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.
Claims 13, 16-23, 25, 28-30 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.
In regard to claims 13 and 29, the claim is unclear because the “cure characteristics” of the surfaces are unknown and not specified in the claim thus rendering the scope of the claim unascertainable.
In regard to claims 16-17, the use of the words “optionally” and “optional” render the claim indefinite because it is unclear whether the limitations following the words are part of the claimed invention.
Further, claim 16 is indefinite because the step (iv) is unclear. It is not known how to adhere the construction board to a portion of the layer of construction boards. For examining purposes, it is assumed the step intends to claim the construction board is adhered to the layer of insulation boards.
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.
Claims 1-4, 6, 7, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Paradise et al. US 2004/0172899 A1 (hereinafter ‘Paradise’) in view of Franklin et al. US 2011/0173910 A1 (hereinafter ‘Franklin’).
In regard to claims 1 and 3, Paradise teaches a method of constructing a roof system, comprising:
applying an adhesive (40) transfer film composite to a roof substrate (insulation board 24, see [0029]), where the adhesive transfer film composite includes an adhesive body having first (in contact with substrate) and second (where the release sheet is) planar surfaces and a release member (45) removably attached to the second planar surface of the adhesive body (see [0054]), where the adhesive body is devoid of a carrier layer (see [0056]), whereby said step of applying secures the first planar surface of the adhesive body to the roof substrate (see [0059]);
removing the release member (45) to thereby expose the second planar surface of the adhesive body (see [0059]); and
applying a construction element (22) to the second planar surface of the adhesive body to thereby adhere the construction element to the substrate (see [0030]).
Paradise does not explicitly disclose the adhesive body includes a crosslinked network of acrylate-based polymers.
Franklin teaches a roof system comprising an adhesive film (26) that adheres an outer layer to a roofing board (10 -see [0033]) wherein the adhesive is a crosslinked (cured) network of acrylate-based polymers (see [0028]).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to use a crosslinked network of acrylate-base polymers as the adhesive of Paradise as taught by Franklin so as to provide sufficient bonding strength to retain the outer layer without additional fastener or adhesives and therefore expedite application time, reduce manual labor and decrease installation costs (see [0030]).
In regard to claim 2, the combination of Paradise/Franklin teaches the adhesive transfer film is provided in the form of a roll, unrolling the roll and mating the first planar surface of the adhesive body to the substrate (See Paradise [0056] and [0059]).
In regard to claim 4, the combination of Paradise/Franklin teaches the claimed invention wherein the substrate is a first layer of construction boards. Note that insulation boards, per broadest reasonable interpretation, are construction boards because they are boards used in the construction of a roof.
In regard to claim 6, the combination of Paradise/Franklin teaches the claimed invention wherein the construction element is a membrane panel (see Paradise [0027]).
In regard to claim 7, the combination of Paradise/Franklin teaches the claimed invention where the substrate is roof deck (30) and the roof deck is a corrugated metal deck (see Paradise [0028]).
In regard to claim 10, the combination of Paradise/Franklin teaches the claimed invention where the adhesive body has a thickness of from about 25 mm to about 2,000 mm. Note that Paradise discloses a thickness of about 0.125 inch (3,175 mm) which, per broadest reasonable interpretation, is about 2,000 mm.
Alternatively,
Claims 1, 4, 5, 8, 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kortmeyer et al. US 2023/0228093 A1 (hereinafter ‘Kortmeyer’) in view of Franklin.
In regard to claim 1, Kortmeyer teaches a method of constructing a roof system, comprising:
applying an adhesive (108) transfer film composite to a roof substrate (104), where the adhesive transfer film composite includes an adhesive body having first (in contact with substrate) and second (where the release sheet is) planar surfaces and a release member (see [0023]) removably attached to the second planar surface of the adhesive body,
where the adhesive body is devoid of a carrier layer (see [0023]), whereby said step of applying secures the first planar surface of the adhesive body to the roof substrate (see [0022]);
removing the release member to thereby expose the second planar surface of the adhesive body (see [0023]); and
applying a construction element (106) to the second planar surface of the adhesive body to thereby adhere the construction element to the substrate (see [0022]).
Although Kortmeyer discloses an UV curable adhesive, it does not explicitly disclose the adhesive body includes a crosslinked network of acrylate-based polymers.
Franklin teaches a roof system comprising an adhesive film (26) that adheres an outer layer to a roofing board (10 -see [0033]) wherein the adhesive is a crosslinked (cured) network of acrylate-based polymers (see [0028]).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to use a crosslinked network of acrylate-base polymers as the UV curable adhesive of Kortmeyer as taught by Franklin so as to provide sufficient bonding strength to retain the outer layer without additional fastener or adhesives and therefore expedite application time, reduce manual labor and decrease installation costs (see [0030]).
In regard to claim 4, the combination of Kortmeyer/Franklin teaches the claimed invention wherein the substrate is a first layer of construction boards (see [0017]).
In regard to claim 5, the combination of Kortmeyer/Franklin is silent regarding the manner in which the construction board is fastened into place. It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to mechanically fasten the boards because mechanically fastening means are notoriously well known in the art and therefore obvious to use so as to reduce cost of installation as can be done by any worker in the art.
In regard to claim 8, the combination of Kortmeyer/Franklin teaches the claimed invention wherein the adhesive includes a UV cured acrylic adhesive (see Kortmeyer [0026]).
The combination does not explicitly teach the claimed characteristics for the degree of cure. It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to arrive at the claimed ranges of the amount soluble in xylene at 25 degrees (less than 5%) as a matter of routine experimentation, and because, as Applicant’s own admission (see [0031] of the specification) this curing technique is notoriously well known in the art.
In regard to claim 13, the combination of Kortmeyer/Franklin teaches the claimed invention, where the adhesive body is UV cured by subjecting the first planar surface of the body to radiation (see Kortmeyer [0024]). And, as best understood, the characteristics of both planar surfaces are distinct since the surfaces are in contact with different elements in the assembly.
In regard to claim 15, the combination of Kortmeyer/Franklin does not explicitly teach the adhesive is foamed. It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide a foamed adhesive because foam adhesives are old and well known in the art, and the use of conventional materials to perform their known function is prima facie obvious (see MPEP 2143).
Claims 16-23, 25 and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Kortmeyer in view of Paradise
In regard to claim 16, Kortmeyer teaches a method of constructing a roof system, comprising:
a roof system including a first layer of insulation boards (see [0017]);
applying a transfer film including an adhesive body (108) having first (in contact with substrate) and second (where the release sheet is) planar surfaces and a release member (see [0023]) removably attached to the second planar surface of the adhesive body, and mating the first planar surface to a portion of the exposed surface of the layer of insulation boards (See fig. 2);
removing the release member to thereby expose the second planar surface of the adhesive body (see [0023]); and
applying a construction board (106) to the second planar surface of the adhesive body to thereby adhere the construction board to a portion of the layer of construction (insulation?) boards (see [0022]).
Kortmeyer is silent regarding the manner in which the insulation board is fastened into place. It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to mechanically fasten the boards because mechanically fastening means are notoriously well known in the art and therefore obvious to use so as to reduce cost of installation as can be done by any worker in the art.
In regard to claim 17, Kortmeyer teaches that the adhesive may be unrolled atop a roofing substrate or other insulation layers (see [0024]).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide a second layer of construction boards attached to an adhesive layer in the same manner that the first layer is (see claim 16 rejection) so as to enhace the insulation properties of the roof.
In regard to claim 18, Kortmeyer teaches applying a membrane system (106) over the second layer of construction boards (See fig. 4).
In regard to claim 19, Kortmeyer teaches the adhesive transfer film is provided in the form of a roll, unrolling the roll and mating the first planar surface of the adhesive body to the substrate (See figures 2 and 4).
In regard to claims 20-22, Kortmeyer teaches its system can include one or more roofing substrates or other insulation layers (see [0024]).
It would have been obvious to one of ordinary skill in the art to provide additional coverboards or insulation boards to the system of Kortmeyer, as a matter of design choice so as to meet insulation and/or design requirements.
In regard to claim 23, Kortmeyer teaches the claimed invention wherein the adhesive includes a UV cured acrylic adhesive (see [0026]).
Kortmeyer does not explicitly teach the claimed characteristics for the degree of curing. It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to arrive at the claimed ranges of the amount soluble in xylene at 25 degrees (less than 5%) as a matter of routine experimentation, and because, as Applicant’s own admission (see [0031] of the specification) this curing technique is notoriously well known in the art.
In regard to claim 25, Kortmeyer teaches an adhesive thickness of about 1-100 mils (25-2,540 mm) see [0007] and it’s compositionally homogeneous (see [0006]).
Wherein it would have been obvious to one of ordinary skill in the art to arrive at a value (from about 25 mm to about 890 mm) within the claimed range as a matter of routine experimentation. See MPEP 2144.05. (In the instant case, thickness differences will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such distance is critical. “[W]here 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, 105 USPQ 233, 235 (CCPA 1955)).
In regard to claim 28, Kortmeyer teaches the claimed invention, where the adhesive body is UV cured by subjecting the first planar surface of the body to radiation (see [0024]).
In regard to claim 29, Kortmeyer teaches, as best understood, the characteristics of both planar surfaces are distinct since the surfaces are in contact with different elements in the assembly.
In regard to claim 30, Kortmeyer does not explicitly teach the adhesive is foamed. It would have been obvious to one of ordinary skill in the art, before the effective filling date of the instant application, to provide a foamed adhesive because foam adhesives are old and well known in the art, and the use of conventional materials to perform their known function is prima facie obvious (see MPEP 2143).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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/PAOLA AGUDELO/Primary Examiner, Art Unit 3633
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