DETAILED 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 .
Election/Restrictions
Applicant’s election of Group II, claims 16-18, in the reply filed on 7/8/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 11 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/8/2026.
Claim Objections
Claims 39, 40 and 46 are objected to because of the following informalities: the recitation “titanium dioxide” is repeated twice in each of the claims. Appropriate correction is required.
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 16-18 and 31-46 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 16 recites the limitation "the membrane" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim. It is not clear if “the membrane” is referring to the thermoplastic membrane or a different membrane. Appropriate correction is required.
Claim 31 recites the limitation "the mineral filler" in line 9. There is insufficient antecedent basis for this limitation in the claim. It is not clear if “the mineral filler” is referring to the first mineral filler or a different mineral filler. Appropriate correction is required.
Claim 31 recites the limitation "the first layer" in lines 9-10. There is insufficient antecedent basis for this limitation in the claim. It is not clear if “the first layer” is referring to the first thermoplastic layer or a different first layer. Appropriate correction is required.
Claim 32 recites the limitation "the mineral filler" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. It is not clear if “the mineral filler” is referring to the first mineral filler or a different mineral filler. Appropriate correction is required.
Claim 35 recites the limitation "the roofing membrane" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 37 recites the limitation "the first filler" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is not clear if “the first filler” is referring to the first mineral filler or a different first filler. Appropriate correction is required.
Claim 43 recites the limitation "first mineral filler" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is not clear if “first mineral filler” is referring to the mineral filler or a different filler. Appropriate correction is required.
Claim 44 recites the limitation "the thermoplastic roofing membrane" in line 2. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 45 recites the limitation "the first filler" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is not clear if “the first filler” is referring to the mineral filler or a different filler. Appropriate correction is required.
Claim 46 recites the limitation "the first mineral filler" in line 1. There is insufficient antecedent basis for this limitation in the claim. It is not clear if “the first mineral filler” is referring to the mineral filler or a different filler. Appropriate correction is required.
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.
Claims 16-18, 31-36, 38-44 and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Hubbard et al. (US 2017/0044770) [hereinafter Hubbard] in view of Welty et al. (US 2,925,831) [hereinafter Welty].
Regarding claims 16-18, 31-34, 36 and 42-44, Hubbard discloses a roofing system (Figs. 1-4) comprising a roof substrate (51), and a thermoplastic roofing membrane (21 and 71) adhesively mated to the roof substrate through an adhesive (60), the thermoplastic roofing membrane (21 and 71) including first and second thermoplastic layers (layers 23 and 25) laminated to each other with a reinforcing fabric (scrim 27) disposed between the first and second thermoplastic layers (paragraph [0015]), wherein the first thermoplastic layer includes a first mineral filler (paragraphs [0016] and [0027]).
Hubbard fails to teach the adhesive being a polar adhesive and mechanically treating the surface of the first thermoplastic layer of the membrane to expose the mineral filler within the membrane, and having the mineral filler within the first layer directly contacting the polar adhesive.
Welty teaches a building material, which can be used in roofing (col. 7, lines 60-62), wherein the back surface of the building material is mechanically treated to expose filler (5) within the material and applying a polar adhesive, such as a polyurethane or a silicon-terminated polymeric adhesive (adhesive 4; col. 3, line 36 to col. 4, line 7), to the mechanically treated surface so as to provide a strong interlocking bond between the material and the substrate (Fig. 1; col. 2, lines 9-16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing membrane in Hubbard to have the back surface of the membrane mechanically treated to expose the mineral filler within the membrane and apply a polar adhesive (polyurethane adhesive or silicon-terminated polymeric adhesive) thereon as suggested by Welty in order to provide a strong interlocking bond between the membrane and the substrate if so desired.
Regarding claim 35, Hubbard discloses a second planar surface of the second thermoplastic layer (layer 23) is a top planar surface of the roofing membrane (21 and 71) and is adapted to be exposed to conditions exterior to the roof substrate (Figs. 1 and 4).
Regarding claim 38, Hubbard discloses the first thermoplastic layer including polymer selected from the group consisting of thermoplastic olefinic polymers, polyolefin blends, propylene-based elastomers, ethylene-based olefinic block copolymers, and/or functionalized polyolefin resins (paragraph [0016]).
Regarding claim 39, Hubbard discloses the second thermoplastic layer including a second mineral filler, wherein the second mineral filler is selected from the group consisting of clays, silicates, titanium dioxide, talc, mica, alumina trihydrate, antimony trioxide, silica, magnesium hydroxide, calcium borate, ore and mixtures thereof (paragraph [0027]).
Regarding claims 40 and 46, Hubbard discloses the first mineral filler is selected from the group consisting of clays, silicates, titanium dioxide, talc, mica, alumina trihydrate, antimony trioxide, silica, magnesium hydroxide, calcium borate ore, calcium carbonate and mixtures thereof (paragraph [0027]).
Regarding claim 41, Hubbard discloses the first thermoplastic layer and/or the second thermoplastic layer including expandable graphite (paragraph [0040]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781
