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 .
Election/Restrictions
Applicant’s election of Species (1)(A), directed to claims 30-32, 34, 36-43 and 58, in the reply filed on 1/28/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Please see the lack of unity of set forth in the action mailed 4/1/2025, which is equally applicable to the Species restriction in the updated Restriction Requirement mailed 8/28/2025.
Claims 33, 35 and 44-57 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/28/2026.
Specification
The abstract of the disclosure is objected to because the abstract discloses a hot-melt adhesive layer (A), but there is no adhesive layer (A) that is disclosed or claimed as a hot-melt type adhesive. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The abstract of the disclosure is objected to because the abstract discloses that adhesive layer (A) comprises a non-UV curable PSA, but there is no adhesive layer (A) that is disclosed or claimed as non-UV curable. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following: Paragraph 00166 and Table 1 disclose generally, “two different UV-curable acrylates,” for the LSE component of Formulations 1 and 2, but there is no indication as to any specifics of these broadly stated compounds. Similarly for the “acResin” for the thermal cure (TC) component of Formulation 2. See, for example, the following website:
https://www.basf.com/us/en/products/General-Business-Topics/dispersions/Products/acResins
wherein it is noted that there are several specific UV acResins (e.g., acResin A 204). However, there is no indication via the present disclosure which acResin is contemplated for the inventive examples of the instant application.
No indication is provided for the exemplary water-based acrylic employed in Formulation 1, other than it was modified with LUMITEN.
Appropriate correction is required.
The disclosure is objected to because of the following informalities: there is no indication as to what is intended by a UV Dose of “2x125” of “3x60” in Table 1.
Appropriate correction is required.
Drawings
The drawings are objected to because the references numbers of the replacement drawings contain the “ ¶ ” symbol. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 30 is objected to because of the following informalities: please amend the claim to recite “…[[a]]an adhesive layer A;…”. Appropriate correction is required.
Claim 30 is objected to because of the following informalities: please amend the claim to recite “…the adhesive layer B comprises [[a]]an ultraviolet (UV) curable pressure-sensitive adhesive ;…”. Appropriate correction is required.
Claim 58 is objected to because of the following informalities: please amend the claim to recite “…the adhesive layer B comprises [[a]]an ultraviolet (UV) curable pressure-sensitive adhesive ;…”. Appropriate correction is required.
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 30-32, 34 and 36-42 and claim 43 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 claim 30, the claim recites that the PSA of adhesive layer B is “curable” via UV radiation, and the recites that the PSA is at least partially cured, which within the scope of the claimed invention allows for the PSA to be fully cured. Thus, it is unclear if the recited PSA of adhesive layer B is curable or if it is cured.
Regarding claim 31, it is unclear from the claim limitations, and in light of the specification (see Table 1; paragraphs 00165-00166), how the adhesive layer (A) was cured while on the EPDM given that said Table 1 states that the thermal cure (TC), which appears to correspond to the presently claimed adhesive layer (A), and still NOT undergo UV curing prior to application of adhesive layer (B). The LSE component, which appears to correspond to adhesive layer (B), was also transferred to the EPDM substrate (though it is not clear from where).
Thus, given that the adhesive layer (A) is in contact with the polymer membrane (given that it is claimed as being in contact with the EPMD polymeric membrane) and is then cured following its “direct” application to the EPDM, it unclear how the adhesive layer (A) can be UV-cured AFTER the combination with adhesive layer (B) since adhesive layer (A), according to Table 1, was cured while in contact with the EPDM substrate. If the curing took place after application of the adhesive layer (B), it is unclear how UV-curing could take place with the adhesive layer (B) on top of adhesive layer (A).
Claims 58 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.
Regarding claim 58, the claim recites that the PSA of adhesive layer B is “curable” via UV radiation, and the recites that the PSA is at least partially cured, which within the scope of the claimed invention allows for the PSA to be fully cured. Thus, it is unclear if the recited PSA of adhesive layer B is curable or if it is cured.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 30, 34, 36-37, 40-42, and claim 43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tang et al. (US 2020/0299966 A1).
Regarding claim 30, Tang teaches composite body (13) (labeled as reference number (11) in the drawing) comprising polymeric planar body (21), adhesive layer (31), fabric layer (41), external adhesive layer (55) and release member (57) (Fig. 3, para 0018); which said composite body (13) is a roofing membrane and teaches a multiplayer composite (see, for example, para 0002); which said release member (57) teaches a release liner; which said polymeric planar body (21), or panel (21), is formed from a material such as, inter alia, EPDM (polymeric membrane) (para 0035-0036), and which said fabric layer/backing (41) comprises, inter alia, polymeric fibers (para 0037-0041).
Tang also teaches that the adhesive layer (e.g., the adhesive layer (31)) is a cured pressure-sensitive adhesive layer formed from an acrylic-based curable hot-melt adhesive (para 0019-0020), which is at least partially cured after application to the membrane via cross-linking with UV light (para 0027-0028). Thus, adhesive layer (31) teaches adhesive layer A comprising an acrylic-based ultraviolet (UV) curable PSA. The thickness of the PSA layer (e.g., the adhesive layer (31)) is, inter alia, 45 to 150 mm (adhesive layer A having a thickness of 25 to 250 mm) (para 0034).
Tang continues to teach that the external adhesive layer (55) is a PSA layer as described herein (i.e., a hot-melt UV-cured ultraviolet (UV) PSA) (para 0018). Thus, external adhesive layer (55) teaches adhesive layer B comprising an acrylic-based hot-melt, ultraviolet (UV) curable PSA, which is at least partially cured (para 0027-0028). The thickness of the PSA layer (e.g., the external adhesive layer (55)) is, inter alia, 45 to 150 mm (hot-melt adhesive layer B having a thickness of 50 to 250 mm) (para 0034).
Regarding claim 34, as noted above, Tang teaches that the PSA layer (31) is a UV-cured, acrylic-based adhesive (adhesive layer A comprises a UV-cured poly(acrylate) resin).
Regarding claim 36, as noted above, Tang teaches that the external layer (55) is a UV-cured, acrylic-based adhesive (adhesive layer B comprises a UV-curable acrylic PSA).
Regarding claim 37, as noted above, Tang teaches that the polymeric planar body (21) comprises EPDM.
Regarding claim 40, Tang teaches embodiments of adhesive layer (31) and external adhesive layer (55) having thickness ranges of at least 30 mm and most 75 mm (para 0034).
Regarding claim 41, Tang teaches that the adhesive layers (31) and/or (55) comprise, inter alia, plasticizers (additives) (para 0025).
Regarding claim 42 and claim 43, as noted above, Tang teaches that the composite body (13) is a roofing membrane.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 31-32 and 38-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (US 2020/0299966 A1).
Regarding claim 31, Tang teaches that PSA layer (31) is disposed on the bottom surface (25) interim to planar body (20) and fabric layer (41), and that external PSA layer (55) is disposed on the side of the fabric layer (41) opposite to that of PSA layer (31) (para 0018; Fig. 3).
While Tang teaches that the PSA layer (31) is at least partially cured after application to the membrane via cross-linking with UV light (para 0027-0028), it would have been obvious to one of ordinary skill to provide the at least partial curing of the PSA layer (31) following the application of the fabric layer (41)/external PSA layer (55) laminate (prior to combination with adhesive layer B) to the side of the PSA layer (31) opposite to the side adhered to planar body (20) based on the required/desired progression of the prior art’s intended methodology as in the present invention.
Regarding claim 32, as noted above, Tang teaches that PSA layer (31) is disposed on the bottom surface (25) of planar body (21) and extends the entire width of the planar body (21) (para 0018; Fig. 3).
While Tang does specify that the PSA layer (31) also extends the entire length of said bottom surface (25) of planar body (21) (i.e., substantially all of one planar surface of the polymeric membrane), one skilled in the art would recognize providing said PSA layer (31) in such an arrangement towards providing full adhesive coverage of planar body (21) towards maximizing said PSA layer (31) adhesion to said bottom surface (25) as in the present invention.
Regarding claims 38-39, while Tang does not disclose the presently claimed peel strength and dead load shear properties as determined under the recited conditions, one skilled in the art would have recognized providing said properties based on the peel strength and dead load shear properties required of the prior art’s intended roofing application(s) as in the present invention.
Claim(s) 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (US 2020/0299966 A1) in view of Doi et al. (US 2019/0001618 A1).
Regarding claim 58, Tang teaches composite body (13) as in the rejection of at least current claim 30 as set forth above, which is equally applicable to the current claim, to include the polymeric planar body (21) (substrate).
Tang is silent to the PSA layer (31) further comprising a water-borne latex adhesive.
However, Doi teaches PSA layers comprising, inter alia, an acrylic PSA (para 0075) comprising, inter alia, a combination of an emulsion-type PSA (i.e., water-borne latex adhesive) and a UV-crosslinkable PSA (para 0076).
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ an emulsion-type, UV-curable PSA composition for the PSA layer (31) of Tang towards said PSA composition comprising the coatability (low viscosity) of a water-borne composition for coating the PSA composition on the polymeric planar body (21), followed by drying (via evaporating said water) and to obtain an acrylic UV-curable PSA as in the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 4/16/2026