DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Claim Interpretation
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: by means of the method cited in the description in claim 4.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-13 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 pre-AIA the applicant regards as the invention.
Claims 1 and 13 recites the limitation "the barrier layer" in third line. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 4, the phrase “determined by means of the method cited in the description" in claim 4 is indefinite because the scope of " determined by means of the method cited in the description " in describing the method is unclear.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Knebel et al. (US 2015/0231863 A1).
Regarding claim 1, Knebel teaches a method for waterproofing a substrate ([0001], [0061]), the method comprising: applying a membrane according to a surface of the substrate such that the second surface of the barrier layer is directed against the surface of the substrate ([0061]), the membrane comprising a barrier layer (sealing layer 2) having a first and a second opposing surface, and a contact layer (functional layer 3) having a first and a second opposing surface, 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 as shown in Fig. 1A (Abstract, [0020], Fig. 1A), and the barrier layer (sealing layer 2) comprises a thermoplastic polymer component ([0025]), and the contact layer (functional layer 3) comprises a mixture of a mineral binder component such as sand and fly ash as concrete constituents ([0050]), a thermoplastic polymer component ([0020]), and a surfactant component such as methacrylic acid esters is a polycarboxylate ethers is a surfactant (as admitted by Applicant in [0090] of current specification ) ([0045], claims 1 and 3-4), casting a fresh cementitious composition on the first surface of the contact layer (functional layer) [0061], [0062]), and hardening the fresh cementitious composition ([0062], [0063]). Knebel does not explicitly teach the amount of the mineral binder component (concrete constituents) is in a range of 10.0 - 90.0 wt.-%, based on a total weight of the contact layer. However, Knebel recognizes the amount of the mineral binder (concrete constituents) is adjusted by changing the size of the mineral binder (concrete constituents) ([0050]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the mineral binder of concentration to improve the bonding of the waterproof membrane to the cast concrete in its cured form ([0050]). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding to claim 2, Knebel teaches the method as disclosed above. Knebel does not explicitly teach wherein the contact layer comprises not more than 3.0 wt.-% of hydrated mineral binders, based on the total weight of the contact layer. However, Knebel recognizes the amount of the mineral binder (concrete constituents) is adjusted by changing the size of the mineral binder (concrete constituents) ([0050]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the mineral binder of concentration to improve the bonding of the waterproof membrane to the cast concrete in its cured form ([0050]). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding to claim 3, Knebel teaches the method as disclosed above. Knebel does not explicitly teach wherein the amount of the mineral binder component is in a range of 20.0 - 85.0 wt.-% based on the total weight of the contact layer. However, Knebel recognizes the amount of the mineral binder (concrete constituents) is adjusted by changing the size of the mineral binder (concrete constituents) ([0050]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the mineral binder of concentration to improve the bonding of the waterproof membrane to the cast concrete in its cured form ([0050]). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding to claim 4, Knebel teaches wherein the membrane has a concrete adhesion strength of at least 5 N/50 mm (1.5-20 MPa) ([0042]).
Regarding to claim 5, Knebel teaches wherein the mineral binder component comprises at least one mineral binder selected from the group consisting of hydraulic binders, non-hydraulic binders, latent hydraulic binders, and puzzolanic binders ([0050]).
Regarding to claim 6, Knebel teaches wherein the surfactant component comprises at least one surfactant selected from the group consisting of anionic, cationic, non-ionic, amphoteric, and polymeric surfactants ([0045]).
Regarding to claim 7, Knebel teaches wherein the at least one surfactant is at least one selected from the group consisting of glycerol monostearates, polycarboxylate ethers, polyether-modified polysiloxanes, polyalkylene oxide siloxanes, hydroxyethyl amines, erucamides, stearyl stearamides, alkali metal alkanesulfonates, and alkyl aryl sulfonates ([0045]).
Regarding to claim 8, Knebel teaches the method as disclosed with a surfactant above. Knebel does not explicitly teach wherein the amount of the surfactant component is in a range of 0.1 - 15.0 wt.-% based on the total weight of the contact layer. However, Knebel recognizes the amount of the surfactant is adjusted by changing the composition ([0011], [0018], [0044], [0045]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the surfactant of concentration to improve the bonding of the waterproof membrane to the cast concrete in its cured form ([0018], [0050]). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Regarding to claim 9, Knebel teaches wherein the amount of the thermoplastic polymer component is 20.0 - 85.0 wt.-% based on the total weight of the contact layer, and the thermoplastic polymer component comprises at least one polymer selected from the group consisting of ethylene - vinyl acetate copolymers (EVA), ethylene - acrylic ester copolymers, ethylene - a-olefin co-polymers, ethylene - propylene co-polymers, polypropylene (PP), polyethylene (PE), polyvinylchloride (PVC), polyethylene terephthalate (PET), polystyrene (PS), polyamides (PA), chlorosulfonated polyethylene (CSPE), ethylene propylene diene rubber (EPDM), and polyisobutylene (PIB) ([0040], [0041], [0043]).
Regarding to claim 10, Knebel teaches wherein the thermoplastic polymer component is miscible such as ethylene - vinyl acetate copolymers (EVA) ([0040], [0043]).
Regarding to claim 11, Knebel teaches wherein the contact layer has a thickness in a range of 0.1 - 50.0 mm ([0053]).
Regarding to claim 12, Knebel teaches wherein the membrane further comprises a second contact layer having a first surface and a second opposing surface, at least a portion of the second surface of the barrier layer and the first surface of the contact layer are directly bonded to each other, and the second contact layer comprises a mixture of a mineral binder component, a thermoplastic polymer component, and a surfactant component as shown in Fig. 1B ( ([0020], [0021], [0025], [0045], [0050], claims 1, 3-4, and 6, Fig. 1B).
Regarding to claim 13, Knebel teaches a method for waterproofing a substrate ([0001], [0061]), the method comprising: applying a membrane according to a surface of the substrate such that the second surface of the barrier layer is directed against the surface of the substrate ([0061]), the membrane comprising a barrier layer (sealing layer 2) having a first and a second opposing surface, and a contact layer (functional layer 3) having a first and a second opposing surface, 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 as shown in Fig. 1A (Abstract, [0020], Fig. 1A), and the barrier layer (sealing layer 2) comprises a thermoplastic polymer component ([0025]), and the contact layer (functional layer 3) comprises a mixture of a mineral binder component such as sand and fly ash as concrete constituents ([0050]), a thermoplastic polymer component ([0020]), and a surfactant component such as methacrylic acid esters is a polycarboxylate ethers is a surfactant (as admitted by Applicant in [0090] of current specification ) ([0045], claims 1 and 3-4), the thermoplastic polymer component of the contact layer consists of at least one ethylene-vinyl acetate co-polymer (EVA) or at least one ethylene- propylene co-polymer ([0040]), casting a fresh cementitious composition on the first surface of the contact layer (functional layer) [0061], [0062]), and hardening the fresh cementitious composition ([0062], [0063]), the membrane has a concrete adhesion strength that is at least 15 N/50 mm, if determined by a method comprising peeling the membrane from a surface of a concrete specimen at a peeling angle of 900 using a material testing apparatus equipped with a peeling device or a testing apparatus fulfilling requirements of DIN EN 1372 standard ([0042]), a thickness of the barrier layer is in a range of 0.1 to 10.0 mm ([0027]), a thickness of the contact layer is in a range of 0.1 to 50.0 mm ([0053]), even when where the concrete specimen was casted on the first surface of the contact layer and hardened for 28 days under standard atmosphere, the membrane has a tensile strength at temperature of 23 ºC measured according to standard DIN ISO 527-3 of at least 5 MPa ([0042]), and the membrane has an elongation at break at a temperature of 23 ºC measured according to standard DIN ISO 527-3 of at least 100% ([0042]). It is the position of the examiner that disclosure the tensile strength and an elongation at break properties are expected, given that the polymer used in the treating composition and meet the required amount disclosed by Knebel et al. and the present application having the same treating composition and meet the required amount. Knebel does not explicitly teach the amount of the mineral binder component (concrete constituents) is in a range of 10.0 - 90.0 wt.-%, based on a total weight of the contact layer and the contact layer comprises not more than 1.5 wt.-% of hydrated mineral binders, based on the total weight of the contact layer. However, Knebel recognizes the amount of the mineral binder (concrete constituents) is adjusted by changing the size of the mineral binder (concrete constituents) ([0050]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of the mineral binder of concentration to improve the bonding of the waterproof membrane to the cast concrete in its cured form ([0050]). Discovery of optimum value of result effective variable in know process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 5712721295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HAI Y ZHANG/ Primary Examiner, Art Unit 1717