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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/08/2025 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 08/08/2025.
Claims 1-8 and 10-17 are presently pending and under examination; claim 9 is canceled; claims 1, 5 and 13 are amended; claims 15-17 are new.
The objection to claim 1 is withdrawn in light of the amendments to the claims.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 and claim 12 over SHIAO in view of BEST MATERIALS are maintained.
New grounds of rejection are present herein.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/14/2025 was filed after the mailing date of the final action on 03/10/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
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.
Claims 13 and 17 are 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 13 recites the limitation “said… oleophilizing agent” (see claim 13 at line 8). There is insufficient antecedent basis for this limitation in the claim. Further, claim 13 previously positively recites an “oleophobizing agent”, which is the opposite of an oleophilizing agent, and it is not clear whether the claim is meant to require an oleophobizing agent, an oleophilizing agent, or both.
For purposes of examination, Examiner treated this limitation in claim 13 as referring to the oleophobizing agent. Clarification is requested.
Claim 17 recites the limitation “wherein the hydrophobizing and/or oleophobizing agent comprises equal proportions of the silanes and the fluorine containing compounds” (see claim 17 at lines 1-3), but does not specify whether “equal proportions” is meant to be a measurement on the basis of weight or volume. No clarification could be located in the specification regarding whether the proportions by volume or by weight are equal.
For purposes of examination, Examiner treated this limitation in claim 17 as being a measurement based on weight. Clarification is requested.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 10-11 and 13-14 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 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)),
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).
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 applied repeatedly (see SHIAO at paragraph [0012] and Figs. 1-6; SHIAO teaches multiple layers of coating, meaning the coating has been applied more than once in order to form multiple 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)).
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 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)),
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).
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 08/08/2025 have been fully considered but they are not persuasive.
Applicant argues:
“Shiao teaches that a mineral oil or silicon oil coating can be added to enhance the adhesion of the roofing granules to bituminous surfaces and to increase the ease of manufacture. Shiao seems to be teaching that the mineral oil or silicon oil is a fluid that acts as a processing aid. Shiao does not teach or suggest providing a hydrophobizing and/or oleophobizing agent on a coating as a solid composition, as specified in amended claim 1” (see Remarks at pg. 6).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that SHIAO does not teach or suggest providing a hydrophobizing and/or oleophobizing agent on a coating as a solid composition, the Examiner respectfully disagrees. As set forth in the rejection of claim 1 above, SHIAO (which incorporates GEORGE by reference) explicitly teaches adding a solid hydrophobic coating comprising polysiloxane (see SHIAO at paragraph [0058]; see GEORGE at Abstract and col. 4, lines 45-51 and col. 6, lines 10-20).
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731