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 .
The amendment of March 26, 2026 has been received and entered. With the entry of the amendment claims 1-33 are canceled, and claims 34-73 are pending for examination.
Claim Objections
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).
Misnumbered claim 37 (the claim provided after claim 52, which is the second time the number 37 has been used) has been renumbered 53. Misnumbered claims 65-69 (provided after claim 68, where claims 65-68 are the second time these numbers have been used) have been renumbered 69-73, respectively.
Applicant is advised that should claim 64 be found allowable, claim 65 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).
Claims 64 and 65 are identical.
Applicant is advised that should claim 61 be found allowable, claim 66 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).
Claims 61 and 66 are understood to be substantially identical (noting the understanding of claim 61 as discussed in the 35 USC 112 rejection below).
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 34-73 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.
Claim 34, line 1, “protection membrane” should apparently be “protective membrane” to correspond to the rest of the usage in a claim 34. For the purpose of examination, “protection membrane” and “protective membrane” understood to refer to the same thing, but applicant should clarify what is intended, without adding new matter.
Claim 34, part b), “particle size of from 0.01 mm and 2.0 mm” is confusing and indefinite as to if (1) a range between 0.01 mm and 2.0 mm meant or (2) a range of anything from 0.01 mm and above, or a range of from anything from 2.0 mm and above is meant, or (3) something else. For the purpose of examination, either of (1) or (2) is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter.
Claim 49, part b), “the railway deck” lacks antecedent basis, and it is unclear if applicant is intending to refer to simply “the substrate” (as at line 3) or intending to narrow the substrate to be a railway deck. For the purpose of examination, either is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter.
Claim 49, part c), “particle size of from 0.01 mm and 4.0 mm” is confusing and indefinite as to if (1) a range between 0.01 mm and 4.0 mm meant or (2) a range of anything from 0.01 mm and above, or a range of from anything from 4.0 mm and above is meant, or (3) something else. For the purpose of examination, either of (1) or (2) is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter.
Claim 61, “the ballast protection film” lacks antecedent basis, and it is vague and indefinite as to what is actually referred to. For the purpose of examination, it is treated as being “the protective membrane”, but applicant should clarify what is intended, without adding new matter.
Claim 68, line 1, “protection membrane” should apparently be “protective membrane” to correspond to the rest of the usage in a claim 68. For the purpose of examination, “protection membrane” and “protective membrane” understood to refer to the same thing, but applicant should clarify what is intended, without adding new matter.
Claim 68, part b), “mixing components consisting of” is confusing and indefinite as worded as to whether (1) the individual components must be only listed materials, such that the first mixing material must consist of the methacrylate based monomer, the initiation must be only initiator, etc. or (2) the resulting composition must consist of only the listed materials. For the purpose of examination, either (1) or (2) is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter.
Claims 70, 71 and 73(as renumbered) each have depending from claim “64”. However, due to the renumbering, it is unclear if that is what is intended, since claim 64 depends from claim 49, rather than the next independent claim before claims 70, 71 and 73 (which would be claim 68). For the purpose of examination, it is understood that the claims can depend from either claim 64 or claim 68, but applicant should clarify what is intended, without adding new matter.
Claim 71 (as renumbered), “a polymerization accelerator” is confusing and indefinite as to whether the accelerator in claim 68 is referred to or a separate polymerization accelerator is referred to, which could make the claim not further limiting depending on how claim 68 interpreted as discussed above for claim 68. For the purpose of examination, it is understood that the accelerator of claim 68 referred to, but applicant should clarify what is intended, without adding new matter.
Claim 72 (as renumbered) depends from claim “67”. However due to the renumbering, it is unclear if that is what is intended, since claim 67 depends from claim 49, rather than being the parent of claim 72 (which would now be renumbered claim 71) For the purpose of examination, it is understood that the claim can depend from either claim 67 or claim 71 (as renumbered), but applicant should clarify what is intended, without adding new matter.
The dependent claims do not cure all defects of the claims from which they depend and are therefore also rejected.
Claim Rejections - 35 USC § 103
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.
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.
Claims 34-36, 38-39, 41, 43-48, 68-71 and 73 are rejected under 35 U.S.C. 103 as being unpatentable over Japan 2018-0255045 (hereinafter ‘045) in view of CN 109826094 (hereinafter ‘084), KR 2010001614 (hereinafter ‘614) and KR 20180020795 (hereinafter ‘795) and as evidenced by RU 2553693 C2 (hereinafter ‘693).
*** Please note: ‘045 is used with the translation provided with Office Action of November 26, 2025. ***
Claim 34, 43-46: ‘045 teaches a method of providing a waterproof laminate structure (note 0001). The substrate can be a bridge deck, for example (note 0037). The method includes providing at least one layer of waterproofing membrane on a surface of the substrate to form a waterproof seal on the surface (note 0016, the waterproof layer, which would act as a seal, 0428). A liquid curable composition is applied to the waterproofing membrane surface to form an adhesive protection layer (note 0016, 0041, 0046). The liquid curable composition contains (1) at least one reactive (meth)acrylate based monomer (methyl methacrylate as desired by claims 43-44) (note 0053, 0054, 0057, 0065-0066, 0341, 0373, 0373) and (2) a polymerization initiator (an organic peroxide of benzoyl peroxide as desired by claims 45-46, where benzoyl peroxide is also known as dibenzoyl peroxide) added to activate polymerization of the methyl methacrylate (note 0213-0216, where since the same benzoyl peroxide of applicant is used the same polymerization activation of methyl methacrylate understood to occur), where the liquid curable composition cures and forms a resin film when applied to the surface of the waterproofing membrane (note 0041). The liquid curable composition cures and forms a single layer coating of the adhesive protective layer material (note 0016, where simply a layer of the material applied).
(A) As to forming the liquid curable composition by mixing (1) the at least one reactive (meth)acrylate based monomer (such as methyl methacrylate) and (2) a polymerization initiator (added to activate polymerization of the methyl methacrylate) and (iii) inorganic particles having a average D50 particle size from 0.01 and 2.0 mm, and applying the mix at an average uncured thickness of at least about 0.5 mm, ‘045 further describes that as to the use of inorganic particles, that after the liquid composition applied, aggregate can be applied over the applied composition before curing, where the aggregated is absorbed into the coating and distributed throughout the entire layer (note 0041, 0419), where aggregate can be including silica sand (that is, silicon oxide), alumina, etc. and would be in particle form, and thus would be inorganic particles, which can be of an particle size of 0.5 to 2 mm, which would be in the claimed range (note 0255-0256, 0419, where since all particles would be in the claimed range the D50 would be in the claimed range), and where forming the composition for application of the protection layer would include mixing together the methacrylate resin and initiator (note 0362, 0371, 0418), applying to the substrate, and then applying silica particles on top to integrate with the resin before curing (note 0419), for example.
‘094 teaches a method for establishing a waterproof layer system for a ballast track concrete bridge deck (note 0007-0009). The method includes forming at least one layer of a waterproofing membrane (layer) on a surface to form a waterproof seal on the surface (as part of forming a waterproof seal) (note the modified polyurethane composite primer layer can be considered “a waterproofing” membrane layer, note 0009, 0020-0021, 0060, 0063). Then, onto a surface of this layer, a liquid curable composition is applied to form “a modified polyurethane composite topcoat layer” (topcoat layer) (note 0009, 0026-0027, 0081, 0064, 0073, 0074). The liquid curable composition comprises (1) at least one reactive (meth) acrylate based monomer (methyl methacrylate) (note 0026-0027), and (2) a polymerization initiator added to activate polymerization of the methyl methacrylate (note 0026, 0028, 0042, 0073, where the crosslinking agent can be considered as including a polymerization initiator as including benzoyl peroxide, an organic peroxide, note 0042, where since the same benzoyl peroxide of applicant is used the same polymerization activation of methyl methacrylate understood to occur), where the liquid curable composition cures and forms a resin film when applied to the surface of the waterproofing membrane (note 0073, 0064). As to the average uncured thickness of the uncured topcoat layer, it is described for the dried layer to have a thickness of preferably 0.8-1.2 mm (note 0061). Since the layer is liquid/with solvent (note 0027) and dried (note 0061)/cured (note 0064), is understood that the topcoat layer has an average uncured thickness greater than 0.8-1.2 mm, so would be in the claimed range, or at the least, it would at least have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the topcoat layer in an uncured form has an average uncured thickness greater than 0.8-1.2 mm, since with drying/curing the solvent in the layer would be removed leaving less material present, and therefore, there would be the expectation that the layer would predictably shrink on curing. ‘094 further describes that particles can be applied over the applied topcoat layer, where the particles can be of quartz for example, of a particle size of 1-3 mm (note 0064, 0067).
Additionally, ‘614 describes a waterproof layer system for use on a bridge (page 2, translation), where various layers are provided, including a top coat layer (finishing layer 5) can be provided, where that layer contains MMA (methyl methacrylate) with silica particles, described as having a diameter of 1 mm or less, and where the amount of particles can be up of 80 wt%, where the resin/particle coating can be provided by either mixing the MMA with the silica particles and then applying to the surface or the resin and the particles can be applied separately (note pages 2-3, translation).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘045 to provide an average uncured thickness of the applied liquid composition/adhesive protection layer greater than 0.8-1.2 mm, in the claimed range, and that the inorganic particles are premixed in with the protection resin composition as suggested by ‘094 and ‘614 with an expectation of predictably acceptable results, since ‘045 provides a waterproofing membrane system on surfaces such as bridge decks, with a waterproofing membrane sealing layer and an overlayer of an adhesive protection layer, where forming the composition for application of the protection layer would include mixing together the methacrylate resin and initiator and then applying silica particles on top to integrate with the resin before curing, and ‘094 indicates that a similar such system can be provided with an average uncured thickness of the applied liquid composition/adhesive protection layer greater than 0.8-1.2 mm, in the claimed range, and ‘614 further describes how when applying a top coat layer of methyl methacrylate resin to a water proofing layer system, which is also to have silica particles, either the silica particles can be mixed with the resin and the combined system applied or the particles can be applied separately from the resin, and thus it would be predictably acceptable to further mix the silica particles of ‘045 with the methacrylate based monomer and initiator with inorganic particles such as silica in the claimed size range (such as 0.5-2 mm) before application of the layer, since ‘045 was the particles to be distributed through the coating, where the same results would be expected by mixing the particles in the liquid curable composition and then applying to a surface of the waterproofing membrane or applying the particles afterwards. Further aote MPEP 2144.04(IV)(C): “ 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.)”. As a result, a single layer protective membrane as claimed would be provided over a waterproofing membrane.
(B) Further as to the shear adhesion of a bottom surface of the protective membrane exhibits a shear adhesion as claimed, ‘795 describes the formation of a waterproofing agent film (note 0040), where performance features are tested, including shear adhesive strength of the coating (note 0054, 0057, 0058), where the shear adhesive strength of the inventive process is all over 1 MPa (such as 1.8, 1.7, 1.9 MPa).
Furthermore, ‘693 evidences that DN 13653:2004 is a known conventional method of determining shear adhesion in the waterproof film art (pages 1-2, translation).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘045 in view of ‘094 and ‘614 to optimize the shear adhesion of the protective membrane layer to the layer beneath (surface of the waterproofing membrane) to provide a value greater than 1 MPa when measured according to the method of EN 13653:2004 as suggested by ‘795 and as evidenced by ‘693, since ‘045 in view of ‘094 and ‘614 is providing a desirable protective membrane layer to use in a waterproofing membrane system and ‘795 indicates how shear adhesion of a layer is a parameter to control for in waterproofing membrane systems where the desirable adhesion is described as over 1 MPa, and ‘693 further evidences the conventional use of the method of EN 13653:2004 to measure shear adhesion in the waterproofing membrane art, and since the protective membrane would be desired to adhere to the surface on which it is applied, the adhesion with the underlying waterproofing membrane would be tested. Note that "[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).”
Claim 35: As to providing ballast to a surface of the protective membrane, ‘094 indicates providing a waterproof layer system for a ballast track concrete bridge deck (note 0007, 0009) and notes that formed waterproof membranes for bridge decks for railways conventionally have ballast laid over the waterproofing (note 0004) and also notes providing anti-ballast particle layer (note 0016), further suggesting that ballast would be applied over the waterproofing, giving a conventional use for the waterproofing system and thus suggesting that after the waterproofing system with the topcoat applied, then a layer of ballast would be applied on top/over the waterproofing system in the process of ‘045 in view of ‘094, ‘614 and ‘795 and as evidenced by ‘693.
Claim 36: As to applying the waterproofing membrane by applying a liquid curable waterproofing layer over the substrate and curing, this would be suggested by ‘045, note 0428, 0330-0331, for example, where the coating would be liquid enough to roll, brush, etc.
Claim 38: as to the amount of methyl methacrylate, initiator, and inorganic particles provided in the liquid curable composition ‘045 indicates amounts of methyl methacrylate (note monomer A) (note 0084, 0373), that would be mixed with amounts of initiator/curing agent (note 00218-0219), and there would further be an amount of particles (that would be mixed in the composition on the surface, note 0249). ‘094 also indicates amounts of methyl methacrylate (note 0027), that would be mixed with amounts of initiator (note 0028, 0042, with ratio amounts of benzoyl peroxide/initiator, and A2 to B2), and there would be further amounts of particles (note 0067). ‘614 indicates that up to 80 wt% silica particles can be used in the composition (page 3, translation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of each material to provide a desired composition, and as a result, ranges of each in the claimed range would be provided. Note MPEP 2144.05(II)(A): “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature 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).”
Claim 39: it would be indicated that the particles can be silicon oxide (silica), for example, from ‘045 and ‘614 as discussed above for claim 34.
Claim 41: ‘045 indicates to provide a polymerization/curing accelerator in the liquid curable composition (note 0200).
Claim 47: As to applying the liquid curable composition in two layers (that merge to form one resulting layer), so there is a cross section stepped shape, this would have been obvious matter of duplication of parts with the same results expected by either applying one thicker layer, or applying two identical thinner layers to give the desired thickness. Note In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). And where the shape would be a matte of design choice for the specific area to be coated.
Claim 48: in ‘045 the substrate can be concrete, for example (note 0022).
Claim 68: all the features of claim 68 are provided in the rejection of claims 34, 35 (where the presence of the ballast on the protective membrane would have the membrane act as a ballast protective membrane) and 38 above, and additionally as to the liquid curable composition formed by mixing components “consisting of”, for example in ‘045 the composition can just be multiple reactive (meth)acrylate based monomers (A and B can be this), and initiator, and (C) can be a methacrylate copolymer (where other materials would be optional) (note 0030, 0065, 0093-0094, 0113-0014, 0213-0214), and as discussed above for claim 34, it would also be suggested to have the silicon oxide particles with diameters in the claimed range in the composition. Additionally, if each component can be only a single listed material, this would also be suggested as (A) and (C) components can also be specific materials, and the particles would also be a specific material, and the composition would allow for additional other materials such as monomer (B).
Claim 69 (as renumbered): the layer of ballast would be suggested as discussed for claim 35 above.
Claim 70 (as renumbered), treated as depending from claim 68: this particle size would be suggested as discussed for claim 34 above.
Claim 71 (as renumbered), treated as depending from claim 68: the use of an accelerator would be suggested as discussed for claim 41 above. As to the specific amount of accelerator, it is indicated that the amount is optimized based on the amounts of (A), (B) and (C) note 0208 of ‘045, and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of each material to provide a desired composition, and as a result, ranges of each in the claimed range would be provided. Note MPEP 2144.05(II)(A): “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature 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).”
Claim 73 (as renumbered), treated as depending from claim 68: methyl methacrylate can be used (as discussed for claim 34 above).
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over ‘045 in view of ‘094, ‘614 and ‘795, and as evidenced by ‘693 as applied to claims 34-36, 38-39, 41, 43-48, 68-71 and 73 above, and further in view of KR 102149220 (hereinafter ‘220).
Claim 37: as to the providing of at least one layer of sheet waterproofing membrane when providing the waterproofing membrane on the substrate,
‘220 describes how when providing waterproofing membrane systems, it is conventionally known to apply coatings of materials to surface, also apply waterproofing sheet membranes in connection with the system, and to further additionally provide coatings over waterproof membranes (note figure 1, pages 3-4 translation, with layers of material 11, 21, 23 shown applied but not as sheets and 22 and 31 applied as sheets).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘045 in view of ‘094, ‘614, and ‘795, and as evidenced by ‘693 to provide that underlying waterproofing membrane material to be overcoated with the adhesion protective layer can include at least one layer of sheet waterproofing membrane as suggested by ‘220 with an expectation of predictably acceptable results, since ‘045 would be overcoating a waterproofing membranes, and ‘220 indicates how coatings can be applied over materials applied as a coating and applied as sheets for forming waterproofing membranes.
Claims 40, 49-52, 54 and 57-67, and optionally renumbered claims 70, 71 and 73 are rejected under 35 U.S.C. 103 as being unpatentable over ‘045 in view of ‘094, ‘614 and ‘795, and as evidenced by ‘693 as applied to claims 34-36, 38-39, 41, 43-48, 68-71 and 73 above, and further in view of Japan 2005-155130 (hereinafter ‘130).
Claim 40: as to the slump of the composition with the particles, ‘130 indicates how concrete can be made with a composition with aggregates (particles), cement, etc. can conventionally have a slump of 18 cm (180 mm) (note page 6, translation).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘045 in view of ‘094, ‘614, and ‘795, and as evidenced by ‘693 to use a composition having a slump of 180 mm (in the claimed range) as suggested by ‘130 with an expectation of predictably acceptable results, since ‘045 in view of ‘094, ‘614, and ‘795, and as evidenced by ‘693 would indicate providing a liquid composition with particles, and ‘130 would indicate that a liquid composition with particles to be applied can conventionally have a slump of 180 mm.
Claim 49: The combination of ‘045 in view of ‘094, ‘614, and ‘795, and as evidenced by ‘693 as for claims 34, 35, 38 would provide the features of claim 49, except for the details of the slump of the liquid curable composition (as in part (d)), where ‘045 provides a a primer layer can be applied before the waterproofing membrane layer applied (note 0021, 0413, 0416), Note per the 35 USC 112 rejection above, in part b) the surface is considered of “the substrate”. Alternatively, ‘094 would suggest the substrate of a railway deck (bridge deck for railway, note 0007-0009).
As to the slump features, this would be suggested as discussed for claim 40 above.
Claims 50-51 would be suggested as discussed for claim 39 above.
Claim 52 would be suggested as discussed for claim 36 above.
Claim 54 would be suggested as discussed for claims 41 and 71 (as renumbered) above.
Claims 57-60 would be suggested as discussed for claims 43-46 above.
Claims 61 and 66: As to the shape formed, this would be a matter of routine design choice based on the area to be waterproofed.
Claim 62 would be suggested as discussed for claim 34 above, from the size range given.
Claim 63 would be suggested as discussed for claim 34, from optimization of the thickness.
Claims 64-65 would be suggested by ‘045, note curing time in 0218 of 5 to 60 minutes, and example curing time at 23 degrees C, in the claimed ranges, where the curing times are all less than one hour (Table 2, 0382-0383). Note, optionally, renumbered claims 70, 71, 73, if supposed to depend from claim 64 would be rejected at this point for the reasons discussed for renumbered claims 70, 71 and 73 above.
Claim 67 would be suggested as discussed for claim 48 above.
Claim 53 is rejected under 35 U.S.C. 103 as being unpatentable over ‘045 in view of ‘094, ‘614, ‘795 and ‘130, and as evidenced by ‘693 as applied to claims 40, 49-52, 54 and 57-67 above, and further in view of KR 102149220 (hereinafter ‘220).
Claim 53: as to the providing of at least one layer of sheet waterproofing membrane when providing the waterproofing membrane on the substrate,
‘220 describes how when providing waterproofing membrane systems, it is conventionally known to apply coatings of materials to surface, also apply waterproofing sheet membranes in connection with the system, and to further additionally provide coatings over waterproof membranes (note figure 1, pages 3-4 translation, with layers of material 11, 21, 23 shown applied but not as sheets and 22 and 31 applied as sheets).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘045 in view of ‘094, ‘614, ‘795, and ‘130, and as evidenced by ‘693 to provide that underlying waterproofing membrane material to be overcoated with the adhesion protective layer can include at least one layer of sheet waterproofing membrane as suggested by ‘220 with an expectation of predictably acceptable results, since ‘045 would be overcoating a waterproofing membranes, and ‘220 indicates how coatings can be applied over materials applied as a coating and applied as sheets for forming waterproofing membranes.
Claims 55 and 56 and optionally renumbered claim 72 are rejected under 35 U.S.C. 103 as being unpatentable over ‘045 in view of ‘094, ‘614, ‘795, and ‘130, and as evidenced by ‘693 as applied to claims 40, 49-52, 54 and 57-67, and optionally renumbered claims 70, 71 and 73 above, and further in view of Okuno et al (US 4510181).
Claims 55, 56: as using a specific accelerator such as diisopropyl toluidine, ‘045 describes using toluidine accelerators such as N, N-dimethyl-p-toluidine (note 0200-0204).
Okuno notes polymerization accelerators can include dimethyl-p-toluidine or also diisopropyl-p-toluidine (note column 4, lines 35-45), which can be used with polymerization initiators that include benzoyl peroxide (note column 4, lines 15-25).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify over ‘045 in view of ‘094, ‘614, ‘795, and ‘130, and as evidenced by ‘693 to use a polymerization accelerator of diisopropyl-p-toluidine (a diisopropyl toluidine) as suggested by Okuno with an expectation of predictably acceptable results, since ‘045 would indicate providing polymerization accelerators that can be toluidines and Okuno would suggest that a known polymerization accelerator that can be a toluidine would be diisopropyl-p-toluidine. Renumbered claim 72 would also be rejected for these reasons if supposed to depend from claim 67.
Claims 42 and 72 (as renumbered) are rejected under 35 U.S.C. 103 as being unpatentable over ‘045 in view of ‘094, ‘614 and ‘795, and as evidenced by ‘693 as applied to claims 34-36, 39, 41, 43-48, 68-71 and 73 above, and further in view of Okuno et al (US 4510181).
Claims 42 and 72 (as renumbered and treated as depending from claim 71 as renumbered): as to using a specific accelerator such as diisopropyl toluidine, ‘045 describes using toluidine accelerators such as N, N-dimethyl-p-toluidine (note 0200-0204).
Okuno notes polymerization accelerators can include dimethyl-p-toluidine or also diisopropyl-p-toluidine (note column 4, lines 35-45), which can be used with polymerization initiators that include benzoyl peroxide (note column 4, lines 15-25).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify over ‘045 in view of ‘094, ‘614 and ‘795, and as evidenced by ‘693 to use a polymerization accelerator of diisopropyl-p-toluidine (a diisopropyl toluidine) as suggested by Okuno with an expectation of predictably acceptable results, since ‘045 would indicate providing polymerization accelerators that can be toluidines and Okuno would suggest that a known polymerization accelerator that can be a toluidine would be diisopropyl-p-toluidine.
ChemBK describes how “dibenzoyl peroxide” is also known as benzoyl peroxide (page 1).
Response to Arguments
Applicant's arguments filed March 26, 2026 have been fully considered.
Note the new claim objections, 35 USC 112, and 35 USC 103 rejections due to the amendments to the claims.
As to the previous rejections using ‘045 as the primary reference, it is argued that it would not have been obvious to modify ‘094 or combine with other references. It is argued that all the features claimed are not provided including the mixing of the inorganic particles with the composition (which means a single layer can be applied and not necessary to apply a sealer coat) and the adhesion features. It is argued that the particle size gives good results. It is argued that ‘094 does not have particle mixing of the size claimed, and does not form a ballast protection layer, since the particles provide this layer, and forms a composite layer system. It is argued that ‘045 would have a thickness below 0.5 mm, and provides the particles are applied after coating, and embedded when cured.
The Examiner has reviewed these arguments, however, the rejections above are maintained. Note that a new set of rejections with additional art are provided due to the new features in the claims, including the shear adhesion features. ‘045 is used is as the primary reference, and while it describes applying the particles after the liquid composition, it indicates the particles are to be distributed throughout the entire layer (note 0041), and thus the final coating would be a mix of the particles and resin composition, where even if some particle protrude out with the curing, there is still a mixture, and thus premixing the particle and resin material would be expected to have the same effect, as noted by the cited case law, and as well, ‘614 has been cited as to the obviousness of either mixing or applying the materials separately. ‘045 does not require a sealer coat. No showing has been made as to criticality of mixing beforehand. Additionally, as to the shear adhesion features, the new art to ‘795 and ‘683 has been cited as to the suggestion of these features. As to the particle size, ‘045 indicates a particle size within the claimed ranges (note 0255-0256), so any benefits from the particle size would already be provided. As to a ballast protection layer, ‘045 provides a protective layer, which is what is claimed, until claim 68, where it is discussed in the rejection of claim 68 why a ballast protection layer is provided. As to the thickness of the layer, firstly, applicant has not provided any details as to why the described weight amount would not give the thickness claimed, where additionally, the thickness of the layer with the particles would also have the particles present. Secondly, ‘094 would suggest how a similar resin layer would be predictably and acceptably have a thickness at least in the range claimed, and given the similarities between ‘045 and ‘084, one would expect that an acceptable coating can be used with this thickness. Therefore, the rejections above are maintained.
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.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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