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 .
This communication responds to the application and amended claim set filed July 27/2023. Claims 1-20 are currently pending.
Priority
This application is the national stage entry of PCT/EP2022/058172, filed March 28,2022, which claims priority to EP21166688.8, filed April 04,2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-13, in the reply filed on April 16,2026, is acknowledged. As shown in the rejection below, it is known in the art to have a sealing element comprising a polymer component comprising polyvinylchloride resin and at least one ethylene vinyl acetate copolymer and at least one inorganic filler, the special technical feature is lacking and the restrictions are deemed proper and maintained. It is noted that the examiner will consider the rejoinder of the withdrawn claims that are commensurate in scope with the allowable claims. Claims 1-13 are under examination.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2 and 4-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hu et al. (CN108690290 (A) as listed on the IDS dated 10/11/2024).
The examiner will refer to the English Machine translation provided by applicant.
Regarding claim 1, Hu et al. teach a waterproof membrane (which correspond to the sealing element) comprising polyvinylchloride powder, ethylene vinyl acetate (EVA) (claim 1), wherein the vinyl acetate content in the EVA is 60-70% [0036] (which correspond to the polymer component and the EVA copolymer having a content of a structural unit derived from vinyl acetate of at least 30wt.%); and 10-60 parts of an inorganic filler [0044], thereby reading on the filled polymeric layer. Hu et al. further teach the waterproof membrane comprises 35 parts of polyvinyl chloride powder (SG-3), 30 parts of ethylene-vinyl acetate (vinyl acetate=60%), 10 parts of dipropylene glycol dibenzoate (DPGDB), 1.5 parts of vinyltriethoxysilane, 2 parts of antioxidant 1010, 1 part of antioxidant 168, 5 parts of dioctyltin, 25 parts of clay, and 3 parts of light stabilizer 2020 are added to a high-speed kneader and kneaded, followed by extrusion crosslinking in a twin-screw extruder wherein 0.3 parts of crosslinking agent and 5 parts of crosslinking aid are added. (example 3, [0065]-[0066]). By examiner’s calculation, the content of inorganic filler (clay) is 19.11 wt.% (25 parts /130.8 parts), thereby reading on the 5 wt.% of inorganic filler of the total weight of the filled polymeric layer.
Regarding claim 2, although Hu et al. do not disclose the filled polymeric layers is operative to bond with a fresh cementitious composition casted against its surface, Hu et al. teach a composition of the polymeric filler that is substantially identical as the claimed invention so inherently is capable of operatively bonding to a fresh cementitious composition. It is noted that the language of claim 2 is broad and the filled polymeric layer would still be operative to bond with a fresh cementitious composition, if it is bonded through an adhesive or primer.
Regarding claim 4, the discussion of Hu et al. applies as explained in the above rejection (see paragraph 8), wherein the content of the inorganic filler is 19.11 wt.% based on the total weight of the filled polymeric layer, as required by the instant claim.
Regarding claim 5, , the discussion of Hu et al. applies as explained in the above rejection (see paragraph 8). By examiner’s calculation, the content of the polymer component is 49.6 wt.% based on the total weight of the filled polymeric layer, (35+30) parts /130.8 total parts), as required by the instant claim.
Regarding claim 6, Hu et al. teach a polymer component comprising 35 parts of polyvinyl chloride powder (SG-3), 30 parts of ethylene-vinyl acetate (Va=60%) ([0065],claim 1) which implies a content of 53.8 wt.% (35/65) of polyvinylchloride of the total weigh of the polymer component.
Regarding claim 7, Hu et al. teach a polymer component comprising 35 parts of polyvinyl chloride powder (SG-3), 30 parts of ethylene-vinyl acetate (Va=60%) ([0065], claim 1), which implies a content of 46.2 wt.% of ethylene-vinyl acetate of the total weight of the polymer component.
Regarding claim 8, the discussion of Hu et al. applies as explained in the rejection of claim 1 (see paragraph 8), wherein ethylene vinyl acetate copolymer has a content of 60-70% of a structural unit derived from vinyl acetate [0036], as required by the instant claim.
Regarding claim 9, Hu et al. teach the polyvinyl chloride powder, the ethyl vinyl acetate copolymer and the filler (clay) are added to a high-speed kneader and kneaded at specific temperature, pressure and time to disperse the material evenly [0047], thereby reading on the inorganic filler distributed throughout the entire volume of the filed polymeric layer.
Regarding claim 10, Hu et al. teach the filler is one or more of calcium carbonate, kaolin, or clay [0044], thereby reading on the inert mineral filler.
Claims 1-5 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ackermann et al. (CN108290379 (A) as listed on the IDS dated 11/12/2025 or US PG Pub 2018/0361716 A1).
The examiner will refer to the US equivalent of Ackermann et al., US PG Pub 2018/0361716 A1.
Regarding claims 1 and 11, Ackermann et al. teach a membrane used in waterproofing and roofing applications(title) (which correspond to the sealing element), wherein the membrane comprises a barrier layer (which correspond to the polymeric carrier layer) and a contact layer (which correspond to the filled polymeric layer), wherein at least a portion of the first surface of the barrier layer and the second surface of the contact layer are directly bonded to each other (meets Applicant’s filled polymeric layer and polymeric carrier layer directly connected to each other as recited by the instant claim), and
wherein the barrier layer comprises a thermoplastic polymer component P1 (meets the polymeric carrier layer) and
the contact layer comprises a mixture of a solid filler component comprising inert mineral filler and mineral binders [0055] and a thermoplastic polymer component P2 (meets the filled polymeric layer),
and wherein the amount of the solid filler component is 10.0-90.0 wt.%, based on the total weight of the contact layer (meets Applicant’s content of inorganic filler of at least 5% of the total weight of the filled polymeric layer) (claim 1).
Ackermann et al. further teach a polymer component P2 comprising at least one polymer selected from PVC and EVA (claim 8), wherein the properties of the membrane were found especially suitable when the ethylene-vinyl acetate copolymer preferably having a content of a structural unit derived from vinyl acetate of at least 30 wt.% [0072] (meeting the Applicant’s vinyl acetate content of the EVA copolymer and the polymer component).
Regarding claim 2, Ackermann et al. teach the membrane is cast against the contact layer (filled polymeric layer) of the membrane which results in a full and permanent bond after the concrete hardens ([0011],[0015],[0032]), thereby reading on the filled polymeric layer capable of bonding with a fresh cementitious composition casted against its surface.
Regarding claim 3, Ackermann et al. teach a filled polymeric layer free of crosslinking agents (examples).
Regarding claim 4, Ackermann et al. teach a filled polymeric layer comprising 10-90 wt.% , preferably 20-75 wt.% of the inorganic filler ([0042], [0055]), as required by the instant claim.
Regarding claim 5, Ackermann et al. teach a filled polymeric layer comprising 15-80 wt%, preferably 20-75wt.% of the polymer component P2 [0067], as required by the instant claim.
Regarding claim 9, Ackermann et al. teach the inorganic solid filler component is dispersed throughout the thermoplastic polymer component P2 in the contact layer (filled polymeric layer) to ensure that the properties of the contact layer do not change considerably along the length of the membrane [0040], as required by the instant claim.
Regarding claim 10, Ackermann et al. teach the inorganic solid filler component is selected from the group consisting of inert mineral fillers and mineral binders and mixtures thereof [0055].
Regarding claim 12, Ackermann et al. teach the barrier layer (polymeric carrier layer) comprises at least one polymer selected from the group consisting of ethylene-vinyl acetate copolymers (EVA), polypropylene (PP), polyethylene (PE), polyvinylchloride (PVC), chlorosulfonated polyethylene (CSPE), ethylene propylene diene rubber (EPDM), polyisobutylene (PIB) [0109].
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 6-8 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ackermann et al. (CN108290379 (A) as listed on the IDS dated 11/12/2025 or US PG Pub 2018/0361716 A1).
The examiner will refer to the US equivalent of Ackermann et al., US PG Pub 2018/0361716 A1.
Ackermann et al. teach the sealing element according to claim 1 as set forth above and incorporated herein by reference.
Regarding claims 6 and 7, Ackermann et al. do not exemplify an embodiment comprising polyvinyl chloride and ethylene vinyl acetate copolymer as the polymer component.
However, Ackermann et al. teach a polymer component P2 comprising at least one polymer selected from PVC and EVA (claim 8). Ackermann et al. further teach the amount of at least one ethylene-vinyl acetate copolymer is in the range of 15 to 70 wt.% based on the total weight of the thermoplastic polymer P2 (polymer component of the filled polymeric layer) [0074]. Thus, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use 30 wt.% to 85 wt.% of polyvinylchloride based on the total weight of the thermoplastic polymer P2 because Ackermann et al. teach PVC as one of the options for the polymer P2 of the contact layer, thereby reading on the claimed invention.
Regarding claim 8, Ackermann et al. teach the ethylene-vinyl acetate copolymer preferably having a content of a structural unit derived from vinyl acetate of at least 30 wt.%, even most preferably at least 35 wt% [0072]. Ackermann et al. further teach the at least one ethylene-vinyl acetate copolymer has a content of vinyl acetate unit in the range from 7.0 wt.% to 90.0 wt.% [0073].
Ackermann et al. and the claims differ in that Ackermann et al. do not teach the exact claimed ranges for the vinyl acetate units as recited in the instant claim. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) 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 range taught by Ackermann et al.
Regarding claim 13, Ackermann et al. teach the thickness of the barrier layer (polymeric carrier layer) is preferably in the range of 0.1-10.0 mm [0115] and the contact layer (filled polymeric layer) has a mass per unit area of 100-10000 g/m2, more preferably of 200-6000 g/m2, even more preferably of 300-3000 g/m2.
Ackermann et al. and the claims differ in that Ackermann et al. do not teach the exact claimed ranges for the mass per unit area as recited in the instant claim.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).) 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 range taught by Ackermann et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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