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 with traverse of Species II in the reply filed on 11/24/25 is acknowledged. The traversal is on the ground(s) that there is no search burden because a thorough search for any one species would encompass a search for the subject matter of the remaining species. This is not found persuasive because:
Species 1, includes a method step including heat welding a cover strip to a sealing strip (step iii of claim 16) and a step of adhering the sealing strip to the edge metal flashing (step v of claim 16) which results in a product having a cover strip heat welded to the sealing strip and adhesively bonded to the edge metal flashing (as in the first “wherein” paragraph of claim 29. The sealing strip being heat welded to the cover strip results in weld structure (from the heat weld process) that is structurally distinct from both additional Species 2 and 3, as further detailed below. Additionally, this species requires an adhesive bond between the sealing strip and the edge metal flashing which is structurally distinct from both additional Species 2 and 3, as further detailed below;
Species 2 includes a method step including adhesively bonding the cover strip to the edge metal flashing (stop iii’ of claim 16), which results in a product having a cover strip adhesively bonded to the edge metal flashing (as in the second “wherein” clause of claim 29), the adhesive bond between the cover strip and the edge metal flashing is a structurally distinct product made by a process that is also distinct from Species 1 and 3 (where species 3 is further detailed below);
Species 3 includes a method of providing a self adhering cover strip having carrier layer and a pressure sensitive adhesive coated directly to the carrier layer (step II of claim 16) and a step of positioning the cover strip so that a first portion the carrier layer is directly connected to the edge metal flashing and a second portion of the carrier layer having the adhesive layer is directly connected to the roofing membrane (step III of claim 16) and the step of pressing (step IV of claim 16) which results in a product having a self adhering cover strip with a carrier layer and an adhesive layer of pressure sensitive adhesive directly on and bonded to the edge metal flashing and the roofing membrane by the adhesive layer (as in the third “wherein” clause of claim 29). This distinct method process results in a structure that is distinct from both Species 1 and 2 as detailed above, where the type of adhesive used, the bond (adhesive or structural weld) and resulting structure are unique.
The prior art applicable to Species 1 would not likely be applicable to species 2 because of the structural features of the heat weld, where the metal flashing is not capable of being heat welded to a cover strip. Additionally the prior art applicable to Species 1 would not likely be applicable to species 3 because the of the structural features of the heat weld, where the metal flashing is not capable of being heat welded to a cover strip and the pressure sensitive adhesive bond of the cover strip to the edge metal flashing would not be possible with a sealing strip interposed between them.
The prior art applicable to Species 2 would not likely be applicable to Species 3 because the reactive adhesive of Species is functionally different than the pressure sensitive adhesive of Species 3, further the step of heat welding the cover strip to the roofing membrane (step iv’ of claim 16) results in a structure including a weld structure that is distinct and made by a process that is distinct from Species 3 because there is no resulting weld or process of heat welding the cover strip to the roofing member in Species 3.
It is noted that applicant admits in specification each of the species are distinct embodiments having different and mutually exclusive features as seen in pages 4-5 and at pages 9-10 where the specification identifies the different steps and resulting distinct structure as they relate to each of the embodiments of species 1-3.
A search for Species 3 would include C09J7/38 for pressure sensitive adhesives that Species 1 and 2 would not require and search of Species 1 would include B29C65/5078 to include adhesive with the sealing strip interposed between the cover strip and edge metal flashing which Species 2 and 3 would not require. Additionally, each species would employ different search terms to be used (for example Species 3 would require text searching for a PSA or “pressure sensitive adhesive” and a “carrier” “layer” and the steps of “pressing” to effect “adhesive bonding”; whereas species 1 would require text searching for a cover strip with the structure heat welded (having a weld structure) attaching the cover strip to a sealing strip and a step of heat welding to a “sealing strip” interposed between the cover strip and edge metal flashing; whereas species 2 would require text searching for a cover strip having a step of “adhesively bonding” the cover strip to the edge metal flashing when examining the various embodiments disclosed and claimed; and would require different subclasses within a class and even different classes to be searched for the various embodiments disclosed and claimed (as noted above).
Accordingly, the listed species possess features, elements and method steps mutually exclusive one from any other as noted above and as clearly seen in the claims and description in the specification.
The requirement is still deemed proper and is therefore made FINAL.
Claims 20,30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/24/25.
Claim Objections
Claim 29 is objected to because of the following informalities: there should be a comma after “membrane” in line 17 to separate the third “wherein” clause from the second. Appropriate correction is required.
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.
Claim(s) 16-19,21-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barksdale (20110056620) in view of Ultsch (20100119820) and Applicant Admitted Prior Art (AAPA).
Claim 16 (note- the sections denoted in italics are drawn to non-elected species 1 or 3). Barksdale discloses a method for installing a cover strip between an edge metal flashing and a roofing membrane, the method comprising steps of:
i) Providing a roof assembly comprising a roof substrate, an edge metal flashing, and a roofing membrane, wherein a portion of the roofing membrane is trapped between the edge metal flashing and the roof substrate,
ii) Providing a sealing strip having upper and lower major surfaces limited between short and long edges,
iii) Adhesively bonding the sealing strip via its lower major surface to a portion of an upper major surface of the edge metal flashing using a reactive adhesive,
iv) Providing a cover strip having upper and lower major surfaces limited between short and long edges,
v) Heat-welding a first long edge portion of the lower major surface of the cover strip to a portion of an upper major surface of the sealing strip and a second long edge portion of the lower major surface of the cover strip to a portion of an upper major surface of the roofing membrane (this is drawn to the non-elected embodiment of species 1),
or
i') Providing a roof assembly comprising a roof substrate (36), an edge metal flashing (34), and a roofing membrane (32), wherein a portion of the roofing membrane is trapped between the edge metal flashing and the roof substrate (as seen in figure 2),
ii') Providing a cover strip (10) having upper and lower major surfaces limited between short and long edges (as seen in the figures and noted in the disclosure),
iii') Adhesively bonding a first long edge portion of the lower major surface of the cover strip to a portion of an upper major surface of the edge metal flashing using an adhesive (22, and as noted at least in figure 2 and throughout the disclosure), and
iv') Heat-welding a second long edge portion of the lower major surface of the cover strip to a portion of an upper major surface of the roofing membrane,
or
I) Providing a roof assembly comprising a roof substrate, an edge metal flashing, and a roofing membrane, wherein a portion of the roofing membrane is trapped between the edge metal flashing and the roof substrate,
II) Providing a self-adhering cover strip comprising a carrier layer having upper and lower major surfaces limited by short and long edges and a layer of a pressure sensitive adhesive coated directly to and covering at least a portion of the lower major surface of the carrier layer,
III) Positioning the self-adhering cover strip such that the adhesive layer covering a first long edge portion of the lower major surface of the carrier layer is directly connected to a portion of an upper major surface of the edge metal flashing and the adhesive layer covering a second long edge portion of the lower major surface of the carrier layer is directly connected to a portion of an upper major surface of the roofing membrane,
IV) Pressing the carrier layer against the roof substrate to effect adhesive bonding between the opposing surfaces of the carrier layer and the edge metal flashing and between opposing surfaces of the carrier layer and the roofing membrane, and
V) Optionally applying a sealant composition to at least one of the long and/or short edges of the carrier layer (this is drawn to the non-elected embodiment of species 3).
Barksdale does not expressly disclose that the adhesive is a reactive adhesive but does disclose that the adhesive may be any adhesive in a manner consistent with the usage in the art (paragraph 0018).
Ultsch discloses a construction membrane that can be used in roofing and further discloses examples of a reactive adhesive suitable for use with a roofing membrane including polyurethan, acrylic or two component expoxide adhesives (paragraph 0032).
Further Applicant discloses in the specification (AAPA) that suitable reactive adhesives are commercially available and known in the art, including a list of products including SikaDur® and SikaFast®, such as SikaDur® 31 HiMod, and SikaFast® 3341.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to pursue known design options and modify the adhesive of Barksdale to be a reactive adhesive to achieve the predictable result of an adhesive that is capable of a strong bond with the roofing membrane and the flashing material. Additionally, 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 for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In the instant case it would have been obvious for at least the reason of the adhesive being a waterproof bond and having good adhesion to roofing membranes.
Lastly, it is noted that applicant has not disclosed that a reactive adhesive provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the adhesive of Barksdale, and applicant’s invention to perform equally well with either the adhesive taught by Barksdale or the claimed reactive adhesive because both adhesives would perform the same function of adhering to the membrane and the flashing equally well.
Claim 17. The method according to claim 16, wherein the upper major surface of the edge metal flashing and/or the upper major surface of the roofing membrane is/are non-primed surface(s) (where the roofing membrane is not disclosed as being primed and therefore is considered to be non-primed).
Claim 18 (note- the sections denoted in italics are drawn to non-elected species 1). The method according to claim 1 or 2, wherein step iii) comprises:
iii1) Applying the reactive adhesive to at least a portion of the lower major surface of the sealing strip and/or to a portion of the upper major surface of the edge metal flashing,
iii2) Covering a portion of the upper major surface of the edge metal flashing with the sealing strip such that the applied reactive adhesive forms and interlayer between the edge metal flashing and the sealing strip, and
iii3) Curing the reactive adhesive (this is drawn to the non-elected embodiment of species 1),
or wherein step iii’ ) comprises:
iii'1) Applying the reactive adhesive to at least a portion of the lower major surface of the cover strip and/or to a portion of the upper major surface of the edge metal flashing (as noted in the figure 2 of Barksdale),
iii'2) Covering a portion of the upper major surface of the edge metal flashing with the cover strip such that the applied reactive adhesive forms and interlayer between the edge metal flashing and the cover strip (as seen in figure 2 of Barksdale and noted throughout the disclosure), and
iii'3) Curing the reactive adhesive (as noted throughout Barksdale and in view of Ultsch).
Claim 19. The method according to claim 16, wherein the reactive adhesive is selected from one- and two-component epoxide, acrylic, and polyurethane adhesives (as noted in Barksdale in view of Ultsch in claim 16 above).
Claim 21. The method according to claim 16, wherein the sealing strip and/or the cover strip and/or the carrier layer of the self-adhering cover strip comprises at least one polymer P1 selected from polyvinylchloride, polyolefin, halogenated polyolefin, rubber, and ketone ethyl ester (where Barksdale discloses PVC or TPO in paragraph 0015).
Claim 22. Barksdale in view of Ultsch disclose the method according to claim 21, but do not expressly disclose wherein the sealing strip and/or the cover strip and/or the carrier layer of the self-adhering cover strip comprises at least 25 wt.-% of the at least one polymer P1. Barksdale disclose that it the cover strip is comprises of PVC or TPO but does not specify at least 25wt%.
At the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art to (have the cover strip comprise at least 25 wt.-% of the at least one polymer P1 because applicant has not disclosed that at least 25 wt.-% of the at least one polymer P1 provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the cover strip of Barksdale, and applicant’s invention to perform equally well because both comprise PVC or TPO and are used in a roofing installation and therefore would perform the same function of covering and adhering in roofing installation equally well considering.
Therefore, it would have been prima facie obvious to modify Barksdale in view of Ultsch to obtain the invention as specified in claim 22 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of.
Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the cover strip comprise at least 25 wt.-% of the at least one polymer P1, since 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 for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In the instant case it would have been obvious for at least the reason of its availability and waterproof properties.
Claim 23. The method according to claim 16, wherein the roofing membrane comprises at least one polymer P2 selected from polyvinylchloride, polyolefin, halogenated polyolefin, rubber, and ketone ethyl ester (where Barksdale discloses TPO or PVC in paragraph 0021).
Claim 24. Barksdale in view of Ultsch disclose the method according to claim 23, but do not expressly disclose wherein the roofing membrane comprises at least 25 wt.-% of the at least one polymer P2.
Barksdale disclose that it the roofing membrane comprises PVC or TPO but does not specify at least 25wt%.
At the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art to (have the roofing membrane comprise at least 25 wt.-% of the at least one polymer P2 because applicant has not disclosed that at least 25 wt.-% of the at least one polymer P2 provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the roofing membrane of Barksdale, and applicant’s invention to perform equally well because both comprise PVC or TPO and are used in a roofing installation and therefore would perform the same function of covering and adhering in a roofing installation equally well considering.
Therefore, it would have been prima facie obvious to modify Barksdale in view of Ultsch to obtain the invention as specified in claim 24 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of.
Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the roofing membrane comprise at least 25 wt.-% of the at least one polymer P2, since 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 for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In the instant case it would have been obvious for at least the reason of its availability and waterproof properties.
Claim 25. The method according to claim 23, wherein polymers P1 and P2 are selected from polyvinylchloride and polyolefin (where Barksdale discloses TPO and PVC).
Claim 26. The method according to claim 16, wherein the cover strip and/or the carrier layer of the self-adhering cover strip has a width of 10 – 100 cm (Barksdale paragraph 0017).
Claim 27. The method according to claim 16, wherein the first long edge portion of the lower major surface of the cover strip and/or the carrier layer of the self-adhering cover strip has a width of 2.5 – 35 cm (paragraph 0017).
Claim 28. The method according to claim 21, wherein the edge metal flashing is a non-coated metal sheet or a coated metal sheet, wherein the coating comprises less than 2.5 wt.-% of the at least one polymer P1 (where it is non-coated as noted throughout the disclose which does not disclose a coating so it is considered to be non-coated).
Claim 29 (note- the sections denoted in italics are drawn to non-elected species 1 or 3). A roof system comprising:
i. a roof substrate (36),
ii. a roofing membrane (32) covering at least a portion of an upper major surface of the roof substrate,
iii. an edge metal flashing (34)_, wherein a portion of the roofing membrane is trapped between the edge metal flashing and the roof substrate (as seen in figure 2), and
iv. a cover strip or self-adhering cover strip (12),
wherein the roof system further comprises a sealing strip having upper and lower major surfaces limited between short and long edges, wherein the sealing strip is adhesively bonded via its lower major surface to a portion of an upper major surface of the edge metal flashing using a reactive adhesive and wherein the cover strip has upper and lower major surfaces limited between short and long edges and wherein a first long edge portion of the lower major surface of the cover strip is heat-welded to a portion of the upper major surface of the sealing strip and a second long edge portion of the lower major surface of the cover strip is heat-welded to a portion of an upper major surface of the roofing membrane (this is drawn to non-elected embodiment of Species 1),
or wherein the cover strip has upper and lower major surfaces limited between short and long edges and wherein a first long edge portion of the lower major surface of the cover strip is adhesively bonded (via 22) via its lower major surface to a portion of an upper major surface of the edge metal flashing using an adhesive (22, as seen in figure 2 and noted throughout the disclosure) and
wherein a second long edge portion of the lower major surface of the cover strip is heat-welded (paragraph 0023) to a portion of an upper major surface of the roofing membrane,
or wherein the self-adhering cover strip comprises a carrier layer having upper and lower major surfaces limited by short and long edges and an adhesive layer of a pressure sensitive adhesive coated directly to and covering at least a portion of the lower major surface of the carrier layer and wherein a first long edge portion of the lower major surface of the carrier layer is bonded to a portion of an upper major surface of the metal edge flashing by the adhesive layer and a second long edge portion of the lower major surface of the carrier layer is bonded to a portion of an upper major surface of the roofing membrane by the adhesive layer (this is drawn to the non-elected embodiment of Species 3).
Barksdale does not expressly disclose that the adhesive is a reactive adhesive but does disclose that the adhesive may be any adhesive in a manner consistent with the usage in the art (paragraph 0018).
Ultsch discloses a construction membrane that can be used in roofing and further discloses examples of reactive adhesive suitable for use with a roofing membrane including polyurethan, acrylic or two component expoxide adhesives (paragraph 0032).
Further Applicant discloses in the specification that suitable reactive adhesives are commercially available and known in the art, including a list of products including SikaDur® and SikaFast®, such as SikaDur® 31 HiMod, and SikaFast® 3341.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to pursue known design options and modify the adhesive of Barksdale to be a reactive adhesive to achieve the predictable result of an adhesive that is capable of a strong bond with the roofing membrane and the flashing material. Additionally, 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 for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In the instant case it would have been obvious for at least the reason of the adhesive being providing a waterproof bond and having good adhesion to roofing membranes.
Lastly, it is noted that applicant has not disclosed that a reactive adhesive provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the adhesive of Barksdale, and applicant’s invention to perform equally well with either the adhesive taught by Barksdale or the claimed reactive adhesive because both adhesives would perform the same function of adhering to the membrane and the flashing to form an adhesive bond.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA LAUX whose telephone number is (571)272-8228. The examiner can normally be reached M-F 7:30-3:30.
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JESSICA L. LAUX
Examiner
Art Unit 3635
/JESSICA L LAUX/ Primary Examiner, Art Unit 3635