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 .
Withdrawn Rejections
Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn due to Applicant’s amendments and/or arguments in the response dated September 11, 2026. However, new rejections may have been made using the same prior art if still applicable to the newly presented amendments and/or arguments.
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 1 , 2, 4, 7, 9, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (USPGPub 2023/0140264 A1) in view of Engelhard (USPGPub 2013/0316113 A1).
Wei et al. disclose a peel and stick temporary roofing membrane assembly (Figures; Abstract), comprising: an air/vapor barrier membrane (Figure 1, #2); an top adhesive layer on top of the air/vapor barrier membrane (Figure 1, #3); a top release layer on the top adhesive layer (Figure 1, #5); a bottom adhesive layer underneath the air/vapor barrier membrane (Figure 1, #4); and a bottom release layer underneath the bottom adhesive layer (Figure 1, #6) as in claim 1. With respect to claim 2, the air/vapor barrier membrane is made of EPDM or TPO (Paragraphs 0035 and 0041). Regarding claim 4, each of the top and bottom release layers are split into sections side-by-side one another (Paragraph 0153). Wei et al. further disclose a roofing assembly (Figures; Abstract) comprising: a peel and stick temporary roofing membrane assembly (Figures; Abstract) comprising: an air/vapor barrier membrane (Figure 1, #2); an top adhesive layer on top of the air/vapor barrier membrane (Figure 1, #3); a top release layer on the top adhesive layer (Figure 1, #5); a bottom adhesive layer underneath the air/vapor barrier membrane (Figure 1, #4), and a bottom release layer underneath the bottom adhesive layer (Figure 1, #6); an insulation board secured to the top adhesive layer after the top release layer has been removed (Paragraphs 0186 – 0192); and a roofing membrane secured on top of the insulation board (Paragraphs 0186 – 0192; Figure 3), such that the insulation board is installed directly on top of the peel and stick temporary roofing membrane, and that the roofing membrane is installed directly on top of the insulation board (Paragraphs 0186 – 0192; Figure 3) as in claim 7. However, Wei et al. fail to disclose the top release layer comprises an ultraviolet stable material, the ultraviolet stable material is an antioxidant, ultraviolet a absorber, a light stabilizer additive, or a light effective pigment, and the insulation board and the roofing membrane are installed 6 to 10 months or 8 to 10 months after the peel and stick temporary roofing membrane has been installed on top of a roof.
Engelhard teaches a release layer (Abstract) comprising a ultraviolet stable material, and the ultraviolet stable material is an antioxidant, ultraviolet absorber, a light stabilizer additive, or a light effective pigment (Paragraph 0055) for the purpose of giving the release liner the desired properties (Paragraph 0055).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the UV stable material is an antioxidant, UV absorber, a light stabilizer additive, or a light effective pigment in Wei et al. in order to give the release liner the desired properties as taught by Engelhard.
With regard to the limitations of “the roofing membrane are installed 6 to 10 months or 8 to 10 months after the peel and stick temporary roofing membrane has been installed on top of a roof”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Wei et al. clearly disclose a roofing membrane secured on top of the insulation board (Paragraphs 0186 – 0192; Figure 3) with the removal of the top release layer. Engelhard teaches it is known to have a release layer (Abstract) comprising a ultraviolet stable material, and the ultraviolet stable material is an antioxidant, ultraviolet absorber, a light stabilizer additive, or a light effective pigment (Paragraph 0055). Therefore, the combined structure of Wei et al. and Engelhard are capable of performing the intended use.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (USPGPub 2023/0140264 A1) in view of Engelhard (USPGPub 2013/0316113 A1) as applied to claim 1 above, and further in view of Martin (EP 0 317 337 A).
Wei et al., as modified with Engelhard, disclose the claimed invention except for the top of the air/vapor barrier membrane is darker than the bottom of the air/vapor barrier membrane.
Martin teaches a roofing membrane assembly (Figures; Abstract), wherein the top of the air/vapor barrier membrane is darker than the bottom of the air/vapor barrier membrane (Page 2, lines 26 – 30; Page 3, lines 21 – 24) for the purpose of effecting the temperature of the substrate (Page 2, lines 47 – 52).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a colored air/vapor barrier in the modified Wei et al. in order to effect the temperature of the substrate as taught by Martin.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Wei et al. (USPGPub 2023/0140264 A1) in view of Engelhard (USPGPub 2013/0316113 A1) as applied to claim 4 above, and further in view of Hubbard et al. (WO 2007/024787 A2).
Wei et al., as modified with Engelhard, disclose the claimed invention except for edges of the side-by-side sections overlap one another.
Hubbard et al. teach a roofing membrane assembly (Page 15, lines 10 – 16) having a release layer where edges of the side-by-side sections overlap one another (Figure 1, #30 and 32; Page 10, line 13 to Page 11, line 10) for the purpose of controlling the application of the assembly to a surface (Page 10, line 13 to Page 11, line 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a release layer where edges of the side-by-side sections overlap one another in the modified Wei et al. in order to control the application of the assembly to a surface as taught by Hubbard et al.
Response to Arguments
Applicant's arguments filed September 11, 2026 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Wei et al. clearly disclose a roofing membrane secured on top of the insulation board (Paragraphs 0186 – 0192; Figure 3) with the removal of the top release layer. Engelhard teaches it is known to have a release layer (Abstract) comprising a ultraviolet stable material, and the ultraviolet stable material is an antioxidant, ultraviolet absorber, a light stabilizer additive, or a light effective pigment (Paragraph 0055). Therefore, the combined structure of Wei et al. and Engelhard are capable of performing the intended use.
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 Patricia L Nordmeyer whose telephone number is (571)272-1496. The examiner can normally be reached 10am - 6:30pm EST, Monday - Friday.
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 September 25, 2026
