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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 7, 'in' should read as 'is'. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: the phrase 'where the protective film and the roofing member are compatible' is repeated twice in lines 2-3. Appropriate correction is required.
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.
Claim(s) 1-7, 12-14, 17, 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yancey (U.S PG Pub 20200270866A1) and French (U.S PG Pub 20130263552A1).
Regarding claims 1 & 12, Yancey drawn also to the art of a roofing membrane with a waterproofing layer and release liner (Abstract), discloses a first waterproofing layer (201a) (first membrane composite) and discloses the waterproofing layer having a top planar surface, a bottom planar surface, a first and second lateral edge (Figures 2-3 & 6), and a protective member (release membrane 203) provided on the top planar surface (Figures 2-3 & 6). Yancey also discloses a second membrane composite with a top and bottom planar surface and first and second lateral edges (201b) with a protective member on a top planar surface (Figure 6 – it can be seen that the same layer 203 i.e. protective member on top of layer 201a is also on top of layer 201b), and discloses the steps of heat welding the first and second membrane composite at a seam and removing the protective film after welding [0033 & 0044-0045]. Regarding the step of the incorporating the protective film in the seam welding, Yancey discloses that the flap 601 of the release member is folded back over the seam or laid back down onto the seam [0045 & Figure 6). This would mean that the release member is incorporated into the seam welding as it is laid back down over the seam. Alternatively, the embodiment in Figure 7 further demonstrates the above, as the overlapping joining is in the area of edge 704 & 705 and given that the release liner 203 would touch or butt up against the seam, it would naturally mean that the release liner is incorporated into the seam welding [0046-0047]. In the instant case, the term ‘incorporate’ is interpreted as the release liner being a part of the seam welding process and not being removed prior to the steam welding process.
In the event the applicant disagrees with the above rationale, it is known from French for a protective sheet 14 to be a part of a seam weld (Figure 5 – it can be seen that protective sheet 14 of the first and second layers 32 & 34 is in the overlapping seam joint area) [0019].
It would have been obvious to an ordinarily skilled artisan to have modified the method of Yancey, with the step of incorporating the protective sheet into the seam welding, as disclosed by French, to arrive at the instant invention, in order to protect the surface of the membrane from dirt, scratches and scrapes [0005].
Regarding claims 2-3, Yancey discloses securing the membrane composites to the roof (Figure 1; [0044]).
Regarding claim 4, Yancey has disclosed removing the protective film [0034 & 0045].
Regarding claim 5 & 17, Yancey discloses thermally bonding the protective film to the membrane [0041], which forms a temporary light attachment between the two [0041], thus in order for the protective film and membrane to be able to bond thermally without adhesive, it would mean they would have to be compatible to a certain degree. Further, the protective film of Yancey serves the exact same purpose as the instantly claimed protective film, in that it serves to protect the membrane and is then removable, thus it can be reasonably expected that the seam formed fails cohesively before it fails adhesively.
Regarding claims 6 & 13, Yancey discloses the protective film being thermally bonded to the membrane [0041].
Regarding claims 7 & 14, Yancey disclose the protective film extending from the first to the second lateral edge (Figures 2-3 & 6).
Regarding claims 20-21, Yancey has disclosed a roof comprising the membrane (Figure 1), and has disclosed a roof formed by the method of instant claim 1 (see claim 1 rejection above).
Claim(s) 8 & 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yancey (U.S PG Pub 20200270866A1) and French (U.S PG Pub 20130263552A1) and Hubbard (U.S PG Pub 20090320987A1).
Regarding claims 8 & 15, Yancey and French have not explicitly disclosed the peel strength as claimed, however, the limitation of peel strength is known from Hubbard.
Hubbard, drawn also to the art of a covering product for a building (Abstract), discloses a peel strength between a protective film and a foil layer (interpreted as the membrane) to be at least 2lbs/inch (claim 1 of Hubbard), which forms an overlapping and encompassing range with the instantly claimed range. The courts have held that 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) (MPEP 2144.05 (I)).
It would have been obvious to an ordinarily skilled artisan to have modified the method of Yancey and French, with the step of the peel strength being in the range as claimed, as disclosed by Hubbard, to arrive at the instant invention, in order to be able to have rapid and easy installation in an economical fashion [0039].
Claim(s) 9-11, 16, 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yancey (U.S PG Pub 20200270866A1) and French (U.S PG Pub 20130263552A1) and Watkins Jr. (U.S Patent 10066396B1).
Regarding claims 9 & 16, Yancey and French have not explicitly disclosed the roofing membrane being a scrim-reinforced thermoplastic membrane, however, Watkins Jr. discloses the roofing membrane being a scrim-reinforced thermoplastic membrane (Column 14, lines 1-6).
It would have been obvious to an ordinarily skilled artisan to have modified the method of Yancey and French, with the roofing membrane being a scrim-reinforced thermoplastic membrane, as disclosed by Watkins Jr. to arrive at the instant invention, given that a roofing membrane made of thermoplastic reinforced scrim is a known prior art element, and the courts have held that the simple substitution of one known element for another to obtain predictable results is obvious (MPEP 2143 I(B)).
Regarding claims 10-11, 18-19, Yancey and French have not explicitly disclosed the thicknesses of the roofing membrane and the protective film as claimed, however, thicknesses in the above ranges are disclosed by Watkins Jr.
Watkins Jr, drawn also to the art of thermoplastic roofing composites (Abstract; Column 1, lines 10-15), discloses the thickness of the roofing membrane to be between 500um to 3mm (Column 14, lines 15-16), and discloses the thickness of the release member to be between 15 to 80um (Column 13, lines 60-64). The courts have held that 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) (MPEP 2144.05 (I)).
It would have been obvious to an ordinarily skilled artisan to have modified the method of Yancey and French, with the thicknesses of the roofing membrane and release member as disclosed, to arrive at the instant invention, as these are known elements in the prior art, and the courts have held that the combination of prior art elements according to known methods to yield predictable results is obvious (MPEP 2143 I(A)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746