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 .
Response to Amendment
This office action is in response to the Amendment filed on 06/29/2026.
Claims 1-8 and 10-20 are presently pending and under examination; claim 9 is canceled; claims 1, 8, 13, 15 and 17 are amended; claims 18-20 are new.
The rejections of claims 13 and 17 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejections of claims 1-8, 10-11 and 13-14 over SHIAO, claim 12 over SHIAO in view of BEST MATERIALS, and claims 15-17 over SHIAO in view of JENREE are maintained.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 8, it is noted that the amendment to claim 8 recites “wherein said coating is one layer, optionally formed by repeated application of a coating solution” (see claim 8 at lines 1-2). As such, while the specification discloses that the coating solution can be repeatedly applied to form multiple layers (see the present specification at pg. 3-4), the Examiner has been unable to locate any disclosure that would support repeated application of the coating solution forming only a single layer as claimed.
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.
Claim 8 is 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 8 recites the limitation “wherein said coating is one layer, optionally formed by repeated application of a coating solution” (see claim 8 at lines 1-2); however, the present specification states that repeatedly applying the coating forms multiple layers (“In some embodiments, it is preferred that the coating of inorganic powder and binder is applied repeatedly. In such a case, all the layers may have the same structure, or have different compositions… b) mixing the particles with a coating agent containing an inorganic powder, c) drying the coating. Further, it may be reasonable according to the invention to repeat steps b) and c) once or several times”; see pg. 3-4). It is not clear how the coating could be only one layer when the coating is applied repeatedly, which the specification states forms multiple layers. Therefore, the scope of the claim are indefinite as it cannot be determined whether the coating is actually required to be only one layer, or can be applied repeatedly to form multiple layers.
For purposes of examination, Examiner treated claim 8 as meaning that the coating can be one layer or can be formed by repeated application of a coating solution. Clarification is requested.
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.
Claims 1-8, 10-11, 13-14 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Shiao et al. (U.S. Pub. No. 2013/0108873-A1) (hereinafter, “SHIAO”; it is noted that SHIAO incorporates George, et al. (U.S. Pat. no. 5,240,760-A; hereinafter, “GEORGE”) by reference, therefore the disclosure of GEORGE is considered part of the disclosure of SHIAO; see MPEP 2163.07(b)), with evidence from Lawrence Berkeley National Laboratory, “Product Information – V-9248 Ocean Blue” (hereinafter, “LBNL”) as to the rejection of claims 1 and 5.
Regarding claim 1, SHIAO teaches granules for a roof coating (see SHIAO at paragraph [0012]),
wherein said granules comprise particles that have a coating (see SHIAO at paragraph [0012]),
wherein said coating comprises at least one layer of an inorganic powder in a binder (see SHIAO at paragraphs [0061], [0079]-[0080] and [0091]-[0093]; SHIAO teaches that the coating comprises a layer of aluminum oxide powder and/or a colored metal oxide pigment powder, which are inorganic powders, in a binder),
wherein said coating has a surface roughness induced by the inorganic powder, wherein said inorganic powder has a d50 grain size within the claimed range of from 0.5 to 25 μm (see SHIAO at paragraph [0061]; SHIAO teaches embodiments wherein the inorganic, colored metal oxide powder has a d50 within this range; for example, SHIAO teaches using V-9248 Blue pigment powder from Ferro Corporation, which has a mean particle size of 0.7 μm, as evidenced by LBNL (see LBNL at pg. 1); it is noted that as no actual value for “surface roughness” is claimed, any surface would have “a surface roughness” as claimed, e.g., a very smooth surface would have a very low surface roughness; it is also noted that as SHIAO teaches an inorganic powder as claimed that inorganic powder would provide “a surface roughness” as claimed),
and wherein said granules further comprise a hydrophobizing and/or oleophobizing agent on said coating as a solid composition (see SHIAO at paragraphs [0016] and [0058] and GEORGE at Abstract and col. 4, lines 45-51 and col. 6, lines 10-20, teaching applying a hydrophobic agent comprising polysiloxane to enhance water repellency and staining resistance),
wherein the amount of said binder is from 0.3 to 5% by weight, based on the weight of the granules (see SHIAO at paragraphs [0052], [0055] and [0130]; the example provided by SHIAO includes coated granules comprising 1000 g of granules, a coating including 12.5 g pigment, and 12.5 g of kaolin and 36.25 g of aqueous sodium silicate (containing 38-42% solids by weight, i.e., about 13.8 to 15.2 g) as the inorganic binder, and a second coating weighing a total of about 16.07 to 19.2 g (calculations are excluding water as the coatings are dried); i.e., the binder in the coating is included in an amount of about 2.5% to 2.6% by weight, based on the total weight of the granules).
SHIAO fails to explicitly teach that the amount of inorganic powder is from 1 to 10% by weight, based on the weight of the granules.
However, SHIAO teaches that the coating composition comprises a metal oxide pigment and/or a colored nano-pigment (see SHIAO at paragraphs [0027], [0061] and [0120]), then specifies that the colored nano-pigment comprises 0.5% to 40% by weight of the coating composition, and that the coating composition comprises from 2% to 20% by weight of the base inert mineral particles (see SHIAO at paragraph [0123]). This results in an amount of inorganic colored nano-pigment powder of 0.01% to 8% based on the weight of the base particles, and an amount of approximately 0.01% to 6.7% based on the weight of the granules, as the total weight of the granules is the combined weight of the base particles and the coating.
As SHIAO teaches that the nano-pigment is interchangeable with the standard metal oxide pigment in the coating (see SHIAO at paragraphs [0027] and [0120]), it would have been obvious to one of ordinary skill in the art to have also used from 0.01% to 6.7% of the standard metal oxide pigment powder (such as V-9248 Blue pigment powder; see SHIAO at paragraph [0061]), based on the weight of the granules, when using it in place of the nano-pigment as taught by SHIAO (see SHIAO at paragraph [0120]). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 2, SHIAO teaches granules according to claim 1, wherein said particles are selected from the group consisting of calcined kaolin, calcined mixtures of clay minerals, feldspar and quartz, calcined mixtures of clay minerals, silicates and oxides, and mixtures thereof (see SHIAO at paragraphs [0021] and [0048]; SHIAO teaches that the particles are feldspathic rock or aluminum oxide).
Regarding claim 3, SHIAO teaches granules according to claim 1, wherein said particles have a d50 grain size within the claimed range of from 0.1 to 3 mm (see SHIAO at paragraph [0046]; SHIAO teaches that the base particles have an average particle size of 0.4 to 2.4 mm).
Regarding claim 4, SHIAO teaches granules according to claim 1, wherein said inorganic powder is selected from the group consisting of calcined mineral powders, metal oxides, metal hydroxides, sulfates, silicate hydrates, glasses, carbonates, mica, and mixtures thereof (see SHIAO at paragraph [0061]; SHIAO that the coating comprises an inorganic metal oxide pigment powder).
Regarding claim 5, SHIAO teaches granules according to claim 1, wherein said inorganic powder has a d50 grain size within the claimed range of from 0.5 to 10 μm (see SHIAO at paragraph [0061]; SHIAO teaches embodiments wherein the inorganic, colored metal oxide powder has a d50 within this range; for example, SHIAO teaches using V-9248 Blue pigment powder from Ferro Corporation, which has a mean particle size of 0.7 μm, as evidenced by LBNL (see LBNL at pg. 1)),
and wherein the amount of said hydrophobizing and/or oleophobizing agent overlaps with and thereby renders obvious the claimed range of from 0.05 to 2.0% by weight based on the weight of the granules (see SHIAO at paragraph [0058] and GEORGE at Abstract and col. 4, lines 45-67 and col. 5, lines 14-21, teaching that the hydrophobic agent comprises polysiloxane and a silicone adhesion agent in a combined amount of up to 0.3% by weight of the roofing granules). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 6, SHIAO teaches granules according to claim 1, wherein said binder is an inorganic binder (see SHIAO at paragraph [0051]; SHIAO teaches that the binder is metal-silicate or silica, which are inorganic binders).
Regarding claim 7, SHIAO teaches granules according to claim 6, wherein said inorganic binder is a siliceous binder (see SHIAO at paragraph [0051]; SHIAO teaches that the binder is metal-silicate or silica).
Regarding claim 8, SHIAO teaches granules according to claim 1, wherein said coating is one layer or is formed by repeated application of a coating solution (see SHIAO at paragraphs [0012], [0050] and [0080], and Figs. 1-6; SHIAO teaches that the granules can include one or more coating layers).
Regarding claim 10, as applied to claim 1 above, SHIAO teaches granules according to claim 1, wherein said hydrophobizing and/or oleophobizing agent is selected from the group consisting of siliceous compounds, fluorine-containing compounds, siliceous fluorine-containing compounds, and mixtures thereof (see SHIAO at paragraph [0058] and GEORGE at Abstract and col. 4, lines 45-51 and col. 6, lines 10-20, teaching polysiloxane).
Regarding claim 11, SHIAO teaches a roof coating comprising a bitumen layer having granules embedded therein according to claim 1 (see SHIAO at paragraph [0126]; SHIAO teaches a solar-reflective roofing product with a coating comprising the solar-reflective granules embedded within a layer of bituminous material).
Regarding claim 13, SHIAO teaches a process for producing granules according to claim 1, comprising the steps of
a) providing particles (see SHIAO at paragraphs [0027] and [0031]; SHIAO teaches providing base particles comprising inert mineral),
b) mixing the particles with a coating agent comprising an inorganic powder (see SHIAO at paragraphs [0027] and [0031]; SHIAO teaches coating the base particles with a first coating composition which comprises inorganic powder),
c) drying the coating (see SHIAO at paragraphs [0027] and [0031]; SHIAO teaches curing/drying the coated particle),
d) optionally repeating steps b) and c) (see SHIAO at paragraphs [0027] and [0031]; SHIAO teaches adding and curing/drying multiple coating layers), and
e) applying a hydrophobizing and/or oleophobizing composition to form a layer comprising said hydrophobizing and/or oleophobizing agent as a solid composition on said coating (see SHIAO at paragraphs [0016] and [0058] and GEORGE at Abstract and col. 4, lines 45-51 and col. 6, lines 10-20, teaching applying a hydrophobic composition comprising polysiloxane to enhance water repellency and staining resistance).
Regarding claim 14, as applied to claim 2 above, SHIAO teaches granules according to claim 2, wherein the particles have a solar reflection before being coated which overlaps with the claimed range of at least 80% (see SHIAO at paragraph [0021]; SHIAO teaches that the uncoated base particles are solar-reflective, having a solar reflectivity of at least 60% before being coated). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 18, as applied to claim 1 above, SHIAO teaches granules according to claim 1, wherein the amount of said binder is from 0.3 to 3% by weight, based on the weight of the granules (see SHIAO at paragraphs [0052], [0055] and [0130]; the example provided by SHIAO includes coated granules comprising 1000 g of granules, a coating including 12.5 g pigment, and 12.5 g of kaolin and 36.25 g of aqueous sodium silicate (containing 38-42% solids by weight, i.e., about 13.8 to 15.2 g) as the inorganic binder, and a second coating weighing a total of about 16.07 to 19.2 g (calculations are excluding water as the coatings are dried); i.e., the binder in the coating is included in an amount of about 2.5% to 2.6% by weight, based on the total weight of the granules).
Regarding claim 19, as applied to claim 1 above, SHIAO teaches granules according to claim 1.
SHIAO does not explicitly teach that the amount of binder is from 0.3 to 1% by weight, based on the weight of the granules. However, as discussed in the rejection of claim 1 above, SHIAO teaches an example wherein the amount of said binder in the coating is about 2.5% to 2.6% by weight, based on the weight of the granules (see SHIAO at paragraphs [0052], [0055] and [0130]). An amount of 0.01 is very close to an amount of 0.025; as set forth in MPEP § 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985); Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Additionally, SHIAO teaches that the amount of the binder included affects the refractive index and resulting light scattering efficiency and reflectivity of the coating layer (see SHIAO at paragraphs [0022], [0050] and [0056]-[0057]), i.e., SHIAO explicitly teaches that the binder content is a result-effective variable which may be optimized by one of ordinary skill in the art in order to achieve the desired refractive index and reflectivity. MPEP states that “[W]here 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, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Regarding claim 20, as applied to claim 1 above, SHIAO teaches granules according to claim 1. SHIAO teaches that the coating may comprise aluminum oxide powder with a particle size of less than 425 micrometers, such as between 0.1 and 5 micrometers, as a solar-reflective additive (see SHIAO at paragraph [0079]), which overlaps with and thereby renders obvious the claimed range of 4 to 25 μm. As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
SHIAO does not explicitly teach that this aluminum oxide powder is used in an amount of 1 to 10% by weight as recited in claim 1. However, SHIAO teaches that this powder is added to the coating to improve the solar reflectance of colored roofing granules without affecting the color (see SHIAO at paragraph [0079]), i.e., SHIAO explicitly teaches that the amount of the aluminum oxide powder additive is a result-effective variable which may be optimized by one of ordinary skill in the art in order to achieve desired solar reflectance. MPEP states that “[W]here 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, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over SHIAO in view of Best Materials, “#11 Ceramic Coated Roofing Granules”, published online on or before July 7, 2017 (hereinafter, “BEST MATERIALS”).
Regarding claim 12, as applied to claim 11 above, SHIAO teaches a roof coating according to claim 11. SHIAO teaches that the granules can be used in place of typical roofing granules in a conventional roofing production process (see SHIAO at paragraph [0126]).
However, SHIAO fails to explicitly teach that the granules are present in an amount from 0.5 to 5 kg per square meter of the roof coating.
It is known in the art to use granules in an amount from 0.5 to 5 kg per square meter in roof coatings in a conventional roofing production process. For example, BEST MATERIALS teaches that ceramic coated colored roofing granules are generally to be applied at about 4 square feet per pound (see BEST MATERIALS at pg. 2, “Coverage”), which is 0.25 pounds per square foot, or 1.2 kg per square meter, and falls within the claimed range of 0.5 to 5 kg per square meter.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have made a roof coating as taught by SHIAO wherein the granules are present in an amount from 0.5 to 5 kg per square meter, such 1.2 kg per square meter, as taught by BEST MATERIALS. As SHIAO teaches using the granules in place of typical roofing granules in a conventional roofing production process (see SHIAO at paragraph [0126]), and BEST MATERIALS teaches a conventional roofing production process wherein colored, coated granules are present in this amount (see BEST MATERIALS at pg. 2, “Coverage”), one of ordinary skill in the art could have applied the granules in this amount with a reasonable expectation of success, yielding the predictable results of forming a roof coating with a typical distribution of granules.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over SHIAO in view of Jenree, et al. (U.S. Pub. No. 2020/0308413-A1) (hereinafter, “JENREE”).
Regarding claim 15, SHIAO teaches granules for a roof coating (see SHIAO at paragraph [0012]),
wherein said granules comprise particles that have a coating (see SHIAO at paragraph [0012]),
wherein said coating comprises at least one layer of an inorganic powder in a binder (see SHIAO at paragraphs [0061], [0079]-[0080] and [0091]-[0093]; SHIAO teaches that the coating comprises a layer of aluminum oxide powder and/or a colored metal oxide pigment powder, which are inorganic powders, in a binder),
wherein said coating has a surface roughness induced by the inorganic powder, wherein said inorganic powder has a d50 grain size within the claimed range of from 0.5 to 25 μm (see SHIAO at paragraph [0061]; SHIAO teaches embodiments wherein the inorganic, colored metal oxide powder has a d50 within this range; for example, SHIAO teaches using V-9248 Blue pigment powder from Ferro Corporation, which has a mean particle size of 0.7 μm, as evidenced by LBNL (see LBNL at pg. 1); it is noted that as no actual value for “surface roughness” is claimed, any surface would have “a surface roughness” as claimed, e.g., a very smooth surface would have a very low surface roughness, which is still “a surface roughness”; it is also noted that as SHIAO teaches an inorganic powder as claimed that inorganic powder would provide “a surface roughness” as claimed)
and wherein said granules further comprise a hydrophobizing and/or oleophobizing agent on said coating as a solid composition (see SHIAO at paragraphs [0016] and [0058] and GEORGE at Abstract and col. 4, lines 45-51 and col. 6, lines 10-20, teaching applying a hydrophobic agent comprising polysiloxane to enhance water repellency and staining resistance),
wherein the amount of said binder is from 0.3 to 3% by weight, based on the weight of the granules (see SHIAO at paragraphs [0052], [0055] and [0130]; the example provided by SHIAO includes coated granules comprising 1000 g of granules, a coating including 12.5 g pigment, and 12.5 g of kaolin and 36.25 g of aqueous sodium silicate (containing 38-42% solids by weight, i.e., about 13.8 to 15.2 g) as the inorganic binder, and a second coating weighing a total of about 16.07 to 19.2 g (calculations are excluding water as the coatings are dried); i.e., the binder in the coating is included in an amount of about 2.5% to 2.6% by weight, based on the total weight of the granules).
SHIAO fails to explicitly teach that (i) the amount of inorganic powder is from 1 to 10% by weight, based on the weight of the granules, and (ii) the hydrophobizing and/or oleophobizing agent is selected from the group consisting of silanes, fluorine-containing compounds, siliceous fluorine-containing compounds, and mixtures thereof.
However, in regard to (i) above, SHIAO teaches that the coating composition comprises a metal oxide pigment and/or a colored nano-pigment (see SHIAO at paragraphs [0027], [0061] and [0120]), then specifies that the colored nano-pigment comprises 0.5% to 40% by weight of the coating composition, and that the coating composition comprises from 2% to 20% by weight of the base inert mineral particles (see SHIAO at paragraph [0123]). This results in an amount of inorganic colored nano-pigment powder of 0.01% to 8% based on the weight of the base particles, and an amount of approximately 0.01% to 6.7% based on the weight of the granules, as the total weight of the granules is the combined weight of the base particles and the coating.
As SHIAO teaches that the nano-pigment is interchangeable with the standard metal oxide pigment in the coating (see SHIAO at paragraphs [0027] and [0120]), , it would have been obvious to one of ordinary skill in the art to have also used from 0.01% to 6.7% of the standard metal oxide pigment powder (such as V-9248 Blue pigment powder; see SHIAO at paragraph [0061]), based on the weight of the granules, when using it in place of the nano-pigment as taught by SHIAO (see SHIAO at paragraph [0120]). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
In regard to (ii) above, it is known in the art to use silanes and/or fluorine-containing compounds as hydrophobizing/oleophobizing agents for roofing granules. For example, JENREE teaches coated solar reflective roofing granules (see JENREE at Title and paragraphs [0003] and [0016]) wherein the hydrophobic/oleophobic coating may include a silane, siloxane, fluorosilane and/or fluorosiloxane (see JENREE at paragraphs [0021] and [0023]-[0024]).
Therefore, 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 granules of SHIAO by simply substituting the siloxane hydrophobic agent with a fluorosilane hydrophobic agent as taught by JENREE, as JENREE teaches that these agents may be used interchangeably for the same purpose (see JENREE at paragraphs [0021] and [0023]-[0024]). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing hydrophobic and/or oleophobic properties to the granules. Further, JENREE teaches that silanes/fluorosilanes are known siliceous hydrophobizing/oleophobizing agents in the art, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding claims 16-17, as applied to claim 15 above, SHIAO in view of JENREE teaches granules according to claim 15, wherein the hydrophobizing and/or oleophobizing agent comprises silanes, as recited by claim 16 (see JENREE at paragraphs [0023]-[0024], teaching fluorosilanes), and comprises equal proportions of the silanes and the fluorine containing compounds, as recited by claim 17 (see JENREE at paragraphs [0023]-[0024], teaching fluorosilane hydrophobizing/oleophobizing agent; i.e., the silane compound and fluorine-containing compound are the same compound and are used in one amount, i.e., the same amount, or equal proportions).
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(a) and 112(b) for claim 8 and under 35 U.S.C. 103 for claims 18-20 over SHIAO as set forth above.
Applicant argues:
“claim 1 further specifies that the coating has a surface roughness induced by the inorganic powder. The surface roughness of the claimed granules is depicted in instant Figs. 1B and 1C… Shiao does not teach, suggest, or motivate providing a coating for granules for a roof coating that has a surface roughness induced by an inorganic powder having micron-scale particles… The cited references in no way provide a likelihood of success in combining or modifying Shiao to meet the limitations of the claimed invention, specifically a coating having a surface roughness induced by an inorganic powder having a d50 grain size of from 0.5 to 25 μm” (see Remarks at pg. 7 and 9-10).
“Shiao teaches incorporating nano-pigment particles into the second (outer) coating… the coating composition comprises a metal oxide pigment and/or a colored nano-pigment… this teaching is specific to the first (inner) coating… Shiao in no way teaches “that the nano-pigment is interchangeable with the standard metal oxide pigment” in an outer coating of the granule” (see Remarks at pg. 8-9).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because of the claimed surface roughness of amended claim 1, the Examiner respectfully disagrees. It is first noted that Figs. 1B and 1C referenced by Applicant as showing the surface roughness of the claimed granules do not show the claimed granules; the claimed granules require a layer of a solid hydrophobizing and/or oleophobizing agent on top of the coating layer, which is not included in the examples shown in Figs. 1B and 1C. The outer coating layer of the claimed granules is not the “coating” as claimed, it is the solid hydrophobizing and/or oleophobizing agent. Additionally, as discussed in the rejection of amended claim 1 above, no actual value for “surface roughness” is claimed, and any surface would have “a surface roughness” as claimed, e.g., a very smooth surface would have a very low surface roughness, which is still “a surface roughness”; it is also noted that as SHIAO teaches an inorganic powder as claimed that inorganic powder would provide “a surface roughness” as claimed. It is not clear how the added language regarding the surface roughness in claim 1 actually further limits the claim as the coating already requires an inorganic powder and has some unspecified “a surface roughness”. Claim 1 also does not specify which “surface” of the coating has “a surface roughness”, i.e., this could refer to either the inner surface of the coating or the outer surface of the coating (again, it is noted that there is no exposed outer “surface” of the coating as it is covered by the layer of the hydrophobizing/oleophobizing agent).
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the “at least one layer of an inorganic powder in a binder” required by claim 1 being the outer coating layer of the granule) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 1 does not require that the recited layer is the outer layer of the granule; in fact, it cannot be the outer layer, as the outer layer of the granule is the solid hydrophobizing and/or oleophobizing agent, therefore all layers of “the coating” as claimed are inner layers. Claim 1 recites “wherein said granules comprise particles that have a coating, wherein said coating comprises at least one layer of an inorganic powder in a binder… and wherein said granules further comprise a hydrophobizing and/or oleophobizing agent on said coating as a solid composition”; this open language does not exclude any additional layers and does not require a specific outer layer of “the coating”. I.e., “the coating” of claim 1 can have any number of layers, of which only at least one must be the specified layer of inorganic powder in a binder, which is not required to be the outermost layer of the coating. The hydrophobizing and/or oleophobizing agent is required to be “on said coating”, not on the specified “at least one layer” of the coating.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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