DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Receipt and consideration of Applicant’s amended claim set and Applicant’s arguments/remarks submitted on December 18, 2025 are acknowledged.
All rejections/objections not explicitly maintained in the instant office action have been withdrawn per Applicant’s claim amendments and/or persuasive arguments. Applicant’s claim amendments have necessitated new grounds of rejections set forth below.
Status of the Claims
Claims 1, 3-15, and 17-23 are pending. Claims 2 and 16 are cancelled. Claim 23 is newly added. Claims 19 and 20 are withdrawn. Claims 1, 3-15, 17, 18, and 21-23 are under consideration in this action.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-18 and 21) in the reply filed on May 14, 2024 is acknowledged.
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.
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.
Claims 1, 3-10, 14, 15, 17, 18, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (Hong) (US2004/0258835 A1; of record), Taniguchi et al. (Taniguchi) (US 2007/0110825 A1; of record), and Teng (US 2006/0194023 A1; of record).
With regards to Claim 1, Hong discloses algae-resistant roofing granules having algaecide leaching rates that can be easily controlled, and asphalt shingle roofing products incorporating such algae-resistant roofing granules (para.0012). Hong discloses employing mineral particles to form algae-resistant roofing granules. These mineral particles are aggregated to provide suitably sized roofing granules. In particular, the mineral particles are treated with a suitable binder, and the mixture of mineral particle sand binder is processed using a suitable mechanical technique, such as extrusion, to form porous granule bodies that are of a size suitable for use in manufacturing asphalt roofing shingles. The granule bodies can be fired or sintered to provide physical strength (para.0013-0014).
Hong’s process comprises providing at least one inorganic algaecide within the base particle to form algaecide-bearing particles (reading on the algaecidal composition making up a body of the granule) (para.0045).
With regards to Claims 4 and 5, the at least one algaecide is preferably selected from the group consisting of copper materials, zinc materials, and mixtures thereof (para.0048).
With regards to Claim 10, in the initial step of the process, porous base particles are provided. Particle synthesis allows properties of the algae-resistant granules to be tailored, such as porosity and distribution of the algaecide. The base particles are preferably prepared by mixing mineral particles with a suitable binder, such as a binder comprising an aluminosilicate material, such as clay (a heat reactive aluminosilicate material) (para.0039, 0041, 0043, 0045).
With regards to Claims 14 and 15, Hong discloses that their process comprises providing at least one inorganic algaecide on or within the base particle to form algaecide-bearing particles. Preferably, in an embodiment, the at least one inorganic algaecide is mixed with the binder and the mineral particles before the mixture if formed into the base particles. In the alternative, or in addition, the formed base particles can be coated with a mixture of algaecide and binder (para.0045). The aforementioned coating when an additional component reads on the algaecidal composition being disposed at an outer surface of the granule in addition to making up the body of the granules and the granule further comprising a top coat disposed at an outer surface of the granule with the algaecidal composition disposed beneath the top coat (i.e., in the body of the granule).
With regards to Claim 21, the algae-resistant granules can be employed in the manufacture of algae-resistant roofing products, such as algae-resistant asphalt shingles, using conventional production processes. Typically, bituminous roofing products are sheet goods that include a non-woven base or scrim formed of a fibrous material. The base is coating with one or more layers of a bituminous material such as asphalt to provide water and weather resistance to the roofing product. One side of the rooting product is typically coated with mineral granules to provide durability, reflect heat and solar radiation, and to protect the bituminous binder from environmental degradation. The algae-resistant granules (reading on a first plurality of algaecidal roofing granules) can be mixed with conventional roofing granules (reading on a second plurality of roofing granules), and the granule mixture can be embedded in the surface of such bituminous roofing product using conventional methods (para.0059).
Hong discloses that the algaecide resistance properties of the algaecide resistant roofing granules of the present invention are determined by a number of factors, including the porosity of the roofing granules, the nature and amount(s) of the algaecide employed, and the spatial distribution of the algaecide within the granules (para.0049).
Hong’s process advantageously permits the algae resistance of the shingles employing the algae-resistant granules to be tailored to specific local conditions. For example, in geographic areas encumbered with excessive moisture favoring rapid algae growth, the granules can be structure to release the relatively high levels of algaecide required to effectively inhibit algae growth under these conditions. Conversely, where algae growth is less favored by local conditions, the granules can be structured to release the lower levels of algaecide effective under these conditions (para.0051).
The algae resistance properties of the granule bodies can also be varied through control of the porosity conferred by the binder employed. For example, the binder porosity can be controlled by adjusting the ratio of the mineral particles and the aluminosilicate employed, as well as the heat treatment applied. Also, porosity can be induced by using an additive that burns off or produces gaseous products that are subsequently entrained in the structure of the granule bodies (para.0051).
The porosity of the granule bodies can also be controlled by selection of the shape and particle size distribution of the mineral particles provided. For example, by selecting mineral particles known to pack poorly, the porosity can be increased (para.0052).
By adjusting the amount and selecting the type of algaecide used, and by adjusting the porosity of the granules, a variety of different algaecide leach rates and leaching profiles can be obtained (para.0053-0054).
Hong does not appear to explicitly disclose wherein the algaecidal composition comprises an ion-exchanged zeolite, wherein the ion-exchanged zeolite comprises algaecidal ions. Taniguchi and Teng are relied upon for this disclosure. Their teachings are set forth herein below.
Taniguchi discloses antimicrobial zeolite and an antimicrobial composition containing the zeolite, and more specifically, to antimicrobial zeolite and an antimicrobial composition and, in particular, an antimicrobial resin composition, which hardly undergo any color change with the elapse of time (para.0001). Taniguchi discloses their disclosed antimicrobial zeolite is an excellent antimicrobial agent since it is certainly excellent in its durability of antimicrobial properties observed when allowing it to stand in water or in the air and it does not cause any deterioration even when incorporated into a resin through kneading operations (para.0003). The antimicrobial zeolite disclosed does not suffer from any problem such that it may undergo any extreme color change under the usual use conditions, but it sometimes undergoes a color change with time under severe conditions, for instance, when it is exposed to intensive ultraviolet light rays over a long period of time. The zeolite does not lose its antimicrobial properties peculiar thereto even when it undergoes such a color change, but when adding the antimicrobial zeolite to a product, the latter may often result in discoloration and commercial value of the product may sometimes significantly be damaged depending on the kinds of the product (para.0004).
Taniguchi discloses their antimicrobial zeolite can be used in wide variety of goods even in those which have been hardly used in combination with the conventional antimicrobial zeolite because of the color change with the elapse of time (para.0013). Examples of suitable zeolite for use in their invention include zeolite A, zeolite X, and zeolite Y (para.0016).
The antimicrobial zeolite comprises one of the foregoing zeolite materials whose ion-exchangeable ions such as sodium ions, calcium ions, potassium ions, magnesium ions, and/or iron ions are partially or wholly replaced with hydrogen ions and silver ions. The antimicrobial zeolite may likewise comprise, in addition to silver ions, other antimicrobial metal ions, preferably copper or zinc ions (para.0017). The foregoing silver ions and other antimicrobial metal ions are preferably included in the antimicrobial zeolite in an amount ranging from 0.1-15% by mass from the viewpoint of the antimicrobial characteristic properties thereof. More preferably, the antimicrobial zeolite comprises silver ions in an amount ranging from 0.1-14.9% by mass and copper or zinc ions in an amount ranging from 0.1 to 8% by mass (para.0018).
To prepare the antimicrobial zeolite, a suitable method includes bringing a raw zeolite material into contact with a mixed solution containing hydrogen ions, silver ions, and other antimicrobial ions to thus exchange ions present in the zeolite with the hydrogen ions, silver ions, and other antimicrobial ions (para.0022). In this method, the zeolite is brought into close contact with the mixed solution prepared in advance to thus exchange a part or the whole of the ion-exchangeable ions present in the zeolite with the aforementioned ions (para.0023). After the completion of the ion-exchange treatment, the resulting zeolite (an ion-exchanged zeolite), is sufficiently washed with water and then dried (par.0030).
The contents of hydrogen and antimicrobial metal ions present in the resulting antimicrobial zeolite can be controlled by appropriately adjusting the concentrations of every ion to be incorporated into the foregoing mixed aqueous solution. When preparing antimicrobial zeolite further comprising copper ions and zinc ions, the copper and zinc ion concentrations in the forgoing mixed aqueous solutions are adjusted to the ranges of from 0.1 to 8.5 M/L for the copper ions and from 0.15 to 1.2 M/L for the zinc ions. As a result, the antimicrobial zeolite thus prepared appropriately has a copper ion content ranging from 0.1 to 8% by mass and a zinc ion content ranging from 0.1 to 8% by mass (para.0027-0028). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 [R-5].
Taniguchi also discloses an antimicrobial composition and, in particular, an antimicrobial resin composition comprising the foregoing antimicrobial zeolite (para.0033). The antimicrobial resin composition can be prepared by, for instance, directly incorporating the foregoing antimicrobial zeolite into the resin through kneading or coating the surface of the zeolite with such a resin. The content of the antimicrobial zeolite in the resin composition suitable ranges from 0.05-80% by mass, and preferably 0.1 to 80% by mass to impart antimicrobial/antifungal/antialgal activities to the resin (para.0034).
Taniguchi discloses that the foregoing antimicrobial zeolite and antimicrobial composition can be used in a variety of fields (para.0035). In the field of construction, the foregoing antimicrobial zeolite and antimicrobial composition can be used by mixing them with, for instance, joint materials, wall materials or tiles; or coating the surface of these materials with them to thus impart antimicrobial/antifungal/antialgal activities to these materials (para.0038). The antimicrobial zeolite can be used not only in the foregoing fields, but also any field which requires the prevention and control of the generation and proliferation of, for instance, general bacteria, fungi, yeast, and algae, and requires the extinction thereof (para.0040).
Teng discloses that in certain climates, particularly warm climates with high humidity, algae, fungus, and other types of microorganisms often grow on the exposed surfaces of roofing material. This algae and fungus growth is particularly prevalent in the southeastern Gulf Coast area of the U.S., and has become increasingly prevalent in the northern and Midwest regions of the U.S. This algae and/or fungal growth leads to a discoloring of the exposed roofing material surfaces. The discoloration begins as dark spots of algae/fungus that develop into dark streaks and eventually cover a majority of the root. The discoloration is particularly noticeable and unsightly on white or light-colored roofing materials, which are often used in warm and humid climates because of their aesthetic and sun reflectivity properties (para.0003).
To combat algae and/or fungus growth, it is generally known to include metallic granules on the surface of the roofing material. The metallic granules are generally either composed primarily of or coated with a coating containing copper and/or other metals such as zinc. When wetted by rain or otherwise, the copper and zinc compounds leach out from the roofing material and act as algaecides and/or fungicides to inhibit the growth of the algae and/or fungus (par.0004).
With regards to the inclusion of ion-exchanged zeolite as recited in Claims 1, 3, 8, and 21, as discussed above, Hong discloses algae-resistant roofing granules having algaecide leaching rates that can be easily controlled, and asphalt shingle roofing products incorporating such algae-resistant roofing granules. In light of the advantages provided by Taniguchi’s antimicrobial zeolite, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Hong and Taniguchi and use Taniguchi’s antimicrobial zeolite as among the at least one inorganic algaecide in Hong’s roofing granules (e.g., in the granule/core and in the coating layer(s)). One of ordinary skill in the art would have been motivated to do so as Teng discloses that roofing materials are subject to algal, fungal, and other microorganism growth, leading to unsightly discoloration, and Taniguchi discloses that their antimicrobial zeolites have excellent antimicrobial activity against, bacteria, fungi, yeast, and algae, and durability of antimicrobial activity. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Hong discloses the inclusion of at least one inorganic algaecide and that the at least one algaecide is preferably selected from the group consisting of copper materials, zinc materials, and mixtures thereof, Taniguchi discloses that their antimicrobial zeolite, which may comprise copper or zinc ions, may be used in a variety of fields including construction, and Teng discloses that copper and zinc are known to be used in roofing material to combat algae and fungal growth.
Further, regarding the percentage of cationic sites of the zeolite at which the algaecidal ions (copper and zinc ions) are disposed (Claims 6 and 7), it would have been obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results. As Taniguchi discloses that the cations may be partially or fully replaced, and that the content of the antimicrobial ions may be appropriately adjusted, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to engage in routine experimentation to determine the optimal concentrations of copper and zinc ions to replace the cations to obtain the desired or optimal antimicrobial activity based on art recognized factors such as the extent of the microbial activity, type of microbial activity, the susceptibility to microbial activity, and whether the purpose is preventative or control of generation and proliferation. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
With regards to the amount Taniguchi’s ion-exchanged zeolites to add to Hong’s roofing granule (Claim 9), as discussed above, Taniguchi discloses that when their antimicrobial zeolites are added to an antimicrobial composition, the composition may comprise from 0.05-80% by mass to impart antimicrobial/antifungal/antialgal activities to the composition. In light of this disclosure, it would have been obvious to one of ordinary skill in the art to try Taniguchi’s disclosed amounts when adding the antimicrobial zeolites to Hong’s roofing granule as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. Note: MPEP 2141 [R-6] KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05 [R-5]. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results. In the instant case, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to engage in routine experimentation to determine the optimal amount within the prior art disclosed range of antimicrobial zeolite to add in order to obtain the desired or optimal antimicrobial activity based on art recognized factors such as the extent of the microbial activity, type of microbial activity, the susceptibility to microbial activity, and whether the purpose is preventative or control of generation and proliferation. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
With regards to the property recited in Claims 17 and 18, in light of the instant specification (e.g., P.G. Pub., para.0107), it appears that the leaching behavior is determined by whether or not the granules were coated. The instant specification disclose that “[m]uch more copper was leached the first day from the uncoated Cu-exchanged zeolite sample, and there was a higher total amount of leaching as well. The surface coated Cu-exchanged zeolite granule was demonstrated to slow the leaching rate.” (P.G. Pub., para.0107). As discussed above, the combined teachings of the cited prior art references is fairly suggestive of embodiments of a roofing granule where Taniguchi’s algaecidal ion-exchanged zeolite granule are placed on the outer layer of the granule (uncoated). Thus, absent evidence to the contrary, the roofing granule of the combined teachings of the cited prior art references would be expected to exhibit the higher leaching behavior, reading on the instant claims 17 and 18.
With regards to the instant Claim 21, as discussed above, Hong discloses that the algae-resistant granules can be employed in the manufacture of algae-resistant roofing products, such as algae-resistant asphalt shingles. In particular, the algae-resistant granules can be mixed with conventional roofing granules, and the granule mixture can be embedded in the surface of the roofing product. With regards to the amount of algae-resistant granules and conventional roofing granules in the final roofing product, it would have been obvious to one of ordinary skill in the art at the time of the invention to engage in routine experimentation to determine optimal or workable ranges that produce expected results. Optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ and reasonably would expect success. It would have been customary for an artisan of ordinary skill to determine the optimal amount of each ingredient to add in order to best achieve the desired results. In the instant case, one of ordinary skill in the art would have found it prima facie obvious and would have been motivated to engage in routine experimentation to determine the optimal amounts of algae-resistant roofing granules and conventional roofing granules to employ in the manufacture of the algae-resistant shingles in order to obtain the desired or optimal antimicrobial activity for the shingles based on art recognized factors such as the environment and its susceptibility to microbial activity and whether the purpose is preventative or control of generation and proliferation. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233 (CCPA 1955).
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Response to Arguments
Applicant's arguments filed December 18, 2025 have been fully considered but they are not persuasive.
(1) Applicant argues Hong repeatedly teaches the use of metal oxides as the preferred algaecides with no mention or suggestion of using zeolites as carriers for algaecidal ions. Applicant argues that the process steps, firing conditions, and binder systems in Hong are optimized for metal oxides, not for ion-exchanged zeolites.
Applicant further argues that the references address different problems in different contexts: Hong and Teng address algae resistance in roofing using metal oxides or metallic particles, while Taniguchi addresses antimicrobial action and color stability in resins.
With regards to Applicant’s argument (1), the traversal argument is not found persuasive. The prior art disclosure is not limited only to the preferred or exemplified embodiments. Moreover, Hong does not limit their disclosure to only metal oxides. Hong explicitly discloses the inclusion of at least one algaecide, noting that the at least one algaecide is preferably selected from the consisting of copper materials, zinc materials, and mixtures thereof (para.0048). Hong discloses various types of copper and zinc materials (e.g., cupric acetate, cupric chloride, cupric nitrate, cupric sulfate, cuprous stannate, etc.), and does not limit the algaecide to metal oxides. There appears to be no evidence provided that Hong precludes the algaecide from being zeolites. As discussed above in detail, Taniguchi’s antimicrobial zeolites comprise copper ions (thus a copper material), and Taniguchi discloses that their antimicrobial zeolite provide antialgal activities to the material they are incorporated into (thus an algaecide).
The teachings of Taniguchi are not limited to only using the antimicrobial zeolite in resins. While Taniguchi discloses antimicrobial resin compositions comprising the antimicrobial zeolite, Taniguchi’s disclosure is also directed to the antimicrobial zeolite itself (para.0006-0007). Taniguchi discloses that their antimicrobial zeolite and antimicrobial composition can be used in a variety of fields (para.0035). Taniguchi discloses that the antimicrobial zeolite can be used in any field which requires the prevention and control of the generation and proliferation of general bacteria, fungi, yeast, and algae and requires the extinction thereof (para.0038, 0040). For example, Taniguchi discloses that their antimicrobial zeolite are suitable for application in the field of construction to impart antimicrobial/antifungal/antialgal activities to construction material (para.0038). Roofing granules are within the field of construction, and Teng discloses that it would be beneficial to be able to control the growth of algae, fungi, and other types of microorganisms on roofing material, particularly in warm climates with high humidity.
Furthermore, as discussed above, Taniguchi discloses that their antimicrobial zeolite is excellent when allowing it to stand in water or in air, and does not undergo color change with time under severe conditions, e.g., when it is exposed to intensive UV light rays over a long period of time, and even if does undergo such a color change, does not lose its antimicrobial properties. One of ordinary skill in the art would have found these properties advantageous for materials used in roofing granules and shingles as such roofing materials are known to have to stand in water and air and be exposed to intensive UV light rays over a long period of time.
(2) Applicant argues the process parameters, binder compositions, and manufacturing steps in Hong and Teng are not compatible with the requirements for ion-exchanged zeolites as described by Taniguchi. Applicant argues there is no guidance in the references on how to adapt Hong or Teng’s process to accommodate zeolites, nor on how to achieve controlled leaching using zeolites carriers in roofing granules.
Applicant further argues that the rationale for combining references relies on knowledge of the Applicant’s invention to piece together disparate elements from unrelated references.
With regards to Applicant’s argument (2), the traversal argument is not found persuasive. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In the present case, as discussed above, Hong discloses algae-resistant roofing granules having algaecide leaching rates that can be easily controlled, and asphalt shingle roofing products incorporating such algae-resistant roofing granules. Hong discloses the inclusion of at least one inorganic algaecide in their roofing granules and that the at least one algaecide is preferably selected from the group consisting of copper materials, zinc materials, and mixtures thereof. In light of the advantages provided by Taniguchi’s antimicrobial zeolite, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to combine the teachings of Hong and Taniguchi and use Taniguchi’s antimicrobial zeolite as among the at least one inorganic algaecide in Hong’s roofing granules (e.g., in the granule/core and in the coating layer(s)). One of ordinary skill in the art would have been motivated to do so as Teng discloses that roofing materials are subject to algal, fungal, and other microorganism growth, leading to unsightly discoloration, and Taniguchi discloses that their antimicrobial zeolites, which comprise copper and/or zinc ions, have excellent antimicrobial activity against, bacteria, fungi, yeast, and algae, and durability of antimicrobial activity. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Hong discloses the inclusion of at least one inorganic algaecide in their roofing granules and that the at least one algaecide is preferably selected from the group consisting of copper materials, zinc materials, and mixtures thereof, Taniguchi discloses that their antimicrobial zeolite, which may comprise copper or zinc ions, may be used in a variety of fields including construction, and Teng discloses that copper and zinc are known to be used in roofing material to combat algae and fungal growth.
With regards to Applicant’s arguments regarding particular process parameters, binder compositions, and manufacturing steps in Hong and Teng not being compatible with the requires for Taniguchi’s ion-exchanged zeolites, Applicant does not appear to provide specific experimental evidence or point to particular disclosures in the cited prior art to support the assertion of incompatibility. Furthermore, there does not appear to be a disclosure in the cited prior art that would preclude the combination of the cited prior art references as discussed above. Moreover, it is noted that the standard for the rejection under 35 U.S.C. 103 is a reasonable expectation of success, not an absolute expectation of success.
(3) Applicant argues there is evidence of non-obvious benefits established in the examples section of the present application. Applicant points to Example 5 to demonstrate that algaecidal roofing granules according to the claimed invention perform much better to conventional algaecidal granules, such as those disclosed in Hong, at comparable loadings of copper on roofing shingles.
Applicant further argues that the algaecidal roofing granules of the claimed invention perform much better to algaecidal granules that are not zeolite based, such as those disclosed in Hong, at significantly reduced loadings of copper on roofing shingles. Applicant argues that neither Hong, Taniguchi, nor Teng predict such an increase in performance by integrating and algaecidal composition including an ion-exchanged zeolite with algaecidal ions into the body of roofing granules as recited in the claims.
With regards to Applicant’s argument (3), the traversal argument is not found persuasive. Example 5 in Applicant’s Specification appears to evaluate a comparison between shingle samples prepared with three different loadings of copper ion-exchanged zeolite granules, 2%, 5%, and 10%, relative to the total mass of granules; a conventional algae-resistant shingle having a loading of conventional copper algaecidal granules of 20 wt.%; and a conventional non-algae resistant shingle with no algaecidal granules. Applicant disclose that the 10 wt.% and 5 wt.% inventive shingles showed very little, if any, signs of increased algae growth near the inoculation site, whereas the 2 wt.% inventive shingles and 20 wt.% conventional shingles exhibiting similar algae growth, both showing much more algae coverage than the 10 wt.% and 5 wt.% inventive shingles. Applicant thus concludes that the algaecidal roofing granules of the claimed invention perform much better than the non-zeolite based algaecidal granules (e.g., those disclosed in Hong).
Applicant’s traversal argument is not found persuasive because without more information on the specific composition of each roofing granule tested, it cannot be concluded that the better algaecidal performance by the 5 wt.% and 10 wt.% inventive shingles is due to the incorporation of copper ion-exchanged zeolite into the body of the roofing granules. For example, it is unclear from the disclosure of Example 5 if the copper ion-exchanged zeolite was incorporated into the body of the granule, into the coating on the granule, or both. It is unclear what the composition of the conventional copper algaecidal granules are (e.g., is the material in the copper algaecidal granules metallic copper, cuprous oxide, one of the copper compounds recited in Hong?), and where in the granule the copper material is (e.g., in the body and/or coating?). Thus, it cannot be determined if the comparison of the granules being used in the shingles is only comparing the algaecidal material used in the granule, or if the placement of the algaecidal material in the granule is also impacting the algaecidal performance (e.g., rate of release).
Additionally, there appears to be no information on how much copper ion-exchanged zeolite was in the copper ion-exchanged zeolite granules loaded onto the shingles, and if the amount of ion-exchanged zeolite in the ion-exchanged granules is comparable to the amount of copper algaecide in the conventional granules. Thus, it cannot be determined if the comparison of the granules being used in the shingles is only comparing the algaecidal material used in the granule, or if the concentration of algaecidal material loaded into the granules themselves is also impacting the algaecidal performance, and if the improved is performance is due to the actions of the specific antimicrobial agent being used in the granule or the concentration of the antimicrobial agent loaded into the granule.
Furthermore, it is noted that the data in Example 5 is not commensurate in scope with the claims. For example, Example 5 is only looking at copper materials, whereas claim 1, for example, does not limit the algaecidal ions to copper ions. From the data shown in Example 5, it cannot be concluded that the similar performance would be seen when using other algaecidal ions, e.g., zinc or ammonium ions (recited in claim 5).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (Hong) (US2004/0258835 A1; of record), Taniguchi et al. (Taniguchi) (US 2007/0110825 A1; of record), and Teng (US 2006/0194023 A1; of record) as applied to Claims 1, 3-10, 14, 15, 17, 18, 21, and 22, further in view of Shiao et al. (Shiao) (US 2010/0151199 A1; of record).
The combined teachings of Hong, Taniguchi, and Teng and the motivation for their combination as they apply to Claims 1, 3-10, 14, 15, 17, 18, 21, and 22 are set forth above and incorporated herein.
The combined teachings of Hong, Taniguchi, and Teng do not appear to explicitly disclose wherein the binder is a fired product of one or more binder precursors including alkali silicate. Shiao is relied upon for this disclosure. The teachings of Shiao are set forth herein below.
Shiao discloses roofing granules that include a core having an average ultraviolet transmission of greater than 60% and an average near infrared reflectance of greater than 60% and a UV coating layer on the exterior surface. The coating provides UV opacity, while the core provides near infrared reflectance (abstract). Shiao’s invention relates to roofing granules and roofing products including roofing granules, such as roofing shingles, and to processes for making such roofing granules (para.0002).
In one aspect, the present invention provides roofing granules, which have high near infrared or solar heat reflectance, such as at least 60%, as well as high ultraviolet opacity, and roofing products such as shingles provided with such near infrared-reflecting roofing granules (para.0018). When used to prepare bituminous roofing products, such as asphalt shingles, roofing granules according to the present invention reflect solar heat by virtue of the near infrared-reflective cores while blocking ultraviolet radiation to protect the underlying asphalt substrate in which they are embedded (para.0019).
Shiao employs inert mineral particles that have a high reflectance in the near infrared portion of the solar spectrum to serve as granule cores or as particulate components of such cores. In one aspect, the exterior surface of the cores is coated with a UV coating composition having a high opacity to UV radiation and high transparency to near infrared radiation to form a coating layer on the cores to provide the roofing granules. Most preferably, the UV coating composition is applied to the surface of the cores to form a UV coating which completely covers the surface area or encapsulates of the cores (para.0021).
The UV coating layer can comprise a coating binder and, optionally, at least one material dispersed in the coating binder (para.0025, 0040).
In one aspect, the roofing granules include at least one biocide. The UV coating layer can include the at least one biocide. The roofing granules can further include an additional coating layer, the additional coating layer including at least one biocide (para.0039, 0080; Shiao claims 15-16).
As roofing granule cores, Shiao discloses the use of materials that have high transparency to UV radiation and that otherwise would be disfavored in preparing roofing granules for bituminous roofing products. Among the suitable material include zeolite (par.0033). In an embodiment, suitable cores can be prepared by comminuting suitable minerals to an average size less than that suitable for use in roofing granules to thus form small particles, and subsequently agglomerating these small particles to form cores. Preferably, the agglomerated cores include voids effective to scatter near infrared radiation (para.0034).
A core binder can be included to provide mechanical strength to the agglomerated particles forming the cores. Among the preferred material for the core binder is silicate. In one aspect, the core binder preferably further comprises an inorganic material selected from aluminosilicate and kaolin clay (para.0035).
The core binder can be a binder selected from the group consisting of inter alia alkali metal silicates such as sodium silicate (para.0092). In one aspect, the binder is a soluble alkali metal silicate, such as aqueous sodium silicate. The soluble alkali metal silicate is subsequently insolubilized by heat or by chemical reaction, resulting in cured solar reflective granules. The binder may also include additives for long term outdoor durability and functionality (para.0092). When an alkali metal-silicate binder such as sodium silicate is employed in the preparation of solar reflective cores, the binder can include a heat-reactive aluminosilicate material, such as clay. The most commonly used binder for conventional granule coating is a mixture of an alkali metal silicate and an aluminosilicate clay material (para.0093-0094).
In an aspect, Shiao provides a coating process for the UV coating to encapsulate the mineral particles such that the UV coating will cover at least 90% of the surface area of the particle, and more preferably at last 95% of the surface area of the particles, to provide adequate UV opacity. Most preferably, the particles are completely encapsulated by the UV coating (para.0042).
Shiao’s Fig. 4 discloses an embodiment of a roofing granule with a near infrared-reflective inert mineral core particle coated with a UV coating layer comprising UV absorptive particles dispersed in a UV absorptive binder (para.0102; Shiao claim 15). Shiao’s Fig. 8 discloses an embodiment of a roofing granule comprising a near infrared-reflective inert mineral core particle coated with a UV coating layer. The core particle has an exterior surface to which a UV coating composition is applied and cured to form the UV coating layer. The core particle also includes an inner coating layer comprising an inner coating binder (para.0106; Shiao claim 16).
The near infrared-reflective roofing granules can be employed in the manufacture of roofing products, such as asphalt shingles and bituminous membranes, using conventional roofing production processes. Typically, bituminous roofing products are sheet goods that include a non-woven base or scrim formed of a fibrous material such as a glass fiber scrim. The base is coated with one or more layers of a bituminous material such as asphalt to provide water and weather resistance to the roofing product. The near infrared-reflective roofing granules of the present invention can be mixed with conventional roofing granules, and the granule mixture can be embedded in the surface of such bituminous roofing products using conventional methods. Alternatively, the near infrared-reflective granules of the present invention can be substituted for conventional roofing granules in manufacture of bituminous roofing products (para.0107). Bituminous roofing products are typically manufactured in continuous processes in which a continuous substrate sheet of a fibrous material such as a continuous felt sheet or glass fiber mat is immersed in a bath of hot, fluid bituminous coating material so that the bituminous material saturates the substrate sheet and coats at least one side of the substrate. The reverse side of the substrate sheet can be coated with an anti-stick material such as a suitable mineral powder or a find sad. Alternatively, the reverse side of the substrate sheet can be coated with an adhesive material, such as a layer of a suitable bituminous material, to render the sheet self-adhering. In this case, the adhesive layer is preferably covered with a suitable release sheet (para.0108). Roofing granules are then distributed over selected portions of the top of the sheet, and the bituminous material serves as an adhesive to bind the roofing granules to the sheet when the bituminous material has cooled (para.0109).
With regards to the binder as recited in Claims 11-13, as discussed above, the combined teachings of Hong, Taniguchi, and Teng are directed to algae-resistant roofing granules. Hong discloses that such granules include a binder, and further discloses that the base particles are preferably prepared by mixing mineral particles with a suitable binder, such as a binder comprising an aluminosilicate material, such as clay. One of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to further combine the teachings of Hong, Taniguchi, and Teng with the teachings of Shiao, and use Shiao’s binder such as the mixture of an alkali metal silicate and an aluminosilicate clay material as the binder in the algae-resistant roofing granule of the combined teachings of Hong, Taniguchi, and Teng discussed above. One of ordinary skill in the art would have been motivated to do so as Shiao discloses that such binders are among the most commonly used binder for such granules. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as Shiao, like Hong, is directed to roofing granules, which can be employed in the manufacture of roofing products, and discloses materials known for the production of such granules.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Response to Arguments
Applicant's arguments filed December 18, 2025 have been fully considered but they are not persuasive.
(4) Applicant argues that claim 11 further includes a binder including an alkali silicate binding the ion-exchanged zeolite, and by doing so, it is theorized that the claimed granules promote controlled leaching of the algaecidal ions and allow more of the algaecidal ions to leach as the alkali ions replace the algaecidal ions in the zeolite pores. Applicant argues that Taniguchi only suggests zeolites for resin composition, but not in combination with alkali silicate binders, and the cited art does not appreciate the synergistic interaction between the claimed zeolite and the alkali silicate binder and the ion release benefits obtained thereby.
With regards to Applicant’s argument (4), the traversal argument is not found persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the present case, as discussed above, Shiao discloses that a mixture of an alkali metal silicate and an aluminosilicate clay material is among the most commonly used binder for roofing granules. The motivations for using Taniguchi’s antimicrobial zeolite are discussed above in, for example, the prior art rejection and the rebuttal to Applicant’s argument (1).
Furthermore, Taniguchi does not limit the use of their antimicrobial zeolites to incorporation into resins. While Taniguchi discloses antimicrobial resin compositions comprising the antimicrobial zeolite, Taniguchi’s disclosure is also directed to the antimicrobial zeolite itself (para.0006-0007). Taniguchi discloses that their antimicrobial zeolite and antimicrobial composition can be used in a variety of fields (para.0035). Taniguchi discloses that the antimicrobial zeolite can be used in any field which requires the prevention and control of the generation and proliferation of general bacteria, fungi, yeast, and algae and requires the extinction thereof (para.0038, 0040). For example, Taniguchi discloses that their antimicrobial zeolite are suitable for application in the field of construction to impart antimicrobial/antifungal/antialgal activities to construction material (para.0038). Roofing granules are within the field of construction, and Teng discloses that it would be beneficial to be able to control the growth of algae, fungi, and other types of microorganisms on roofing material, particularly in warm climates with high humidity.
Furthermore, as discussed above, Taniguchi discloses that their antimicrobial zeolite is excellent when allowing it to stand in water or in air, and does not undergo color change with time under severe conditions, e.g., when it is exposed to intensive UV light rays over a long period of time, and even if does undergo such a color change, does not lose its antimicrobial properties. One of ordinary skill in the art would have found these properties advantageous for materials used in roofing granules and shingles as such roofing materials are known to have to stand in water and air and be exposed to intensive UV light rays over a long period of time.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (Hong) (US2004/0258835 A1; of record), Taniguchi et al. (Taniguchi) (US 2007/0110825 A1; of record), and Teng (US 2006/0194023 A1; of record) as applied to Claims 1, 3-10, 14, 15, 17, 18, 21, and 22, further in view of Joedicke et al. (Joedicke) (US 2004/0110639 A1; published Jun. 10, 2004).
The combined teachings of Hong, Taniguchi, and Teng and the motivation for their combination as they apply to Claims 1, 3-10, 14, 15, 17, 18, 21, and 22 are set forth above and incorporated herein.
The combined teachings of Hong, Taniguchi, and Teng do not appear to explicitly disclose wherein the top coat comprises no algaecidal ions. Joedicke is relied upon for this disclosure. The teachings of Joedicke are set forth herein below.
Joedicke discloses algae-retardant roofing granules which are artificially-colored mineral aggregate containing slow-release copper or bimetallic copper/zinc algaecides as components of the first coating of a two-coat product. The second, or outer coating, contains the pigments that determine the overall color of the product. The outer coating has a high degree of porosity to increase the rate of copper/zinc leaching to enhance algicidal performance (para.0018, 0026).
The presence of microvoids in the second coating of the granules enhance the migration of algaecides contained in the first coating thereby providing increase algicidal activity on the surface of the granules (para.0044).
Joedicke discloses that it is preferred that the second or outer coating is void of algaecides (para.0022).
With regards to the top coat as recited in Claim 23, one of ordinary skill in the art would have found it prima facie obvious before the effective filing date of the instant invention to further combine the teachings of Hong, Taniguchi, and Teng with the teachings of Joedicke and add an outer coating void of algaecides as disclosed by Joedicke onto the roofing granule of the combined teachings of Hong, Taniguchi, and Teng discussed above. One of ordinary skill in the art would have been motivated to do so in order to obtain benefits such as providing an artificial coloring to the material for aesthetic and/or indicator purposes and further controlling the release of the algaecidal ions from the granule itself. One of ordinary skill in the art would have had a reasonable expectation of success in doing so as the combined teachings of Hong, Taniguchi, and Teng are directed to algaecidal roofing granules, and Joedicke discloses that providing a coating void of algaecides on top of algaecidal roofing granules are known and conventional in the art.
Therefore, the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention, because the combined teachings of the prior art references is fairly suggestive of the claimed invention.
Conclusion
Claims 1, 3-15, 17, 18, and 21-23 are rejected. No claims are allowed.
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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/MONICA A SHIN/Primary Examiner, Art Unit 1616