Additionally, Applicant indicates in the arguments on page 7 of the Remarks dated 5/5/26 that the property of “melding” is a function of the membrane’s specialized polymer composition (here, a LLDPE formulation). However, after review of the Specification (see bolded and underlined sections of paragraphs [0012], [0039], [0040]) there is no disclosure to anything more specific than use of a LLDPE membrane. No details have been provided regarding any other parameters for the LLDPE that would allow one to make or use the formulation to provide a membrane that “melds”.
[0012] In one embodiment, a large-width, single-ply temporary membrane for a roof includes a sheet of a linear low density polyethylene (LLDPE) having a modulus of elasticity of at least 4 megapascals and a stretch percentage of at least 5%, wherein said sheet is self- adhering with a tensile adhesion strength of at least 1 psi when adhered to itself; and wherein said sheet is water impermeable and ultraviolet (UV) light resistant.
[0039] FIG. 9 is an illustration of a perspective view of a residential structure 900 with
a damaged roof 902, as the proposed system and method for temporary protection of a damaged roof is applied, according to one embodiment. The proposed system utilizes a water impermeable membrane that is not heat shrinkable. Further, the membrane may be self- adhesive and may meld with a membrane of the same type. That is, when two pieces of said membrane are placed adjacent to, or contacting, one another, the two pieces of the membrane may meld together or adhere to each other and become one integrated portion of water impermeable membrane. The water impermeable membrane may be used in a variety of thicknesses, clarities, strengths and shrink ratios. The water impermeable membrane may comprise a linear low-density polyethylene (LLDPE), which is a substantially linear polymer (polyethylene), with significant numbers of short branches, commonly made by copolymerization of ethylene with longer-chain olefins. LLDPE polymer has a narrower molecular weight distribution than conventional LDPE and in combination with the linear structure, significantly different rheological properties. The membrane may be a High Performance Blown Extrusion film that has superior elasticity and tear resistance, as well as slip resistant and clings to itself.
[0040] The membrane may be a large-width, single-ply temporary membrane
comprising a sheet of a linear low density polyethylene (LLDPE) having a modulus of elasticity of at least 4 megapascals and a stretch percentage of at least 5% (alternatively, 10% and 50%), wherein said sheet is self-adhering with a tensile adhesion strength of at least 1 pound per square inch (psi) when adhered to itself, and wherein said sheet is water impermeable and ultraviolet (UV) light resistant.
(G) The existence of working examples
The Specification has no working examples of the large-width, single-ply temporary membrane for a roof.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
The level of experimentation would be high and undue as the prior art as a whole and Applicant’s Specification provides no guidance as to how one would make or use
a large-width, single-ply temporary membrane for a roof comprising: a sheet of a linear low density polyethylene (LLDPE) having a modulus of elasticity of at least 4 megapascals and a stretch percentage of at least 5%;wherein said sheet is self-adhering to itself without application of heat and without application of an adhesive such that when overlapping portions of the sheet contact one another, they meld together and form one integrated portion of water impermeable membrane;
Claims 1 – 19 are 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.
Applicant has amended claims 1 and 11 to require “said sheet is self-adhering to itself without application of heat”. Some temperatures can be considered as heat to one user while the same temperature may not be considered to be heat to another user. Applicant does not provide a definition of “heat” in the Specification. What temperatures or conditions are considered to be “heat” vs. “without application of heat” to determine the meets and bounds of the claim? Also, it is unclear how the membrane can be supplied on a roll (see paragraph [0043]) yet would be functional to apply to a roof where it would meld but not meld when in roll form if it requires that it is self-adhering without application of heat.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JENNIFER A BOYD whose telephone number is (571)272-7783. The examiner can normally be reached M-F 8 am - 5 pm with alternating Fridays off.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sri Kumar can be reached at (571) 272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BOYD/Supervisory Patent Examiner, Art Unit 1786
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