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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-14 in the reply filed on April 13, 2026 is acknowledged. The traversal is on the ground(s) that if search and examination of the entire application should be made without serious burden, the restriction requirement should be withdrawn. This is not found persuasive because the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I and II do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth on page 4 of the previous Office action.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 13, 2026.
Claim Objections
Claims 10 and 11 are objected to because of the following informalities:
As to claim 10, at line 2, insert “of” between “plurality” and “spaced-“.
As to claim 11, at lines 1-2, replace “wherein the spaced-apart adhesive coated areas” with - - wherein the plurality of spaced-apart adhesive coated areas” to provide consistency with recitation “a plurality of spaced-apart adhesive coated areas” in claim 10 at lines 1-2.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The preamble “A waterproofing, roofing, vapor barrier, vapor retarder, or a façade membrane, or as a waterproofing, roofing, or façade tape” is ambiguous, because it is unclear what exactly is claimed. The examiner respectfully submits that applicant could replace the preamble with “ A membrane for construction” (see page 1, lines 15-17 of the specification).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5, 6, 12, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wiercinski et al. (US 20130337162 A1).
As to claim 1, Wiercinski discloses a waterproofing membrane (sealing element) comprising a layer A comprising waterproofing adhesive 2 (Figure 3 and 0032), a layer D comprising protective coating 8, which is a weatherable pressure sensitive adhesive (PSA) (an adhesive layer) covering at least a portion of the first major surface of the waterproofing adhesive layer (Figure 3 and 0068), and a layer B comprising a carrier sheet (carrier layer on the side of the waterproofing adhesive layer opposite to the side of the adhesive layer) (Figure 3, 0026-0027). Further, Wiercinski discloses that the waterproofing adhesive comprises rubber modified bitumen PSA (0032) and the weatherable PSA is non-bituminous PSA (0069 of Wierniski disclosing non-bituminous PSAs).
As to claim 5, Wierniski discloses that the water proofing adhesive has a thickness of about 0.1 to 1.0 mm (0032), which is within the claimed range of 0.1-5 mm.
As to claim 6, Wierniski discloses that the PSA includes acrylics (0069).
As to claim 12, Wierniski discloses that the carrier sheet is formed of woven and non-woven fabrics (layer of fiber material) (0037) and films such as polypropylene (polymeric layer) (0037).
As to claim 13, this claim recites “release liner” but does not set forth any specific structure or composition of the liner. Wierniski discloses a layer C comprising a releasable bonding material 6 (release liner covering at least a portion of the outer major surface of the adhesive layer) (Figure 3 and 0026).
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.
Claim(s) 2-4, 7-9, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Wiercinski et al. (US 20130337162 A1).
As to claim 2, Wiercinski discloses that the bituminous PSA comprises about 43 wt% to 90 wt% of bitumen and about 10 to about 22 wt% of rubber (at least one modifying polymer) (0035). The claimed ranges of the bitumen and rubber overlap or within the ranges disclosed by Wiercinski such that prima facie case of obviousness exists. See MPEP 2144.05 (I).
As to claim 3, it is submitted that claim requires only one claimed element from c) to e). Wiercinski discloses that the bituminous PSA comprises about 0% to about 50% of inorganic filler, which overlaps with the claimed range and 0 wt% to about 35 wt% of processing oils (plasticizer) such as aromatic, naphthenic or paraffinic oil, which overlaps with the claimed range (0035).
As to claim 4, this claim defines alternative element of claim 3, which is not specifically required. Alternatively, a person having ordinary skill in the art would recognize that processing oils (plasticizer) such as aromatic, naphthenic or paraffinic oil as disclosed by Wiercinski (0035) meets mineral oils and synthetic oils as claimed.
As to claim 7, the claimed “dried layer of water or solvent based acrylic pressure sensitive adhesive composition” means there is no water or solvent present. Wiercinski discloses that the PSA includes acrylics (0069), which is interpreted to meet the aforementioned claim limitation.
As to claim 8, Wiercinski discloses that the thickness of the protective coating 8 is about 0.01 to 0.30 mm (10 μm to 300 μm) (0070), which overlaps with the claimed adhesive layer thickness of 50-500 μm.
As to claim 9, Wiercinski does not explicitly disclose coverage of the adhesive layer as claimed. However, Wiercinski as set forth previously discloses adhesive layer on the surface of the waterproofing adhesive layer. Therefore, absent any factual evidence on the record, it would be reasonable to provide sufficient coverage of the adhesive layer including the claimed, motivated by the desire to form the waterproofing membrane.
As to claim 14, Wiercinski as set forth previously discloses a waterproofing membrane including the sealing element.
Claim(s) 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wiercinski et al. (US 20130337162 A1) as applied to claim 1 above, and further in view of Macuga (US 20040180195 A1).
Wiercinski is silent as to disclosing claims 10 and 11.
Macuga discloses a house wrap (sealing element) for attachment to a building after installation of sheathing and prior to installation of siding/cladding (abstract). The house wrap of Macuga includes a barrier layer and an adhesive layer, wherein the adhesive layer includes a PSA (abstract). Further, Macuga discloses that the adhesive layer has a pattern comprising plurality of spaced apart adhesive coated areas extending in the longitudinal, transverse, or diagonal direction of the sealing element that are in the form of dots and/or series of longitudinally extending stripes (Figure 8G, Figure 8H, 0043).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide adhesive layer in a pattern as claimed and as rendered obvious by Macuga, motivated by the desire to form the waterproofing membrane of Wiercinski.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. DE102013016010 A1 discloses self-adhesive bitumen waterproofing membrane, Haufe et al. (US 20240417598 A1) discloses self-adhering sealing element, Schoenbrodt et al. (US 12305087 B2) discloses self-adhering sealing device with an adhesive layer, Zhong et al. (US 12570879 B2) discloses removable adhesive composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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, Alicia Chevalier can be reached at 571-272-1490. 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.
/ANISH P DESAI/Primary Examiner, Art Unit 1788 April 28, 2026
Prosecution Insights