DETAILED ACTION
This Office action is a reply to the amendment filed on 1/16/2026. Currently, claims 1, 4 and 6-11 are pending. Claims 2-3 and 5 have been cancelled. No claims have been withdrawn. No new claims have been added.
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.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barksdale et al. (US 9127460) (‘Barksdale’) in view of Haberle et al. (US 20200354584) (‘Haberle’) in view of Yang (US 20220403657).
Claim 11, Barksdale teaches a roof system comprising:
a roof substrate 36;
a roofing membrane 32 covering at least a portion of an upper major surface of the roof substrate (Fig. 2);
an edge metal flashing 34, wherein a portion of the roofing membrane is trapped between the edge metal flashing and the roof substrate (Fig. 2);
wherein the roofing membrane is a water impermeable liquid applied membrane (col. 4, lines 38-45; the limitation, “liquid applied” is a product by process claim and the roof system does not depend on the process of making it. The product-by-process limitation "liquid applied” would not be expected to impart distinctive structural characteristics to the roof system. Therefore, the claimed roof system is not a different and unobvious roof system from Barksdale); and
wherein on a portion of an upper major surface of the edge metal flashing an adhesive layer 22 is applied; and
wherein a water impermeable liquid applied membrane (12; the limitation, “liquid applied” is a product by process claim and the roof system does not depend on the process of making it. The product-by-process limitation "liquid applied” would not be expected to impart distinctive structural characteristics to the roof system. Therefore, the claimed roof system is not a different and unobvious roof system from Barksdale) is applied on top of the adhesive layer so that the applied water impermeable liquid applied membrane also covers a part of the roofing membrane (Fig. 2).
Barksdale does not teach the membranes being liquid applied membranes, the adhesive layer being a reactive adhesive layer, and applying an epoxy resin layer on top of the reactive adhesive layer, and applying the membrane on top of the epoxy resin layer.
However, Haberle teaches a roof system with liquid applied membranes [0002], comprising applying a water impermeable liquid applied membrane in two layers ([0212]-[0213]). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to try applying the water impermeable membranes as water impermeable liquid applied membranes, with the reasonable expectation of success of using a known material to obtain membranes that form the water impermeable seal at the edge metal flashing such that the membranes that have outstanding workability, rapid curing, high tensile strength and tear resistance, high stretchability and visually flawless film quality (Haberle [0195]; [0212]).
Further, Yang teaches a roofing membrane comprising a reactive adhesive layer (534 polyurethane or acrylic adhesive, [0018]; [0065]) and an epoxy resin layer (532 epoxy adhesive [0018]; [0065]) applied on top of the reactive adhesive layer (Fig. 4C). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date, to try forming the adhesive layer using a reactive adhesive layer for the adhesive layer, and an epoxy resin layer on top of the reactive adhesive layer, with the reasonable expectation of success of enhancing the overall durability of the bond between the edge metal flashing and the second membrane to form a water impermeable seal using known adhesive materials, since such a modification would have involved a mere change in known materials. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
Allowable Subject Matter
Claims 1, 4 and 6-10 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: applicant’s arguments filed on 1/16/2026, in light of the claim amendments field on the same date are persuasive. Applicant’s claim amendment incorporates the subject matter previously indicated as being allowable in the previous Office action filed on 10/6/2025 (pages 15-16).
Response to Arguments
Applicant’s arguments, see remarks, filed 1/16/2026, in light of the claim amendments filed on the same date, with respect to the 103 rejection of claims 1, 4 and 6-10 over Barksdale et al. (US 9127460) (‘Barksdale’) in view of Haberle et al. (US 20200354584) (‘Haberle’) in view of Yang (US 20220403657) have been fully considered and are persuasive. The rejection of claims 1, 4 and 6-10 has been withdrawn.
Applicant's arguments filed 1/16/2026, with respect to the 103 rejection of claim 11 over Barksdale et al. (US 9127460) (‘Barksdale’) in view of Haberle et al. (US 20200354584) (‘Haberle’) in view of Yang (US 20220403657) have been fully considered but they are not persuasive.
Rejection of claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barksdale et al. (US 9127460) (‘Barksdale’) in view of Haberle et al. (US 20200354584) (‘Haberle’) in view of Yang (US 20220403657).
Re claim 11, applicant argues that the prior art does not teach features from previously presented claim 5, including depending intermediate claims 1-3. 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 elements and features of claims 1-3 and 5, collectively) 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). Put differently, amended claim 11 does not include the subject matter previously indicated as being allowable from previously presented claim 5, including intermediary claims 1-3.
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.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635