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 § 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 17 is 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.
Claim 17 states that the substrate is a roof substrate yet claim 16 states that the surface of the substrate is a substantially vertical surface. Since roofs are typically horizontal or slanted, the vertical nature renders the claim confusing and the metes and bounds unclear.
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.
Claim(s) 16 - 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pally et al (US 2022/0170369).
With regards to claim 16, Pally teaches a method for waterproofing a substrate (Abstract) comprising:
Providing an adhesive element comprising a pressure sensitive adhesive layer having a first and second primary exterior surfaces and a release liner covering the second primary exterior surface of the pressure sensitive adhesive layer (Abstract, paragraphs 136 and 141)
Applying the adhesive element to the surface of the substrate such that at least a portion of the first primary exterior surface of the pressure sensitive adhesive layer is directly connected to the surface of the substrate (paragraph 137)
Pressing the adhesive element against the surface of the substrate with a pressure sufficient to affect adhesive bonding between the adhesive element and the surface of the of the substrate (paragraph 137)
Providing a waterproof membrane having first and secondary primary exterior surfaces (paragraph 138)
Removing the release liner and covering the adhesive element with the waterproof membrane such that at least a portion of the secondary primary exterior surface of the pressure sensitive adhesive layer is directly connected to the primary exterior surface of the waterproof membrane (paragraph 141)
Pressing the waterproof membrane against the surface of the substrate with a pressure sufficient to affect adhesive bonding between the waterproof membrane and the surface of the substrate (paragraph 138)
Where the surface of the substrate is a substantially vertical surface (paragraphs 2 and 3)
With regards to claim 17, the teachings of Pally are presented above. Additionally, Pally teaches that the substrate is a roof substrate (paragraph 2).
With regards to claims 18 and 19, the teachings of Pally are presented above. Additionally, Pally teaches that the adhesive element further comprises a reinforcing layer, which is fully embedded into the pressure sensitive adhesive layer, the reinforcing layer being a layer of fiber material (paragraphs 84 and 109).
With regards to claim 20, the teachings of Pally are presented above. Additionally, Pally teaches that the pressure sensitive adhesive layer is an acrylic pressure sensitive adhesive layer (paragraph 94).
With regards to claim 21, the teachings of Pally are presented above. Additionally, Pally teaches that the pressure sensitive adhesive layer is a cured layer of an actinic radiation acrylic pressure sensitive adhesive composition (paragraph 120).
With regards to claim 22, the teachings of Pally are presented above. Additionally, Pally teaches that the pressure sensitive adhesive layer is a dried layer of a water or solvent based acrylic pressure sensitive adhesive (paragraph 90) comprising:
25 – 85 wt% of the at least one acrylic polymer (paragraph 94)
5 – 85 wt% of water or at least one organic one organic solvent, all proportions being based on the total weight of the water or solvent based acrylic pressure sensitive adhesive composition (paragraphs 89 and 90).
With regards to claim 23, the teachings of Pally are presented above. Additionally, Pally teaches that the pressure sensitive adhesive layer has a mass per unit area of 50 – 500 g/m² (paragraph 40).
With regards to claim 24, the teachings of Pally are presented above. Additionally, Pally teaches that the waterproof membrane comprises at least one waterproofing layer comprising at least 35wt% based on the total weight of the waterproofing layer, of at least one polymer (paragraph 49).
With regards to claim 25, the teachings off Pally are presented above. Additionally, Pally teaches that the waterproofing layer is a polyvinylchloride-based layer (paragraph 65) comprising:
25 – 65 wt% of a polyvinylchloride resin, as the at least one polymer (paragraph 63)
10 – 50 wt% of at least one plasticizer (paragraph 67)
0 – 60 wt% of at least one inorganic filler, all proportions being based on the total weight of the waterproofing layer (paragraph 66)
With regards to claim 26, the teachings of Pally are presented above. Additionally, Pally teaches that the waterproofing layer has a thickness of 0.35 – 3.5 mm (paragraph 46).
With regards to claim 27, the teachings of Pally are presented above. Additionally, Pally teaches that the waterproof membrane has a width of 0.35 – 3 m (paragraph 44).
With regards to claim 28, the teachings of Pally are presented above. Additionally, Pally teaches a waterproofed substrate obtained by using the previously claimed method (paragraph 17).
With regards to claim 29, the teachings of Pally are presented above. Additionally, Pally teaches a kit-of-parts comprising an adhesive element as defined above and a waterproof membrane (paragraph 17).
With regards to claim 30, the teachings of Pally are presented above. Additionally, Pally teaches that the adhesive element and/or waterproof membrane is present int het kit-of-parts as coiled in a roll (paragraph 43).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHEL RIVERA whose telephone number is (571)270-7655. The examiner can normally be reached M-F 12pm - 8pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHEL RIVERA/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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