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
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 19, 26-28, and 36-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 2004/0191508 to Hubbard et al. (“Hubbard”) in view of U.S. Publication No. 2020/0141112 to Rudyan et al. (“Rudyan”). All reference numerals and paragraph numbers are made with respect to Hubbard unless otherwise noted.
Regarding claim 19, Hubbard discloses a roof system comprising: i. a roof substrate 104; ii. a first membrane 112 including first and second opposed planar surfaces, where the first planar surface includes a roof-substrate contacting portion and a lap portion, and iii. a second membrane 114 adhesively secured to the roof substrate, where the second membrane includes opposed first and second planar surfaces, said first planar surface includes a roof-substrate contacting portion and a lap portion; (iv) a pressure-sensitive adhesive layer 146 disposed on said roof-substrate contacting portion and said lap portion of the first membrane 112; (v) a pressure-sensitive adhesive layer 150 disposed on said roof-substrate contacting portion and said lap portion of the second membrane 114; (vi) a seam 116 formed between the first membrane and the second membrane by mating the pressure-sensitive adhesive of the lap portion of the second membrane to a portion of the second planar surface of the first membrane, said seam including a seam edge formed by a lateral edge of the second membrane. Hubbard does not disclose a sealant disposed along the seam edge.
Rudyan discloses a first and second membrane joined together comprising a sealant (Rudyan 28) disposed along the seam edge.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Hubbard to a sealant disposed along the seam edge as taught by Rudyan to provide the predictable result of improved water tightness at the seam.
Regarding claim 26, Hubbard in view of Rudyan discloses that the first membrane 112 and the second membrane 114 are thermoplastic membrane panels (Par 0007, 0035-0037).
Regarding claim 27, Hubbard in view of Rudyan discloses that the first membrane and the second membrane are EPDM membrane panels (Par 0035).
Regarding claim 28, Hubbard in view of Rudyan discloses that the roof substrate is selected from one of a roof deck 124, a layer of insulation 126, a layer of coverboards, and an existing membrane.
Regarding claim 36, Hubbard in view of Rudyan discloses that the first membrane has a thickness of from about 500 micrometer to about 3 mm (Par 0066 discloses a range of thickness between 1mm (0.1cm) to 3mm (0.3cm) which falls within the claimed range).
Regarding claim 37, Hubbard in view of Rudyan discloses that the second membrane has a thickness of from about 500 micrometer to about 3 mm (Par 0066 discloses a range of thickness between 1mm (0.1cm) to 3mm (0.3cm) which falls within the claimed range).
Regarding claim 38, Hubbard in view of Rudyan discloses that the thickness of the pressure- sensitive adhesive layer is from about 15 micrometer to about 1000 micrometer (Par 0073 discloses a range of thickness between 1 micrometer (0.0015 cm) to 1000 micrometer (0.1 cm) which falls within the claimed range).
Claim(s) 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hubbard in view of Rudyan as applied to claim 19 above, and further in view of U.S. Patent No. 10,066,396 to Watkins, Jr. et al. (“Watkins”).
Regarding claims 23-25, Hubbard in view of Rudyan does not disclose that the pressure-sensitive adhesive layer is characterized by a peel strength when adhered to the adjacent membrane as determined by ASTM D-1876-08, of at least 3.6 lbf/in, at least 8.0 lbf/in, or at least 15 lbf/in.
Watkins discloses a roofing membrane with pressure sensitive adhesive that is characterized by a peel strength when adhered to the adjacent membrane as determined by ASTM D-1876-08, of at least 3.6 lbf/in, at least 8.0 lbf/in, or at least 15 lbf/in (Watkins, col 13, ln 8-20).
Claim(s) 29-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hubbard in view of Rudyan as applied to claim 19 above, and further in view of U.S. Publication No. 2007/0055032 to Lagenbuch et al. (“Lagenbuch”).
Regarding claim 29, Hubbard in view of Rudyan does not disclose that the pressure-sensitive adhesive is UV-cured.
Lagenbuch discloses that UV-cured pressure sensitive adhesives such as UV-cured polyacrylate have improved stability (Lagenbuch par 0002) and improve manufacturing productivity (Lagenbuch par 172).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Hubbard to have its acrylic adhesive be UV-cured as taught by Lagenbuch to provide the predictable result of improved stability and provide efficiencies during manufacture. Moreover, it would have been obvious to one having ordinary skill in the art at the time of invention to use UV-cured adhesive, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 30, Hubbard in view of Rudyan and Lagenbuch discloses that the degree of cure of said UV- cured adhesive varies by no more than 10% between said roof-substrate contacting portion and said lap portion of the first membrane.
Regarding claim 31, Hubbard in view of Rudyan and Lagenbuch discloses that the degree of cure of said UV- cured adhesive varies by no more than 1% between said roof-substrate contacting portion and said lap portion of the first membrane.
Regarding claim 32, Hubbard in view of Rudyan and Lagenbuch discloses that the UV-cured adhesive is a UV-cured polyacrylate, and where said UV-cured polyacrylate, prior to being cured, includes one or more units defined by the formula:
PNG
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154
148
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Greyscale
where each R1 is individually hydrogen or a hydrocarbyl group and each R2 is individually a hydrocarbyl group (see Lagenbuch par 0112-0116).
Regarding claim 33, Hubbard in view of Rudyan and Lagenbuch discloses that
where each R1 and R2, respectively, throughout the polymer are the same in each unit (see Lagenbuch par 0113).
Regarding claim 34, Hubbard in view of Rudyan and Lagenbuch discloses that where each R2 is an alkyl group having at least 4 carbon atoms (see Lagenbuch par 0113).
Regarding claim 35, Hubbard in view of Rudyan and Lagenbuch discloses that where each R1 is hydrogen and each R2,throughout the polymer, is an alkyl group having at least 4 carbon atoms (see Lagenbuch par 0113).
Allowable Subject Matter
Claims 20-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
None of the prior art, alone or in obvious combination absent hindsight, discloses applicant's invention of a roof system wherein the pressure-sensitive adhesive layer including a UV-cured polyacrylate having a gel content, as determined by THF extraction after boiling in THF after four hours, of at least 60 % by weight, or of from about 50% to about 90%, or of from about 60% to about 80%. The closest prior arts (US 2006/0052472, US 2003/0055032, and US2003/0082370) each disclose polyacrylate adhesives with gel content of less than 50% by weight since a higher gel content is viewed as impairing further processing of the adhesives.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-31 and 36-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,006,692 in view of U.S. Publication No. 2020/0141112 to Rudyan et al. (“Rudyan”). Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation in the pending claim is present in the patented claims except for a sealant disposed along the seam edge and the claimed thicknesses of the first and second membranes and the adhesive. However, Rudyan discloses a first and second membrane joined together comprising a sealant (Rudyan 28) disposed along the seam edge. It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Hubbard to a sealant disposed along the seam edge as taught by Rudyan to provide the predictable result of improved water tightness at the seam. Moreover, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions, such as the thickness of the membrane or adhesive layer, of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV A.
Claims 19-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,624,189. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation in the pending claim is present in the patented claims except for a sealant disposed along the seam edge and the claimed thicknesses of the first and second membranes and the adhesive. However, Rudyan discloses a first and second membrane joined together comprising a sealant (Rudyan 28) disposed along the seam edge. It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Hubbard to a sealant disposed along the seam edge as taught by Rudyan to provide the predictable result of improved water tightness at the seam. Moreover, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions, such as the thickness of the membrane or adhesive layer, of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV A.
Claims 19, 26, 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-18 of U.S. Patent No. 11,624,189. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation in the pending claim is present in the patented claims except for a sealant disposed along the seam edge and the claimed thicknesses of the first and second membranes. However, Rudyan discloses a first and second membrane joined together comprising a sealant (Rudyan 28) disposed along the seam edge. It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Hubbard to a sealant disposed along the seam edge as taught by Rudyan to provide the predictable result of improved water tightness at the seam. Moreover, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions, such as the thickness of the membrane or adhesive layer, of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV A.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T CAJILIG whose telephone number is (571)272-8143. The examiner can normally be reached M-F 9am-5pm.
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/CHRISTINE T CAJILIG/ Primary Examiner, Art Unit 3633