DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim(s) 36, 38 and 55 in the amendments filed 6/4/2026. The limitations of canceled claims 36 and 38 have been imported verbatim into claim 30 and claim 45.
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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 6/4/2026, with respect to the nonstatutory double patenting rejection of claims 30-32 and 34 over claims 1-3 and 5 of copending Application No. 16/064475 as set forth in paragraph 13 of the action mailed 3/4/2026, have been fully considered and are persuasive. The rejection of claims 30-32 and 34 has been withdrawn.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 30-35, 37, 39-43 and 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (US 2003/0191212 A1) in view of Yang et al. (WO 93/04097 A1), and in light of the evidence provided by Satake et al. (US 5814685) and the Aldrich Data Sheet, the latter of which is provided with the current action.
Regarding claims 30 and 37, Yamazaki teaches a modified asphalt species (composition) comprising 100 parts by weight asphalt, 1 to 20 parts by weight of an elastomer (elastomeric polymer) and 0.01 to 15 parts by weight of a (meth)acrylic resin (para 0089); which said (meth)acrylic resin comprises one or more monomers (acrylic copolymer) such as, inter alia, 2-ethylhexyl acrylate and vinylpyridine, and monomers containing carboxyl groups such as, inter alia, itaconic acid towards improved adhesion to aggregates and toughness (para 0032-0033). Yamazaki also teaches that the (meth)acrylic resin has a weight-average molecular weight (Mw) of 5,000 to 200,000, which overlaps that presently claimed (i.e., 150,000 to 250,000), towards a balance of toughness and solubility in the asphalt (para 0035).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the (meth)acrylic resin with the presently claimed Mw towards the composition of Yamazaki demonstrating a balance of toughness and asphalt solubility as in the present invention.
As noted above, Yamazaki teaches that the (meth)acrylic resin has a Mw of 5,000 to 200,000, but is silent to the (meth)acrylic resin having a dispersity (Mw/Mn) of 5 to 11 (current claim 30) and number-average molecular weight (Mn) of 20,000 to 50,000 (current claim 37).
However, Yang teaches adhesive acrylic copolymers having Mw/Mn ratio above 6 (title, abstract), and that a broad Mw/Mn provides a balance of shear adhesion and peel adhesion properties (page 7, line 26 to page 8, line 13).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the (meth)acrylic resin with the presently claimed Mn (20,000 to 50,000) and dispersity (Mw/Mn = 5 to 11) towards the composition of Yamazaki demonstrating a balance of shear and peel adhesion properties required of the prior art’s intended application as in the present invention.
Regarding claims 31-32, Yamazaki teaches that the elastomer is a thermoplastic elastomer such as, inter alia, styrene-butadiene rubbers (para 0027).
Regarding claim 33, while Yamazaki does not disclose the presently recited methodology for determining the penetration, Yamazaki does teach that the asphalt comprises penetration values of 60 to 80 (para 0062), which is identical to that presently claimed.
Regarding claim 34, as noted above, Yamazaki teaches that the modified asphalt species comprises 100 parts by weight of the asphalt;
1 to 20 parts by weight of the elastomer (e.g., SBS) towards a balance of toughness and viscosity/workability;
and 0.01 to 15 parts by weight of the (meth)acrylic resin towards a balance of SBS/asphalt compatibility and adequate asphalt properties (para 0089-0092).
The Examiner notes that the % by weight of the asphalt, elastomer and (meth)acrylic resin ranges from 74 to 99 % by weight, 0.9 to 17 % by weight, and 0.01 to 13 % by weight, all of which overlaps that presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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 is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the asphalt, elastomer and (meth)acrylic resin in proportions identical to that presently claimed toward the modified asphalt composition demonstrating a balance of toughness, viscosity/workability, SBS/asphalt compatibility and adequate asphalt properties based on the prior art’s intended application as in the present invention.
Regarding claims 35 and 39-41, as noted above, Yamazaki teaches that the (meth)acrylic resin comprises 2-ethylhexyl acrylate (monomer A, current claim 39), vinylpyridine (monomer C, current claim 41) and itaconic acid (monomer B, current claim 40).
Regarding claims 42-43, as noted above, Yamazaki teaches that the (meth)acrylic resin comprises 2-ethylhexyl acrylate (monomer A), which has a Tg of -50 ℃ (see the Aldrich Data Sheet), and itaconic acid (monomer B), wherein the 2-ethylhexyl acrylate present in a proportion not less than 90% by weight (para 0034), which overlaps that presently claimed (50 to 99.99 % by weight).
The Examiner also notes that it is established in the art that the Tg of a polymer is determined via the Tg of the individual monomeric components comprising said polymer, and their respective proportions, as evidenced via Satake (see column 4, lines 5-19 therein).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the (meth)acrylic resin with the presently claimed proportions for the 2-ethylhexyl acrylate and itaconic acid based on the Tg of the (meth)acrylic resin of Yamazaki required of the prior art’s intended application as in the present invention.
Regarding claim 48, as noted above, Yang teaches adhesive acrylic copolymers Mw/Mn ratio above 6 is considered in regards to adjusting the peel adhesion properties.
Thus, while Yamazaki/Yang do not specify a peel strength to stainless steel under the presently recited conditions,
However, it would have been obvious to one of ordinary skill in the art at the time of the invention.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the dispersity of the adhesives of Yamazaki/Yang for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards the composition of Yamazaki/Yang the presently peel strength required of the prior art’s intended application as in the present invention.
Claim(s) 45-47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Subotic et al. (US 2015/0144250 A1) in view of Yamazaki et al. (US 2003/0191212 A1) and in further view of Yang et al. (WO 93/04097 A1).
Regarding claim 45, Subotic teaches a roofing underlayment comprising an asphalt-membrane system (100), which said asphalt-membrane system (100) comprises membrane (102) (substrate) and asphalt-emulsion adhesive (104) (para 0054-0056; figures 1A-1B). The asphalt-emulsion adhesive comprises asphalt (binder) and filler (para 0015), the latter of which is selected from, inter alia, pure acrylic/vinyl acrylic/styrene acrylic latex (acrylic copolymer) (para 0034).
Subotic is silent to the adhesive (104) further comprising an acrylic copolymer having an Mw of 150,000 to 250,000 and a dispersity if 5 to 11.
However, as noted above in the rejection of at least current claims 30 and 37, Yamazaki/Yang teaches the modified asphalt species comprising the asphalt and the (meth)acrylic resin having the Mw of 5,000 to 200,000, which overlaps that presently claimed (i.e., 150,000 to 250,000), towards a balance of toughness and solubility in the asphalt (para 0035). In addition, Yamazaki/Yang teaches that the (meth)acrylic resin has a Mw/Mn ratio above 6 (title, abstract), and that a broad Mw/Mn provides a balance of shear adhesion and peel adhesion properties (page 7, line 26 to page 8, line 13).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to modified asphalt species of Yamazaki/Yang as the adhesive (104) for Subotic’s roofing underlayment to provide said underlayment with the balance of toughness, shear adhesion and peel adhesion properties as in the present invention.
Regarding claim 46, Subotic teaches that the asphalt-membrane system (100) comprises a release liner (para 0058).
Regarding claim 47, Subotic teaches that the asphalt-membrane system (100) comprises a membrane comprises a membrane comprising a non-woven polypropylene (para 00045-0047).
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 6/4/2026, with respect to the rejections of claims 30-32, 35 and 39-41 over Yamazaki et al. under 35 U.S.C. 102(a)(1); claims 33-34 and 36 over Yamazaki et al. under 35 U.S.C. 103; claims 37-38, 42-43 and 48 over Yamazaki et al. in view of Yang et al. under 35 U.S.C. 103; and claims 45-47 over Yamazaki et al. under 35 U.S.C. 102(a)(1) as set forth in paragraphs 6-7 and 10-11 of the action mailed 3/4/2026, have been fully considered but they are not persuasive.
The Applicant has amended claim 30 and claim 45 to incorporate the limitations of now-canceled claims 36 and 38. The Applicant’s attention is respectfully directed to the updated prior art rejections of independent claim 30, and its dependencies, over Yamazaki et al. in view of Yang et al.; and claim 45, and it dependencies, over Subotic et al. in view of Yamazaki et al. and in further view of Yang et al as set forth above, wherein it is noted that the cited prior art references teach or render obvious all the limitations of the presently claimed invention.
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 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 6/30/2026
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