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 .
DETAILED ACTION
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 12-15, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by as being unpatentable over Hayes (US 2008/0099064).
** Examiner notes that “as measured using stylus profilometry” does not actually require preforming stylus profilometry to measure the surface roughness. Rather, it only requires that, if a stylus profilometry measuring method is used, the measured surface roughness is 12 microns to 40 microns. Nonetheless, para 46 of Hayes discloses using stylus profilometry. See below. Additionally, the roofing substrate is not part of the membrane. In claim 12, the roofing substrate is not part of the product, and thus the membrane only has to be capable of being installed on the substrate. **
As to claim 12-15, Hayes discloses a roofing (para 41) membrane (encapsulant layer) comprising at least polyurethane and/or a thermoplastic polyolefin (e.g. polyethylene, para 24) and/or epoxy (para 24) and further comprising: a top surface, wherein the top surface (fig 1, top surface of encapsulant layer) is exposed to an external environment (top surface necessarily exposed); a bottom surface (fig 1), wherein the bottom surface is a plasma-treated surface having a surface roughness of 12 to 40 microns as measured using stylus profilometry (para 45-46); and an adhesive layer comprises of polyurethane and/or epoxy (para 68), wherein the adhesive layer directly contacts the bottom surface (para 67-70); wherein, when the roofing membrane is capable of being installed on a roofing substrate (inherent for any roofing membrane), the adhesive layer directly contacts a roofing substrate; wherein the roofing membrane has a thickness of 1 mil to 100 mils (para 8-9, 20-39, 43-46, 67-72). Specifically, para 67 says the adhesive is on the modified surface of the roofing membrane (encapsulant layer). Additionally, and/or alternatively, para 67 discloses application of the adhesive to the solar cell layers. Because the solar cell layers are then laminated to the modified surface of the roofing membrane, an adhesive layer will be formed on the modified surface of the roofing membrane.
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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) 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayes in view of Shiao et al. (US 2012/0124921).
As to claim 16, Hayes discloses a roofing membrane, wherein the roofing membrane has: a top surface, wherein the top surface is exposed to an external environment; a bottom surface, wherein the bottom surface is a plasma-treated surface having a surface roughness of 12 to 40 microns as measured using stylus profilometry; wherein the roofing membrane has a thickness of 1 mil to 100 mils; and an adhesive layer, wherein the adhesive layer directly contacts the bottom surface of the roofing membrane (see citations with detailed in the claim 12 rejection above).
Hayes does not disclose a roofing substrate wherein the adhesive layer directly contacts said roofing substrate.
Shiao discloses a roofing system comprising a roofing membrane 110/310/410 with an adhesive layer, said adhesive layer 130/330/430 (para 49-50) directly contacting the roofing substrate 120/320/420 (para 39-66, fig 1-4). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Hayes such that the roofing system comprising a roofing substrate wherein the adhesive layer directly contacts said roofing substrate as taught by Shiao above as such produces a strong bond capable of withstanding the humidity-freeze cycle test, thermal cycle test, and damp-heat test requirements (para 50).
As to claim 17, Hayes discloses the roofing membrane comprising at least polyurethane and/or a thermoplastic polyolefin (e.g. polyethylene, para 24) and/or epoxy (para 24). Shiao discloses the membrane can be a thermoplastic polyolefin (para 41).
As to claim 18-19, Shiao discloses the roofing substrate comprises at least a thermoplastic polyolefin and/or silicone (para 48).
As to claim 20, both Shiao and Hayes discloses the membrane is a thermoplastic polyolefin (see claim 17 above) and Shiao discloses the roofing substrate comprises a thermoplastic polyolefin (para 48).
As to claim 21, Hayes discloses the adhesive can be polyurethane (para 68) and Shiao discloses and EVA and/or polyolefin adhesive (para 56).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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