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 .
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 1-20 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.
Claim 1 recites the phrase “a first polymer that is a liquid when introduced into the membrane composition prior to any cross-linking or curing”, but it is unclear if the first polymer remains in a liquid form in the claimed membrane (i.e., it is not clear if the claim should be taken as specifying “a first polymer that is a liquid, but later solidifies” or “a first polymer that is a liquid, but remains a liquid in the final membrane”). The indefiniteness hinges on the phrases “when introduced” and “prior to any cross-linking or curing”. The present specification does not provide any indication as to which interpretation should be taken. In the interest of compact prosecution, the claim will be interpreted as directed to a membrane comprising a first polymer which is a liquid at some point during the process of forming the claimed membrane.
Claim 1 recites the phrases “the machine direction,” and “the cross-machine direction,” but there is no antecedent basis for these limitations. In the interest of compact prosecution, the claim will be interpreted as reciting “a machine direction,” and “a cross-machine direction”.
Claims 2-14 are rejected as indefinite due to dependence on indefinite claim 1.
Claim 2 recites the phrase “the same type,” which is defined by the present specification so as to render the claim indefinite. Paragraph [0010] of the present specification denotes that components of the same type are distinguished “among the similar components and/or features.” It is not clear which components or features, specifically, are implied by the phrase “the same type,” particularly since components of the “same type” are denoted by the specification as being “similar” in terms of “components and/or features”. In the interest of compact prosecution, the phrase “same type” will be considered met if the compared polymers have any feature in common.
Claim 10 recites the phrase “a tensile strength requirements of ASTM 4811,” but the phrase is indefinite as ASTM 4811 has multiple tensile strength requirements, and it is unclear which specific subset of tensile strength requirements are being invoked by the claimed phrase. In the interest of compact prosecution, the claim will be interpreted as specifying “any tensile strength requirement of ASTM 4811.”
Claim 15 recites the phrase “a first polymer that is a liquid when introduced into the membrane composition prior to any cross-linking or curing”, but it is unclear if the first polymer remains in a liquid form in the claimed membrane (i.e., it is not clear if the claim should be taken as specifying “a first polymer that is a liquid, but later solidifies” or “a first polymer that is a liquid, but remains a liquid in the final membrane”). The indefiniteness hinges on the phrases “when introduced” and “prior to any cross-linking or curing”. The present specification does not provide any indication as to which interpretation should be taken. In the interest of compact prosecution, the claim will be interpreted as directed to a membrane comprising a first polymer which is a liquid at some point during the process of forming the claimed membrane.
Claims 16-20 are rejected as indefinite due to dependence on indefinite claim 15.
Claim 18 recites the phrase “the machine direction,” and “the cross-machine direction,” but there is no antecedent basis for these limitations. In the interest of compact prosecution, the claim will be interpreted as reciting “a machine direction,” and “a cross-machine direction”.
Claim 20 recites the phrase “the tensile strength requirements of ASTM 4811,” but the phrase is indefinite as ASTM 4811 has multiple tensile strength requirements, and it is unclear which specific subset of tensile strength requirements are being invoked by the claimed phrase. In the interest of compact prosecution, the claim will be interpreted as specifying “any tensile strength requirement of ASTM 4811.”
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.
Claims 1-4, 7, 9-11, 14-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (US2022/0220277A1).
With regards to claim 1, Wang discloses a roofing membrane comprising multiple ethylene-propylene-diene terpolymers (EPDM) (i.e., includes the presence of a first polymer and a second polymer) (Wang: para. [0005] and [0045]). The phrase “a first polymer that is a liquid when introduced into the membrane composition prior to any cross-linking or curing” is considered product-by-process language, as the language is directed to a step of introducing a first polymer in a liquid form. Such language does not limit the present claim to the material performance of the recited step, but rather, only the structure implied, per MPEP 2113. The present language is structurally-limiting, in the sense that the claimed first polymer must be capable of being in a liquid form during the formation of the claimed membrane, though this language remains broad (i.e., introduction of the first polymer in liquid form, then cooling the polymer to a solid form while it is simultaneously mixed into material used to form the membrane is still within the scope of the claim). The first polymer is liquid prior to any cross-linking or curing, but it is then later cured. It is submitted that this limitation is met by the EPDM polymers of Wang, as any polymer may be in the form of a liquid during preprocessing (even if prior to crosslinking) (Wang: para. [0045]). However, in the interest of compact prosecution, the EPDM polymers of Wang may include an EPDM polymer having a Mooney viscosity of less than 30, which is within the viscosity range for liquid EPDM polymers in accordance with para. [0015] of the Present Specification PGPub, and therefore, a liquid polymer is disclosed by Wang (Wang: para. [0045]). With regards to the claimed tensile yield strength, the membrane of Wang is substantially identical in structure and composition to that of the claimed invention (Wang: para. [0045]). It has been held that a composition and its properties are inseparable, per MPEP 2112. Therefore, the membrane of Wang is concluded to inherently possess the claimed green strength (Wang: para. [0045]). It is noted that the examples of the present specification do not provide any detail as to the characteristics of the EPDM polymers utilized.
With regards to claim 2, the first and second polymers of Wang are both EPDM polymers (i.e., a same type of polymer) (see above discussion).
With regards to claim 3, the first polymer is an ethylene propylene diene terpolymer (EPDM) (see above discussion).
With regards to claim 4, the second polymer is an EPDM (see above discussion).
With regards to claim 7, Wang discloses the further inclusion of a clay which has a white color (i.e., a white clay) (Wang: para. [0121]).
With regards to claim 9, Wang discloses a roofing membrane which is substantially identical in structure in composition to the membrane of the claimed invention, and therefore, it is expected to exhibit the claimed elongation prior to cross-linking of 400 percent or higher (see above discussion).
With regards to claim 10, Wang discloses a roofing membrane which is substantially identical in structure in composition to the membrane of the claimed invention, and therefore, it is expected to exhibit the claimed inability to meet tensile strength requirements until after cross-linking (see above discussion).
With regards to claim 11, Wang more specifically discloses its membrane as a flashing membrane (Wang: para. [0130]).
With regards to claim 14, it is noted that the present claim is rather broad, as it does not recite any measurement conditions for the claimed crystallinity. It submitted that any material, including the membrane of Wang, is cooled arbitrarily low to the point of near-entire solidification, would exhibit a crystallinity of higher than 2%. Alternatively, Wang discloses a roofing membrane which is substantially identical in structure in composition to the membrane of the claimed invention, and therefore, it is expected to exhibit the claimed inability to meet crystallinity requirement of the present claim (see above discussion).
With regards to claim 15, Wang discloses flashing membrane comprising roofing membrane including multiple ethylene-propylene-diene terpolymers (EPDM) (i.e., a flashing membrane material comprising a membrane, the membrane comprising a first polymer and a second polymer) (Wang: para. [0005], [0045], and [0130]). The phrase “a first polymer that is a liquid when introduced into the membrane composition prior to any cross-linking or curing” is considered product-by-process language, as the language is directed to a step of introducing a first polymer in a liquid form. Such language does not limit the present claim to the material performance of the recited step, but rather, only the structure implied, per MPEP 2113. The present language is structurally-limiting, in the sense that the claimed first polymer must be capable of being in a liquid form during the formation of the claimed membrane, though this language remains broad (i.e., introduction of the first polymer in liquid form, then cooling the polymer to a solid form while it is simultaneously mixed into material used to form the membrane is still within the scope of the claim). It is submitted that this limitation is met by the EPDM polymers of Wang, as any polymer may be in the form of a liquid during preprocessing (even if prior to crosslinking) (Wang: para. [0045]). However, in the interest of compact prosecution, the EPDM polymers of Wang may include an EPDM polymer having a Mooney viscosity of less than 30, which is within the viscosity range for liquid EPDM polymers in accordance with para. [0015] of the Present Specification PGPub, and therefore, a liquid polymer is disclosed by Wang (Wang: para. [0045]). Wang further discloses the sheeting as including a tape or adhesive on one side when installed on a roof substructure (i.e., a tape or adhesive attached to an underside of the membrane), the tape or adhesive being used as a part of a peel and stick technique (i.e., implies a protective layer, or a layer which is to be peeled off of an attached adhesive layer) (Wang: para. [0127]). Alternatively, Wang discloses that multiple membranes may be adhered together via a tape (i.e., with one membrane reading on the claimed membrane, and the other membrane reading on the claimed protective layer) (Wang: para. [0127]).
With regards to claim 16, the first polymer is an EPDM polymer (see above discussion).
With regards to claim 17, the second polymer is an EPDM polymer (see above discussion).
With regards to claim 18, membrane of Wang is substantially identical in structure and composition to that of the claimed invention (Wang: para. [0045]). It has been held that a composition and its properties are inseparable, per MPEP 2112. Therefore, the membrane of Wang is concluded to inherently possess the claimed green strength (Wang: para. [0045]). It is noted that the examples of the present specification do not provide any detail as to the characteristics of the EPDM polymers utilized.
With regards to claim 20, Wang discloses a roofing membrane which is substantially identical in structure in composition to the membrane of the claimed invention, and therefore, it is expected to exhibit the claimed inability to meet tensile strength requirements until after cross-linking (see above discussion).
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 5-6 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claim 1 above.
With regards to claim 5, Wang discloses a roofing membrane as applied to claim 1 above (see above discussion). Wang discloses its roofing membrane as having “multiple EPDM polymers,” and therefore, as best understood, a person of ordinary skill would have found it obvious to have added a third polymer, as Wang acknowledges increasing the number of EPDM polymers in its composition (i.e., a person of ordinary skill would have understood “multiple” to have included “three or more”) (Wang: para. [0045]). Alternatively, Wang discloses adding multiple different polymers for the purpose of adjusting viscosity and molecular weight for the purpose of accommodating processing (Wang: para. [0044]). Wang also lists more than two different viscosities and weight percentages which may be selected (para. [0045]). Therefore, a person of ordinary skill in the art would have found it obvious to have included a third polymer in the roofing membrane of Wang, in order to provide viscosity and molecular weight adjustment as needed, and further, to fulfill the inventive utility of Wang (i.e., to include three or more varieties of EPDMs among those disclosed by Wang) (Wang: para. [0044]-[0045]).
With regards to claim 6, the third polymer is an EPDM (see above discussion).
With regards to claim 12, Wang further instructs a person of ordinary skill to incorporate oil extenders into one of its polymers, and therefore, a person of ordinary skill in the art would have found it obvious to have incorporated an oil extender into either the second polymer or the third polymer (i.e., to have rendered either the second polymer or the third polymer an oil-extended polymer) (Wang: para. [0070]).
With regards to claim 13, since Wang does not explicitly require an oil extender (i.e., oil extenders are, as best understood, disclosed as optional), a person of ordinary skill in the art would have found it obvious to have not added an oil extender to either the second or third polymer (i.e., to have rendered either the second polymer or the third polymer a non-oil-extended polymer) (Wang: para. [0070]).
Claims 8 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claims 1 and 15 above, and in further view of Fieldhouse et al (US4,657,958A).
With regards to claim 8, Wang discloses a roofing membrane as applied to claim 1 above (see above discussion). Wang does not appear to further disclose the presence of a white oil.
Fieldhouse is directed to an adhesive bonding sheet used as a roofing membrane comprising EPDM and a white mineral oil (i.e., a white oil) (Fieldhouse: col. 1, lines 10-17; col. 7, lines 16-24). As best understood from Fieldhouse, a white oil should be employed when the desired color of the roofing membrane is white (Fieldhouse: col. 7, lines 16-24). In conjunction, it is noted that Wang acknowledges that its roofing membrane may be colored white by other materials known in the art (Wang: para. [0121]). Fieldhouse further teaches that such oils improve the tack, drying times, and adhesion of EPDM compositions (Fieldhouse: col. 7, lines 16-24). Wang and Fieldhouse are analogous art in that they are related to the same field of endeavor of roofing membranes formed from EPDM polymers. A person of ordinary skill in the art would have found it obvious to have included the white mineral oil of Fieldhouse in the roofing membrane of Wang, in order to provide improved tack, drying time, and adhesion to the membrane of Wang, while also aiding in providing a white color the membrane of Wang, as desired by Wang (Fieldhouse: col. 7, lines 16-24; Wang: para. [0121]).
With regards to claim 19, Wang discloses a roofing membrane as applied to claim 15 above (see above discussion). The membrane of Wang may further include a white clay (see above discussion). However, Wang does not appear to further disclose the presence of a white oil.
Fieldhouse is directed to an adhesive bonding sheet used as a roofing membrane comprising EPDM and a white mineral oil (i.e., a white oil) (Fieldhouse: col. 1, lines 10-17; col. 7, lines 16-24). As best understood from Fieldhouse, a white oil should be employed when the desired color of the roofing membrane is white (Fieldhouse: col. 7, lines 16-24). In conjunction, it is noted that Wang acknowledges that its roofing membrane may be colored white by other materials known in the art (Wang: para. [0121]). Fieldhouse further teaches that such oils improve the tack, drying times, and adhesion of EPDM compositions (Fieldhouse: col. 7, lines 16-24). A person of ordinary skill in the art would have found it obvious to have included the white mineral oil of Fieldhouse in the roofing membrane of Wang, in order to provide improved tack, drying time, and adhesion to the membrane of Wang, while also aiding in providing a white color the membrane of Wang, as desired by Wang (Fieldhouse: col. 7, lines 16-24; Wang: para. [0121]).
Response to Arguments
Applicant’s amendments have prompted new grounds of rejection under 35 U.S.C. 112(b). While several of the deficiencies have been alleviated, Applicant’s amendment introduces the indefinite phrase “a first polymer that is a liquid when introduced into the membrane composition prior to any cross-linking or curing.” It is unclear from this phrase if the claims are directed, specifically, to an uncured membrane, or a membrane which has been cured. In addition, several issues (as indicated in the rejection above) from the previous rejection under 35 U.S.C. 112(b) remain. Therefore, the present claims remain rejected under 35 U.S.C. 112(b).
Applicant’s arguments directed to the prior art have been fully considered but they are not found persuasive.
Applicant argues that the present claims and specification are not directed to merely the possibility of some EPDM being in a liquid state, and instead, claim 1 requires the polymer to exist only as a liquid during incorporation, prior to curing or cross-linking. This argument is not found persuasive since, as best understood, the claimed membrane is in a cured and/or cross-linked form, and therefore, it is not seen how the EPDM being in a liquid form prior to curing and cross-linking is structurally-limiting. In the interest of compact prosecution, it is noted that Wang still teaches EPDM in a liquid state during membrane formation (i.e., as Wang teaches EPDM having a viscosity associated with a liquid state in accordance with the present specification).
Applicant argues that the claims recite a tensile yield strength, which allows for pliability and ease of installation of the claimed invention. Applicant argues that Wang does not disclose or measure the claimed green strength of pre-cure elongation of its membranes, and Wang does not render inherent these mechanical properties. Applicant argues that the inventive membrane uses a unique combination of a liquid EPDM. Applicant’s arguments are not found persuasive as they do not provide evidence showing that the composition of Wang would not have had the claimed tensile strength. That Example 1 of the present specification is capable of achieving the claimed tensile yield strength, as argued by Applicant, does not mean that the liquid EPDM of Wang is incapable of meeting the claimed tensile yield strength.
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.
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/E.W./
Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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