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 .
Claim Rejections - 35 USC § 103
2. 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 (i.e., changing from AIA to pre-AIA ) 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.
3. 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.
4. Claim(s) 1-3, 6-10, 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kelly (US 10,214,906) in view of Kelly (US 5,704,647).
Regarding claim 1, Kelly’906 discloses a roof system comprising:
a roof deck 34 (Fig 2);
at least one layer of insulation 38 disposed upwardly adjacent and in direct contact with the roof deck (Col 2, Lines 55-58)
at least one layer of weighted coverboard 40 positioned in direct contact with an upper surface of the at least one layer of insulation, (Col 3, Lines 1-2) the at least one layer of weighted coverboard 40 further comprises:
a plurality of panels of coverboard 40 separated by a plurality of abutting joints (Fig 2);
wherein the roof system beneath the at least one layer of weighted coverboard is air permeable. Examiner concludes this because the roof system of Kelly’906 has the roof deck and the layer of insulation layered in the same manner than applicant’s claimed invention therefore the claimed limitations are met. Further, the layer of insulation of Kelly’906 can be expanded polystyrene (EPS) that is the same than Applicant’s claimed invention and is air permeable and considered a "breathable" insulation, allowing water vapor to pass through.
Kelly’906 does not disclose a sealant positioned within the plurality of abutting joints to couple the plurality of panels of coverboard. However, Kelly’647 discloses a plurality of panels of coverboard separated by a plurality of abutting joints 74; and a sealant positioned at the plurality of abutting joints 74 to couple the plurality of panels of coverboard 72 (Fig 4), (Col 4, Lines 45-49). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Kelly’906 to include a sealant within the joints as taught by Kelly’647, in order to make the plurality of panels of coverboard act as an integral floating mass. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
Regarding claim 2, Kelly’906 modified by Kelly’647 discloses the modified at least one layer of weighted coverboard 40 is an air barrier, (Fig 2).
Regarding claim 3, Kelly’906 discloses the at least one layer of weighted coverboard 40 is loosely laid in overlapping arrangement with the at least one layer of insulation 38, (Col 2, Lines 55-58), (Fig 2 ).
Regarding claim 6, Kelly discloses a waterproofing membrane 64 arranged upwardly adjacent to an upper surface of the at least one layer of weighted coverboard (Fig 3).
Regarding claim 7, Kelly’906 modified by Kelly’647 discloses the waterproofing membrane 64 has a plurality of edges, but does not disclose the waterproofing membrane is affixed to the at least one layer of weighted coverboard at only the plurality of edges. However, it would have been an obvious engineering design to have the waterproofing membrane affixed at only the edges in order to provide a waterproofing membrane that can be easily installed, repaired and replaced.
Regarding claim 8, Kelly discloses the waterproofing membrane 44 is affixed to the at least one layer of weighted coverboard at the plurality of abutting joints (Col 3, Lines 25-27). Examiner notes that since the membrane 44 is fully adhered to the weighted coverboard this includes the plurality of abutting joints.
Regarding claim 9, Kelly’906 modified by Kelly’647 discloses as discussed in claim 8, but does not disclose the waterproofing membrane located between the plurality of abutting joints is not attached to the at least one layer of weighted coverboard. However, it would have been an obvious engineering design to have the waterproofing membrane located between the plurality of joints not attached to the at least one layer of weighted coverboard in order to provide a waterproofing membrane that can be easily installed, repaired and replaced.
Regarding claim 10, Kelly discloses at least one opening extending upwardly from above the at least one layer of insulation; and at least one equalizer valve 70 mounted within the at least one opening, the at least one equalizer valve being sealed to the waterproofing membrane (Fig 5). Examiner notes that, even though Kelly’906 does not explicitly recite the openings and the seal, these are well known in the art components of a roof substrate assembly and therefore are implicitly disclosed by Kelly’906.
Regarding claim 17, Kelly discloses a method of reroofing an existing roof system comprising:
removing an existing ballast layer 20 and waterproofing membrane 18 to expose a partial roof system (Fig 1), the partial roof system being air permeable. Examiner concludes this because the roof system of Kelly’906 has the roof deck and the layer of insulation layered in the same manner than applicant’s claimed invention therefore the claimed limitations are met. Further, the layer of insulation of Kelly’906 can be expanded polystyrene (EPS) that is the same than Applicant’s claimed invention and is air permeable and considered a "breathable" insulation, allowing water vapor to pass through.
Kelly’906 further discloses installing at least one layer of weighted coverboard 40 in direct contact with an upper surface of the partial roof system (Fig 2).
Kelly’906 does not disclose the step of sealing a plurality of joints of the at least one layer of weighted coverboard with a sealant to form an air barrier at the at least one layer of weighted coverboard. However, Kelly’647 discloses at least one layer of weighted coverboard separated by a plurality of abutting joints 74; and a sealant positioned at the plurality of abutting joints 74 to couple the at least one layer of weighted coverboard 72 (Fig 4), (Col 4, Lines 45-49). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Kelly’906 to include a sealant within the joints as taught by Kelly’647, in order to make the plurality of panels of coverboard act as an integral floating mass. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
As modified, an air barrier will be formed at the at least one layer of weighted coverboard.
Regarding claim 18, Kelly discloses installing another waterproofing membrane 44 upwardly adjacent to the at least one layer of weighted coverboard 40 (Fig 2).
Regarding claim 19, Kelly’906 modified by Kelly’633 discloses as discussed in claim 18, but does not disclose only a portion of the another waterproofing membrane is adhered to a surface of the at least one layer of weighted coverboard. However, it would have been an obvious engineering design to have the another waterproofing membrane adhered to the at least one layer of weighted coverboard as claimed in order to provide a waterproofing membrane that can be easily installed, repaired and replaced.
5. Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kelly (US 10,214,906) in view of Kelly (US 5,704,647) and further in view of Kelly (US 6,006,482).
Regarding claim 4, Kelly’906 modified by Kelly’647 discloses a single layer of weighted coverboard, but does not disclose a plurality of stacked layers of weighted coverboard. However, Kelly’482 discloses a plurality of stacked layers of weighted coverboard 14, (Fig 20). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Kelly’906 to include a plurality of stacked layers of weighted coverboard as taught by Kelly’482, according to the required structural characteristics of the roof system. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
Regarding claim 5, Kelly’906 modified by Kelly’647 and Kelly’482 discloses as discussed in claim 4, but does not disclose the plurality of layers of weighted coverboard are adhered to one another. However, Kelly’482 discloses a plurality of stacked layers of roofing materials 14 adhered to one another, (Fig 20), (Col 9, Lines 18-26). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system to have the plurality of weighted coverboards adhered to one another as taught by Kelly’482, in order to secure the plurality of weighted coverboards to each other. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
6. Claim(s) 11-13 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kelly (US 10,214,906) in view of Kelly (US 5,704,647) and further in view of Kelly (US 8,407,958).
Regarding claims 11 and 12, Kelly’906 modified by Kelly’647 discloses as discussed in claim 6, but does not disclose a nailer mounted at a perimeter of the roof system, in overlapping arrangement with the waterproofing membrane, wherein the nailer is encapsulated by the waterproofing membrane. However, Kelly’958 discloses a roof system including a nailer 40 mounted at a perimeter of the roof system, in overlapping arrangement with the waterproofing membrane 104, wherein the nailer 40 is encapsulated by the waterproofing membrane 104, (Fig 7). Therefore, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Kelly’906 and Kelly’647 to include a nailer as taught by Kelly’958, in order to provide a termination edge to the membrane at the perimeter edge that will be protected from the elements maintaining the air and water seal of the assembly. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
Regarding claim 13, Kelly’958 further discloses a flashing membrane 106 separate from the waterproofing membrane 104, the nailer 40 being encapsulated by the flashing membrane (Fig 7).
Regarding claim 20, Kelly’906 modified by Kelly’647 and Kelly’958 discloses the claimed method step. The limitations of claim 20 can be seen above in the rejections of claims 11-13.
7. Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Currier (US 2009/0208714).
Regarding claim 14, Currier discloses a roof system comprising: a roof deck 52 (Fig 3, 4);
at least one layer of insulation 54, 56 disposed in an overlaying arrangement with the roof deck; and
a layer of weighted coverboard 58 positioned upwardly adjacent to an upper surface of the at least one layer of insulation 54, 56, wherein an adjacent layer of the layer of weighted coverboard 58 are adhered to one another (by tape 62), (Fig 3);
wherein the roof system beneath the at least one layer of weighted coverboard is air permeable. Examiner concludes this because the roof system of Currier has the roof deck and the layer of insulation layered in the same manner than applicant’s claimed invention therefore the claimed limitations are met. Further, the layer of insulation of Currier can be expanded polystyrene (EPS) that is the same than Applicant’s claimed invention and is air permeable and considered a "breathable" insulation, allowing water vapor to pass through.
Currier discloses a single layer of weighted coverboard, but does not disclose a plurality of layers of weighted coverboard. However, it would have been an obvious matter of design choice to modify the roof system to include a plurality of layers of weighted coverboard since such a modification would have involved a mere duplication of parts according to the required structural characteristics of the roof system.
Regarding claim 15, Currier discloses the plurality of layers of weighted coverboard is positioned in direct contact with an upper surface of the at least one layer of insulation (Fig 3, 4).
Regarding claim 16, Currier discloses a waterproofing membrane 64, 66 arranged upwardly adjacent to an upper surface of the plurality of layers of weighted coverboard 58 (Fig 3, 4).
Response to Arguments
8. Applicant’s arguments with respect to claim(s) 1-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to Applicant’s argument that the prior art of record does not teach the newly added limitations “wherein the roof system beneath the at least one layer of weighted coverboard is air permeable”. Examiner respectfully disagrees, according to Applicant’s disclosure on Par 0062, the only mention of “air permeable” appears in the context of existing systems ‘Existing systems that use one or more layers of weighted coverboard as a ballast layer in a roofing system having an air permeable deck typically do not seal the panels within a layer together or stacked panels to one another”. Examiner contends that the prior art of Kelly 10,968,633 and Currier 2009/0208714 teach a roof system having the roof deck and the layer of insulation that can be expanded polystyrene (EPS) layered in the same manner than Applicant’s claimed invention and since EPS is air permeable and considered a "breathable" insulation, allowing water vapor to pass through the roof system beneath the layered of weighted coverboard is “air permeable”.
Conclusion
9. 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 ADRIANA FIGUEROA whose telephone number is (571)272-8281. The examiner can normally be reached 8:30AM-5PM MONDAY-FRIDAY.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN GLESSNER can be reached at 571-272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ADRIANA FIGUEROA/
Primary Examiner
Art Unit 3633
01/29/2026