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 Objections
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Original claim 17 has been renumbered as claim 16 having two claims 16 in the amended claims. All claims after original claim 16 has been renumbered improperly. For purposed of examination every claim starting from the second claim 16 will be identified as its original claim number. For example, the second claim 16 will be identified as claim 17 and so on until claim 29 which will be identified as claim 30. Proper correction needs to be done to properly identify the claims.
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 (currently the second claim 16), 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 (currently claims 17 and 18), 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 (currently claim 19), 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 (currently claim 20), 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 (currently claim 21), 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 (currently claim 22), 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 (currently claim 23), 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 (currently claim 24), the teachings of 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 (currently claim 25), 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 (currently claim 26), 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 (currently claim 27), 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 (currently 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 (currently claim 29), 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).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keuler et al (US 2022/0403215).
With regards to claim 31, Keuler teaches a method for waterproofing a substrate (Abstract, paragraph 14) 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 64 and 65)
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 69)
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 69)
Providing a waterproof membrane having first and secondary primary exterior surfaces (paragraph 60)
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 (paragraphs 68 and 69)
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 69)
Where the surface of the substrate is a substantially vertical surface and the substrate is a parapet wall (paragraph 17)
Keuler differs from the claimed invention in that the adhesive is applied first to the waterproofing membrane before being applied to the surface of the substrate (paragraphs 64, 65, 68 and 69). Yet it would have been obvious to one of ordinary skills in the art to change the order of application since applying the adhesive to the membrane before applying it to the surface of the substrate would have the same results as applying the adhesive to the surface of the substrate before applying. The order of steps does not have a patentable weight if there is no evidence of an unexpected results as per Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Response to Arguments
Applicant's arguments filed August 12, 2026 have been fully considered but they are not persuasive. Applicant argues that the prior art of Pally does not teach or suggest the limitation of applying a pressure sensitive adhesive layer directly to the surface of the substrate because the prior art states that the adhesive is applied to a separation sheet. The Examiner respectfully disagrees given that the claim does not define the substrate and a separation sheet is a substrate. In .
Applicant’s arguments, with respect to claim 17 rejected under 35 USC 112 have been fully considered and are persuasive. The rejection of claim 17 has been withdrawn.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOSHEL RIVERA whose telephone number is (571)270-7655. The examiner can normally be reached M-F 12pm - 8pm.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHEL RIVERA/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
Prosecution Insights