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 Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 9, “a TPO roofing membrane, comprising:” should be deleted for being duplicative.
Applicant is advised that should claim 5 be found allowable, claim 17 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
Claims 18 and 21 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 18 recites “the polypropylene-based (C3) elastomer has a flexural modulus of 2-200 MPa.” This fails to further limit parent claim 1 which requires “polypropylene-based (C3) elastomers having a flexural modulus of 2-200 MPa”.
Claim 21 recites “the (C2) elastomer has a flexural modulus of 2-200 MPa.” This fails to further limit parent claim 1 which requires “polyethylene-based (C2) elastomers having a flexural modulus of 2-200 MPa”.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3-7, 9-13, 15-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuipers (US 4,977,720) in view of Roskamp et al. (EP 3643494) as evidenced by the Product Datasheet for VISTAMAXX Performance Polymer 6202 (ExxonMobil, 2020).
Regarding claim 1:
Kuipers discloses a welded plastic roofing system overlaying a roof deck (abstract; 1:24+; 1:53+). The system comprises a plurality of fastener plates 3 (array of anchor plates) attached to the deck 1 via fasteners 4 (mechanical fasteners) (1:26+; 1:53+; Figs. 1-2). A welding material 6 (heat activated adhesive) is applied on top of fastener plate 3, which is heated and fuses with a top membrane 5 during the use of an induction electromagnetic welder, which provides a bond between top membrane 5 and fastener plate 3 (2:9+).
Kuipers is silent with regard to a TPO roofing membrane as claimed.
One skilled in the art would have recognized such a membrane had utility in the art. For example, Roskamp discloses a sealing device for roofs that is heat-weldable [abstract; 0001; 0011]. In one embodiment, the device (1) comprises a top layer (5), reinforcement layer (4), waterproofing layer (2), and non-woven fabric (3) [0021; 0059; 0132; Fig. 4]. The reinforcement layer comprises a scrim [0061; 0064]. The waterproofing layer comprises at least one thermoplastic elastomer component P1 and an elastomer E [0073-0074]. The at least one thermoplastic elastomer P1 comprises TPO [0043-0047; 0077-0080]. The waterproofing layer (2) and the top layer (5) have “substantially identical polymer basis” (i.e., both are TPO layers) [0059; 0069]. Roofing membranes are fastened to the roof substrate via plates [0005].
Roskamp teaches propylene-based elastomers [0048-0052; 0137-0139; Table 1] and teaches the further use of ethylene-based thermoplastic elastomer [0081-0085]. The composition comprises “at least one” of each elastomer [0073]. Roskamp teaches elastomers having a flexural modulus of less than 500 MPa [0052; 0077; 0080]. An example polymer is VISTAMAXX 6202 propylene-ethylene copolymer [0050; 0139; Table 1]. As evidenced by the datasheet for this material, it has a flexural modulus of 13 MPa. The examiner considers this broadly to be either a C2 elastomer or a C3 elastomer because it uses both ethylene and propylene. Additionally, Roskamp teaches other commercial materials at [0084-0085] that are the same as used in the present invention, which would be expected to satisfy the claimed requirements. See the present specification at [00033].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use known thermoplastic membranes with Kuipers’ roofing system, including the TPO roofing membrane taught by Roskamp, to provide its disclosed sealing properties as known in the art. Additionally, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include both C2 and C3 elastomers as taught by Roskamp, including those having a flexural modulus falling within the claimed range, to provide the desired flexibility, resiliency, and/or weldability, etc. desired for a given end use.
Although Roskamp is silent with regard to the membrane having “enhanced magnetic induction welding to the heat activated adhesive” and “the elastomeric additives increase induction welding performance of the TPO roofing membrane,” the examiner submits Roskamp’s membrane and elastomeric components meet the claimed limitations because Roskamp otherwise discloses the same TPO roofing membrane comprising the same elastomeric components as presently claimed.
Regarding claims 3, 9, and 15:
Although Roskamp teaches the waterproofing layer (2) and the top layer (5) have “substantially identical polymer basis” (i.e., both contain TPO) [0069], this disclosure is distinct from the layers having “substantially identical compositions” which is a feature disclosed in further embodiments [Id.]. Additionally, Roskamp teaches multiple waterproofing layers can be used with different compositions [0059]. Therefore, Roskamp does not require the waterproofing layer (2) and the top layer (5) to have identical compositions, and so Roskamp does not require the presence of the ethylene-based thermoplastic elastomer in one of the layers (2) and (5).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add both C2 and C3 elastomers to the overall laminate as previously explained, wherein the layers (2) and (5) have different compositions, including layers encompassed by the present claims, to provide the mechanical and welding properties desired for a given end use.
Regarding claims 4, 10, and 16:
Roskamp teaches embodiments wherein the waterproofing layer (2) and the top layer (5) have “substantially identical compositions”.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add both C2 and C3 elastomers to the overall laminate as previously explained, wherein the layers (2) and (5) have the same compositions, including layers encompassed by the present claims, to provide the mechanical and welding properties desired for a given end use.
Regarding claims 5-7 and 11-13:
Roskamp teaches a given waterproofing layer comprises 5-60% by weight of elastomer E [0075]. Although Roskamp is silent with regard to the amount of elastomer relative to the total polymer in the TPO roofing membrane, the disclosed amounts would overlap the claimed amounts depending on the thickness of the layers. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the thickness of each layer and the amount of elastomer, including over amounts that result in overall amounts within the claimed ranges, to provide the desired flexibility and resiliency desired for a given end use.
Regarding claim 17:
See the rejection of claim 5.
Regarding claim 18:
See the rejection of claim 1.
Regarding claim 19:
Roskamp teaches random ethylene-alpha-olefin copolymers [0050; 0083].
Regarding claim 20:
Roskamp teaches block ethylene-alpha-olefin copolymers [0085].
Regarding claim 21:
See the rejection of claim 1.
Regarding claim 22:
Kuipers discloses a welded plastic roofing system uses a thermoplastic fastener plate in a spacing that is not critical as long they are close enough together to hold down the roof membrane (abstract; 1:24+; 1:53+). The fasteners can be used with inductive welding techniques (2:37+).
Kuipers and Roskamp are silent with regard to the FM wind uplifting rate and fastener spacing.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to provide any spacing that provides a degree of fastening, including wind uplifting rate which is a measure thereof, that is desired for a given end use, including wind uplifting values as presently claimed. Additionally, given that Roskamp discloses a sealing device (membrane) that comprises the same components as used in the present invention, the examiner submits it would have the same properties when used in the same configuration as the present invention.
Response to Arguments
Applicant's arguments filed 4/29/2026 have been fully considered but they are not persuasive.
Applicant’s amendments overcome the previous anticipation rejections based on Roskamp alone. The reference is silent with regard to an array of anchor plates mechanically fastened to a roof deck, wherein top surfaces of each of the anchor plates have heat activated adhesive applied thereto. Additionally, although Roskamp discloses “at least one” elastomer selected from C2 and C3 elastomers, the reference does not explicitly disclose their combination such that the reference anticipates the combination. The examiner maintains, however, that the combination of Kuipers and Roskamp renders the claimed invention obvious for the reasons stated above.
Applicant argues the present TPO roofing membranes exhibit enhanced performance during induction welding, which is contrasted with Roskamp’s thermal welding (p7). Applicant argues “the present formulation softens the TPO membrane such that energy from the magnetic disks is less localized (providing more bonding area in the TPO membrane) [wherein a] key to making the membrane softer and more bendable this [sic] to use both C2 and C3 elastomeric additives wherein both of these additives have a flexural modulus of 2-200 MPa” (emphasis in original). Applicant argues that although Roskamp discloses an example polymer having a flexural modulus of 13 MPa, the reference is not directed to magnetic induction systems or improving such systems (p8).
The examiner maintains the above rejections based on Kuipers and Roskamp. Regarding arguments that the present claim is directed to induction welding, present claim 1 has two broad requirements relating to magnetic induction welding: (i) “the TPO roofing membrane being formulated to have enhanced magnetic induction welding to the heat activated adhesive on the array of anchor plates” and (ii) “the elastomeric additives increase induction welding performance of the TPO roofing membrane”. Such requirements relate to properties of the materials and their intended use with magnetic induction welding, but the claims do not specifically require induction welding (i.e., the claims are drawn to a product and not a particular process using such a product). Additionally, the limitations of “enhanced” and “increase…performance” are vague and encompass nearly any broad improvement relating to the properties. Further, Roskamp suggests a TPO roofing membrane comprising “at least one” elastomer, including C2 and C3 elastomers, which renders obvious the claimed TPO roofing membrane. Meanwhile, Kuipers teaches roofing systems that make use of such thermoplastic membranes in combination with an array of anchor plates having heat-activatable adhesives thereon which bond with the thermoplastic membrane. (The examiner notes Applicant makes no arguments relating to the teachings of Kuipers.) The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Furthermore, although Applicant argues the improved benefits of the present invention result from the combination of C2 and C3 elastomers, the previous claims required the presence of only one of the elastomers to achieve the claimed “increase[d] induction welding performance” (see, e.g., original claims 1, 2, and 8). Therefore, there is no basis to conclude the improvement flows only from the combination of elastomers as asserted.
For these reasons, the examiner maintains the rejections of record.
Conclusion
Applicant's 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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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