DETAILED ACTION
In the amendment filed on July 14, 2026, claims 1 – 5, 8 – 18 are pending. Claims 1, 2, 3, 4, 5, 8, 9, 10 have been amended and claims 6 – 7 have been canceled. Claims 11 – 18 have been withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 § 112
The rejections of the claims under 35 USC § 112 in the previous Office Action are withdrawn due to Applicant amendment.
Claim Rejections - 35 USC § 103
The rejections of the claims under 35 USC § 103 in the previous Office Action are withdrawn due to Applicant amendment.
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.
Claim(s) 1, 2, 3, 5 is/are newly rejected, as necessitated by amendment, under 35 U.S.C. 103 as being unpatentable over Ding et al. US 2020/0362207 A1 (hereafter “Ding”) in view of Knebel et al. EP 2480725 B1 (hereinafter “Knebel”).
Regarding claims 1, 2, 3, 5, 8, 9:
Ding is directed to methods of forming pre-applied waterproofing membranes having an adhesive layer and an outer particle layer, and methods of making such membranes (Abstract). In the embodiment as shown in Fig. 1, Ding discloses a flexible carrier sheet 12 made of e.g. thermoplastic polyethylene [polymeric carrier] with two major faces ([0021], [0025]), and a pressure sensitive adhesive layer 14 disposed on one of the two major faces and particle/granules [solid fillers] disposed further onto the adhesive layer 14 [collectively the functional coating] ([0021], [0027]). Ding also discloses that the polymer layer may optionally also contain inorganic particles such as sand or granite dust ([0045]).
Ding discloses a method of making such membranes comprising: coating a carrier with hot-melted pressure sensitive adhesive [polymeric component P1] by e.g. a roll coater, slot die coater or curtain coater ([0054]); and embedding granules of e.g. PMMA particles onto heated pressure sensitive adhesive followed by heating in an air circulation oven ([0054] – [0058]).
Ding does not expressly teach that the polymeric portion of the functional coating is formed by strewn onto the polymer carrier; the strewing of a second particle-based composition with a thermoplastic polymer p12 and at least one inorganic filler f11, and subsequent heat treatment ; and that the first particle-based composition is substantially free of the at least one inorganic filler f11.
With regards to strewing the polymeric portion of the functional coating onto the polymer carrier:
‘725Knebel is directed to a waterproofing membrane for sealing substrates against water penetration and method of producing such a membrane (Abstract) As shown in Fig. 7, ‘725Knebel discloses a series of scatterers 16 [strewers] ([0097]) that scatter particles of adhesive 4 where adhesive is to be applied ([0075]; Fig. 4) as well as particulate “contact promoter” 5 comprised of elastic particles ([0088]). The adhesive used may be ethylene/vinyl acetate copolymer (EVA) particulates [meeting claim 9] and that after application, the particulate type (ethyl vinyl acetate) and that a heat source is used afterwards to efficiently join other components by action of heat ([0074] – [0075]). Finally, ‘725Knebel discloses that the powder scattering method, as called within ‘725Knebel is a preferred equivalent to slot die extrusion, melt calendaring or spray lamination.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Ding by substituting the application method for Ding’s adhesive from slot-die (extrusion) coating to strewn coating, including combination of granules of both a given filler and polymer such as EVA [meeting claims 2, 9], because as taught by ‘725Knebel, the strewing method is made part of the ordinary capabilities of one of ordinary skill in the art, and the substitution of one known element for another yields predictable results to one of ordinary skill in the art.
With regards to strewing a second particle-based composition with a thermoplastic polymer p12 and at least one inorganic filler f11 and subsequent heat treatment:
Such a second strewing to a duplication of steps leading to a duplication of resultant coatings, especially where the polymers P11 is not required to be different from P12. Absent a showing of unexpected results, a prima facie case of obviousness exists where steps and their resultant products are merely duplicates. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959).
With regards to the first particle-based composition is substantially free of the at least one inorganic filler f11:
As discussed above, Ding discloses that the adhesive layer may be a mixture of particles that include inorganic particles [F11 filler].
Ding also discloses that the embedding granules of e.g. PMMA particles [no inorganic fillers] ([0012]). ‘725Knebel discloses adhesives of EVA ([0074] – [0075]). Finally, ‘725Knebel discloses that powder spreaders can separately apply adhesive and a contact promoter 5 [analogous to filler] (Fig. 4 references 4 and 5, [0075] – [0076]), thus suggesting that components may be provided together or separately.
Finally, Ding discloses that the presence and amount of fillers affect the resultant properties of the adhesive, such as affecting bond strength to concrete or strength of the finished material [relevant to claim 3] ([0010], [0044] – [0045]; Claims 2, 3, 4)
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the spreading of a first particle based composition across multiple strewings, wherein each component of the resultant polymer layer may be strewn as separate components and/or admixtures thereof – including having one strewing having only polymer P11/P12 and the other having P12 and F11 as essentially substeps within an overall powder strewing step because ‘725Knebel teaches that components may be deposited separately as desired, and Ding teaches that the type and amount of fillers affect resultant properties of the adhesive layer. Each separation essentially combines in a final product, especially before a final heat-treatment. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959).
With regards to dependent claim 3, the amount present of polymer component and solid filler in each of the particle-based compositions that are strewn to result in an eventual single layer with properties that are optimizable. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim(s) 1 – 6, 8 – 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Caviezel et al. US 20200181018 A1 (hereafter “Caviezel”) in view of ‘725Knebel.
Regarding 1, 2, 4, 5, 8:
Caviezel is directed to a waterproofing system comprised of a functional layer disposed onto a barrier layer as depicted in e.g. Fig. 2 (Abstract; [0017], [0098]). In the embodiment as shown in Fig. 2, the two functional layers S1 and S1’ are disposed on both major surfaces of the barrier layer S2 ([0098] – [0102]). The barrier layer is comprised of a thermoplastic polymer and with two major sides ([0101]). The functional layer on at least one major side S1 is comprised of a thermoplastic polymer and filler particles ([0013]). Caviezel further discloses a method of producing the waterproofing system comprising: co-extruding or separately extruding the polymers that are to form the functional layer S1 and the barrier layer S2 ([0138], [0141], [0143]); and optionally feeding additionally filler at a downstream extrusion ([0134] – [0135]).
Caviezel does not expressly teach that the functional layer is strewn onto the barrier layer followed by heat treatment.
The disclosure of ‘725Knebel discussed above in the rejection of claims 1, 2, 3, 5, 8, 9 over Ding in view of ‘725Knebel apply to the present rejection, mutatis mutandis.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Caviezel by substituting the application method for Caviezel’s adhesive from slot-die (extrusion) coating to strewn coating for each side [meeting claim 4], including combination of granules of both filler and polymer [meeting claim 2], because as taught by ‘725Knebel, the strewing method is made part of the ordinary capabilities of one of ordinary skill in the art, and the substitution of one known element for another yields predictable results to one of ordinary skill in the art.
Regarding claim 3:
Caviezel discloses that the functional layer composition may have e.g. 30-70
wt.-% of the thermoplastic polymer ([0120]) and 5-50wt% of filler ([0126]).
Regarding claim 9:
‘725Knebel discloses adhesives of EVA ([0074] – [0075]).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ding in view of ‘725Knebel as applied to claims 1, 2, 5 – 9 above, and further in view of Knebel et al. US2015/0231863 (hereinafter “‘863Knebel”). Claim 10 is/are also rejected under 35 U.S.C. 103 as being unpatentable over Caviezel in view of ‘725Knebel as applied to claims 1 – 6, 8 – 9 above, and further in view of ‘863Knebel.
Regarding claim 10:
Ding in view of ‘725Knebel as well as Caviezel in view of ‘725Knebel does not expressly teach that the thermoplastic polymer comprises a EVA having 45 – 90% vinyl acetate.
‘863Knebel is directed to waterproof membranes (Abstract). ‘863Knebel discloses functional layers that are preferably comprised of EVA ([0032] – [0033]). ‘863Knebel further discloses that it is critical for EVA to have minimal amounts of non-polar monomers (maximizing vinal acetate monomers and therefore components) because an overly high percentage of non-polar components can result in a lack of substantial change in consistency of the material when in contact with concrete ([0036]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Ding in view of ‘725Knebel and/or Caviezel in view of ‘725Knebel to have vinyl acetate amounts within the claimed range because ‘863Knebel as a matter of routine experimentation in order to provide an optimal change in consistency when the functional layer comes into contact with concrete. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Response to Arguments
Applicant's arguments filed July 14, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
a.) There is no reasonable expectation of success that the coating step of Ding can be substituted with a strewing method as taught by Knebel’725. Ding forms its polymer layer by coating, not by strewing. Replacement would eliminate the water-proofing adhesive on which Ding depends.
b.) The heat treatment of Ding is not the claimed heat treatment to a strewn layer to form the recited coating, but rather a step of softening a coated adhesive to receive embedded particles.
c.) ‘725 Knebel teaches strewing a bonding agent, not forming a filled functional coating (Pl + Fl) from two successively strewn particle-based compositions as recited in present claim 1, and provides no reason to reconstruct Ding's coated adhesive/ embedded-particle architecture into the claimed two-strewn-layer sequence.
d.) Claim 1 now requires the first particle-based composition to be "substantially free of the at least one inorganic filler F11," so the two strewn compositions necessarily differ in filler content-the first being filler-free and the second necessarily containing inorganic filler F11.
e.) There is no motivation for one to have abandoned Caviezel's extrusion process for strewing. Caviezel presents its extrusion as advantageous precisely because As explained above, Knebel 725's scattering of an adhesive bonding agent does not supply the claimed strewing-based formation of a filled functional coating from two successively strewn compositions.
f.) Specific to claim 10, ‘863Knebel does not establish that vinyl-acetate content as a "result-effective variable" for the claimed strewing method. Knebel 863 ties vinyl-acetate content to "a lack of substantial change in consistency of the material when in contact with concrete"-i.e., a distinct consistency-changing/dissolution function under alkaline conditions-rather than to selecting a soft ethylene vinyl acetate copolymer Pl2 for a strewn, heat-treated functional coating as recited by claim 10.
In response to the applicant's arguments, please consider the following comments.
a.) The test for obviousness is what the teachings of the prior art as a whole would have suggested to one of ordinary skill in the art. See In re Etter, 756 F.2d 852, 859, 225 USPQ 1, 6 (Fed. Cir. 1985) and also In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Furthermore, "A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396.
Both Ding and ‘725 Knebbel disclose the formation of waterproofing membranes layers from compositions (Ding Abstract; ‘725Knebbel [0001]). The modification of Ding with the teachings of ‘725Knebbel therefore does not render the proposed prior art invention unsatisfactory for its intended purpose of forming waterproofing membranes.
Furthermore, ‘725Knebel expressly states that the application of adhesive can be performed by either slot-die extrusion OR by powder scattering (‘725Knebbel [0073]). Thus ‘725Knebel evidences an expectation that either technique may be used for depositing adhesive.
Furthermore, no evidence is presented that there would not be a reasonable expectation of success that the proposed prior art method would not predictably result in such a waterproofing membrane. Obviousness does not require absolute predictability. MPEP 2143.02 Heading II. Finally, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146. No such evidence of criticism has been provided or cited.
b.) In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the claimed heat treatment directly results in the formation of the coating) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claims as presented currently do not require that the coating is formed from the recited heat treatment, only that the heat treatments are part of the formation of the coating.
c.) The Examiner notes that ‘725Knebel’s is not limited to only its strewing step, but also teaches heat treatment of the “bonding agents” after disposing the bonding agents and other components [e.g. contact promoter] ([0056], [0074]). The bonding agent itself is also an adhesive as taught by ‘725Knebel. As for the rationale for combination, the Examiner notes that a prima facie case of obviousness to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
d.) The Examiner notes that as taught by Ding and ‘725 Knebel, the particles themselves are separable and may be combined together. While the compositions may have the fillers amount be different, where one composition is free of inorganic filler, the claims do not require that polymers P11 and P12 are different. Each composition can then contain duplicate parts. The differences in filler amounts are addressed in the rejection of the claims under 35 USC 103 discussed above.
e.) As a preliminary matter, the Examiner notes that references to Ding in the rejection of the claims over Caviezel in view of ‘725 Knebel was a typographical error, as the rationale for modifying the teachings of Caviezel were the same or similar to those in the rejection of the relevant claims over Ding in view of ‘725 Knebel. The present rejections have the references to the prior art corrected.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation comes from legal precedent as established under case law.
As noted above, a prima facie case of obviousness to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988). See also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) and MPEP 2143 Subheadings B and D. Such a finding is found in ‘725Knebel that expressly states that the application of adhesive can be performed by either slot-die extrusion OR by powder scattering (‘725Knebbel [0073]).
f.) In response to applicant's argument that ‘863Knebel does not establish that vinyl-acetate content is a results-effective variable rather than selection of soft ethylene vinyl acetate copolymer, the Examiner notes that the optimization motivates the selection of the particular EVA copolymer that have the recited vinyl acetate content, as the content is what defines what is a soft ethylene vinyl acetate copolymer. Such EVA copolymers are taught as well in ‘725Knebel as discussed above.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
