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 .
Response to Amendments
Applicant filed a response and amended claim 14 on 12/19/2025. The 112(b) rejections previously presented are withdrawn in view of amendments.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant argues:
“The different extrusion processes are very different, and one is not readily
substitutable for the other in all applications. That is, one of ordinary skill in the art would
not have found it obvious to substitute Orlych's extrusion into the process of Gossi and to necessarily achieve the same results.
The technical effect resulting from the differences between the claimed method
(extrusion or co-extrusion using a blown film die) and the method disclosed in Gossi (melt extrusion through a manifold or a flat, annular, slot, or cast die) is that the use of a blown film extruder enables providing relatively multilayer thin film sealing devices using a simple and cost efficient process.”
“One of ordinary skill in the art, stating from Gossi, would not have arrived at the
claimed method as a solution to the objective technical problem. This is at least because Gossi is completely silent on the possibility of using a blown film extrusion process for production of the disclosed sealing devices.
Moreover, the skilled artisan would not have looked to Orlych, and would not have been led to somehow combine Orlych with Gossi with any reasonable expectation of success.
Regarding Orlych, a person of ordinary skill in the art of polymer extrusion processes would be familiar with blown film extrusion processes. However, the skilled artisan would not have considered using Orlych in Gossi without any knowledge about potential advantages that would be obtained by doing so. Indeed, no such potential advantages would have been expected. Due to the significant amount of cement in the functional layer of the exemplary sealing devices of Gossi, the skilled artisan would probably not even have considered using blown film extrusion technology for producing the sealing devices of Gossi.”
Examiner respectfully disagrees:
Gossi teaches manufacturing a multilayer membrane by extruding and/or calendaring and/or co-extruding a homogenized melt comprising the components of the first and second layers [0146]. Gossi teaches the extrusion can be through a manifold or a flat, annular, slot, or cast die [0151].
One of ordinary skill in the art would have understood from the teachings of Gossi the extrusion process of Gossi is readily modifiable, as Gossi explicitly teaches modifications to the process (e.g., use of different dies, use of different techniques, use of different auxiliary steps).
In the same field of co-extruding a multilayer laminate, Orlych teaches a process of co-extrusion through a film blowing machine. One of ordinary skill in the art would have recognized from the teachings of Orlych that a blown extrusion film process is a conventional extrusion process for manufacturing multi-layer laminates. Therefore, one of ordinary skill in the art would have recognized the blown extrusion technique of Orlych is a suitable extrusion technique for the process of Gossi, to yield the predictable result of providing a co-extrusion technique as desired by Gossi.
Orlych does not need to be identical in composition or application to Gossi for one of ordinary skill in the art to recognize Orlych and Gossi are drawn to the same field of endeavor pertaining to co-extrusion molding for the purpose of forming multi-film laminates.
The modification of the co-extrusion process of Gossi with a blown film co-extrusion process as taught by Orlych would yield the predictable result of providing co-extruded multilayer films using a co-extrusion technique as desired by Gossi.
Any given co-extrusion technique can have advantages over the other. However, there appears to be no new or unexpected results from the use of a blown film extrusion process. While Applicant argues a blown film extrusion process differs significantly and suggest potential advantages from the modification, there appears to be no new or unexpected results from a blown film extrusion presented in Applicant’s disclosure.
Applicant argues:
“Further, starting from Gossi, one of ordinary skill in the art would not have considered Orlych, because Orlych explicitly teaches:
1) The task of Orlych is to provide a transparent film, which cannot be obtained by a composition of Gossi containing a significant amount of cement. Furthermore, none of the three layers A, B, C in Orlych contains any filler, and the possibility of adding fillers is not disclosed therein. Orlych thus states "[a]ccordingly, what is needed is a lightweight, self-adhered, UV resistant, transparent film like material that is generally impervious to water and other liquids and resists tearing while providing a non-slip or slip-resistant surface." See Orlych at paragraph [0005] (emphasis added).
2) The concept of a permanent adhesion to a concrete substrate for the purpose of permanent waterproofing in buildings (heavy duty waterproofing) is not disclosed in Orlych. First, Orlych teaches a reversible bonding to substrates (especially marine applications, hence not disclosing concrete surfaces) and removable/peelable PSA adhesives. See Orlych at paragraph [0030]. This is for simple, light-duty and short-term protection of marine vessels.
Id. Furthermore, the bonding layer (corresponding to the functional layer in the present invention and Gossi) is not coextruded in Orlych but rather is later added as a PSA. This is described in Orlych at paragraph [0030] as "[t]he PSA ... can be coated using typical coating methods such as knife over roll, reverse roll, gravure or other roll coating methods."
3) The layer from Orlych should be lightweight, teaching away from compositions containing fillers.
Thus, in the first instance, one of ordinary skill in the art would not have looked to
Orlych as a method to substitute for the extrusion methods taught by Gossi. Moreover, even if the skilled artisan had looked to Orlych, he would have seen that Orlych does not extrude the bonding layer (functional layer as claimed or disclosed in Gossi). The references simply provide no reason or rationale for one of ordinary skill in the art to have somehow combined the cited references and then modified the resultant combination so as to arrive at the claimed invention with any reasonable expectation of success. The only reason to have done so can only be derived from the hindsight use of the present disclosure as a roadmap to reconstruct the claimed invention, which is improper and does not establish a prima facie case of obviousness.”
Applicant appears to argue the composition, product, and application of the laminate of Orlych. However, the rejections are over Gossi in view of Orlych, which relies upon the material composition and product of Gossi.
Orlych is indeed drawn to an UV resistant, transparent film. However, Examiner disagrees that the Orlych does not teach adding fillers. Orlych teaches extrusion blown film layer C can include a grit material (i.e., filler) [0022]-[0025]. Accordingly, one of ordinary skill in the art would have recognized the extrusion blown film technique of Orlych is suitable for compositions with filler.
The lightweight feature of the product of Orlych and its light duty application does not teach away from the suitability of the coextrusion technique of Orlych. There is no teaching that suggests the process of Orlych is limited to the composition or application taught in Orlych.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Gossi (PG-PUB 2018/0281347) in view of Orlych (PG-PUB 2012/0038089).
Regarding claim 14, Gossi teaches a method for producing a sealing device,
wherein the sealing device comprising a polymeric carrier layer (Figure 1, item S1 and [0110]-[0112]) and a first functional layer (Figure 1, item S2 and [0093], [0109]),
wherein the functional layer comprises:
a) 20-90 wt.%, of at least one polymer P1 [0091]-[0092] and
b) 10-90 wt.-%, of at least one solid filler F ([0029]-[0030], [0047]-[0048] and [0101]), all proportions being based on the total weight of the first functional layer,
wherein the polymeric carrier layer has a thickness of 0.1-10 mm (100 microns to 10,000 microns) [0117], and wherein the first functional layer has a mass per unit area of 100-10,000 g/m2 [0115],
the method comprising: a step of extruding or co-extruding a first molten polymer composition comprising the constituents of the polymeric carrier layer and a second molten polymer composition comprising the constituents of the first functional layer through an extruder die ([0145]- [0151], [0154]-[0156]).
Gossi teaches the melt extrusion of the polymeric carrier layer and functional layer can be performed through a manifold or a flat, annular, slot, or cast die [0151] and [0155].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05).
Gossi does not explicitly teach extruding or co-extruding a first molten polymer composition comprising the constituents of the polymeric carrier layer and a second molten polymer composition comprising the constituents of the first functional layer through a blown film extruder die.
Orlych teaches a process for preparing a multi-layered film composite using a co-extrusion process by extruding melt compositions for each layer through a blown film die (Figure 2 and [0006]-[0007], [0019], [0022], [0026]-[0029]).
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the process of Gossi with a blow-extrusion molding technique, a known suitable co-extrusion technique for producing multi-layered film composites as taught by Orlych, to yield the predictable result of co-extruding the polymeric carrier layer and first functional layer as desired by Gossi. Accordingly, one of ordinary skill in the art would have been motivated to extrude the melt compositions of Gossi through a blow film extruder die as taught by Orlych.
Regarding claim 15, Gossi in view of Orlych teaches the process as applied to claim 14, wherein the first molten polymer composition has been obtained by melt-processing a first starting composition comprising the constituents of the polymeric carrier layer and the second molten polymer composition has been obtained by melt-processing a second starting composition comprising the constituents of the first functional layer (Gossi, [0145]- [0151], [0154]-[0156]).
Conclusion
THIS ACTION IS MADE FINAL. 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 HANA C PAGE whose telephone number is (571)272-1578. The examiner can normally be reached M-F, 9:00-5:30.
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, Phillip Tucker can be reached at 5712721095. 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.
/HANA C PAGE/Examiner, Art Unit 1745
/MICHAEL A TOLIN/Primary Examiner, Art Unit 1745