DETAILED ACTION
Response to Amendment
The amendment and response filed on June 24, 2026 has been entered. Claims 1-7, 9, and 11-15 are pending.
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 1-4, 6-7, 9, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over JP-H06-026125 in view of Franklin (US Pub 2011/0173910). The English language translation of JP ‘125 provided in the IDS filed on October 11, 2024 is relied on in the below rejection.
Regarding claim 1, JP ‘125 discloses an insultation board (Figure 1) comprising a substrate layer (ref #1), a solvent-based acrylic pressure sensitive adhesive layer (ref #2), and a release liner (ref #5). See paragraph [0015]. JP ‘125 discloses that the substrate is a foam material, but does disclose that conventional substrate materials include wood fiber-based insulating materials [0002]. Further, US ‘910, which is also directed to roof and building insulating materials, discloses that it is known in the roofing insulation board art to use a gypsum, wood fiber, or perlite board as the substrate [0021]. US ‘910 discloses that the substrate may be formed from any material with the necessary stiffness, structural durability, and functional characteristics required for the intended application of the composite roofing board [0021]. It would have been obvious to one of ordinary skill in the art to have prepared the insulation board of JP ‘125, wherein the substrate is one of the claimed high-density materials having a density within the presently claimed range, as taught in US ‘910, motivated by the desire to obtain an insulation board having desired stiffness and structural durability, as taught in US ‘910. See KSR rationale A and B.
Regarding claim 2, JP ‘125 does not specifically disclose that the adhesive layer contains not more than 10% of residual solvent. However, it would have been obvious to one of ordinary skill in the art to have adjusted the solvent content of the adhesive in order to adjust the viscosity for optimal application and drying time and the desire to eliminate excess solvent in the formed film in order for the pressure sensitive adhesive to be substantially dried prior to applying it to a roofing system.
Regarding claim 3, JP ‘125 discloses that the adhesive layer can have a thickness of 60 µm, 80 µm, or 100 µm [0015].
Regarding claim 4, JP ‘125 discloses that the pressure sensitive adhesive can contain a copolymer of acrylic acid and an acrylic acid ester as the main component [0015].
Regarding claim 6, JP ‘125 discloses that the release liner can be a silicon-based paper [0015].
Regarding claim 7, JP ‘125 discloses an insultation board (Figure 1) comprising a substrate layer (ref #1), a solvent-based acrylic pressure sensitive adhesive layer (ref #2), and a release liner (ref #5). See paragraph [0015]. JP ‘125 discloses that the substrate can be an extruded polystyrene foam plate [0015]. Further, US ‘910, which is also directed to roof and building insulating materials, discloses that it is known in the roofing insulation board art to use as expanded polystyrene as the substrate [0021]. US ‘910 discloses that the substrate may be formed from any material with the necessary stiffness, structural durability, and functional characteristics required for the intended application of the composite roofing board [0021]. It would have been obvious to one of ordinary skill in the art to have prepared the insulation board of JP ‘125, wherein the substrate is one of the claimed low-density materials having a density within the presently claimed range, as taught in US ‘910, motivated by the desire to obtain an insulation board having desired stiffness and structural durability, as taught in US ‘910. See KSR rationale A and B.
Regarding claim 9, JP ‘125 does not disclose attaching a facer to one of the surfaces of the substrate. US ‘910 discloses that it is well known in the art to attached a facer to a surface of the substrate [0018]. It would have been obvious to one of ordinary skill in the art to have prepared the insulation board of JP ‘125, wherein a facer is attached to the insulation board in order to provide protection to the insulation board, as taught in US ‘910.
Regarding claim 11, JP ‘125 discloses the method of providing the substrate and the adhesive layer and covering with adhesive with the release liner (Example, [0015]).
Regarding claim 12, JP ‘125 discloses applying the solvent-based acrylic pressure sensitive adhesive composition as a wet adhesive film onto a surface of the release liner, drying the wet adhesive film with hot air at 80ᵒC for 1 minute, and transferring the composite to the substrate (Example, [0015]).
Regarding claim 13, JP ‘125 does not specifically disclose the wet adhesive film coating weight being between 100-1000 g/m2. However, the thickness of the resulting dried adhesive film, i.e., 60 µm, 80 µm, or 100 µm [0015], is within the range of the present invention (see claim 3). Thus, it would have been obvious to one of ordinary skill in the art to have used a coating weight within the presently claimed range, motivated by the desire to obtain a dried adhesive layer having a thickness disclosed in JP ‘125.
Regarding claim 14, JP ‘125 discloses applying the insulation board to a roof (Figure 6, [0018], [0019]).
Regarding claim 15, JP ‘125 does not disclose applying a roofing membrane onto the insultation board. US ‘091 discloses that it is well known in the art to apply a roofing membrane to the insulation board (Figure 3, [0055]). This is additionally disclosed in US ‘910 [0030]. It would have been obvious to one of ordinary skill in the art to have prepared the insulation board of JP ‘125, wherein a roofing membrane is attached to the insulation board in order to provide weather protection to the insulation board, as taught in US ‘091 and US ‘910.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over JP-H06-026125 in view of Franklin (US Pub 2011/0173910) as applied to claims 1 and 4 above, and further in view of McJunkins et al. (US Pub 2017/0210091).
Regarding claim 5, modified JP ‘125 does not disclose the glass transition temperature or number average molecular weight of the acrylic polymer adhesive material. US ‘091, which is also directed to roofing construction boards that have a pressure sensitive adhesive, disclose that it is conventional in the art to use a pressure sensitive adhesive having a glass transition of below 0ᵒC [0029] and a number average molecular weight of 100,000 to 350,000 g/mol [0030]. It would have been obvious to one of ordinary skill in the art to have prepared the insulation board of JP ‘125, wherein the pressure sensitive adhesive has a glass transition and/or number average molecular weight within the claimed range(s) motivated by the desire to obtain an adhesive layer that is useful in roofing system applications, as taught by US ‘091.
Response to Arguments
Applicant's arguments filed on June 24, 2026 have been fully considered but they are not persuasive.
The present amendment/response overcomes the previous claim objections and rejections under 35 U.S.C. 112(b). Additionally, the rejection under 35 U.S.C. 102(a)(1) over JP ‘125 has been overcome.
Based on the present amendment, the rejections under 35 U.S.C. 103 have been modified as set forth above. The arguments based on the now claimed high-density substrate (independent claim 1) and low-density substrate (independent claim 7) are not persuasive for the reasons detailed above in paragraphs 4 and 9. Specifically, it is argued that one would not have found any necessity to use the invention of JP ‘125 with anything other than low-density foam substrate. The examiner disagrees and maintains the one skilled in the art, when looking at the roofing and building insulation art as a whole, including US ‘910, would appreciate that the substrate can be a high-density or low-density material based on the desired stiffness, structural durability, and functional characteristics required for the intended application of the insulation material (see US ‘910, para [0021]). The use of a high or low density substrate would yield predictable results and would have been obvious to the skilled artisan. See KSR rationale A and B.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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, Frank Vineis can be reached at (571)270-1547. 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.
/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
Prosecution Insights