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 .
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Wehninck et al (EP 3513961 A1).
Wehninck teaches a fire-retardant membrane (e.g., construction film) comprising a base sheet comprising glass fiber (e.g., glass fabric), and a polyurethane film (i.e., monolithic film) attached to the base sheet, wherein the polyurethane film is attached to the base sheet by use of an adhesive (e.g., polyurethane or acrylate), the adhesive being discontinuously (e.g., points or dots) present between the film and the sheet (entire document; fig 1).
Wehninck teaches the use of a glass fabric which would have suggested to one of ordinary skill in the art at the time of invention that of a 100% glass fabric (para 7), or 0 weight percent organic content. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to select that of a plain weave glass fabric and e-glass, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Wehninck teaches the surface weight (i.e., basis weight) of the glass fabric (i.e., base sheet) should be between 20 g/m2 to 450 g/m2 (para 7) which overlaps the range of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Wehninck, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Wehninck teaches the use of a polyurethane film which would have suggested to one of ordinary skill in the art at the time of invention that of a thermoplastic polyurethane (i.e., thermoplastic elastomer) (para 3), Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to select that of a monolithic film and an aromatic polyurethane polymer based on polyester or polyether diols, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Regarding the basis weight of the thermoplastic elastomer film, the Examiner takes official notice that one of ordinary skill in the art at the time of invention would have understood that adjusting the basis weight of the thermoplastic elastomer film would affect its properties such as tensile strength and rupture or and/or penetration strength. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the basis weight of the thermoplastic elastomer film to optimize its tensile strength and rupture or and/or penetration strength.
Regarding the areal density of the adhesive and the amount of adhesive (gsm) used, the purpose of the adhesive is to bond the film or membrane to the base sheet (para 10); so it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the areal density of the adhesive and/or the amount of adhesive (gsm) to optimize the ability of the adhesive to bond the film or membrane to the base sheet, while efficiently using the adhesive (i.e., not wasting it).
Wehninck teaches both the base sheet and the film should be flame-retardant (para 7, 9); so it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of flame-retardant additives in the base sheet and the film to optimize the fire rating of the film.
Regarding the Gross Heat of Combustion (PCS) of the membrane and the base sheet, water vapor diffusion equivalent air thickness (Sd value) of the membrane, and water penetration of the membrane, Wehninck would have rendered obvious the fire-retardant of the instant claims, so it is deemed to inherently possess these properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
Allowable Subject Matter
Claim 17-19 are allowed.
Claims 17-19 are allowed because the closest prior art of record would not have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention, a façade or wall system comprising a plurality of layered sections of the fire-retardant membrane of any one of claims 1 to 16 with the additional structure, features, and properties of the instant claims.
The prior art of Schröer et al (EP 3023468 B1) is noted which suggests the use of adhesive systems (e.g., tapes) for gluing construction composite films (underlay membranes, underlining membranes, facade membranes, vapor retarders and vapor barriers) (page 1, 5); but nothing in Schröer would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention, a façade or wall system comprising a plurality of layered sections of the fire-retardant membrane of any one of claims 1 to 16 with the additional structure, features, and properties of the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783
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