DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-15 are cancelled.
Claims 16-30 are pending.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the reinforcement mesh of claim 28 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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(s) 26-27 is/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.
Re claim 26, claim 26 recites, “the composition” in line 2. There is insufficient antecedent basis for this limitation in the claim. It appears this language is intended to recite, “the reactive composition RC1” and will be interpreted as such.
Re claim 27, claim 27 recites, “the total composition” in line 4, 6, 8 and 10. There is insufficient antecedent basis for this limitation in the claim. It appears this language is intended to recite, “a total composition” and will be interpreted as such.
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.
Claim(s) 16-20, 22-23, 29-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedict (EP2781669) in view of Kalwara et al (“Kalwara”) (US 5,520,761) and Levens (US 5,322,724).
Re claim 16, Benedict discloses a method ([0001]) for sealing adjacent roofing membranes (2a, 2b), the method ([0001]) comprising the steps of:
i. providing (Fig. 4 showing elements provided) a roof assembly (Fig. 4) comprising a roof substrate (1, and the unlabeled layer directly above 1), a first roofing membrane (2a) having a first upper surface (upper surface of 2a) and a first lower surface (lower surface of 2a), and a second roofing membrane (2b) having a second upper surface (upper surface of 2b) and a second lower surface (lower surface of 2b);
ii. laying (Fig. 4 showing 2a/2b laid) the first roofing membrane (2a) and the second roofing membrane (2b) onto a surface (top surface of 1) of the roof substrate (1) in such a manner that an edge (left edge of 2a) of the first roofing membrane (2a) is adjacent to (Fig. 4) an edge (right edge of 2b) of the second roofing membrane (2b), wherein the first roofing membrane (2a) is not in direct contact with (Fig. 4; via 3) the second roofing membrane (2b), wherein the first lower surface (lower surface of 2a) and the second lower surface (lower surface of 2b)are in direct contact with (Fig. 1) the roof substrate (1, and the unlabeled layer directly above 1);
iv. providing (Fig. 4 showing 4a and 4b provided) a sealing strip (4a, 4b) having an upper major surface (upper surface of 4a/4b) and a lower major surface (lower surface of 4a/4b) limited between short and long edges (length and width edges of 4a/4b);
v. adhesively bonding (via 5) the sealing strip (4a/4b) via the lower major surface (lower surface of 4a/4b) to at least a portion of (Fig. 4) the first polymer resin primer layer PR1 (as modified below) and at least a portion of (Fig. 4) the second polymer resin primer layer PR2 (as modified below) so that a connection gets established between (Fig. 4) the first roofing membrane (2a) and the second roofing membrane (2b);
vi. applying (Fig. 4 showing 7/8 applied) a water impermeable liquid applied membrane M1 (7/8) to the upper major surface (upper surface of 4a/4b) of the sealing strip (4a/4b), optionally the first polymer resin primer layer PR1 and the second polymer resin primer layer PR2 (as this language is “optional”),
but fails to disclose iii. applying a first polymer resin primer layer PR1 to at least a portion of the first upper surface and a second polymer resin primer layer PR2 to at least a portion of the second upper surface; and vii. allowing the water impermeable liquid applied membrane M1 to cure in order to form a watertight seal between the first roofing membrane and the second roofing membrane.
However, Kalwara discloses iii. applying (Fig. 4 showing 14a applied) a first polymer resin primer layer PR1 (14a; Col 5 lines 38-39) to at least a portion of (Fig. 1) the first upper surface (12a; however, as modified, for use on the upper surface of 3a) and a second polymer resin primer layer PR2 (14b; Col 5 lines 38-39) to at least a portion of (Fig. 1) the second upper surface (upper surface of 12b).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict with iii. applying a first polymer resin primer layer PR1 to at least a portion of the first upper surface and a second polymer resin primer layer PR2 to at least a portion of the second upper surface as disclosed by Kalwara in order to obviate the need to initially clean surfaces to be joined (Col 3 lines 5-8), utilize a material which cleans the surfaces to be joined (Col 3 lines 8-10), and/or to increase peel strength (Col 3 lines 15-17).
In addition, Levens discloses vii. allowing (Col 6 lines 42-47) the water impermeable liquid applied membrane M1 (44; Col 7 lines 35-37) to cure (Col 6 lines 42-47) in order to form a watertight seal (Claim 22) between the first roofing membrane (30) and the second roofing membrane (32).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict vii. allowing the water impermeable liquid applied membrane M1 to cure in order to form a watertight seal between the first roofing membrane and the second roofing membrane as disclosed by Levens in order to provide a water impervious seal (Col 1 lines 13-14), applied in a simple manner which does not require specialized tools or skills.
Re claim 17, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the first roofing membrane comprises at least one polymer P1 selected from thermoplastic polyolefins (TPO) or a thermoplastic ethylene propylene diene terpolymer (EPDM).
However, Kalwara discloses wherein the first roofing membrane (12a) comprises at least one polymer P1 selected from thermoplastic polyolefins (TPO) or a thermoplastic ethylene propylene diene terpolymer (EPDM) (Col 1 lines 10-16).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the first roofing membrane comprises at least one polymer P1 selected from thermoplastic polyolefins (TPO) or a thermoplastic ethylene propylene diene terpolymer (EPDM) as disclosed by Kalwara in order to provide a long lasting, flexible, resilient membrane which can withstand high temperatures and resist UV light (Col 1 line 65 – Col 2 line 5). In addition, 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, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 18, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the second roofing membrane comprises at least one polymer P2 selected from polyvinylchloride (PVC).
However, Levens discloses wherein the second roofing membrane (32) comprises at least one polymer P2 selected from polyvinylchloride (PVC) (Col 1 lines 34-36).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the second roofing membrane comprises at least one polymer P2 selected from polyvinylchloride (PVC) as disclosed by Levens in order to utilize an inexpensive, durable, easily formable material. In addition, 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, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Re claim 19, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the first roofing membrane and the second roofing membranes have a thickness of 0.5 - 5mm.
However, Levens discloses wherein the first roofing membrane (30) and the second roofing membranes (32) have a thickness of 0.5 - 5mm (Col 9 lines 17-19).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the first roofing membrane and the second roofing membranes have a thickness of 0.5 - 5mm as disclosed by Levens in order to provide sufficient durability and water impermeability while simultaneously allowing a degree of flexure for installation or shipping/supplying in roll form (Col 1 lines 37-42). In addition, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Re claim 20, Benedict as modified discloses the method according to claim 16, Kalwara discloses wherein the first polymer resin primer layer PR1 (14a) is composed of a composition comprising synthetic rubber (Col 5 lines 38-43).
Re claim 22, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the sealing strip is a self-adhesive sealing strip.
However, Kalwara discloses wherein the sealing strip (16) is a self-adhesive sealing strip (Col 3 lines 35-39).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the sealing strip is a self-adhesive sealing strip as disclosed by Kalwara in order to simplify installation by eliminating any need for use or installation of a separate adhesive composition.
Re claim 23, Benedict as modified discloses the method according to claim 16, wherein the water impermeable liquid applied membrane M1 (7/8, as modified by the liquidity of 44 of Levens) is applied to cover (Fig. 4; 7/8 being the uppermost layers) at least a portion of the first polymer resin primer layer PR1 (Kalwara: 14a), at least a portion of the second polymer resin primer layer PR2 (Kalwara: 14b) and the sealing strip (4a/4b).
Re claim 29, Benedict as modified discloses the method according to claim 16, wherein the first roofing membrane (2a) and the second roofing membrane (2b) are secured on the roofing substrate (1) but fails to disclose by adhesive and/or mechanically using screws, barbed plates or termination bars.
However, Levens discloses securement by adhesive and/or mechanically using screws (22), barbed plates or termination bars.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict with by adhesive and/or mechanically using screws, barbed plates or termination bars as disclosed by Levens in order to fasten in a simple, removable manner.
Re claim 30, Benedict discloses a roof system (Fig. 4) comprising,
- a roof substrate (1 and the unlabeled layer directly above 1);
- a first roofing membrane (2a) having a first upper surface (upper surface of 2a) and a first lower surface (lower surface of 2a);
- a second roofing membrane (2b) having a second upper surface (upper surface of 2b) and a second lower surface (lower surface of 2b), wherein the first roofing membrane (2a) and the second roofing membrane (2b) are laid on a surface (of 1) of the roof substrate (1 and the unlabeled layer directly above 1) so that an edge (left edge of 2a) of the first roofing membrane (2a) is adjacent to (Fig. 4) an edge (right edge of 2b) of the second roofing membrane (2b), wherein the first lower surface (lower surface of 2a) and the second lower surface (lower surface of 2b) are in direct contact with (Fig. 1) the roof substrate (1 and the unlabeled layer directly above 1), and wherein the first roofing membrane (2a) is not in direct contact with (Fig. 4; via 3) the second roofing membrane (2b);
- a sealing strip (4a, 4b) having an upper major surface (upper surface of 4a/4b) and a lower major surface (lower surface of 4a/4b) limited between short (width edge) and long edges (length edge), wherein the sealing strip (4a, 4b) is adhesively bonded (via 5) via the lower major surface (lower surface of 4a/4b) to at least a portion of the first polymer resin primer layer PR1 (as modified below) and at least a portion of the second polymer resin primer layer PR2 (as modified below) so that a connection gets established between (Fig. 4) the first roofing membrane (2a) and the second roofing membrane (2b); and
- a water impermeable liquid applied membrane M1 (7/8), wherein the water impermeable liquid applied membrane M1 (7/8) is applied to the upper major surface (top of 4a/4b) of the sealing strip (4a/4b), optionally the first polymer resin primer layer PR1 and the second polymer resin primer layer PR2 (as this language is optional),
but fails to disclose wherein a first polymer resin primer layer PR1 is applied to at least a portion of the first upper surface, wherein a second polymer resin primer layer PR2 is applied to at least a portion of the second upper surface, and wherein the water impermeable liquid applied membrane M1 is allowed to cure in order to form a watertight seal between the first roofing membrane and the second roofing membrane.
However, Kalwara discloses a first polymer resin primer layer PR1 (14a; Col 5 lines 38-39) is applied to at least a portion of (Fig. 1) the first upper surface (12a; however, as modified, for use on the upper surface of 3a) and a second polymer resin primer layer PR2 (14b; Col 5 lines 38-39) is applied to at least a portion of (Fig. 1) the second upper surface (upper surface of 12b).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Benedict wherein a first polymer resin primer layer PR1 is applied to at least a portion of the first upper surface, wherein a second polymer resin primer layer PR2 is applied to at least a portion of the second upper surface as disclosed by Kalwara in order to obviate the need to initially clean surfaces to be joined (Col 3 lines 5-8), utilize a material which cleans the surfaces to be joined (Col 3 lines 8-10), and/or to increase peel strength (Col 3 lines 15-17).
In addition, Levens discloses wherein the water impermeable liquid applied membrane M1 (44; Col 7 lines 35-37) is allowed to cure (Col 6 lines 42-47) in order to form a watertight seal (Claim 22) between the first roofing membrane (30) and the second roofing membrane (32).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the roof system of Benedict wherein the water impermeable liquid applied membrane M1 is allowed to cure in order to form a watertight seal between the first roofing membrane and the second roofing membrane as disclosed by Levens in order to provide a water impervious seal (Col 1 lines 13-14), applied in a simple manner which does not require specialized tools or skills.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedict (EP2781669) in view of Kalwara et al (“Kalwara”) (US 5,520,761), Levens (US 5,322,724) and Yasuno et al (“Yasuno”) (US 2024/0262079).
Re claim 21, Benedict as modified discloses the method according to claim 16, Kalwara discloses wherein the second polymer resin primer layer PR2 (14b) is composed of at least one amine hardener AH (Col 5 line 66 – Col 6 line 3), but fails to disclose wherein the second polymer resin primer layer PR2 is composed of a composition comprising at least one liquid epoxy resin LER.
However, Yasuno discloses wherein the second polymer resin primer layer PR2 ([0149]) is composed of a composition comprising at least one liquid epoxy resin LER ([0149]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the second polymer resin primer layer PR2 is composed of a composition comprising at least one liquid epoxy resin LER as disclosed by Yasuno in order to allow for simple application such as by a brush, roller, or spraying ([0150]). In addition, 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, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim(s) 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedict (EP2781669) in view of Kalwara et al (“Kalwara”) (US 5,520,761), Levens (US 5,322,724) and Houchin et al (“Houchin”) (US 2015/0354218).
Re claim 24, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the water impermeable liquid applied membrane M1 is applied by the application of a reactive composition RC1 in liquid form and letting the applied composition cure.
However, Houchin discloses wherein the water impermeable liquid applied membrane M1 (Levens: 44) is applied by the application of a reactive composition RC1 ([0080]) in liquid form ([0080]) and letting the applied composition cure ([0082]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the water impermeable liquid applied membrane M1 is applied by the application of a reactive composition RC1 in liquid form and letting the applied composition cure as disclosed by Houchin in order to simplify installation by incorporation of materials for adhesions on edges thereof using a chemically reactive cure system ([0004]).
Re claim 25, Benedict as modified discloses the method according to claim 24, Houchins discloses wherein the reactive composition RC1 ([0080]) is selected from the list consisting of reactive one-part polyurethane compositions, reactive two-part polyurethane compositions and reactive two-part polyurea compositions ([0081]).
Re claim 26, Benedict as modified discloses the method according to claim 24, Houchins discloses wherein the reactive composition RC1 ([0080]) has a water content of less than 10 wt.-%, based on the total weight of the composition ([0080] discloses the compositions of A and B, none of which include water).
Claim(s) 24 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedict (EP2781669) in view of Kalwara et al (“Kalwara”) (US 5,520,761), Levens (US 5,322,724) and Miller et al (“Miller”) (US 2015/0337534).
Re claim 24, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the water impermeable liquid applied membrane M1 is applied by the application of a reactive composition RC1 in liquid form and letting the applied composition cure.
However, Miller discloses wherein the water impermeable liquid applied membrane M1 (Levens: 44) is applied by the application of a reactive composition RC1 ([0012]) in liquid form ([0029]) and letting the applied composition cure ([0029]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the water impermeable liquid applied membrane M1 is applied by the application of a reactive composition RC1 in liquid form and letting the applied composition cure as disclosed by Houchin in order to adhere utilizing sufficient strength, low VOC, and simple application ([0005]).
Re claim 27, Benedict as modified discloses the method according to claim 24, Miller discloses wherein the reactive composition RC1 ([0012]) is reactive one-part ([0011]) polyurethane composition ([0013]) containing:- an amount of isocyanate-functional polymers ([0020]); - an amount of latent hardener ([0026]); - an amount of plasticizers ([0018]); and - an amount of fillers ([0018]),
but fails to disclose the isocyanate-functional polymers in the range of 15 to 80 weight-% in relation to the total composition, the latent hardener in the range of 0.5 to 25 weight-% in relation to the total composition, the plasticizers in the range of 0 to 40 weight-% in relation to the total composition, and the fillers in the range of 0 to 80 weight-% in relation to the total composition.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict with the isocyanate-functional polymers in the range of 15 to 80 weight-% in relation to the total composition, the latent hardener in the range of 0.5 to 25 weight-% in relation to the total composition, the plasticizers in the range of 0 to 40 weight-% in relation to the total composition, and the fillers in the range of 0 to 80 weight-% in relation to the total composition in order to sufficiently alter liquid viscosity, optimize mixing, enhance air entrainment, improve wet out, and/or improve flow properties during application ([0018]). In additions, where 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.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benedict (EP2781669) in view of Kalwara et al (“Kalwara”) (US 5,520,761), Levens (US 5,322,724) and Wiercisnski (US 2010/0173112).
Re claim 28, Benedict as modified discloses the method according to claim 16, but fails to disclose wherein the water impermeable liquid applied membrane M1 comprise a fibre reinforcement mesh.
However, Wiercinski discloses wherein the water impermeable liquid applied membrane M1 (1) comprise a fibre reinforcement mesh (2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Benedict wherein the water impermeable liquid applied membrane M1 comprise a fibre reinforcement mesh as disclosed by Wiercinski in order to increase strength of the membrane, as fibre reinforcement meshes are very well-known and common in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE WALRAED-SULLIVAN whose telephone number is (571)272-8838. The examiner can normally be reached Monday - Friday 8:30am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at (571)270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KYLE WALRAED-SULLIVAN
Primary Examiner
Art Unit 3635
/KYLE J. WALRAED-SULLIVAN/Primary Examiner, Art Unit 3635