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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-32 are rejected under 35 U.S.C. 103 as being unpatentable over Peng et al., US 2019/0153202.
Regarding claim 1:
Peng discloses a roofing membrane composition (title) comprising:
from 30 to 60% LLDPE (abstract);
from 0 to 18% thermoplastic polypropylene polymer (para. 0042);
from 5 to 20% of a single polymer as performance modifier (para. 0053 – a polyethylene compatibilizer);
at least one flame retardant (para. 0043);
at least one UV stabilizer (para. 0043);
at least one pigment (para. 0043).
Peng does not disclose the exact weight percentages of LLDPE, thermoplastic PP polymer and performance modifier.
In the case where the claimed ranges “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)
It would have been obvious to one having ordinary skill in the before the effective filing date of the invention, to contrive any number of desirable ranges for the component limitations disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05.
In the instant case, Peng discloses all the roofing membrane composition components as claimed and discusses how the various components alter the properties of the membrane. There is no evidence that the claimed range limitations provide a criticality that would not be achievable and expected with a reasonable amount of experimentation.
Regarding claims 2-5:
Peng discloses wherein the combined weight of the polymers a, b and c ranges from 40% to 85% (para. 0043).
It would have been obvious to one having ordinary skill in the before the effective filing date of the invention, to contrive any number of desirable ranges for the polymer limitation disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05.
Regarding claims 6-7:
Peng discloses wherein the flame retardant ranges from 20 to 40 wt % (para. 0043).
In the case where the claimed ranges “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)
Regarding claim 8:
Peng discloses wherein the pigment comprises 5 wt % (para. 0043) falling within the range of 3 to 6 wt %.
Regarding claim 9:
Peng discloses wherein the pigment comprises titanium dioxide (para. 0045).
Regarding claims 10 and 11:
Peng discloses wherein the UV stabilizer comprises at least 5 wt%.
It would have been obvious to one having ordinary skill in the before the effective filing date of the invention, to contrive any number of desirable ranges for the UV stabilizer disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05.
Regarding claims 12 and 13:
Peng discloses wherein the roofing membrane comprises a flame retardant of calcium carbonate.
Regarding claims 14-16:
Peng discloses wherein calcium carbonate comprises at least 30 wt % (para. 0046 – at least 40 wt% is greater than 25 or 27).
Regarding claims 17-20:
Peng discloses wherein the LLDPE is present in the range of 35 to 45% (para. 0029).
In the case where the claimed ranges “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)
Regarding claims 21-22:
Peng discloses wherein the PP polymer is in the range of 0 to 18%.
It would have been obvious to one having ordinary skill in the before the effective filing date of the invention, to contrive any number of desirable ranges for the PP polymer disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05.
Regarding claims 23-26:
Peng disclose wherein the performance modifier is present in the range of 5 to 20 wt %.
In the case where the claimed ranges “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)
It would have been obvious to one having ordinary skill in the before the effective filing date of the invention, to contrive any number of desirable ranges for the PP polymer disclosed by Applicant, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Further, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to MPEP § 2144.05.
Regarding claim 27:
Peng discloses a roofing membrane comprising the composition of claim 1 (para. 0002).
Regarding claim 28:
Peng discloses a roof comprising the roofing membrane of claim 27 (para. 0060).
Regarding claim 29:
Peng discloses wherein the roofing membrane is fixed over base roofing by adhesive material, ballasted material, spot bonding or mechanical spot fastening (para. 0050).
Regarding claims 30 and 31:
Peng discloses wherein the roofing membrane have been installed by mechanical fasteners and plates placed along an edge sheet and fastened through the membrane and into roof decking and wherein adjoining sheets of roofing membranes are overlapped so as to cover the fasteners and plates and joined together by a hot air weld (para. 0050).
Regarding claim 32:
Peng discloses a method of preparing a roofing membrane comprising physically blending the components of claim 1 (para. 0040).
Claims 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Peng et al., US 2019/0153202 in view of Thakur et al., US 2018/0186996.
Regarding claims 33-35:
Peng does not expressly disclose the specific production steps.
Thakur discloses a method of roofing membrane (para. 0150) production comprising twin screw extrusion followed by calendaring, wherein the components are directly fed into an extruder such that melting, mixing and extrusion occurs simultaneously and then calendaring of the extruded material, wherein the calendared material is wound into a roll (para. 0170).
Before the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art (PHOSITA) to use the method disclosed by Thakur to make the roofing membrane of Peng in order to provide a streamlined, efficient means of manufacture and distribution.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Peng et al., US 2019/0153202 in view of Boss et al., US 2023/0220675.
Regarding claim 36:
Peng discloses wherein the membrane includes cap and core layers but does not expressly disclose laminating them together.
Boss discloses a roofing membrane and a method of making it comprising laminating cap and core layers into a full membrane with a reinforcing scrim between the cap and core layers (para. 0084).
Before the effective filing date of the invention, it would have been obvious to a PHOSITA to laminate cap and core layers with a scrim between as suggested by Boss for the roofing membrane cap and core layers of Peng in order to provide a strong, reinforced membrane.
Response to Arguments
Applicant's arguments filed 6/16/26 have been fully considered but they are not persuasive.
Regarding applicant’s argument that Peng requires two compatibilizers, while the invention of Peng emphasizes two compatibilizers, Peng does disclose the use of only one compatibilizer as disclosed in para. 0053. Although inferior to Peng’s preferred two polymer formulation, the claimed single polymer option is disclosed by Peng. As such, the examiner finds that Peng discloses the use of a single polymer as a performance modifier.
Regarding applicant’s argument that Peng requires at least 15 wt. % TPO (thermoplastic olefin) polymer, the claim does not require that the membrane composition lacks TPO. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements. The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. The low end of the ranges of the claimed polymer components allow for the inclusion of TPO without negating the claimed ranges.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT W HERRING whose telephone number is (571)270-3661. The examiner can normally be reached Monday-Thursday 7:30a-6:00p MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENT W HERRING/Primary Examiner, Art Unit 3633
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