DETAILED ACTION
The communication dated 6/24/2026 has been entered and fully considered.
Claims 1 and 7 have been amended. Claim 18 is new. Claims 1-18 are pending. Claims 15-17 are withdrawn from further consideration.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-14, in the reply filed on 6/24/2026 is acknowledged. The traversal is on the ground(s) that the lack of unity of invention is not established by COLE and MICKAELSSON. This is not found persuasive because as stated in the response to arguments below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/24/2026.
Response to Amendments and Arguments
The Applicant’s amendments have overcome the § 112(b) rejection as set forth in the office action of 4/1/2026. Therefore, the § 112(b) rejections have been withdrawn.
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive.
The Applicant argues that COLE does not describe or suggest a membrane sheet comprising a barrier layer and a plurality of spaced-apart strips on a lower major surface of the barrier layer and COLE only teaches recessed drainage channels rather than discrete protruding strips arranged to contact the adhesive.
The Examiner respectfully disagrees. COLE teaches various patterns that can be formed on the lower major surface of the barrier layer, which may include strip patterns and COLE shows strips can be formed [Figs. 4A-4B; 4D; 0019].
The Applicant argues that one of ordinary skill in the art would not have been led to having used the MIKAELSSON adhesive composition in COLE as COLE discloses options in non-hydraulic mechanisms designed for immediate bonding and MIKAELSSON requires cementitious compositions that must be mixed and cured via hydration.
In response to applicant's argument that MIKAELSSON is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, MIKAELSSON and COLE are in the same field of cement products, and both use cement materials.
The applicant argues that the motivation is not relevant to COLE which already does not involve cementitious materials.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to substitute the adhesive in COLE with the adhesive in MIKAELSSON, in order to reduce exposure to particles of hydraulic binder to users [0001]. Furthermore, the Examiner respectfully disagrees as COLE teaches cement materials are used [Abstract].
The Applicant argues that SCHOENBRODT does not teach the strips cover not more than 85% of the lower major surface of the barrier layer and one would not have been led to have made “strips” to cover not more than 85% of the lower major surface of the barrier layer in COLE because doing so would have been expected to adversely affect drainage and structure of the foam layer.
In regards to this argument, it remains unpersuasive as the Applicant has not provided any evidence that this would occur other than attorney argument.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole et al. (U.S. PGPUB 2015/0047281), hereinafter COLE, in view of Mikaelsson (U.S. PGPUB 2015/0141554), hereinafter MIKAELSSON.
Regarding claim 1, COLE teaches: A method for sealing a substrate (COLE teaches a method for sealing a substrate [Abstract].) comprising steps: i) providing a membrane sheet comprising a barrier layer (COLE teaches providing a membrane sheet (104) [0039] and a barrier layer is part of the panels [0018; 0045; Fig. 1A].) and a plurality of spaced-apart strips on a lower major surface of the barrier layer (COLE teaches at least one surface of the foam layer (104) is provided with a pattern which provided a series of drainage channels and the pattern can adopt any suitable form [0019; Figs. 1A, 2A].), ii) providing a fresh cementitious adhesive composition (COLE teaches an adhesive is provided [0011; ]. COLE teaches the adhesive layer preferably can be made of a water based adhesive and the adhesive can be formed in a liquid form, or in a paste form [0041].), iii) applying the fresh cementitious adhesive composition to a surface of the substrate to form a wet adhesive layer (COLE teaches the adhesive layer (106) is applied to the back surface (105) of the substrate (102) [0042].), iv) covering at least a portion of the wet adhesive layer with the membrane sheet such that at least a portion of the outer surfaces of the strips are directly contacted with the wet adhesive layer (COLE teaches the channels (112) extend through the exterior or interior of the layer [0044], and COLE teaches the adhesive layer may be applied to the entire surface of the substrate layer (102) [0042]. Therefore, it would have been obvious that at least a portion of the outer surfaces of the channels contact the adhesive layer.), and v) letting the wet adhesive layer harden to effect adhesive bonding between the membrane sheet and the substrate (COLE teaches the adhesive interlocks both panels [0040], indicating the adhesive layer hardens to bond the layers together.).
COLE does not explicitly teach a cementitious adhesive. In the same field of endeavor, adhesives, MIKAELSSON teaches a cementitious adhesive [Abstract; 0001; 0007; 0012]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to substitute the adhesive in COLE with the adhesive in MIKAELSSON, in order to reduce exposure to particles of hydraulic binder to users [0001].
Claim(s) 2-3, 7-8, 11 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole et al. (U.S. PGPUB 2015/0047281), hereinafter COLE, and Mikaelsson (U.S. PGPUB 2015/0141554), hereinafter MIKAELSSON, as applied to claim 1 above, and further in view of SCHOENBRODT et al. (WO 2020/043741 A1), hereinafter SCHENBRODT.
Regarding claim 2, COLE and MIKAELSSON teach all of the claimed limitations above, but are silent as to: wherein the strips cover not more than 85% of the lower major surface of the barrier layer. In the same field of endeavor, bonding, SCHOENBRODT teaches strips (4) cover not more than 85% of the lower major surface of the barrier layer (3) [pg. 11, lines 16-22]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE and MIKAELSSON, by having the strips cover not more than 85% of the lower major surface of the layer, as suggested by SCHOENBORDT, in order for production technical reasons [pg. 11, lines 12-13].
Regarding claim 3, COLE and MIKAELSSON teach all of the claimed limitations above, but are silent as to: wherein the strips have a thickness of 0.1 – 3 mm. In the same field of endeavor, bonding, SCHOENBRODT teaches the strips (4) have a thickness of 0.5 – 3.0 mm [pg. 14, lines 26-28]. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE and MIKAELSSON, by having the strips have a thickness of 0.5 – 3 mm, as suggested by SCHOENBORDT, in order to provide sufficient peel strength [pg. 14, lines 20-23].
Regarding claim 7, COLE and MIKAELSSON teach all of the claimed limitations above, but are silent as to: wherein the strips are composed of a self-adhering bituminous composition. In the same field of endeavor, bonding, SCHOENBRODT teaches the strips are made of a self-adhering composition [pg. 1, lines 5-10; pg. 2, line 32 – pg. 3, lines 1-2]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE and MIKAELSSON, by having the strips be composed of a self-adhering composition, as suggested by SCHENBRODT, in order to form a waterproofing seal and form sealable joints [pg. 3, lines 4-5].
Regarding claim 8, SCHENBRODT further teaches: wherein the self-adhering bituminous composition (SCHENBRODT teaches a self-adhering bituminous composition is well known in the art [pg. 26, lines 24-27].) comprises: a) at least 35 wt.-% of bitumen B (SCHENBRODT teaches preferably 35 – 85 wt.% of bitumen [pg. 27, lines 24-26].) and b) 5 – 35 wt.-% of at least one modifying polymer MP (SCHENBRODT teaches preferably 10 – 25 wt.% of at least one polymer selected from atactic polypropylenes (APP), which is a modified polymer [pg. 27, lines 27-28, pg. 27, lines 9-12].), all proportions being based on the total weight of the self-adhering bituminous composition (SCHENBRODT teaches the proportions are based on the total weight of the composition [pg. 27, line 33 – pg. 28, line 1].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE and MIKAELSSON, by having the bitumen composition with the modified polymer, as suggested by SCHENBRODT, in order to improve the mechanical properties of the adhesive composition [pg. 27, lines 8-10].
Regarding claim 11, COLE and MIKAELSSON teach all of the claimed limitations above, but are silent as to: wherein the substrate to be sealed is a roof substrate. In the same field of endeavor, bonding, SCHENBRODT teaches the substrate (8) is a roof substrate [pg. 1, lines 21-22]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE and MIKAELSSON, by having the substrate be a roof substrate, as suggested by SCHENBRODT, as it’s a known building material [pg. 14-25] and one of ordinary skill in the art would have chosen a known option in the art. See KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007) ("A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.").
Regarding claim 18, COLE and MIKAELSSON teach all of the claimed limitations above, but are silent as to: wherein each of the strips has a width of from 2.5 – 40 mm. In the same field of endeavor, bonding, SCHOENBRODT teaches the strips (4) may have a width of 20 mm [pg. 49, lines 10-15; pg. 49, lines 20-25], meeting the claimed range. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE and MIKAELSSON, by having the strips have a width of 20 mm, as suggested by SCHOENBORDT, in order to provide sufficient peel strength [pg. 14, lines 20-23].
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole et al. (U.S. PGPUB 2015/0047281), hereinafter COLE, and Mikaelsson (U.S. PGPUB 2015/0141554), hereinafter MIKAELSSON, as applied to claim 1 above, and further in view of MUELLER et al. (U.S. PGPUB 2023/0101815), hereinafter MUELLER.
Regarding claim 4, COLE and MIKAELSSON teach all of the claimed limitations as stated above, but are silent as to: wherein step iii) is preceded by a step of applying water to the surface of the substrate to increase the surface moisture content of the substrate. In the same field of endeavor, cement mixtures, MUELLER teaches the concept of a surface wetting pretreatment step to increase moisture content [0254]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE and MIKAELSSON, by having the concept of a surface wetting pretreatment step, as suggested by MUELLER, in order to increase moisture content and to help reduce any dust that can be produced [0254].
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole et al. (U.S. PGPUB 2015/0047281), hereinafter COLE, and Mikaelsson (U.S. PGPUB 2015/0141554), hereinafter MIKAELSSON, as applied to claim 1 above, and further in view of Verscheure et al. (U.S. 8,272,095), hereinafter VERSCHEURE.
Regarding claim 5, COLE and MIKAELSSON teach all of the claimed limitations as stated above, but are silent as to: wherein the fresh cementitious adhesive composition is applied to the surface of the substrate using a trowel having a plurality of ridges. In the same field of endeavor, adhesives, VERSCHEURE teaches applying an adhesive composition with a trowel (notched spatula 1) [Fig. 1; Abstract]. VERSCHEURE teaches the trowel has a plurality of ridges [Fig. 1]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE and MIKALESSON, by applying the adhesive composition with a trowel, as suggested by VERSCHEURE, as it is useful in enabling the implementation of a process of laying [Col. 1, lines 5-12].
Regarding claim 6, VERSCHEURE further teaches: wherein the ridges of the trowel have a width (w) of 5 – 30 mm and/or a height (h) of 0.25 – 2.5 mm and/or a spacing (s) of 0.25 – 2.5 mm (VERSCHEURE also teaches the trowel (spatula (1)) has ridges and the ridges has a width between 9-18 mm [Col. 3, lines 30-32].).
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole et al. (U.S. PGPUB 2015/0047281), hereinafter COLE, and Mikaelsson (U.S. PGPUB 2015/0141554), hereinafter MIKAELSSON, as applied to claim 1 above, and further in view of Constantz et al. (U.S. PGPUB 2014/0271440), hereinafter CONSTANTZ.
Regarding claim 9, COLE and MIKAELSSON teaches all of the claimed limitations as stated above, but are silent as to: wherein the barrier layer comprises upper and lower layers composed of a bituminous composition and reinforcing layer located between the upper and lower layers. In the same field of endeavor, adhesives, CONSTANTZ teaches two bitumen layers (14) with a layer of reinforcing material (16) between [Fig. 1; 0097]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE and MIKAELSSON, by having the two bitumen layers with a reinforcing layer in-between, as suggested by CONSTANTZ, in order to provide a roofing material for a roofing surface [0097].
Regarding claim 10, CONSTANTZ further teaches: wherein the reinforcing layer comprises at least one of a non-woven, woven, laid scrim, and a metal film (CONSTANTZ teaches the reinforcing layer may be woven or non-woven [0099].).
Claim(s) 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cole et al. (U.S. PGPUB 2015/0047281), hereinafter COLE, and Mikaelsson (U.S. PGPUB 2015/0141554), hereinafter MIKAELSSON, as applied to claim 1 above, and further in view of Jingjid et al. (U.S. 10,934,213), hereinafter JINGJID.
Regarding claim 12, COLE and MIKAELSSON teaches all of the claimed limitations as stated above, but are silent as to: wherein the fresh cementitious adhesive composition is obtained by mixing a cementitious adhesive with water, wherein the cementitious adhesive comprises: A) 0.5 – 30 wt.-% of at least one synthetic organic polymer SP and B) 25 – 95 wt.-% of at least one hydraulic binder H, the proportions being based on the total weight of the cementitious adhesive. In the same field of endeavor, adhesives, JINGJID teaches a cementitious adhesive composition [Abstract]. JINGJID teaches 1-6 wt.% of redisperable polymer, selected from polyacrylate, poly(vinyl acetate, poly (vinyl alcohol), vinyl ester-vinyl acetate copolymer, ethylene-vinyl acetate copolymer and ethylene-vinyl alcohol copolymer or mixtures thereof [Col. 6, lines 57-61]. JINGJID teaches 30-50 wt.% of cement, in particular Portland cement [Col. 6, line 52]. JINGJID teaches all the amounts are with respect to the total weight of the composition [Col. 2, lines 40-41]. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE and MIKAELSSON, by having the composition with 1-6 wt.-% redisperable powder and 30-50 wt.-% cement, as suggested by JINGJID, in order to provide an improved cementitious adhesive and one that can be used in machines [Col. 1, lines 62-65].
Regarding claim 13, MIKAELSSON further teaches: wherein the at least one synthetic organic polymer SP is in form of a re-dispersible polymer powder (MIKAELSSON teaches the second component polymers can be prepared in bulk, powder form and such powders would be re-dispersed in water [0044]. Acronal S 430 P (BASF SE) is an example of a suitable commercial, re-dispersible styrene-acrylate copolymer powder [0044].).
Regarding claim 13, COLE and MIKAELSSON teaches all of the claimed limitations as stated above. In the alternative, JINGJID further teaches: wherein the at least one synthetic organic polymer SP is in form of a re-dispersible polymer powder (JINGJID teaches 1-6 wt.% of redisperable polymer, selected from polyacrylate, poly(vinyl acetate, poly (vinyl alcohol), vinyl ester-vinyl acetate copolymer, ethylene-vinyl acetate copolymer and ethylene-vinyl alcohol copolymer or mixtures thereof [Col. 6, lines 57-61].).
Regarding claim 14, MIKAELSSON further teaches: wherein the weight ratio of the amount of water to the amount of the at least one hydraulic binder H in the fresh cementitious adhesive composition obtained from step ii) is in the range 0.1:1 to 2:1 (MIKAELSSON teaches the ratio of the amount to water to at least one hydraulic binder is 0.1 to 2 [0073].). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the applicant’s invention to modify COLE, by having the ratio of water to hydraulic binder by 0.1 to 2, as suggested by MIKAELSSON, in order to the desired final mechanical properties [0073].
Conclusion
THIS ACTION IS MADE FINAL. 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 CAROLINE BEHA whose telephone number is (571)272-2529. The examiner can normally be reached MONDAY - FRIDAY 9:00 A.M. - 5:00 P.M.
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, ABBAS RASHID can be reached at (571) 270-7457. 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.
/C.B./Examiner, Art Unit 1748
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
Prosecution Insights