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 .
Status of Application
Applicant’s amendments filed on 11/21/2025 have been entered.
Claims 1, 5, 12-14, 16-18, 27, 30, 32-34 and 36-41 are currently pending.
Claim 1 has been amended.
Claim 10 has been canceled.
Claim 40-41 are new claims.
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.
Claim 41 is 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.
Regarding Claim 41, the water vapor permeance value of at least 75 perms is new matter. The initially filed Specification recites “the porous membrane exhibit a water vapor permeance value from 5 to about 80 perms, 10 to 80 perms, 15 to 80 perms, 20 to 80 perms, 25 to 80 perms, 30 to 80 perms, 35 to 80 perms, 40 to 80 perms, 45 to 80 perms, 50 to 80 perms, 55 to 80 perms, 60 to 80 perms, 65 to 80 perms, 70 to 80 perms, or 75 to 80 perms”. (Page 15). The range of at least 75 perms is broader than the initially filed Specification and fails to the comply with written description requirement.
Claims 40 and 41 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.
Regarding Claims 40 and 41, there is an antecedent basis issue for “the microporous membrane” that renders the claims indefinite.
Claim Rejections - 35 USC § 103
Claims 1, 5, 12-14, 16-18, 27, 30, 32-34, 39 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Alexander (WO 2019/074866 A1) in view of Cashin et al. (US 2012/0096791 A1).
Regarding Claim 1, Alexander teaches a building material (Abstract) comprising a porous membrane that comprises a thermoplastic polymer, at least one filler, at least one extractable or removable processing oil, plasticizer or solvent. (Claim 1 of Alexander; Page 6). Alexander teaches the porous membrane can have a water penetration resistance, measured under AATCC-127, of greater than 150 cm or greater than 200 cm. (Page 12). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Alexander teaches a scrim, a reinforcing layer, on at least one side of the porous membrane to form a reinforced porous membrane. (Abstract).
Alexander teaches the porous membrane can have a water penetration resistance, measured under AATCC-127, of greater than 150 cm or greater than 200 cm. (Page 12). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Alexander teaches this ensure the building material is sufficiently water resistant. (Page 12) Thus, it would have been obvious to one with ordinary skill in the art to ensure the reinforced porous membrane has the claimed water penetration resistance to have good water resistance. Furthermore, if the porous membrane has a greater than 150 cm water resistance penetration, than the reinforced porous membrane must also at least have a 150 cm water resistance penetration because the layer with the highest water resistance penetration would set the minimum water penetration resistance range for the entire reinforced porous membrane.
Alexander does not specifically teach water vapor value range, but does teach the building material should be breathable and can operate as roofing underlayment (Page 4).
Cashin teaches a roofing underlayment (Abstract). Cashin teachings roofing underlayment should have breathability when operating as barrier and should have water vapor permeance of 5 perm or greater. (Paragraph 0028). This overlaps the claimed range. Thus, it would have been obvious to one with ordinary skill in the art to set the water vapor permeance to the claimed range to ensure the building material of Alexander can operate as a roofing underlayment have sufficient breathability to operate as a roofing underlayment.
Regarding Claim 5, Alexander teaches the scrim is non-woven. (Page 15).
Regarding Claim 12, Alexander teaches the porous membrane is hydrophobic. (Page 5).
Regarding Claims 13-14, Alexander teaches the reinforced porous membrane is hydrophobic. (Page 5).
Regarding Claim 16, Alexander teaches the membrane is microporous. (Abstract).
Regarding Claim 17, Alexander teaches the reinforced porous membrane can be part of a building wrap, where the building wrap has a drainage efficiency, measured using ASTM E2273, of at least 80%. (Page 7). Therefore, it would have been obvious to one with ordinary skill in art to also ensure the reinforced porous membrane also has the same drainage efficiency to ensure proper drainage when used in a building wrap.
Regarding Claim 18, Alexander teaches the reinforced porous membrane can be part of a building wrap, where the building wrap has a drainage efficiency, measured using ASTM E2273, of at least 80%. (Page 7). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Therefore, it would have been obvious to one with ordinary skill in art to also ensure the reinforced porous membrane also has the same drainage efficiency to ensure proper drainage when used in a building wrap.
Regarding Claim 27, Alexander teaches an adhesive layer that covers the entire surface of the porous membrane, continuous adhesive layer on at least one surface of the porous membrane. (Page 15).
Alexander does not specifically teach water vapor value range, but does teach the building material should be breathable and can operate as roofing underlayment (Page 4).
Cashin teaches a roofing underlayment (Abstract). Cashin teachings roofing underlayment should have breathability when operating as barrier and should have water vapor permeance of 5 perm or greater. This overlaps the claimed range. Thus, it would have been obvious to one with ordinary skill in the art to set the water vapor permeance of the porous membrane with the adhesive to the claimed range to ensure the building material of Alexander can operate as a roofing underlayment have sufficient breathability to operate as a roofing underlayment.
Regarding Claim 30, Alexander teaches the thermoplastic polymer can be polyethylene or polypropylene, which are polyolefins. (Page 5).
Regarding Claim 32, Alexander teaches the non-woven material can be a polyolefin. (Page 15).
Regarding Claim 33-34, Alexander teaches a polymer mesh on at least one side of the porous membrane, where the mesh is attached without adhesive. (Page 16).
Regarding Claim 39, Alexander teaches an adhesive layer that covers the entire surface of the porous membrane, continuous adhesive layer on at least one surface of the porous membrane. (Page 15).
Alexander does not specifically teach water vapor value range, but does teach the building material should be breathable and can operate as roofing underlayment (Page 4).
Cashin teaches a roofing underlayment (Abstract). Cashin teachings roofing underlayment should have breathability when operating as barrier and should have water vapor permeance of 5 perm or greater. This overlaps the claimed range. Thus, it would have been obvious to one with ordinary skill in the art to set the water vapor permeance to the claimed range to ensure the building material of Alexander can operate as a roofing underlayment have sufficient breathability to operate as a roofing underlayment.
Regarding Claim 41, Alexander teaches a building material (Abstract) comprising a porous membrane that comprises a thermoplastic polymer, at least one filler, at least one extractable or removable processing oil, plasticizer or solvent. (Claim 1 of Alexander; Page 6). Alexander teaches the porous membrane can have a water penetration resistance, measured under AATCC-127, of greater than 150 cm or greater than 200 cm. (Page 12). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Alexander teaches a scrim, a reinforcing layer, on at least one side of the porous membrane to form a reinforced porous membrane. (Abstract).
Alexander teaches the porous membrane can have a water penetration resistance, measured under AATCC-127, of greater than 150 cm or greater than 200 cm. (Page 12). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Alexander teaches this ensure the building material is sufficiently water resistant. (Page 12) Thus, it would have been obvious to one with ordinary skill in the art to ensure the reinforced membrane has the claimed water penetration resistance to have good water resistance. Furthermore, if the porous membrane has a greater than 150 cm water resistance penetration, than the reinforced porous membrane must also at least have a 150 cm water resistance penetration because the layer with the highest water resistance penetration would set the minimum water penetration resistance range for the entire reinforced porous membrane.
Alexander does not specifically teach water vapor value range, but does teach the building material should be breathable and can operate as roofing underlayment (Page 4).
Cashin teaches a roofing underlayment (Abstract). Cashin teachings roofing underlayment should have breathability when operating as barrier and should have water vapor permeance of 5 perm or greater. (Paragraph 0028). This overlaps the claimed range. Thus, it would have been obvious to one with ordinary skill in the art to set the water vapor permeance to the claimed range to ensure the building material of Alexander can operate as a roofing underlayment have sufficient breathability to operate as a roofing underlayment.
Claims 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over Alexander and Cashin in view of Porter (US 2004/0214489 A1).
Regarding Claim 36-37, Alexander does not specifically teach the mesh is attached with an adhesive or the mesh and a reinforcing layer joined together with an adhesive.
Porter teaches a building material with a microporous layer (Abstract; Paragraph 0012-0013), where a mesh/scrim is attached to the microporous layer via adhesive and the mesh is attached to a reinforcing layer via adhesive (Paragraph 0033, 0055). (Paragraph 0033; Fig. 1). Porter teaches this arrangement of the layer ensures the building material remains breathable, but maximizes the tear strength of the building material. (Paragraph 0055). Thus, it would have been obvious to one with ordinary skill in the art to apply a scrim/mesh with adhesive to the porous membrane and attach a reinforcing layer to the mesh via an adhesive to increase the tear strength of the building material of Alexander.
Regarding Claim 38, Alexander does not teach both a mesh and the reinforcing layer are attached to the porous membrane without an adhesive.
Porter teaches a building material with a microporous layer (Abstract; Paragraph 0012-0013), where a mesh/scrim is attached to the microporous layer via thermal lamination and the mesh is attached to a reinforcing layer via thermal lamination (Paragraph 0033, 0055). Porter teaches this arrangement of the layer ensures the building material remains breathable, but maximizes the tear strength of the building material. (Paragraph 0055). Thus, it would have been obvious to one with ordinary skill in the art to apply a scrim/mesh to the reinforcing layer of building material of Alexander to increase the tear strength of the building material of Alexander.
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Alexander.
Regarding Claim 40, Alexander teaches a building material (Abstract) comprising a porous membrane that comprises a thermoplastic polymer, at least one filler, at least one extractable or removable processing oil, plasticizer or solvent. (Claim 1 of Alexander; Page 6). Alexander teaches the porous membrane can have a water penetration resistance, measured under AATCC-127, of greater than 150 cm or greater than 200 cm. (Page 12). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Alexander teaches a scrim, a reinforcing layer, on at least one side of the porous membrane to form a reinforced porous membrane. (Abstract).
Alexander teaches the porous membrane can have a water penetration resistance, measured under AATCC-127, of greater than 150 cm or greater than 200 cm. (Page 12). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Alexander teaches this ensure the building material is sufficiently water resistant. (Page 12) Thus, it would have been obvious to one with ordinary skill in the art to ensure the reinforced membrane has the claimed water penetration resistance to have good water resistance. Furthermore, if the porous membrane has a greater than 150 cm water resistance penetration, than the reinforced porous membrane must also at least have a 150 cm water resistance penetration because the layer with the highest water resistance penetration would set the minimum water penetration resistance range for the entire reinforced porous membrane.
Claims 1, 5, 12-14, 16-18, 27, 30, 32-34, 39 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Alexander (WO 2019/074866 A1) in view of Sandhar et al. (US 2022/0016876 A1).
Regarding Claim 1, Alexander teaches a building material (Abstract) comprising a microporous membrane that comprises a thermoplastic polymer, at least one filler, at least one extractable or removable processing oil, plasticizer or solvent. (Claim 1 of Alexander; Page 6). Alexander teaches the porous membrane can have a water penetration resistance, measured under AATCC-127, of greater than 150 cm or greater than 200 cm. (Page 12). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Alexander teaches a scrim, a reinforcing layer, on at least one side of the porous membrane to form a reinforced porous membrane. (Abstract).
Alexander teaches the porous membrane can have a water penetration resistance, measured under AATCC-127, of greater than 150 cm or greater than 200 cm. (Page 12). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Alexander teaches this ensure the building material is sufficiently water resistant. (Page 12) Thus, it would have been obvious to one with ordinary skill in the art to ensure the reinforced membrane has the claimed water penetration resistance to have good water resistance. Furthermore, if the porous membrane has a greater than 150 cm water resistance penetration, than the reinforced porous membrane must also at least have a 150 cm water resistance penetration because the layer with the highest water resistance penetration would set the minimum water penetration resistance range for the entire reinforced porous membrane.
Alexander does not specifically teach water vapor value range, but does teach the building material should be breathable and can operate as roofing underlayment (Page 4).
Sandhar teaches a roofing underlayment (Abstract) which has a water vapor permeance value of at least 10 perms measured under ASTEM E96. (Paragraph 0020). This value overlaps the claimed range. Sandhar teaches having this water vapor permeance range ensures the roofing deck to dry faster than conventional underlayments. (Paragraph 0021). Thus, it would have been obvious to one with ordinary skill in the art to have the building material to have the claimed range for water vapor permeance for improved roof drying as taught by Sandhar.
Regarding Claim 5, Alexander teaches the scrim is non-woven. (Page 15).
Regarding Claim 12, Alexander teaches the porous membrane is hydrophobic. (Page 5).
Regarding Claims 13-14, Alexander teaches the reinforced porous membrane is hydrophobic. (Page 5).
Regarding Claim 16, Alexander teaches the membrane is microporous. (Abstract).
Regarding Claim 17, Alexander teaches the reinforced porous membrane can be part of a building wrap, where the building wrap has a drainage efficiency, measured using ASTM E2273, of at least 80%. (Page 7). Therefore, it would have been obvious to one with ordinary skill in art to also ensure the reinforced porous membrane also has the same drainage efficiency to ensure proper drainage when used in a building wrap.
Regarding Claim 18, Alexander teaches the reinforced porous membrane can be part of a building wrap, where the building wrap has a drainage efficiency, measured using ASTM E2273, of at least 80%. (Page 7). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Therefore, it would have been obvious to one with ordinary skill in art to also ensure the reinforced porous membrane also has the same drainage efficiency to ensure proper drainage when used in a building wrap.
Regarding Claim 27, Alexander teaches an adhesive layer that covers the entire surface of the porous membrane, continuous adhesive layer on at least one surface of the porous membrane. (Page 15).
Alexander does not specifically teach water vapor value range, but does teach the building material should be breathable and can operate as roofing underlayment (Page 4).
Sandhar teaches a roofing underlayment (Abstract) which has a water vapor permeance value of at least 10 perms measured under ASTEM E96. (Paragraph 0020). This value overlaps the claimed range. Sandhar teaches having this water vapor permeance range ensures the roofing deck to dry faster than conventional underlayments. (Paragraph 0021). it would have been obvious to one with ordinary skill in the art to set the water vapor permeance of the porous membrane with the adhesive to the claimed range to for water vapor permeance for improved roof drying as taught by Sandhar.
Regarding Claim 30, Alexander teaches the thermoplastic polymer can be polyethylene or polypropylene, which are polyolefins. (Page 5).
Regarding Claim 32, Alexander teaches the non-woven material can be a polyolefin. (Page 15).
Regarding Claim 33-34, Alexander teaches a polymer mesh on at least one side of the porous membrane, where the mesh is attached without adhesive. (Page 16).
Regarding Claim 39, Alexander teaches an adhesive layer that covers the entire surface of the microporous membrane, continuous adhesive layer on at least one surface of the porous membrane. (Page 15).
Alexander does not specifically teach water vapor value range, but does teach the building material should be breathable and can operate as roofing underlayment (Page 4).
Sandhar teaches a roofing underlayment (Abstract) which has a water vapor permeance value of at least 10 perms measured under ASTEM E96. (Paragraph 0020). This value overlaps the claimed range. Sandhar teaches having this water vapor permeance range ensures the roofing deck to dry faster than conventional underlayments. (Paragraph 0021). Thus, it would have been obvious to one with ordinary skill in the art to have the building material to have the claimed range for water vapor permeance for improved roof drying as taught by Sandhar.
Regarding Claim 41, Alexander teaches a building material (Abstract) comprising a porous membrane that comprises a thermoplastic polymer, at least one filler, at least one extractable or removable processing oil, plasticizer or solvent. (Claim 1 of Alexander; Page 6). Alexander teaches the porous membrane can have a water penetration resistance, measured under AATCC-127, of greater than 150 cm or greater than 200 cm. (Page 12). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Alexander teaches a scrim, a reinforcing layer, on at least one side of the porous membrane to form a reinforced porous membrane. (Abstract).
Alexander teaches the porous membrane can have a water penetration resistance, measured under AATCC-127, of greater than 150 cm or greater than 200 cm. (Page 12). This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Alexander teaches this ensure the building material is sufficiently water resistant. (Page 12) Thus, it would have been obvious to one with ordinary skill in the art to ensure the reinforced membrane has the claimed water penetration resistance to have good water resistance. Furthermore, if the porous membrane has a greater than 150 cm water resistance penetration, than the reinforced porous membrane must also at least have a 150 cm water resistance penetration because the layer with the highest water resistance penetration would set the minimum water penetration resistance range for the entire reinforced porous membrane.
Alexander does not specifically teach water vapor value range, but does teach the building material should be breathable and can operate as roofing underlayment (Page 4).
Sandhar teaches a roofing underlayment (Abstract) which has a water vapor permeance value of at least 10 perms measured under ASTEM E96. (Paragraph 0020). This value overlaps the claimed range. Sandhar teaches having this water vapor permeance range ensures the roofing deck to dry faster than conventional underlayments. (Paragraph 0021). Thus, it would have been obvious to one with ordinary skill in the art to have the building material to have the claimed range for water vapor permeance for improved roof drying as taught by Sandhar.
Claims 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over Alexander and Sandhar in view of Porter (US 2004/0214489 A1).
Regarding Claim 36-37, Alexander does not specifically teach the mesh is attached with an adhesive or the mesh and a reinforcing layer joined together with an adhesive.
Porter teaches a building material with a microporous layer (Abstract; Paragraph 0012-0013), where a mesh/scrim is attached to the microporous layer via adhesive and the mesh is attached to a reinforcing layer via adhesive (Paragraph 0033, 0055). (Paragraph 0033; Fig. 1). Porter teaches this arrangement of the layer ensures the building material remains breathable, but maximizes the tear strength of the building material. (Paragraph 0055). Thus, it would have been obvious to one with ordinary skill in the art to apply a scrim/mesh with adhesive to the porous membrane and attach a reinforcing layer to the mesh via an adhesive to increase the tear strength of the building material of Alexander.
Regarding Claim 38, Alexander does not teach both a mesh and the reinforcing layer are attached to the porous membrane without an adhesive.
Porter teaches a building material with a microporous layer (Abstract; Paragraph 0012-0013), where a mesh/scrim is attached to the microporous layer via thermal lamination and the mesh is attached to a reinforcing layer via thermal lamination (Paragraph 0033, 0055). Porter teaches this arrangement of the layer ensures the building material remains breathable, but maximizes the tear strength of the building material. (Paragraph 0055). Thus, it would have been obvious to one with ordinary skill in the art to apply a scrim/mesh to the reinforcing layer of building material of Alexander to increase the tear strength of the building material of Alexander.
Response to Arguments
Applicant’s arguments have been fully considered.
Applicant argues the water penetration resistance taught by Alexander is directed to the membrane joined to the scrim. This argument is found unpersuasive, as there is no recitation of the water penetration resistance ranges requiring the scrim. Alexanders recites the scrim is optional (Page 4) and the water penetration resistance ranges are recited without a required scrim, at least 150 cm. (Page 12). Therefore, the arguments about expecting a lower water penetration resistance for the microporous membrane and no reasonable expectation of success are also found unpersuasive.
Applicant argues that Alexander caps out the maximum vapor transmission and water resistance. This argument is found unpersuasive, as Alexander states this is only for certain embodiments. Patent documents are relevant for all they contain and are not constrained by specific embodiments but the broad disclosure. (MPEP §2123).
Applicant argues that Porter, Cashin and Sandhar do not teach all the claimed limitations individually. In response to applicant's arguments against the references individually, 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).
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ZHANG whose telephone number is (571)270-0358. The examiner can normally be reached Monday through Friday: 9:30am-3:30pm, 8:30PM-10:30PM.
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/Michael Zhang/Primary Examiner, Art Unit 1781
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