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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 10th, 2026, has been entered.
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 1-3 and 5-20 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 “when installed in the roofing application,” which renders the claim indefinite. At the outset, the phrase “the roofing application” lacks antecedent basis, as the claim does not recite a roofing application prior to this phrase. However, it is also unclear if “the roofing application” is necessarily the same as “the roofing”. It is further noted that an “application” could be either a product or a process, which further renders the claim unclear (i.e., it is unclear if “the roofing application” should be treated as “an applied roofing” or “a process of applying roofing). Furthermore, the phrase “the membrane composition” also lacks antecedent basis, as the claim fails to recite a preceding membrane composition. In the interest of compact prosecution, the claimed indefinite phrases will be interpreted as reciting “when installed during a step of applying a roofing” and “a membrane composition”, respectively.
Claims 2-3 and 5-14 are rejected as indefinite due to dependence on indefinite claim 1.
Claim 15 recites the phrase “when installed in the flashing application,” which renders the claim indefinite. At the outset, the phrase “the flashing application” lacks antecedent basis, as the claim does not recite a flashing application prior to this phrase. It is further noted that an “application” could be either a product or a process, which further renders the claim unclear (i.e., it is unclear if “the flashing application” should be treated as “an applied flashing” or “a process of applying flashing). Furthermore, the phrase “the membrane composition” also lacks antecedent basis, as the claim fails to recite a preceding membrane composition. In the interest of compact prosecution, the claimed indefinite phrases will be interpreted as reciting “when installed during a step of applying a flashing” and “a membrane composition”, respectively.
Claims 16-20 are rejected as indefinite due to dependence on indefinite claim 15.
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 1-3, 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 and when installed during a step of applying a roofing 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 and forming a membrane is still within the scope of the claim). In the interest of compact prosecution, Wang is noted as disclosing forming a membrane via uncured EPDM polymers (which are, as best understood, in liquid form) with a reinforcing scrim, to produce a green membrane (i.e., an uncured membrane) (Wang: para. [0111]). In further support, it is noted that 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 polymer of Wang comprises EPDM (see above discussion).
With regards to claim 3, the first polymer is an EPDM polymer (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 and when installed during a step of applying a flashing 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 and forming a membrane is still within the scope of the claim). In the interest of compact prosecution, Wang is noted as disclosing forming a membrane via uncured EPDM polymers (which are, as best understood, in liquid form) with a reinforcing scrim, to produce a green membrane (i.e., an uncured membrane) (Wang: para. [0111]). In further support, it is noted that 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 arguments made with respect to the previous grounds of rejection under 35 U.S.C. 112(b) have been fully considered and they are found persuasive. Applicant has corrected the antecedent basis issues with respect to the claimed machine and cross-machine directions. In addition, it is clear that the first polymer must be a liquid in a membrane form (i.e., it is no longer unclear if the liquid form is before the membrane is formed or after – it is clear that the first polymer is a liquid during application of the formed membrane). Therefore, the previous grounds of rejection under 35 U.S.C. 112(b). However, Applicant’s amendments have necessitated new, separate grounds of rejection 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 Wang does not require, teach, or suggest the use of a polymer that is liquid after installation. Applicant argues that Wang’s focus is on processability for calendaring. These arguments are not found persuasive because Wang discloses using its EPDM composition (i.e., which, as best understood, is in liquid form) to form a green laminate (i.e., uncured laminate which is capable of being installed onto a roof). Therefore, Wang discloses a roofing membrane comprising EPDM polymers which are in liquid form after application onto (i.e., installed on) a roof. Wang’s focus on processability is not mutually exclusive. If anything, inclusion of liquid components would be understood by a person of ordinary skill as enhancing processability and calendaring (i.e., a fully solid, cured membrane would be lower in processability compared to an uncured membrane which is not fully solid, and therefore shapeable/moldable).
Applicant argues that the claims require a tensile yield strength of less than or equal to 20 lbs in accordance with ASTM 4811. Applicant argues that Wang does not measure the green strength or pre-cure elongation of its membranes. Applicant argues that inherency requires that the prior art necessarily includes the claimed feature. These arguments are not found persuasive as Wang discloses a composition which is substantially identical (actually – identical) to the composition of the claimed invention. As best understood from the claimed specification, no specific trade name EPDM polymers are used. Both Wang and the present specification disclose EPDM polymers with the same Mooney viscosity (i.e., the same liquid and strength characteristics). Therefore, compositionally, Wang discloses EPDM polymers identical to at least Applicant’s Example 1. Applicant further argues that, per Figures 2 and 3, and Example 1 of the present application, the inventive membrane achieves green strengths and elongations that are distinct from those of comparatively commercial products. Applicant’s arguments are not persuasive as the present specification only lists Example 1 as including an EPDM polymer, and the present specification has no discussion of specific EPDM polymers selected (other than advocating for the selection of EPDM polymers having the same Mooney viscosity as those disclosed in Wang). Figures 2 and 3 are directed to Examples which are not described, or even mentioned, in the present specification. Once the Examiner has shown a prior art composition substantially identical to that of the claimed invention, the burden of production shifts to Applicant, per MPEP 2112 (V). Since Wang discloses materials which are substantially identical (or, in this case, identical) to those of the present specification (i.e., a finding of a substantially identical product, with supporting evidence from Wang), burden establishing a lack of inherency has shifted. The presented arguments are not considered to rebut the present case of inherency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN WEYDEMEYER whose telephone number is (571)270-1907. The examiner can normally be reached Monday - Friday 8:30 - 5:00.
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/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783
Prosecution Insights