DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/15/2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 Rejections - 35 USC § 112
Claims 1, 2, and 4-18 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.
Claims 1 and 13 each recite the limitation “at least one of the first and second thermoplastic roofing membranes is a stacked multi-layer thermoplastic roofing membrane”. The limitation “at least one of” is unclear and confusing as claims 1 and 13 appear to further require at least the first thermoplastic roofing membrane is a stacked multi-layer thermoplastic membrane, i.e. “a first thermoplastic roofing membrane… …having metal particles mixed therein… …wherein the concentration of metal particles is highest in an uppermost layer of the stacked multi-layer thermoplastic roofing membrane”.
Claim Rejections - 35 USC § 103
Claims 1, 2, and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Berg (U.S. Patent 5,526,624) in view of Peng ‘960 (U.S. Patent Application Publication 2014/0150960) and Heller, Jr. ‘547 et al. (U.S. Patent 4,035,547) and optionally further Heller, Jr. ‘031 et al. (U.S. Patent 3,574,031).
Regarding claim 1, Berg discloses a roofing assembly configured for plateless magnetic induction welding, comprising: a first thermoplastic (bitumen that softens or fuses when heated and hardens again when cooled and considered thermoplastic) roofing membrane (length of roofing felt 7) having metal (metal heat emitting member 1) disposed therein (inside the edge portion, one or a few millimeters from its joint surface 14); a second thermoplastic roofing membrane (length of roofing felt 8) in contact with the first thermoplastic roofing membrane, the assembly configured that wherein magnetic induction welding of the first thermoplastic roofing membrane causes the metal in the first thermoplastic roofing membrane to heat, thereby welding the second thermoplastic roofing membrane to the first thermoplastic roofing membrane (Figures 1-3 and Column 1, lines 13-20 and Column 2, lines 1-12 and Column 2, line 33 to Column 3, line 64).
As to the limitation in claim 1 of “wherein at least one of the first and second thermoplastic roofing membranes is a stacked multi-layer thermoplastic roofing membrane” and claims 2, 4, and 8, Berg teaches the roofing membranes are formed of bitumen a common type of material. Berg does not teach away from the roofing membranes are formed of thermoplastic polyolefin (TPO). Berg does not teach away from the roofing membranes are stacked multi-layer roofing membranes. Another common type of material for roofing membranes (including that are to be welded together along an overlapping portion) is recycled post-consumer and/or post-industrial thermoplastic polyolefin (TPO) as evidenced by Peng ‘960 (Figures 1, 2, 5A, and 5B and Paragraphs 0001-0004, 0014, 0024, 0033, 0048, and 0049) wherein the roofing membrane formed of TPO has improved properties over conventional membranes including increased resistance to weather or degradation, less prone to retaining dust, soot, or other debris that contacts the membranes’ surfaces, and that may also exhibit enhanced weldability and including the membrane is a stacked multi-layer thermoplastic roofing membrane wherein the core (502) is a conventional or lower grade TPO layer and the outer facing cap (504) is a higher quality TPO layer to maintain the color and/or functionality of the roofing membrane at reduced cost wherein the layers are welded (pressing the layers together while applying heat) together and wherein at least the core layer is made of recycled polymer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the first thermoplastic roofing membrane and the second thermoplastic roofing membrane taught by Berg each comprise a stacked multi-layer thermoplastic roofing membrane (and regarding claim 2 wherein the first thermoplastic roofing membrane is made of thermoplastic polyolefin (TPO) with recycled post-consumer or post-industrial TPO therein and regarding claim 4 wherein the TPO in the first thermoplastic roofing membrane comprises stacked layers of TPO welded together and regarding claim 8 wherein the second thermoplastic roofing membrane is made of TPO) not only as a simple substitution of one known common type of material for another to yield predictable results but as has improved properties over conventional membranes including increased resistance to weather or degradation, less prone to retaining dust, soot, or other debris that contacts the membranes’ surfaces, and that may also exhibit enhanced weldability as taught by Peng ‘960.
As to the limitation in claim 1 of “metal particles mixed therein”, Berg teaches incorporating the metal in the first thermoplastic roofing membrane at the time of manufacture wherein the metal is disposed inside the uppermost edge portion (one or a few millimeters from its joint surface and positioned adjacent to the second thermoplastic roofing membrane) as a susceptor for the magnetic induction welding in the form of a netting or tape (Column 2, line 33 to Column 3, line 20). Berg does not expressly teach particles. Berg does not teach away from particles. It is well understood by one of ordinary skill in the art the susceptor (incorporated at the time of forming/manufacture and) disposed (embedded) within the thermoplastic and near its joint surface is in the form of particles (metal and metal oxide mixed within the thermoplastic and optionally further wherein particles are well understood by one of ordinary skill in the art as alternative to strips, screens, etc. as evidenced by Heller, Jr. ‘031, Column 1, lines 38-50 and Column 4, lines 46-51) including to also agitate and increase the strength of the bond between joining surfaces by intermixing thereof, presenting cleaner joining surfaces, and producing a mechanical interlocking between the joining surfaces as evidenced by Heller, Jr. ‘547 (Column 1, lines 37-39 and Column 2, line 1 to Column 3, line 16 and Column 6, lines 27-51 and Column 8, lines 25-29 and Column 8, line 6 to Column 9, line 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the metal disposed inside the uppermost edge portion of the first thermoplastic roofing membrane as taught by Berg as modified by Peng ‘960 is metal particles not only as a simple substitution of one known metal susceptor for another to yield predictable results but including to also agitate and increase the strength of the weld between joining surfaces of the roofing membranes by intermixing thereof, presenting cleaner joining surfaces, and producing a mechanical interlocking between the joining surfaces as evidenced by Heller, Jr. ‘547 and optionally further Heller, Jr. ‘031.
As to the limitation in claim 1 of “the concentration of metal particles is highest in an uppermost layer of the stacked multi-layer thermoplastic roofing membrane” and claims 5 and 6, Berg as modified by Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 above teach the metal particles (wherein 1 of Berg is metal particles) are disposed inside the uppermost edge portion of the uppermost layer (outer facing cap 504) of the first thermoplastic roofing membrane (wherein 7 of Berg is the multi-layer of core 502 and outer facing cap 504 taught by Peng ‘960) so that it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention following that taught by Berg as modified by Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 the concentration of metal particles is highest in an uppermost layer of the stacked multi-layer thermoplastic roofing membrane (wherein 1 of Berg is metal particles in outer facing cap 504 of the multi-layer of core 502 and outer facing cap 504 taught by Peng ‘960) and (regarding claim 5) the metal particles are then disposed in a TPO layer, outer facing cap (504), positioned adjacent the second thermoplastic roofing membrane (8 of Berg) to then provide for the magnetic induction welding and further wherein (regarding claim 6) a TPO layer, core (502), that is not positioned adjacent to the second thermoplastic roofing membrane (and not used in the magnetic induction welding) does not have metal therein.
As to the limitation in claim 1 of the first thermoplastic roofing membrane “comprising shredded or granulated recycled post-consumer or post-industrial thermoplastic roofing membrane material having metal particles mixed therein during a recycling process”, claim 1 is directed to a product wherein these limitations are directed to the process of forming the product. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than when a product is claimed in the conventional fashion. Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art (see Berg as modified by Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 above), although as may have been produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product (see MPEP 2113).
Regarding claim 7, the first thermoplastic roofing membrane taught by Berg is at least a facer such as for a roof.
Regarding claim 9, Berg does not expressly teach the second thermoplastic roofing membrane has metal disposed therein. It is well understood by one of ordinary skill in the art to place further roofing membranes (such as overlapping a third thermoplastic roofing membrane with the second thermoplastic roofing membrane) to cover a larger surface as evidenced by Peng ‘960 (Figures 1 and 2 and Paragraphs 0033 and 0035). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the second thermoplastic roofing membrane taught by Berg as modified by Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 has metal disposed therein (in an edge of outer facing cap 504 wherein 8 of Berg is a multi-layer of core 502 and outer facing cap 504 taught by Peng ‘960) to allow for welding another roofing membrane thereto to form a roofing assembly of a width of more than two roofing membranes where it is well understood by one of ordinary skill in the art a roofing assembly comprise a plurality of roofing membranes such as three welded together to form larger roofing assemblies than a single roofing membrane as evidenced by Peng ‘960.
Claims 1, 2, 4-9, and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Berg, Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 as applied to claims 1, 2, and 4-9 above, and further in view of Moreels et al. (U.S. Patent Application Publication 2022/0388009).
Regarding claim 13, Berg as modified by Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 above discloses a method of plateless magnetic induction welding of roofing membranes, comprising: providing a first thermoplastic roofing membrane (length of roofing felt 7 taught by Berg is a multi-layer of core 502 and outer facing cap 504 taught by Peng ‘960) having metal particles (taught by Heller, Jr. ‘547 and optionally further Heller, Jr. ‘031 as metal heat emitting member 1 and disposed inside the edge portion taught by Berg) mixed therein; providing a second thermoplastic roofing membrane (length of roofing felt 8 taught by Berg is a multi-layer of core 502 and outer facing cap 504 taught by Peng ‘960), and placing the second thermoplastic roofing membrane on top of the first thermoplastic roofing membrane; wherein the first and second thermoplastic roofing membranes are stacked multi-layer thermoplastic roofing membrane, and wherein the concentration of metal particles is highest in an uppermost layer (the outer facing cap 504) of the stacked multi-layer thermoplastic roofing membrane; and then applying a magnetic field to the first thermoplastic roofing membrane to heat the metal particles, thereby causing the first and second thermoplastic roofing membranes to be welded together.
As to the limitations in claim 13 of providing the first thermoplastic roofing membrane “comprising shredded or granulated recycled post-consumer or post-industrial thermoplastic roofing membrane material having metal particles mixed therein during a recycling process”, Berg does not expressly teach how the first thermoplastic roofing membrane is formed. It is well understood by one of ordinary skill in the art to form/produce a layer of thermoplastic roofing membrane by including recycled waste thermoplastic roofing membrane introduced back to the production process to form a new layer of thermoplastic roofing membrane (and as may further additionally include fibers, filler, flake, slate, and the like) as a shredded and/or granulated recycled post-consumer and/or post-industrial thermoplastic roofing membrane material during a recycling process as evidenced by Moreels (Paragraphs 0001, 0013, 0014, 0026, 0029, 0038, 0098, and 0127). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention providing the first thermoplastic roofing membrane taught by Berg as modified by Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 comprises providing shredded or granulated recycled post-consumer or post-industrial thermoplastic roofing membrane material (having the metal particles mixed therein at the time of forming/manufacturing the outer facing cap layer of the membrane as taught by Berg, Peng ‘960, and Heller, Jr. ‘547) during a recycling process of the post-consumer or post-industrial thermoplastic roofing membrane material to form new thermoplastic roofing membrane layer(s) (and as may further additionally include fibers, filler, flake, slate, and the like) to recycle waste roofing membrane as is well understood by one of ordinary skill in the art as evidenced by Moreels.
Regarding claim 14, the first thermoplastic roofing membrane taught by Berg as modified by Peng ‘960, Heller, Jr. ‘547, Moreels, and optionally further Heller, Jr. ‘031 is made of thermoplastic polyolefin (TPO) with recycled post-consumer or post-industrial TPO therein.
Regarding claim 15, the metal particles taught by Berg as modified by Peng ‘960, Heller, Jr. ‘547, Moreels, and optionally further Heller, Jr. ‘031 in the first thermoplastic roofing membrane is only disposed at locations in the first thermoplastic roofing membrane that are adjacent to the second thermoplastic roofing membrane (the metal particles as 1 disposed inside the edge portion see Figure 3 of Berg).
Regarding claim 16, the TPO in the first thermoplastic roofing membrane taught by Berg as modified by Peng ‘960, Heller, Jr. ‘547, Moreels, and optionally further Heller, Jr. ‘031 comprises stacked layers of TPO welded together.
Regarding claims 17 and 18, Berg does not expressly teach placing a third thermoplastic roofing membrane on top of the second thermoplastic roofing membrane. It is well understood by one of ordinary skill in the art to place further roofing membranes (such as overlapping a third thermoplastic roofing membrane with the second thermoplastic roofing membrane) to cover a larger surface as evidenced by Peng ‘960 (Figure 2 and Paragraph 0035). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further include in Berg as modified by Peng ‘960, Heller, Jr. ‘547, Moreels, and optionally further Heller, Jr. ‘031 placing a third thermoplastic roofing membrane made of TPO on top of the second thermoplastic roofing membrane with an edge of the third thermoplastic roofing membrane overlapping an edge of the second thermoplastic roofing membrane (the edge has metal disposed therein such as see clam 9 above); and then applying the magnetic field to the overlapping edges of the second and third thermoplastic roofing membranes, thereby welding the overlapping edges of the second and third thermoplastic roofing membranes together and covering a surface larger than is covered by the first and second thermoplastic roofing membranes made of TPO alone as is well understood by one of ordinary skill in the art as evidenced by Peng ‘960.
Regarding claims 1, 2, and 4-9, Berg as modified by Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 above in paragraph 6 teach all of the limitations in claims 1, 2, and 4-9 as set forth therein wherein claims 1, 2, and 4-9 further rejected herein over Berg as modified by Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 and further in view of Moreels as an alternative to that above specifically to teach the product-by-process limitations.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Berg, Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 as applied to claims 1, 2, and 4-9 above, and further in view of Leeber et al. (WO 2025/056285) and/or Nebesnak et al. (U.S. Patent Application Publication 2008/0086975). Additionally, claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Berg, Peng ‘960, Heller, Jr. ‘547, Moreels, and optionally further Heller, Jr. ‘031 as applied to claims 1, 2, 4-9, and 13-18 above, and further in view of Leeber and/or Nebesnak.
Regarding claims 10-12, Berg does not expressly teach a third thermoplastic roofing membrane, the third thermoplastic roofing membrane being in direct contact with the first and second thermoplastic roofing membranes. It is well understood by one of ordinary skill in the art of field seaming roofing membranes to apply a third roofing membrane, the third roofing membrane being in direct contact with and overlapping edges of the first and second roofing membranes, to form a T-joint comprising the lapped first roofing membrane and the second roofing membrane which are both overlapped by a third roofing membrane as evidenced by Leeber (Figure 4b and Page 5, lines 21-25 and Page 23, line 25 to Page 24, line 9 and including similarly disclosed in priority application EP 23196676.3 of Leeber) and/or Nebesnak (Figure 1 and Paragraphs 0003, 0006, and 0013). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention the roofing assembly taught by Berg as modified by Peng ‘960, Heller, Jr. ‘547, and optionally further Heller, Jr. ‘031 and Berg as modified by Peng ‘960, Heller, Jr. ‘547, Moreels, and optionally further Heller, Jr. ‘031 further comprise a third thermoplastic roofing membrane (regarding claim 12) made of TPO on top of and being in direct contact with the first thermoplastic roofing membrane and the second thermoplastic roofing membrane each made of TPO (and including regarding claim 11 edges of the second (to form the lap seam) and third (overlapping both the first thermoplastic roofing membrane and the second thermoplastic roofing membrane) thermoplastic roofing membranes overlap on top of the first thermoplastic roofing membrane, and wherein the edges are configured to form a seam (with the first thermoplastic roofing membrane and including at the intersection of all three membranes) when the metal particles in the first thermoplastic roofing membrane below the seam have been heated by magnetic induction) to form a T-joint as is well understood by one of ordinary skill in the art as evidenced by Leeber and/or Nebesnak.
Response to Arguments
Applicant's arguments filed 6/15/2026 have been fully considered.
In view of the amendments filed on 6/15/2026 the rejections as set forth in the Office action mailed on 6/2/2026 are withdrawn. The claims as amended are fully addressed above.
Applicants argue, “There are numerous advantages of using the presently claimed and illustrated stacked multi-layer thermoplastic membrane rather than a single monolithic block of thermoplastic roofing membrane with metal particles mixed therein. For example, as discussed in Para. [0020] of Published Patent Application 2025/0312975, layers that are farther away from the contact surface (i.e.: layers 10B, 10C and 10D) will have fewer metal particles therein. As such, metal particles are conserved during the recycling process and are only supplied in the layer (i.e.: layer 10A) where they are actually needed. Second, since the separate stacked layers have different properties, it is also possible to design layers having different colors as discussed in Para. [0073] of Published Patent Application 2025/0312975. As such, a top side (10A) may be white and a bottom side (10D) may be black. Should the installer want a white roofing membrane, (s)he leaves side 10A facing upwards. Should the installer instead want a black roofing membrane, (s)he flips the membrane over and leaves side 10D facing upwards. This is simply not possible with a single monolithic roofing membrane as described in the prior art references. Third, since the separate stacked layers have different properties, it is possible to design some layers optimized for strength and some optimized for melt properties (See Para. [0075] of the Published Patent Application). For example, upper layer 10A can be optimized for melting whereas lower layer 10D can be optimized for strength. None of these advantages are possible using the cited monolithic roofing membranes (either with metal particles mixed therein or with metal plates positioned therebetween).”.
This argument is not persuasive wherein a stacked multi-layer thermoplastic roofing membrane is known to have improved properties over conventional roofing membranes including increased resistance to weather or degradation, less prone to retaining dust, soot, or other debris that contacts the membranes’ surfaces, and that may also exhibit enhanced weldability wherein the membrane comprises a core (502) of a conventional or lower grade TPO layer and an outer facing cap (504) of a higher quality TPO layer to maintain the color and/or functionality of the roofing membrane at reduced cost as evidenced by Peng ‘960 (Figures 5A and 5B and Paragraphs 0001-0004, 0014, 0024, 0033, 0048, and 0049). Further, that the metal is only supplied where actually needed is taught by Berg wherein the metal is disposed in the membrane inside the edge portion, one or a few millimeters from its joint surface and positioned adjacent to the second thermoplastic roofing membrane (Figure 3 and Column 3, lines 18-20). It is additionally noted the fact that the inventor may have 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). Further, the claims are not commensurate in scope with arguments directed to layers having different colors as such, a top side may be white and a bottom side may be black so that should the installer want a white roofing membrane, (s)he leaves one side facing upwards and should the installer instead want a black roofing membrane, (s)he flips the membrane over and leaves the other side facing upward as such is not claimed. The claims are not commensurate in scope with arguments directed to since the separate stacked layers have different properties, it is possible to design some layers optimized for strength and some optimized for melt properties for example, the upper layer can be optimized for melting whereas the lower layer can be optimized for strength as such is not claimed.
Conclusion
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/JOHN L GOFF II/Primary Examiner, Art Unit 1746
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