DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 17, 18, 25, 26 and 37-47 in the reply filed on 11/06/2025 is acknowledged.
Claims 20-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/06/2025.
Applicant has added new claims 48-50, as such the pending claims under review are 17, 18, 25, 26, 37-40 and 42-50.
Applicant has cancelled claims 1-16, 19-24, 27-36 and 41.
Specification
The disclosure is objected to because of the following informalities: Please updated the first paragraph of the specification as many of the listed lineage have matured into patents or been abandoned.
17/193,221 is now USPN 12,006,691
16/375,945 is now USPN 10,941,573
15/292,925 is now USPN 10,273,693
13/798,413 was abandoned.
Appropriate correction is required.
The disclosure is objected to because of the following informalities: The abstract refers to a method for preparing a roofing membrane, however the elected claims are to a roofing product. Appropriate correction is required.
At ¶ 0043 of Applicant’s published specification the first instance of EPDM needs to be spelled out. Appropriate correction is required.
Claim Objections
Claim 38 is objected to because of the following informalities: Claim 38 states wherein the polymeric membrane is an EPDM membrane, the first instance of EPDM needs to be spelled out to. It is suggested that Applicant may rectify this by amending the claim to state EPDM (Ethylene Propylene Diene Monomer) or something of the sort. Appropriate correction is required.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 17, 18, 25, 26, 37-40 and 42-50 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over USPUB 2012/0045623 issued to Delaney et al. in view of USPN 8,178,449 issued to La Vietes et al.
Delaney et al., disclose a roofing system which includes a roof deck and a membrane assembly [abstract].
The membrane assembly includes: (a) a generally planar membrane having a top surface, a bottom surface, a first longitudinal edge and a second longitudinal edge; and (b) a generally planar fire-resistant sheet adhesively [¶ 0015] secured to the bottom surface of the roofing membrane, the fire resistant sheet including a fabric substrate and a binder having fire retardant fillers. [see ¶ abstract, 0015-0018, 0026-0029].
Delaney et al. provide the distinct structural elements of the membrane and the fabric.
At ¶ 0021-0022+ Delaney et al., describes the roofing membrane layer and specifically teaches that a EPDM or TPO may be used. This serves as Applicant’s polymeric membrane.
At ¶ 0014, Delaney et al., teach that any and all layers may be attached by any known means possible and specifically states using adhesives, lamination, and heat welding.
Delaney et al. teach that the fire-resistant sheet may include a fabric substrate. The fabric substrate may include a woven or nonwoven mat or fabric. These fabrics may be prepared from, for example, polyester fibers, glass fibers, cellulosic fibers, asbestos, steel fibers, alumina fibers, ceramic fibers, nylon fibers, graphite fibers, wool fibers, boron fibers, carbon fibers, jute fibers, polyolefin fibers, polystyrene fibers, acrylic fibers, phenol-formaldehyde resin fibers, aromatic and aliphatic polyamide fibers, polyacrylamide fibers, or mixtures thereof which may include bi-component fibers or multi-component fibers. In one or more embodiments, fiberglass filaments may be provided in a synthetic non-woven mat in the machine direction to improve dimensional strength. In other embodiments, the substrate may include a composite prepared from a woven and nonwoven fabric. In other embodiments, the substrate may include a composite prepared from multiple nonwoven fabrics [¶ 0026]. The fabric may also include a binder. In other words, the fabric substrate is coated, impregnated, or otherwise treated with a binder composition. For example, the fabric may be coated on one or both of its planar sides with a binder composition. As is generally known in the art, the binder composition may include a polymer (which itself may be referred to as a binder) and a filler. In one or more embodiments, the polymer of the coating composition forms a matrix in which the filler is dispersed. As is generally known in the art, the binder composition that is used to treat the fabric (and ultimately provide a coating to the fabric) may be in the form of a latex or a solution in which the filler is dispersed or dissolved. For example, filler may be dispersed in acrylic latex, which is then applied to the fabric. [¶ 0029] in one or more embodiments, the binder may include any known fillers to improve the physical or performance characteristics of sheet 14. In certain embodiments, the binder may include fire retardant fillers.
Delaney et al. do not specifically teach that the filler is expandable graphite. This is remedied by La Vietes et al.
La Vietes et al. teach making fire resistant roofing systems, slip sheets in roll form and a method for installing a fire-resistant roofing system [column 1, lines 5-10; column 2, lines 5+]. In one aspect on their invention their fire-resistant roofing system includes a deck, a substantially single layer of a slipsheet material covering substantially the entirety of the deck, and a roof covering, covering substantially the entirety of the slipsheet. The single layer slip sheet includes a fiber mat having first and second sides and a coating containing expandable graphite, a filler, and a binder. The coating is coated on at least one of the first and second sides of the fiber mat, and the roofing system achieves a Class A rating when tested according to UL 790 and/or ASTM E-108 Standard Test Methods for Fire Tests of Roof Coverings.
The preferred heat expandable graphite flakes have “onset” temperatures from about 160° C. to about 230° C.
The fire resistant slipsheet in roll form includes a fiber mat having first and second sides and a coating containing expandable graphite, a filler, and a binder. The coating is coated on at least one of the first and second sides of the fiber mat, and a single layer of the slipsheet achieves a Class A rating when tested according to UL 790 and/or ASTM E-108 Standard Test Methods for Fire Tests of Roof Coverings.
Preferably, the fiber mat in accordance with the invention can be any woven or non-woven web of glass fibers held together with a binder. It is understood that a scrim or fleece may be either a woven or a nonwoven.
In accordance with one aspect of the invention, the coating of the slipsheet includes expandable graphite, filler, and a binder, and is particularly useful for providing a fire barrier. The coating optionally includes a flame retardant. As described above, the expandable graphite employed in the coating of the present invention imparts fire-resistance characteristics to the slipsheet. An illustrative example of the expandable graphite employed in the present invention includes, but is not limited to, expandable graphite flakes. Additionally, a mixture of the expandable graphite with other known intumescent agents could also be used [Column’s 3 and 4].
The expandable graphite is typically present in the coating in an amount from about 10 to about 25 wt. %. More preferably, an amount from about 15 to about 20 wt. % is used. The amount of expandable graphite is based on the wet weight of the coating [column 4, lines 30-35]. The polymeric binder component of the coating is typically present in the resultant mixture in an amount from about 5 to about 20 wt. %.
Delaney et al. do not specifically teach that the filler is expandable graphite. This is remedied by La Vietes et al, who teaches that expandable graphite may be used within the coating to impart fire retardancy. Therefore, a skilled artisan would have found it obvious to have employed expandable graphite within the binder of the coated fabric to create roofing composite with flame retardancy.
Claims 25, 37 and 40 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over USPUB 2012/0045623 issued to Delaney et al. in view of USPN 8,178,449 issued to La Vietes et al. further of WO 2012/015538 issued to ADCO Products Inc.
The combination of Delaney/La Vietes is set forth above but they do not expressively suggest that the fabric that is used is a fleece.
This is remedied by WO 2012/015538 who teach that fleece backed roofing substrates are used in roofing membrane composites. WO ‘538 also uses TPO or rubbers, as their upper polymeric planar layer. The two layers may also be attached by means of adhesive or the coating (two-part adhesive) which is a part of the fleece backed substrate may be used.
All the cited references are from the same art of endeavor, i.e., used to make roofing composites.
Therefore, a person having ordinary skill in the art before the effective filing date of the invention would have found it obvious to have used a fleece in place of the woven or nonwoven of Delaney/La Vietes et al’s roofing composite. One would have been motivated to do so in order to create a roofing system with enhanced mechanical resistance as shown at ¶ 0012 of WO ‘538.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Arti Singh-Pandey whose telephone number is (571)272-1483. The examiner can normally be reached Monday-Thursday 8:30-5:00 and 8:00-10:00.
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/Arti Singh-Pandey/
Primary Patent Examiner
Art Unit 1759
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