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 1-25 in the reply filed on 05/07/2026 is acknowledged. The traversal is on the ground(s) that there is not a serious search burden to examine the claims together. This is not found persuasive because a requirement for unity of invention does not require a search burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 26-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/07/2026.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 09/17/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
Please note, the Non-Patent Literature documents cited in the IDS filed 09/17/2024 have not been considered. The documents uploaded are not the BSI Standards cited.
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.
Claims 4, 6-9, 12-13, 15, 17, and 19-21 are 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.
Claims 4 and 9 recite “the element” which lacks antecedent basis.
For sake of further examination “the element” will be viewed as referencing the one or more surface elements.
Claims 6-9, 12, 15, 17, and 19-20 recites a range or material followed by a “preferable” range or material. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language (i.e., the preferable embodiments) are (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For sake of further examination the preferable embodiments will be viewed as optional.
Claim 13 is rejected as being dependent upon indefinite claim 13.
Claim 21 is rejected as being dependent upon indefinite claim 20.
Claims 24 and 25 recite “a flexible material as defied in claim 1…” it is unclear if these claims referring to the flexible material comprising a flexible polymer component and cementitious material or another flexible material.
For sake of further examination, “a flexible material” will be viewed as the flexible material of claim 1.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-5, 9, 14-18, and 19-25 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Bishop (US 2017/0037636).
Regarding claims 1 and 24-25, Bishop discloses a flexible cladding wrap particularly for an exterior or interior wall of building (0001). The wrap comprising one or more surface elements (26, 34) of a flexible material (0076). The flexible material comprising a flexible polymer component and cementitious material component (0015-0016).
Regarding claims 4 and 5, Bishop teaches the cladding wrap may be rolled up into a tube-like configuration (0099, Fig. 3 and 15), thus the amount of flexible polymer component and cementitious material component are such that the one or more surface elements have a flexibility of greater than 35 degrees as claimed and the one or more surface elements may be elastically deformed under handing or installation without cracking or permanent damage occurring.
Bishop does not expressly teach the flexibility measured by bending the element until cracks are visually observed and noting the angle between the surfaces of two ends of the element patentability is not based upon method of measurement but whether or not the property would have been obvious in view of the prior art.
Regarding claim 9, Bishop teaches the cladding wrap may be rolled up into a tube-like configuration (0099, Fig. 3 and 15), thus the flexible polymer component has a flexibility of greater than 40 degrees as claimed.
Bishop does not expressly teach the flexibility measured by bending the element until cracks are visually observed and noting the angle between the surfaces of two ends of the element patentability is not based upon method of measurement but whether or not the property would have been obvious in view of the prior art.
Regarding claims 14 and 15, Bishop teaches the powdered aggregate formed of inorganic material of brick, stone, or rock (0081).
Regarding claims 16 and 17, Bishop teaches addition of polymer binders/pigments (0052).
Regarding claim 18, Bishop teaches the surface element comprising a coating of surface finish powder (0105).
Regarding claim 19, Bishop teaches the surface elements bonded to a facing substrate (22; 0085).
Regarding claims 20 and 21, Bishop teaches the façade further comprising a filler provided between adjacent surface elements of the plurality of surface elements and comprising flexible polymer and cementitious material components (0021 and 0086).
Regarding claim 22, Bishop teaches the surface covering comprising a tessellating shape such that when a plurality of the coverings are installed adjacent to one another the surface elements from each covering will interlock (Fig. 6, 15, 0095).
Regarding claim 23, Bishop discloses a thickness of 1 to 15 mm (0077), anticipating the claimed thickness of less than about 10 mm (MPEP 2131.03).
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.
Claims 2-3 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Bishop as applied to claim 1 above, and further in view of Figovsky et al. (Advanced polymer concretes and compounds (1st ed.). CRC Press: 2013).
Regarding claims 2-3 and 10-13, Bishop discloses the limitations of claim 1 as discussed above. Bishop does not teach the cladding wrap having a a heat of combustion of 2 MJ/kg or less, non-combustibility rating of A1 according to EN 13501-1:2018, weight ratios or percentages of the polymer and cementitious material, or a suitable polymer compound.
Figovsky, in the analogous field of flexible polymer compositions for facades, teaches that polymethyl methacrylate is one of the most common acrylic polymers as a binder for polymer concretes (State of the Art in Polymer Concrete, page 7).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the flexible polymer component of Bishop to include polymethyl methacrylate as taught by Figovsky, as acrylic polymer binders provide unique properties including low temperature capability and long-term durability (State of the Art in Polymer Concrete, page 7).
Bishop and Figovsky do not expressly teach the heat of combustion or non-combustibility ratings as claimed, however, given the prior art teaches the same flexible polymer components these properties would be expected of the prior art.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Bishop.
Regarding claims 6-8, Bishop discloses the limitations of claim 1 as discussed above. Bishop does not expressly teach a ratio of the flexible polymer component to the cementitious material compound of total weight percent however, “[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”). It would not be inventive to discover the workable ranges by routine experimentation of the invention taught by Bishop.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
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