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 .
Examiner Notes
Claims 1, 20-21, and 28 are currently pending. Claim 1 is currently amended and claims 8-9, 19, 22-23, and 25-27 have been cancelled and claim 28 is newly added.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20 and 21 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.
Claim 20 depends from claim 19 which has been cancelled.
For sake of further examination, claim 20 will be examined as depending from claim 1.
Claim 21 is rejected as being dependent on indefinite claim 20.
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.
Claims 1, 20, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Peng (US 2009/0137168) in view of Low (US 2015/0218331) and further in view of Tawzer (US 5,586,414).
Regarding claims 1 and 28, Peng discloses a thermoplastic roofing membrane (10) attached to a roof deck (32; roof substrate) (Fig. 3, 0069). The planar thermoplastic sheet (0062) including a first polymer layer (12), second polymeric layer (14), and reinforcing scrim (16) (Fig. 1, 0050). The layers being laminated together (0051 and 0062).
Peng discloses at least one layer of the membrane, such as the bottom layer which contacts the roof surface (0050, 0069), including constituents defined in the reference-these include a plastomer such as an ethylene-α-olefin copolymer, a low density polyethylene, and a propylene-based polymer (0014-0015). The at least one layer may further include a flame retardant including a mineral filler, such as alumina trihydrate, in an amount of about 10 to about 50% by weight (0044), overlapping the claimed at least 45 wt%
Peng discloses in which a layer of the membrane may include multiple layers such that it includes at least two sublayers including an external exposed layer and an internal layer (0058; instant second layer). The various polymeric layers being the same or distinct from each other and from the other layers of the membrane (0052). Peng teaches in certain embodiments layers which are devoid of the block copolymer (0059) and the external layer including a flame retardant (0058-0059), when magnesium hydroxide is used as the flame retardant it is included in an amount of about 5 to about 60 wt%, overlapping the claimed at least 35 wt% (0043). Specifically, Peng teaches that the external layer (12) includes materials or blends that are conventional in the art or defined herein (0052), thus, it would be obvious to a person of ordinary skill the external layer may be devoid of block copolymer as claimed i.e., does not contain the plastomer.
Peng teaches the membrane (10) having a total thickness of from about 890 to about 2,300 µm (about 35 to about 90.5 mil), overlapping the claimed overall thickness of about 30 to about 80 mils (0056). Peng further discloses the polymeric layers (12 and 14) each having thicknesses ranging from about 380 to about 760 (about 15 to about 30 mil), overlapping the claimed thickness from about 10 to about 40 mils (0056). Given Peng discloses a three layer membrane (0050), it would be obvious to a person of ordinary skill the scrim thickness would range from about 5 to about 30.5 mils, overlapping the thickness of about 5 mils.
Peng does not disclose the first layer including a first ethylene-based olefinic block copolymer having a melt index (ASTM-D1238; 2.16 kg load @ 190 oC) of less than 5 g/10 min and a second ethylene-based olefinic block copolymer having a melt index (ASTM-D1238; 2.16 kg load @ 190oC) of greater than 5 g/10 min where the at least one layer includes from about 50 to about 90 wt% based upon the total weight of the first and second ethylene-based olefinic block copolymers, or that the method of installation includes mechanically affixing the thermoplastic sheet to the roof surface.
Regarding the olefinic-block copolymer composition, Low discloses a composition comprising a first polymer including an ethylene-α-olefin multi-block interpolymer and a second polymer including an ethylene-α-olefin multi-block interpolymer (0011-0017). The first polymer having a melt index from 0.1 to 50 g/10 min and further from 1 to 7 g/10 min (0031) and the second polymer having a melt index less than or equal to 5 g/10 min and further less than or equal to 2 g/10 min (0034), overlapping the claimed second ethylene-based olefinic block copolymer having a melt index of greater than 5 g/10 min and first ethylene-based olefinic block copolymer having a melt index of less than 5 g/10 min, respectively. The melt index being determined using ASTM D-1238 (2.16 kg load @ 190oC) (0246). The first ethylene-α-olefin present in an amount of from 40 to 90 wt% based on the sum of the first and second ethylene-α-olefins (0091), overlapping the claimed amount of from about 50 to about 90 wt% in claim 1 and 60 to 80 wt% in claim 28.
Low is analogous art as it is in the same field of endeavor of ethylene-based thermoplastic polymers for building articles (0228). Alternatively, Low is reasonably pertinent to the problem faced by the inventor i.e., a thermoplastic membrane which exhibits flexibility and softness providing desirable mechanical properties for conditions experienced on a roof surface as Low discloses a composition with consistent dynamic properties over a broad temperature range which leads to improved durability and cushioning. A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the bottom layer of Peng to include 40 to 90 wt% of a first ethylene- α-olefin block copolymer and having a different melt index as from a second ethylene-α-olefin copolymer, as taught by Low, to achieve a composition which provides consistent dynamic properties over a broad temperature range (0009).
Regarding mechanically affixing, Tawzer, in the analogous field of roofing membranes (column 1, lines 10-15), discloses in which sheets of roofing edge strips are affixed to the roof via fasteners (30) (column 2, lines 44-47).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the roofing membrane of modified Peng to be mechanically attached to the roof deck via fasteners, as taught by Tawzer, to fixedly attach the membrane to the roof (column 2, lines 60-65).
A person of ordinary skill in the art would have found it obvious to position the sheet such that the first layer contacts the roof surface and the external layer is the surface that is exposed to the environment as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
In regards to the overlapping ranges discussed above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 20, Peng teaches the membranes satisfy ASTM D-6878-03 (0069).
Claim 21 are rejected under 35 U.S.C. 103 as being unpatentable over Peng in view of Low in view of Tawzer as applied to claim 20 above and further in view of Peng (US 2004/0033741) herein after Peng ‘741.
Regarding claim 21, modified Peng discloses the limitations of claim 20 as discussed above. Modified Peng does not teach the mineral filler is calcium carbonate.
Peng ‘741, in the analogous field of installed roof membranes (0009), discloses addition of calcium carbonate both as a flame retardant filler and as a reinforcing filler (0022-0023).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the mineral filler of modified Peng to be calcium carbonate as taught by Peng ‘741, to impart both reinforcing and flame retardant properties to the article (0022-0023).
Regarding claim 22, Peng discloses the composition including in addition to the low density polyethylene and functionalized low density polyethylene (thermoplastic).
Response to Arguments
Applicant’s amendments filed 11/05/2025 have been entered. Accordingly, the 35 U.S.C. 112(b). However, due to the amendments new 35 U.S.C. 112(b) rejections of claims 20 and 21 have been made.
Applicant argues that the cited references do not specifically teach a method of mechanically attaching a thermoplastic membrane to a surface of a roof.
The examiner respectfully disagrees as Tawzer is applied for this teaching.
Applicant argues that Peng does not teach a first layer including ethylene-based olefinic block copolymer and a second layer substantially devoid of ethylene-based olefinic block copolymer, with the layer including ethylene-based olefinic block copolymer contacting the roof surface. And that the examiner arrived at the claimed invention through hindsight reconstruction.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, 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).
As noted previously, Peng teaches a bottom layer which contacts the roof surface (0050), this layer may include a plastomer such as an ethylene-α-olefin copolymer (0014-0015). Thus in combination with Low, the first/bottom layer includes the claimed copolymer in contact the roof surface. Peng does not expressly teach the second layer being devoid of ethylene-based olefinic block copolymer however Peng teaches that the layers of the membrane may be distinct from each other and may include polymeric materials or blends that are conventional in the art or that are not necessarily defined herein (0052). Peng also teaches embodiments where each polymeric sheet of the membranes does include polymeric materials defined therein (0052). As Peng teaches layers of the membrane which are devoid of ethylene-based olefinic block copolymer (0059) and that the top layer may include polymeric materials conventional in the art and defined within the reference, the materials disclosed in e.g., paragraph 0059 of Peng would be an obvious choice for the material of the claimed second layer.
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 ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781