DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 14, 2026 has been entered.
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 1-11, 13, 15, 28, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 20160319090) in view of Jain (WO 2021051074).
As to claim 1, Wang teaches a teaches a method for making a cured rubber sheet ([0007]). Wang teaches (i) applying a curable silicone coating ([0040]) interpreted to be a polymer to a planar surface of an uncured rubber sheet (Fig. 1, item 25; Abstract). Wang teaches (ii) subjecting the curable coating composition to curing conditions to form a cured coating composition on an uncured rubber sheet ([0042]-[0046]; Fig. 1, item 30). Wang teaches (iii) rolling the uncured rubber sheet including the cured coating onto itself to form a roll ([0049]; Fig. 1, item 35). Wang further teaches (iv) subjecting the roll to curing conditions that cure the uncured rubber sheet to form a roll of cured rubber sheet (Fig. 1, item 40; [0050]). Wang further teaches unrolling/unwinding the roll after curing to permit cutting to length ([0053]).
Wang is silent to a silicon-containing hydrolyzable terminal group having a thickness of greater than 140 microns.
Jain teaches a similar membrane coated with a polymer ([0054]) containing a silicon-containing hydrolyzable terminal group ([0050]) having a thickness greater than 140 microns ([0022], less than 7 mil, equivalent to 178 microns).
It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Jain silicon-containing hydrolyzable terminal group into Wang because (a) Wang suggests using a silicone coating ([0040]) and Jain provides a silicone coating within the scope of the Wang suggestion, with a reasonable expectation of success present in view of the fact that both Wang and Jain produce roof membranes from EPDM, or alternatively, (b) one would have recognized the Jain silicone coating (on EPDM roof membrane) to be an obvious interchangeable substitute for the silicone already used by Wang for predictably coating the surface of a similar (EPDM) roof membrane.
As to claims 2, 4, and 5, Wang teaches calendaring (Fig. 1, item 20) EPDM ([0012]) to a thickness of 30 mil to 120 mil (claim 5), applying a coating (Fig. 1, item 25), curing (Fig. 1, item 30), and unrolling after curing (Fig. 1, item 45). As to claims 6-10, Wang is silent to a coating thickness less than 300 microns, moisture curable polyether backbone and polyurethane backbone, and Brookfield Viscosity. However, Jain teaches a less than 178 micron thick coating (claim 17) made from moisture curable ([0051]) polyether or polyurethane ([0052]) backbone coating composition having the claimed Brookfield Viscosity ([0055]). These features would have been obvious for the same reasons set forth in the rejection of claim 1. As to claim 11, Wang is silent to the claimed components, however, Jain teaches a plasticizer, a moisture scavenger, and adhesion promoter, and a catalyst ([0050]). These features would have been obvious for the same reasons set forth in the rejection of claim 1. As to claim 13, Wang teaches curing at 130 C and an autoclave (claims 17 and 18). As to claim 15, Wang provides embodiments without a step of applying a particulate ([0021]). As to claim 28, Jain provides to the combination a silicon-containing hydrolyzable terminal group in a cured coating which is obviously devoid of silicon-containing internal repeat units. As to claim 30, Wang teaches applying the curable composition at less than 225 square feet per gallon ([00107]), which overlaps with the claimed range.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 20160319090) in view of Jain (WO 2021051074), and further in view of Stamper (US 4,827,686). Wang and Jain teach the subject matter of claim 1 above under 35 U.S.C. 103.
As to claim 14, Wang appears to be silent to coating both opposite planar surfaces.
Stamper teaches an EPDM roofing membrane similar to those of Wang and Jain coated on both sides. In the combination, one would have found it obvious to apply the Jain coating to both sides of the Wang membrane in view of Stamper’s teaching.
It would have been prima facie obvious to incorporate this feature (coating on both planar surfaces) from Stamper into Wang motivated by priming both surfaces of the membrane in order to allow adhesion/securing of either/both sides of the membrane to the roof. There is a reasonable expectation of success in the combination in light of the fact that Stamper also teaches an EPDM like those of Wang or Jain.
Claims 22-26, 29, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 20160319090) in view of Jain (WO 2021051074).
As to claim 22, Wang teaches a teaches a method for making a cured rubber sheet ([0007]). Wang teaches (i) applying a curable silicone coating ([0040]) interpreted to be a polymer to a planar surface of an uncured rubber sheet (Fig. 1, item 25; Abstract). Wang teaches (ii) allowing the curable coating composition to cure to form an uncured rubber sheet including an at least partially cured coating composition ([0042]-[0046]; Fig. 1, item 30). Wang teaches (iii) rolling the uncured rubber sheet including the cured coating to form a roll ([0049]; Fig. 1, item 35). Wang further teaches (iv) subjecting the roll to curing conditions that cure the uncured rubber sheet to form a roll of cured rubber sheet (Fig. 1, item 40; [0050]). Wang further teaches unrolling/unwinding the roll after curing to permit cutting to length ([0053]).
Wang is silent to a silicon-containing hydrolyzable terminal group.
Jain teaches a similar membrane coated with a polymer ([0054]) containing a silicon-containing hydrolyzable terminal group ([0050]) having a thickness greater than 140 microns ([0022], less than 7 mil, equivalent to 178 microns).
It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Jain silicon-containing hydrolyzable terminal group into Wang because (a) Wang suggests using a silicone coating ([0040]) and Jain provides a silicone coating within the scope of the Wang suggestion, with a reasonable expectation of success present in view of the fact that both Wang and Jain produce roof membranes from EPDM, or alternatively, (b) one would have recognized the Jain silicone coating (on EPDM roof membrane) to be an obvious interchangeable substitute for the silicone already used by Wang for predictably coating the surface of a similar (EPDM) roof membrane.
As to claims 23 and 24, Wang teaches uncured EPDM ([0012]) of a thickness of 30 mil to 120 mil (claim 5), applying a coating (Fig. 1, item 25), curing (Fig. 1, item 30), and unrolling after curing (Fig. 1, item 45). While Wang is silent to the less than 300 micron thickness, Jain teaches a less than 178 micron thick coating (claim 17). This feature would have been obvious for the same reasons set forth in the rejection of claim 22. As to claims 25-26 and 29, Jain provides to the combination (as discussed in the rejection of claim 22) a silicon-containing hydrolyzable terminal group including either a polyether or polyurethane group ([0052]), either of which is obviously devoid of silicon-containing internal repeat units. As to claim 31, Wang teaches applying the curable composition at less than 225 square feet per gallon ([00107]), which overlaps with the claimed range.
Response to Arguments
Applicant's arguments filed January 14, 2026 have been fully considered but they are not persuasive. The arguments appear to be on the following grounds:
(page 7) Claims 6 and 24 were cancelled, and that Wang specifically teaches that the thickness of the curable coating layer may be at most 10 microns, and there is no teaching or suggestion to depart from the coating compositions taught by Wang and to provide a different coating thickness. Claims 1 and 22 were also amended to recite the step of unrolling after curing.
(page 7-8) The Office Action misses the point because Wang is primarily concerned with a coating that is compatible with an adhesive, but Wang is primarily concerne3d with a coating that will prevent the EPDM membrane from deleteriously sticking to itself. Wang’s primary purpose is to prevent adherence in a manner that will frustrate unwinding, and Jain offers no evidence that its coating would be useful for this purpose.
(page 8) Jain is silent to application of its coating composition to an uncured EPDM sheet, and [00101] of Jain contemplates field application of the primer.
(page 8-9) The claimed invention creates a boundary or barrier layer that prevents green rubber membrane from curing or adhering to itself. The ability to form a boundary or barrier was unexpected in view of the thickness of the moisture-curable coating layer, and the peel force required to unwind is indirectly related to the thickness of barrier coating applied, and Wang applies a very thin coating.
Examiner’s Response
It appears that claims 6 and 24 were not cancelled even though a thickness feature was now incorporated into claims 1 and 22. The discussion of coating thickness in Wang is noted, but it should also be noted that the lower and upper limits stated in Wang are separate and non-exclusive concepts. In other words, when Wang states a lower thickness, it is not specifically paired with an upper range limit. Lower limits are specified, but then “In these or other embodiments,” an upper coating thickness may be used. There is no teaching away from what is claimed. Since at least one of Applicant’s figures was the same or highly similar to Wang’s Fig. 1, the Examiner does not see any difference in the order to steps including the curing and unrolling.
Three alternative rationale were included for the combination of Jain with Wang, and it is unclear that any was particularly argued. Even if Jain does not specifically measure or describe the release properties of the coating material, this does not overcome the fact that Wang teaches/suggests a silicone and Jain provides a material within the scope of this teaching/suggestion. Silicones have well known release effect, and it seems logical that Wang would teach/suggest a silicone.
The Examiner does not see how the location (whether field or factory) in which the primer is applied affects the resulting coating. However, beginning at Wang, one of ordinary skill in the art would have found it obvious to use the Jain primer material in Wang, and doing so meets all claimed features.
While the relationship between peel force and thickness of the barrier coating does not appear to be specifically discussed in Wang or Jain, both references use a thickness that are similar to those claimed. It is unclear why a selected thickness within the range disclosed by the prior art that provides the same adherence prevention during rolling and curing should be considered novel and nonobvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J DANIELS whose telephone number is (313)446-4826. The examiner can normally be reached Monday-Friday, 8:30-5:00 pm.
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, Christina Johnson can be reached at 571-272-1176. 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.
/MATTHEW J DANIELS/Primary Examiner, Art Unit 1742