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 of Group I, claims 1-20, in the reply filed on 06 July 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 21 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06 July 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1, 3-4, 7, 10, and 16 are objected to because of the following informalities:
Claim 1, line 7: “g/m2” should read “g/m2”.
Claim 3, line 1: “1wherein” should read “1 wherein”.
Claim 4, line 2: “g/m2” should read “g/m2”.
Claim 7, line 2: “g/m2” should read “g/m2”.
Claim 10, line 2: “g/m2” should read “g/m2”.
Claim 16, line 2: The claim recites “ageing” and “aging” in the same line. It is suggested that Applicant amend claim 16 to recite “ageing” throughout the claim in order to keep the recitations within the claim consistent, and to match the recitations of “ageing” in claims 17 and 18.
Claim 16, line 3: “aging” should read “ageing”. This is in order to keep recitations of “ageing” within the claim consistent, and to match the recitations of “ageing” in claims 17 and 18.
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 16 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.
With respect to claim 16, the claim recites the limitation "the water impermeability" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim. Claim 16 does not recite “a water impermeability”, and claim 1 does not recite “a water impermeability”, and therefore the recitation “the water impermeability” lacks antecedent basis.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-8, 10, and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Karageorgiou et al. (EP 3 345 757 A1, “Karageorgiou”).
With respect to claims 1 and 10, Karageorgiou discloses an underlay (i.e., composite film) comprising a thermoplastic polyurethane (TPU) layer 14/carrier layer 12/active layer 10/carrier layer 12/TPU layer 14 ([0021-0023], Fig. 2). The first carrier layer 12 is a nonwoven fabric ([0026]) and therefore corresponds to the claimed carrier layer. The active layer 10 is made from a thermoplastic polyurethane and has a grammage of 10-70 g/m2 ([0017], [0025]), which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The active layer 10 corresponds to the claimed functional layer. As can be seen in Fig. 2 below, the active layer 10 is an at least single-layer membrane. The second TPU layer 14 corresponds to the claimed protective layer.
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In light of the overlap between the claimed composite film and that taught by Karageorgiou, it would have been obvious to one of ordinary skill in the art to use a composite film that is both taught by Karageorgiou and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 2, Karageorgiou discloses the carrier layer 12 (i.e., the nonwoven layer) is made from a spunbonded material ([0026]). As can be seen in Fig. 2, the layer 12 is an at least single-layer.
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With respect to claim 3, Karageorgiou discloses the carrier layer 12 is made from polypropylene, polyethylene, and polyethylene terephthalate ([0026]). The polypropylene and polyethylene corresponds to the polyolefinic materials, while the polyethylene terephthalate corresponds to the polyester-based material.
With respect to claim 4, Karageorgiou discloses the weight of the layer 12 is 12-300 g/m2 ([0026]), which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to claim 5, Karageorgiou discloses the layer 14 (i.e., protective layer) is a thermoplastic polyurethane layer ([0021], [0023]).
With respect to claim 7, Karageorgiou discloses the TPU layer 14 (i.e., protective layer) has a grammage of 45 g/m2 ([0029-0030]), which falls within the claimed range.
With respect to claim 8, Karageorgiou discloses the active layer 10 (i.e., functional layer) is monolithic ([0025]) (i.e., is configured as a monolithic membrane layer).
With respect to claim 12, while there may be no explicit disclosure from Karageorgiou regarding the composite film being configured to withstand a water column of more than 2,000 mm according to DIN EN ISO 811:2018-08, given that Karageorgiou discloses an otherwise identical composite film made from otherwise identical layers made from otherwise identical materials as that presently claimed, it is clear the composite film of Karageorgiou would necessarily inherently be configured to withstand a water column of more than 2,000 mm according to DIN EN ISO 811:2018-08, absent evidence to the contrary.
With respect to claim 13, Karageorgiou discloses the underlay has a tensile strength of 450-560 N/50 mm (equivalent to 450-560 N/5 cm) in the machine direction (MD) and a tensile strength of 251-265 N/50 mm (equivalent to 251-265 N/5 cm) in the cross direction (XD) ([0033] and Table), both of which fall within the claimed ranges.
With respect to claim 14, Karageorgiou discloses the underlay has an elongation at break of 63-68% in the machine direction (MD) and an elongation at break of 80-83% in the cross direction (XD) ([0033] and Table), both of which fall within the claimed ranges.
With respect to claim 15, while there may be no explicit disclosure from Karageorgiou regarding the composite film having a specific nail pull-out force according to EN 12310-1 of at least 120 N in the machine direction and/or at least 150 N in the cross direction, given that Karageorgiou discloses an otherwise identical composite film made from otherwise identical layers made from otherwise identical materials as that presently claimed, it is clear the composite film of Karageorgiou would necessarily inherently have a specific nail pull-out force according to EN 12310-1 of at least 120 N in the machine direction and/or at least 150 N in the cross direction, absent evidence to the contrary.
With respect to claims 16 and 18, while there may be no explicit disclosure from Karageorgiou regarding the composite film comprising an ageing stability of at least 15 years, wherein the ageing stability is determined by subjecting the composite film to an artificial ageing process carried out at a temperature of 70 ± 2°C and an air velocity of 5 ± 2 m/s that is being carried out over a period of at least 30 weeks, and wherein following the ageing process, the water impermeability of the composite film is tested in accordance with DIN EN 13859-1-2010-11, § 5.2.3, against a water column of at least 200 mm over a period of 2 h, given that Karageorgiou discloses an otherwise identical composite film made from otherwise identical layers made from otherwise identical materials as that presently claimed, it is clear the composite film of Karageorgiou would necessarily inherently comprise an ageing stability of at least 15 years, wherein the ageing stability is determined by subjecting the composite film to an artificial ageing process carried out at a temperature of 70 ± 2°C and an air velocity of 5 ± 2 m/s that is being carried out over a period of at least 30 weeks, and wherein following the ageing process, the water impermeability of the composite film is tested in accordance with DIN EN 13859-1-2010-11, § 5.2.3, against a water column of at least 200 mm over a period of 2 h, absent evidence to the contrary.
With respect to claim 17, while there may be no explicit disclosure from Karageorgiou regarding the composite film comprising an ageing stability of at least 20 years, given that Karageorgiou discloses an otherwise identical composite film made from otherwise identical layers made from otherwise identical materials as that presently claimed, it is clear the composite film of Karageorgiou would necessarily inherently comprise an ageing stability of at least 20 years, absent evidence to the contrary.
With respect to claim 19, Karageorgiou discloses the use of the underlay with roofs ([0015]) (i.e., the composite sheet is configured as a roof).
With respect to claim 20, Karageorgiou discloses the use of the underlay with roofs ([0015]) (i.e., the composite sheet is configured as a roof) and is used in building construction (Abstract, [0001]) (i.e., is used in the construction sector).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Karageorgiou et al. (EP 3 345 757 A1, “Karageorgiou”) as applied to claim 1 above, and further in view of Schröer et al. (DE 10 2015 000 092 A1, “Schröer”). The disclosure of Schröer is based off a machine translation of the reference included with this action.
With respect to claim 6, while Karageorgiou discloses the TPU coating layer 14 (corresponding to the claimed protective layer as set forth above) is micro-perforated (i.e., microporous) ([0027]), Karageorgiou does not disclose wherein the TPU coating layer (i.e., protective layer) is a foam layer.
Schröer teaches an underlay used in roof and construction applications ([0002]). The underlay includes a protective layer that is an open-pore foam which allows for a high degree of water vapor to pass through ([0018]); the protective layer may be microporous ([0019]). The protective layer includes polyurethane and/or TPU components ([0023]).
Karageorgiou and Schröer are analogous inventions in the field of underlays used in roofs and construction applications comprising protective layers made from thermoplastic polyurethanes (TPUs).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the TPU coating layer 14 of Karageorgiou to be a microporous open-pore foam as taught by Schröer in order to provide a layer that allows for a high degree of water vapor to pass through (Schröer, [0018]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Karageorgiou et al. (EP 3 345 757 A1, “Karageorgiou”) as applied to claim 1 above, and further in view of Bachon et al. (DE 10 2019 001 343 A1, “Bachon ‘343”). The disclosure of Bachon ‘343 is based off a machine translation of the reference included with this action.
With respect to claim 9, while Karageorgiou discloses the active layer 10 (corresponding to the claimed functional layer) is made from a thermoplastic polyurethane ([0017], [0025]) as set forth above, Karageorgiou does not disclose wherein the thermoplastic polyurethane is selected from the group of aliphatic and/or aromatic polyurethanes.
Bachon ‘343 teaches a composite film having a carrier layer, functional layer, and protective layer ([0002], [0134]) that is used in roofing ([0059]). The functional layer is made from thermoplastic polyurethane ([0050]) where the thermoplastic polyurethane includes aliphatic and aromatic polyurethanes, with aromatic polyurethanes being preferred in order to provide a layer that is a waterproof but diffusion-permeable layer having excellent weathering properties, is mechanically resistant and chemical-resistant, and have a flame-retardant effect while being cost-effectively accessible ([0099]).
Karageorgiou and Bachon ‘343 are analogous inventions in the field of composite films used in roofing applications having carrier layers, functional layers, and protective layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thermoplastic polyurethane of the active layer 10 (i.e., functional layer) of Karageorgiou to be an aromatic thermoplastic polyurethane as taught by Bachon ‘343 in order to provide a functional layer that is waterproof but diffusion-permeable, has excellent weathering properties, is mechanically resistant and chemical resistant, and has a flame-retardant effect while being cost-effectively accessible (Bachon ‘343, [0099]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Karageorgiou et al. (EP 3 345 757 A1, “Karageorgiou”) as applied to claim 1 above, and further in view of Bachon (DE 10 2018 008 585 A1, “Bachon ‘585”). The disclosure of Bachon ‘585 is based off US 2021/0316541 A1, which serves as an English language equivalent.
With respect to claim 11, Karageorgiou does not disclose wherein the composite film comprises an adhesion promoter layer arranged between the carrier layer and the functional layer and/or between the functional layer and the protective layer.
Bachon ‘585 teaches a composite film used in the construction industry and roofing applications ([0001], [0018]) having protective layers made from nonwoven layers that are used as carrier layers ([0034-0035]) and a functional layer made from thermoplastic polyurethane (TPU) ([0023]). An adhesion promoting layer is present between the protective layers and the functional layer ([0040]) (i.e., between a protective layer and the functional layer and between the carrier layer and the functional layer), which enables a material bond between the layers joined ([0041]).
Karageorgiou and Bachon ‘585 are analogous inventions in the field of underlays used in roofing applications having a carrier layer, protective layer, and functional layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the underlay of Karageorgiou to have an adhesion promoting layer present between the carrier layer and the functional layer and between the functional layer and the protective layer as taught by Bachon ‘585 in order to provide an underlay having a material bonded between the joined layers (Bachon ‘585, [0041]).
Claim 15 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Karageorgiou et al. (EP 3 345 757 A1, “Karageorgiou”) as applied to claim 1 above, and further in view of Bachon et al. (DE 10 2019 001 343 A1, “Bachon ‘343”). The disclosure of Bachon ‘343 is based off a machine translation of the reference included with this action.
With respect to claim 15, Karageorgiou does not disclose wherein the composite film comprises a specific nail pull-out force according to EN 12310-1 of at least 120 N in the machine direction and/or at least 150 N in the cross direction.
Bachon ‘343 teaches a composite film having a carrier layer, functional layer, and protective layer ([0002], [0134]) that is used in roofing ([0059]). The nail pull-out force is at least 1 N/g in the machine direction and/or at least 1.2 N/g in the transverse (i.e., cross) direction ([0202]); a high specific nail pull-out strength accompanies a good feel ([0205]). These nail pull-out forces overlap the ranges presently claimed.
Karageorgiou and Bachon ‘343 are analogous inventions in the field of composite films used in roofing applications having carrier layers, functional layers, and protective layers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the composite of Karageorgiou to have a nail pull-out force of at least 1 N/g in the machine direction and/or at least 1.2 N/g in the transverse (i.e., cross) direction as taught by Bachon ‘343 in order to provide a composite having a good feel (Bachon ‘343, [0205]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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