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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 1, 2026 has been entered.
Response to Amendment
Applicant’s amendment filed on April 1, 2026 has been entered. Claim 1 has been amended. New Claims 24 and 25 have been added. As such, Claims 1-3, 8-13, and 23-25 are currently pending in the application.
Specification
The use of the terms “Powerlon UltraPerm Air Barrier” and “FLX17/FLX20/FLX57,” which are both trade names or a marks used in commerce, has been noted in this application. However, these terms should be accompanied by the generic terminology for what the materials actually are so that the nature of the product is clear. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The EXAMPLES section of the Specification references “Felix” and “ITP” for nonwoven fabrics used in the invention and “SA 126” for a saturant. However, the Specification does not establish the nature of such fabrics and saturant, such as the composition or material used. Appropriate correction or clarification is required.
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.
Claims 24 and 25 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.
Claim 24 recites that the multi-layer laminate exterior finishing system further includes a top coat disposed on the hydrophobic polymer layer. Support for this limitation is not found in the Specification, as originally filed. For example, the Specification does not disclose that a top coat is additionally provided to a system comprising a nonwoven layer, a hydrophobic polymer layer, and an adhesive layer, wherein the top coat is positioned on the hydrophobic polymer layer. The phrase “top coat” appears in the Examples section of the Specification, but it does not establish that the coating is disposed onto a hydrophobic polymer layer. Rather, the “top coat” of the examples appears to be equated to the hydrophobic polymer layer, rather than being in addition to the hydrophobic polymer layer. As such, Claims 24 and 25 contain new matter.
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.
Claim 25 is 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 25 recites that the top coat comprises “vinyl acetate/silicone.” The scope of this limitation is unclear. Vinyl acetate and silicone are distinct materials. What is the significance of using a slash in between them? Does Claim 25 mean either vinyl acetate or silicone are suitable? Or is this some kind of composite material? The Specification does not clarify or define this material. As such, Claim 25 is indefinite. The Office will interpret this limitation to include either vinyl acetate or silicone, in the alternative.
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 1-3, 8-11, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2018/0237662 to Widenbrant et al. (“Widenbrant”) in view of U.S. Patent Application Publication No. 2004/0102114 to Boylan (“Boylan”).
With regard to Claim 1, Widenbrant discloses a self-sealing multi-layer article for use in building construction that are water vapor permeable and liquid impermeable. See, e.g., Abstract, paragraphs [0002] to [0010], entire document. Widenbrant teaches that the article is self-wound. Figure 7 and paragraph [0131]. Widenbrant discloses that the article comprises one or more elastic porous layers comprising a nonwoven fabric. Paragraph [0058]. Widenbrant discloses that the article comprises a polymer layer, paragraph [0066], which can be rendered with some degree of hydrophobicity by inclusion of a hydrophobic additive, such as hydrophobic fumed silica. See, e.g., paragraphs [0191], [0207], and [0235]. Widenbrant teaches that the polymer comprises a polyoxyalkylene polymer, paragraph [0066], but notes that a (meth)acrylic ester polymer having a reactive silicon group can be added to the polyoxyalkylene polymer layer. Paragraph [0073]. Widenbrant does not disclose that hydrophobic polymer layer comprised of an acrylate includes a paraffin wax hydrophobic additive. Nonetheless, such a modification is within the purview of a person having ordinary skill in the art. Boylan is also related to polymer coating compositions that can be applied to a nonwoven fabric to prevent the passage of aqueous fluids but allow the passage of water vapor. See, e.g., Abstract, entire document. Boylan teaches that a acrylate-based polymer layers can be provided as a hydrophobic barrier coating utilizing paraffin wax as an additive to provide a film that has a hydrostatic head barrier sufficient to prevent passage of fluids through it but allow passage of water vapor, and which can be bonded to a nonwoven fabric. Paragraph [0010]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to use paraffin wax as an additive to the polymer layer disclosed by Widenbrant, since Boylan teaches that such an additive is well known for use in polymer layers comprising an acrylate polymer, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960). Widenbrant discloses that the article also includes an adhesive layer that can completely coated on the 100% of a surface of the nonwoven layer, paragraphs [0054] and [0105] and Figure 2, and have a thickness of about 3 mils to 25 mils. Paragraph [0106]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). With regard to Claim 2, Widenbrant discloses that, in some embodiments, the polymeric material of the polymeric layer is partially impregnated into the nonwoven porous layer. Paragraphs [0066]. In such instances, that portion of polymer that infiltrates the nonwoven layer satisfies the structural limitation of a saturant. With regard to Claim 3, Widenbrant discloses that the polymer layer, which penetrates the nonwoven layer, can contain crosslinks derived from a trialkoxy silane. Paragraph [0052]. With regard to Claims 8 and 23, Widenbrant teaches that the article has a permeability greater than 10 perms, paragraph [0128], and provides examples wherein the elastic porous layer includes a nonwoven fabric and the permeability is greater than 23 perms. Table 1, Examples 6 and 7. With regard to Claim 9, Widenbrant teaches the article satisfies nail sealability testing. Paragraphs [0007] and [0052] and Table 1. With regard to Claim 10, Widenbrant teaches that the adhesive can be acrylic adhesive, paragraph [0098], which is solvent-based or UV-curable. Paragraphs [0097], [0101], and [0102]. With regard to Claim 11, Widenbrant teaches that the polymer layer can be foamed. Paragraph [0079]. With regard to Claims 24 and 25, Widenbrant teaches that their composite can further include a coating material containing silicone in a release liner, paragraph [0113], which is proximally disposed on the hydrophobic barrier layer in the form of a release liner.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Widenbrant in view of Boylan, as applied to Claim 1 above, and further in view of Yen et al., “Effect of Addition of Polyethylene Glycol on the Moisture Transfer and Waterproof Properties of Foam-Finished Nylon Fabrics,” J. Polym. Res., Vol. 4, No. 4, 253-260, October 1997 (“Yen”).
With regard to Claims 12 and 13, the combination of Widenbrant with Boylan does not disclose that the polymer layer further includes a hydrophilic additive. Yen is related to waterproof, moisture vapor-permeable polymer solutions that can be foamed into a film and bonded to a fabric. See, e.g., Abstract, entire document. Yen teaches that micropore distribution in a foamed polymer film can be improved by increasing viscosity, page 253, which can be achieved by incorporating a hydrophilic additive, such as polyethylene glycol, into the foaming solution. Page 254. Yen concludes that improved water vapor permeability can be created by incorporation of hydrophilic polyethylene glycol into the film. Page 259. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a hydrophilic additive, such as polyethylene glycol, into the polymer layer disclosed by the combination of Widenbrant with Boylan in order to improve micropore distribution and increase water vapor permeability, as shown to be known by Yen.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection, utilizing a new combination of references, does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. To the extent that the arguments still apply to the references individually, then those arguments are addressed below.
Applicant argues that sufficient information is provided in the present specification regarding the Felix, ITP, and SA 126 materials. The Examiner disagrees. None of these trademarked terms are accompanied with the generic terminology for its compositional nature. Applicant argues that the Felix and ITP materials are described as nonwoven films in paragraph [0026]. However, as noted in M.P.E.P. 608.01(v), “the formula or characteristics of a product may change from time to time and yet it may continue to be sold under the same mark or trade name. In patent specifications, the details of the product, service, or organization identified by a mark or trade name should be set forth in positive, exact, intelligible language, so that there will be no uncertainty as to what is meant.” In this instance, a description of the compositional nature of “Powerlon UltraPerm Air Barrier,” “FLX17/FLX20/FLX57,” “Felix,” “ITP,” and “SA 126,” in addition to their general structure (as a film, nonwoven, etc.), is required to satisfy the M.P.E.P. 608.01(v) requirement that the description of the materials be precise. Applicant asserts that the disclosure of Felix, ITP, and SA 126 materials is commensurate in scope with the claim language. However, the objection to the specification is not based upon anything to do with the scope of the claims. Providing a description of the trademarked materials in the specification is a separate requirement that does not, in and of itself, affect claim scope. The rule is clear: A mark may be used in a patent application to identify an article if (A) its meaning is established by an accompanying definition in the specification which is sufficiently descriptive, enabling, precise, and definite or (B) its meaning is well-known to one skilled in the relevant art and is satisfactorily defined in the literature. M.P.E.P. 608.01(v). Neither condition is met. The specification does not provide the composition of any of these materials. Moreover, the materials are not satisfactorily defined in the literature to be able to establish what they are. The objection to the Specification for its use of trademarks and trade names without properly defining the composition of these materials is maintained.
Applicant argues that Widenbrant does not teach the presently claimed acrylate. The Examiner disagrees. Widenbrant teaches that the polymeric layer can comprise an acrylate. Paragraph [0073] (“A (meth) acrylic ester polymer having a reactive silicon group may be added to the polyoxyalkylene polymer having a reactive silicon group, if desired.”).
Applicant argues that the previous Boylan reference relates to vinyl acetate-ethylene polymer used with paraffin wax. The Examiner agrees. The new rejection utilizes a new reference with the same inventor, as the new Boylan references teaches using paraffin wax with acrylate polymer.
Applicant argues that there is no reasonable success in modifying Widenbrant to include a paraffin wax as taught by Boylan in a poly(vinyl acetate) system. However, obviousness does not require absolute predictability, but at least some degree of predictability is required. M.P.E.P. 2143.02(II). In this case, the new Boylan reference teaches using paraffin wax in an acrylate polymer system, which better aligns with the disclosure of Widenbrant. The new Boylan reference establishes predictability of using paraffin wax in combination with acrylate resins to improve water repellency while maintaining moisture vapor permeability, the goals of which align with the teachings of Widenbrant.
Conclusion
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789
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