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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/03/2025 has been entered.
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.
Claims 1-6, 9-11 and 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Knebel (US 2021/0002898).
Regarding Claim 1 and 4-6, Knebel discloses polymeric sealing devices for waterproofing roofing structures (i.e. roofing membrane) (para 0001) comprising waterproof membrane 2 (i.e. first cap sublayer), backing layer 4 (i.e. second cap sublayer), barrier layer 5 (i.e. substrate), and backing layer 6 (i.e. core) (para 0018).
The waterproof membrane (i.e. first cap sublayer) may be a multiply membrane (para 0035) which comprises a thermoplastic polymer including polyolefins (paras 0041-0042).
The backing layer (i.e. second cap sublayer and core) comprises 50-97.5 wt.% thermoplastic polymer including polyolefins (para 0047, 0049) and fire retardant (para 0054). While paragraph 0054 discloses that the auxiliary component or fire retardant is “preferably” not more than 30 wt.%, this is just one preferred embodiment and Knebel does not teach away from other amounts of fire retardant. Given that Knebel discloses the use of 50-97.5 wt.% polymer, if there are no other components present in the backing later, there must necessarily be present 50-2.5 wt.% fire retardant or 2.05 ((2.5*100)/97.52) – 100 parts ((50*100)/50) fire retardant per 100 parts thermoplastic polymer. Alternatively, if there are other components present in the backing layer, there would be present 0 - 60 parts ((30*100)/50) fire retardant per 100 parts thermoplastic polymer. Therefore, whether the backing layer contains components in addition to the thermoplastic polymer and fire retardant or not, the amount of fire retardant overlaps that presently claimed.
Knebel further discloses the backing layer (i.e. second cap sublayer) has a thickness of 2.5-500 microns (para 0055) or approximately 1-20 mils.
Knebel does not disclose the thickness of the waterproofing membrane (i.e. first cap sublayer), however Knebel does disclose that a waterproofing membrane should have enough mechanical strength in order to resist shearing forces but also have high flexibility to enable easy installation on roofing substrates (0004). Therefore, it would have been obvious to one of ordinary skill in the art to use a waterproof membrane with thickness, including that presently claimed, in order to produce a waterproof membrane with the desired balance of mechanical strength and flexibility.
Regarding Claim 2, Knebel discloses all the limitations of the present invention according to Claim 1 above. Knebel further discloses the waterproof membrane (i.e. first cap sublayer) may comprise a flame retardant in an amount of 1-50 wt% (para 0124) which overlaps the claimed amount of flame retardant claimed of 1-10 wt%.
Regarding Claim 3, Knebel discloses all the limitations of the present invention according to Claim 1 above. Knebel further discloses the waterproof membrane (i.e. first cap sublayer) may comprise a flame retardant but it is not required (para 0124).
Regarding Claims 9-10, Knebel discloses all the limitations of the present invention according to Claim 1 above. Knebel further discloses the thermoplastic polymer of the waterproof membrane (i.e. first cap sublayer) may be polypropylene including copolymers (para 0042), and the thermoplastic polymer of the backing layer (i.e. second cap sublayer) may also be polypropylene including copolymers (para 0049).
Regarding Claim 11, Knebel discloses all the limitations of the present invention according to Claim 1 above. Given that Knebel discloses amount of fire retardant as presently claimed, it would be present in an amount sufficient to meet the property in claim 11.
Regarding Claims 13-14, Knebel discloses all the limitations of the present invention according to Claim 1 above. While Knebel does not disclose properties as claimed, given that Knebel discloses roofing membrane as claimed, including polypropylene thermoplastic resin and fire retardants in amounts as claimed, the roofing membrane of Knebel would inherently exhibit properties as claimed.
Regarding Claims 15 and 17-19, Knebel discloses polymeric sealing devices for waterproofing roofing structures (i.e. roofing membrane) (para 0001) comprising waterproof membrane 2 (i.e. first cap sublayer), backing layer 4 (i.e. second cap sublayer), barrier layer 5 (i.e. substrate), and backing layer 6 (i.e. core) (para 0018). The polymeric sealing device is placed on a roofing substrate (para 0168) (i.e. forming a roofing system).
The waterproof membrane (i.e. first cap sublayer) may be a multiply membrane (para 0035) which comprises a thermoplastic polymer including olefins (paras 0041-0042) and may comprise a flame retardant in an amount of 1-50 wt% (para 0124) which overlaps the claimed amount of flame retardant approximately 1-10 wt%.
The backing layer (i.e. second cap sublayer and core) comprises 50-97.5 wt.% thermoplastic polymer including olefins (paras 0047, 0049) and fire retardant (para 0054). While paragraph 0054 discloses that the auxiliary component or fire retardant is “preferably” not more than 30 wt.%, this is just one preferred embodiment and Knebel does not teach away from other amounts of fire retardant. Given that Knebel discloses the use of 50-97.5 wt.% polymer, if there are no other components present in the backing later, there must necessarily be present 50-2.5 wt.% fire retardant or 2.05 ((2.5*100)/97.52) – 100 parts ((50*100)/50) fire retardant per 100 parts thermoplastic polymer. Alternatively, if there are other components present in the backing layer, there would be present 0 - 60 parts ((30*100)/50) fire retardant per 100 parts thermoplastic polymer. Therefore, whether the backing layer contains components in addition to the thermoplastic polymer and fire retardant or not, the amount of fire retardant overlaps that presently claimed.
Knebel further discloses the backing layer (i.e. second cap sublayer) has a thickness of 2.5-500 microns (para 0055) or approximately 1-20 mils.
Knebel does not disclose the thickness of the waterproofing membrane (i.e. first cap sublayer), however Knebel does disclose that a waterproofing membrane should have enough mechanical strength in order to resist shearing forces but also have high flexibility to enable easy installation on roofing substrates (0004). Therefore, it would have been obvious to one of ordinary skill in the art to use a waterproof membrane with thickness, including that presently claimed, in order to produce a waterproof membrane with the desired balance of mechanical strength and flexibility.
Regarding Claim 16, Knebel discloses all the limitations of the present invention according to Claim 15 above. Knebel further discloses the roofing substrate may include cover board (para 0174).
Response to Arguments
Applicant's arguments filed 11/03/2025 have been fully considered but they are not persuasive.
Applicant argues that the waterproofing membrane of Knebel (corresponding to the first cap sublayer) would have to have a minimum thickness of 39 mils, and points to ASTM D6878 for support.
However, ASTM D6878 does not apply to the waterproofing membrane of Knebel. The waterproofing membrane of Knebel is a multiply membrane (para 0035), while ASTM D6878 applies to single-ply roofing membranes (para 1.1). Further, the waterproofing membrane is only part of the sheet roofing disclosed by Knebel, which further includes two backing layers which each have thickness up to 500 microns (20 mils) (para 0055). Therefore the whole composite of Knebel may have a total thickness of more than 40 mils, which meets the minimum thickness of ASTM D6878.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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