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 § 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 Yang (US 2022/0098866 A1) in view of Knebel et al. (US 2021/0002898 A1).
Regarding Claims 1-4, 9-10, 15, and 17, Yang discloses a roofing membrane including a cap layer, a core layer, and a scrim (i.e. substrate) between the cap layer and the core layer (para 0005). The core layer may be formed from thermoplastic polyolefins (para 0138). The core layer of the roofing membrane may be adhered to a roofing substrate to form a roofing system (para 0005).
Yang discloses the cap layer may be formed from thermoplastic polyolefins (para 0138) and may be a coated cap layer (para 0046), but does not disclose the cap layer comprises a first and second sublayer as claimed.
Knebel discloses a sealing device for covering a roof substrate, the sealing device comprising a waterproofing membrane and a backing layer (Abstract, para 0016, Fig 1). Having the backing layer directly attached to the bottom surface of the waterproofing membrane effectively reduces blocking of the waterproofing membrane without negatively effecting the mechanical properties of the waterproofing membrane (paras 0010-0013).
The waterproofing membrane comprises a thermoplastic polymer including polyolefins (paras 0041-0042), and may optionally comprise up to 1-50% flame retardant (para 0124) (i.e. may also comprise no flame retardant).
The backing layer of Knebel has a thickness of 2.5-500 microns (para 0055) or approximately 1-20 mils, and comprises 50-97.5 wt.% thermoplastic polymer including polyolefins (para 0047, 0049) and further comprises 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, and no other components are required in the backing layer, the fire retardant may therefore be present in an amount of 50-2.5 wt.% 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 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).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Yang to incorporate the teachings of Knebel, and produce the roofing membrane and roofing system of Yang, using the sealing device of Knebel as the cap layer of Yang, the sealing device comprising the backing layer (i.e. second cap sublayer) directly attached to the bottom surface of the waterproof membrane (i.e. first cap sublayer). Doing so would reduce blocking of the cap layer without negatively effecting the mechanical properties.
While Yang in view of Knebel does not disclose the thickness of the waterproofing membrane (i.e. first cap sublayer), Knebel does disclose that the 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 (para 0004). Therefore, it would have been obvious to one of ordinary skill in the art to use a waterproofing membrane with thickness, including that presently claimed, in order to produce a waterproof membrane with the desired balance of mechanical strength and flexibility.
Regarding Claims 5 and 18, Yang in view of Knebel discloses all the limitations of the present invention according to Claims 1 and 15 above. Yang further discloses the cap layer is applied to the scrim (i.e. substrate), and no intermediate materials are disclosed or required (para 0125). Therefore the cap layer may directly contact the scrim (i.e. substrate).
Since the cap layer comprises the backing layer (i.e. second cap sublayer) directly attached to the bottom surface of the waterproof membrane (i.e. first cap sublayer), the backing layer (i.e. second cap sublayer) would then directly contact the scrim (i.e. substrate).
Regarding Claims 6 and 19, Yang in view of Knebel discloses all the limitations of the present invention according to Claims 1 and 15 above. Yang further discloses the core layer is applied to the scrim (i.e. substrate), and no intermediate materials are disclosed or required (para 0125). Therefore the core layer may directly contact the scrim (i.e. substrate).
Regarding Claim 11, Yang in view of Knebel discloses all the limitations of the present invention according to Claim 1 above. Given that Yang in view of 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, Yang in view of Knebel discloses all the limitations of the present invention according to Claim 1 above. While Yang in view of Knebel does not disclose properties as claimed, given that Yang in view of Knebel discloses roofing membrane as claimed, including polypropylene thermoplastic resin and fire retardants in amounts as claimed, the roofing membrane of Yang in view of Knebel would inherently exhibit properties as claimed.
Regarding Claim 16, Yang in view of Knebel discloses all the limitations of the present invention according to Claim 15 above. Yang further discloses the roofing substrate may comprise plywood, asphaltic shingles, , steel, aluminum, copper, a plywood substrate, a glass substrate, a cellulosic substrate, a mat, a glass mat, a fiberglass mat, a fabric, an underlayment, a roof deck, a photovoltaic (PV) panel, a modified bitumen (MODBIT) substrate, a roll good, a polyisocyanurate (ISO) foam board), a cover board, a pipe, a base sheet, a chimney, a wax paper, or any combination thereof (para 0075).
Response to Arguments
In light of applicant’s amendments filed 06/04/2026, the rejection of record has been withdrawn. New grounds of rejection are set forth above.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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