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 .
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.
Claims 1-6 - are rejected under 35 U.S.C. 103 as being unpatentable over Huang (2011/0244742) in view of Wang (11,555,312).
1. Huang, fig. 1, teaches a roofing membrane, comprising:
a first (top) layer 1, wherein the first layer comprises:
25 to 50 parts by weight of magnesium hydroxide (filler), and a thermoplastic polyolefin (TPO), para. 6;
a second (middle) layer 1, wherein the second layer comprises a scrim material 2, wherein the scrim material comprises a polyester material, para. 19; and
a third (bottom) layer, wherein the second layer is between the first layer and the third layer, wherein the third layer comprises:
25 to 50 parts by weight of magnesium hydroxide (filler), and a thermoplastic polyolefin (TPO), para. 6.
Huang does not expressly teach the 25 to 50 parts by weight of magnesium hydroxide of the first and second layers is 40 wt. % to 65 wt. %, based on a total weight of the layer. Wang teaches 40 wt. % to 65 wt. % magnesium hydroxide, based on a total weight of the layer, claim 7. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Huang magnesium hydroxide to be 40 wt. % to 65 wt. % magnesium hydroxide, based on a total weight of the layer for excellent fire resistance.
2. Huang in view of Wang teaches the roofing membrane of claim 1, Huang further teaching the scrim material does not include a glass material (polyester is not glass).
3. Huang in view of Wang teaches the roofing membrane of claim 1, Huang further teaching the first layer contacts and at least partially covers the second layer, fig. 1).
4. Huang in view of Wang teaches the roofing membrane of claim 1, Huang further teaching the second layer contacts and at least partially covers the third layer, fig. 1).
5. Huang in view of Wang teaches the roofing membrane of claim 1, Wang further teaching the first layer comprises 42 wt. % to 60 wt. % (claim 7), based on the total weight of the first layer, of magnesium hydroxide.
6. Huang in view of Wang teaches the roofing membrane of claim 1, Wang further teaching the third layer comprises 42 wt. % to 60 wt. % (claim 7), based on the total weight of the first layer, of magnesium hydroxide.
Claims 1-6 - are rejected under 35 U.S.C. 103 as being unpatentable over Hubbard (2019/0136535) in view of Wang.
1. Hubbard, fig. 1, teaches a roofing membrane, comprising:
a first (top) layer 14, wherein the first layer comprises magnesium hydroxide and a thermoplastic polyolefin (TPO), para. 6;
a second (middle) layer 16, wherein the second layer comprises a scrim material, wherein the scrim material comprises a polyester material, para. 19; and
a third (bottom) layer 12, wherein the second layer is between the first layer and the third layer, wherein the third layer comprises magnesium hydroxide and a thermoplastic polyolefin (TPO),
magnesium hydroxide, para. 60, in the TPO.
Hubbard does not expressly teach 40 wt. % to 65 wt. %, based on a total weight of the first and third layer, of the magnesium hydroxide.
Wang teaches 40 wt. % to 65 wt. % magnesium hydroxide, based on a total weight of the layer, claim 7. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Hubbard magnesium hydroxide to be 40 wt. % to 65 wt. % magnesium hydroxide, based on a total weight of the layer for excellent fire resistance.
2. Hubbard in view of Wang teaches the roofing membrane of claim 1, Hubbard further teaching the scrim material does not include a glass material (polyester is not glass).
3. Hubbard in view of Wang teaches the roofing membrane of claim 1, Hubbard further teaching the first layer contacts and at least partially covers the second layer, fig. 1.
4. Hubbard in view of Wang teaches the roofing membrane of claim 1, Hubbard further teaching the second layer contacts and at least partially covers the third layer, fig. 1.
5. Hubbard in view of Wang teaches the roofing membrane of claim 1, Wang further teaching the first layer comprises 42 wt. % to 60 wt. % (claim 7), based on the total weight of the first layer, of magnesium hydroxide.
6. Hubbard in view of Wang teaches the roofing membrane of claim 1, Wang further teaching the third layer comprises 42 wt. % to 60 wt. % (claim 7), based on the total weight of the first layer, of magnesium hydroxide.
Claims 7 and 12-15 - are rejected under 35 U.S.C. 103 as being unpatentable over Hubbard in view of Wang and Martin (9,493,942).
7. Hubbard, fig. 1, teaches a roofing system, comprising:
A roofing substrate 84
a roofing membrane installed on the roofing substrate, the roofing membrane comprising:
a first (top) layer 14, wherein the first layer comprises magnesium hydroxide and a thermoplastic polyolefin (TPO), para. 6;
a second (middle) layer 16, wherein the second layer comprises a scrim material, wherein the scrim material comprises a polyester material, para. 19; and
a third (bottom) layer 12, wherein the second layer is between the first layer and the third layer, wherein the third layer comprises magnesium hydroxide, para. 60, and a thermoplastic polyolefin (TPO).
Hubbard does not expressly teach 40 wt. % to 65 wt. %, based on a total weight of the first and third layer, of the magnesium hydroxide. Wang teaches 40 wt. % to 65 wt. % magnesium hydroxide, based on a total weight of the layer, claim 7. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Hubbard magnesium hydroxide to be 40 wt. % to 65 wt. % magnesium hydroxide, based on a total weight of the layer for excellent fire resistance. Finally, Hubbard does not expressly teach the roofing system passes Broof fire testing. Martin teaches a membrane roofing system passes Broof fire testing, col. 5, lines 19-40. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention the Hubbard roofing system to pass Broof fire testing for excellent flame resistance.
12. Hubbard in view of Wang and Marti teaches the roofing system of claim 7, Hubbard further teaching the roofing membrane contacts the roofing substrate, such that there is no intervening layer between the roofing substrate and the roofing membrane.
13. Hubbard in view of Wang and Marti teaches the roofing system of claim 7, Hubbard further teaching the scrim material does not include a glass material (it is polyester).
14. Hubbard in view of Wang and Martin teaches the roofing system of claim 7, Hubbard further teaching the first layer contacts the second layer, fig. 1.
15. Hubbard in view of Wang and Martin teaches the roofing system of claim 7, Hubbard further teaching the second layer contacts the third layer, fig. 1.
Claims 8-11 - are rejected under 35 U.S.C. 103 as being unpatentable over Hubbard in view of Wang and Martin and in further view of Carl (2025/0042143).
8. The Hubbard insulation substrate is not expressly disclosed as expanded polystyrene insulation, paras. 168-169. Carl teaches an expanded polystyrene insulation substrate, paras. 168-169. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention the Hubbard insulation to be expanded polystyrene insulation to improve thermal performance.
9. Hubbard in view of Wang and Martin and in further view of Carl teaches the roofing system of claim 8, Carl further teaching the expanded polystyrene material has a thickness of at least 0.5” or above, para. 170.
10. The Hubbard insulation substrate is not expressly disclosed as polyisocyanurate insulation. Carl teaches a polyisocyanurate insulation substrate, paras. 168-169. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention the Hubbard insulation to be polyisocyanurate insulation to improve thermal performance.
11. Hubbard in view Wang and Martin and in further view of Carl teaches the roofing system of claim 10, Carl further teaching the polyisocyanurate material has a thickness of at least 0.5” or above, para. 170.
Claims 16, 17, 19, and 20 - are rejected under 35 U.S.C. 103 as being unpatentable over Hubbard in view of Wang, Martin and Agrawal (7,749,598).
16. Hubbard, fig. 1, teaches a roofing system, comprising:
A roofing substrate 84
a roofing membrane installed on the roofing substrate, the roofing membrane comprising:
a first (top) layer 14, wherein the first layer comprises magnesium hydroxide and a thermoplastic polyolefin (TPO), para. 6;
a second (middle) layer 16, wherein the second layer comprises a scrim material, wherein the scrim material comprises a polyester material, para. 19; and
a third (bottom) layer 12, wherein the second layer is between the first layer and the third layer, wherein the third layer comprises magnesium hydroxide, para. 60, and a thermoplastic polyolefin (TPO).
Hubbard does not expressly teach 30 wt. % to 65 wt. %, based on a total weight of the first and third layer, of the magnesium hydroxide. Wang teaches 40 wt. % to 65 wt. % magnesium hydroxide, based on a total weight of the layer, claim 7. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the Hubbard magnesium hydroxide to be 40 wt. % to 65 wt. % magnesium hydroxide, based on a total weight of the layer for excellent fire resistance.
Hubbard does not expressly teach the roofing system passes Broof fire testing. Martin teaches a membrane roofing system passes Broof fire testing, col. 5, lines 19-40. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention the Huang roofing system to pass Broof fire testing for excellent flame resistance.
Hubbard does not teach the roofing membrane installed on a fire-resistant layer, wherein the fire-resistant layer is between the insulation substrate and the membrane. Agrawal teaches a fire-resistant layer, col. 1, lines 58-61. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the roofing membrane to be installed on a fire-resistant layer, wherein the fire-resistant layer is between the insulation substrate and the membrane for enhanced fire resistance.
17. Hubbard in view of Wang, Martin, and Agrawal teaches the roofing system of claim 16, Agrawal further teaching the fire-resistant layer comprises glass fleece, col. 1, line 61.
19. Hubbard in view of Wang, Martin, and Agrawal teaches the roofing system of claim 16, Hubbard further teaching the scrim material does not include a glass material.
20. Hubbard in view of Wang, Martin, and Agrawal teaches the roofing system of claim 16, Hubbard further teaching the first layer contacts the second layer, wherein the second layer contacts the third layer.
Claim 18 - is rejected under 35 U.S.C. 103 as being unpatentable over Hubbard in view of Wang, Martin and Agrawal and in further view of Wenstrup (2021/0285219).
18. The Agrawal fire-resistant fleece layer is not expressly disclosed as having a thickness of 60 mil. Wenstrup teaches a 60-mil thickness fleece, para. 25. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the fire-resistant fleece layer to have a thickness of 60 mil for enhanced fire-resistance.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument, as Wang teaches the claimed magnesium hydroxide range as indicated above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J KENNY whose telephone number is (571)272-9951. The examiner can normally be reached Monday-Friday 8am-5pm.
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.
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/DANIEL J KENNY/Examiner, Art Unit 3633
/BRIAN E GLESSNER/Supervisory Patent Examiner, Art Unit 3633
