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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/22/2025 has been entered.
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 25-27, 29-32, 34-37 and 39-49 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.
Claims 25 and 31 are drawn to a roll comprising a single layer fiberglass mat wherein the mat comprise a first set (i.e. first layer) of fibers extending in a machine direction and a second set (i.e. second layer) of fibers extending in a transverse direction. The meaning of “single layer fiberglass mat” is unclear since the claims require the single layer fiberglass mat to include two layers of fibers.
Claims 25 and 31 are drawn to a roll comprising a single layer fiberglass mat that is uncoated, and [0049] defines an “uncoated substrate” as meaning a substrate that has not been coated on any side with a coating, but it is not clear what constitutes a coating. For example, it is unclear if a fabric layer is considered a coating.
Claim 35 is drawn to a roofing material wherein a coating is applied onto the upper and lower surface of the substrate. It is not clear what constitutes a coating. For example, it is unclear if a fabric layer is considered a coating.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 25-27, 29-32, 34-37 and 39-49 are rejected under 35 U.S.C. 103 as being unpatentable over USPAP 2021/0403708 to Eastep in view of USPAP 2019/0309518 to Swayne, USPN 4,112,174 to Hannes, USPAP 2005/0148250 to O’Connor, and/or USPN 5,822,943 to Frankoski.
Claims 25, 29, 31, 35 and 37, Eastep discloses a roofing material comprising: a single layer fiberglass mat, wherein single layer fiberglass mat is uncoated, wherein the single layer fiberglass mat comprises a plurality of fibers, with the plurality of fibers comprising (i) a first set of fibers extending in a machine direction, and (ii) a second set of fibers extending in a transverse direction, with the transverse direction being perpendicular to the machine direction (see entire document including Figure 5, [0012], [0051] and [0067]-[0070]).
Eastep does not appear to mention the roofing material being in roll form but Swayne discloses that it is known in the art to construct roofing material in shingle or roll form (see entire document including [0002] and [0012]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the roofing material of Eastep in any suitable form, such as a roll, because it is within the general skill of a worker in the art to select a known roofing material form on the basis of its suitability and desired characteristics for the intended application.
Eastep does not appear to mention the basis weight of the fiberglass mat but Hannes discloses that it is known in the art to construct a fiberglass mat with a basis weight of about 2 lbs/csf to provide a roofing material with improved tear strength (see entire document including column 1, lines 13-16, column 2, lines 35-38 and column 6, lines 34-64). Therefore, it would have been obvious to one having ordinary skill in the art to construct the fiberglass mat of Eastep with a basis weight of about 2 lbs/csf to provide the roofing material with improved tear strength.
Eastep does not appear to mention thread configuration but O’Connor discloses that it is known in the art to construct a scrim layer with about 1 to about 10 yarns per inch in each of the machine and transverse directions and that more yarns may be present in the machine direction than the transverse direction (see entire document including [0022]-[0024]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the scrim of Eastep with any desired fiber ratio, such as claimed, because it is within the general skill of a worker in the art to select a machine direction to transverse direction fiber ratio on the basis of its suitability and desired characteristics.
Claims 25-27, 31, 32, 35 and 36, considering that the roofing material taught by the applied prior art is substantially identical to the claimed roofing material in terms of structure, materials and fiberglass mat basis weight, the claimed properties appear to be inherent. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Claims 30 and 34, the fibers further comprise a third set of mat fibers wherein some of the fibers extend in a third direction that is between the machine direction and the transverse direction (Figure 5).
Claim 35, the fiberglass mat of Eastep is considered the claimed substate.
Claims 35 and 39, Eastep does not appear to mention coating the fiberglass mat but Eastep does disclose using the product as roofing shingles [0070]. O’Connor and Frankoski each disclose that it is conventional in the art to coat the upper and lower surfaces of a shingle with asphalt (see entire documents including the paragraph bridging columns 4 and 5 of Frankoski and [0035] and [0040] of O’Connor). Therefore, it would have been obvious to one having ordinary skill in the art to construct the product of Eastep with a coating on each surface, as taught by Frankoski and/or O’Connor, to produce a product suitable for use as a roofing shingle.
Claim 40, the coating at least partially infiltrates the fiberglass mat of the substrate (the paragraph bridging columns 4 and 5 of Frankoski and [0035] and [0040] of O’Connor).
Claims 41-44, Eastep does not appear to mention the claimed second substrate but Frankoski discloses that it is known in the art to construct a roofing shingle with a second coated substrate positioned on the upper surface of a first coated substrate and a polymer-based coating layer positioned between the first coated substrate and the coated second substrate, wherein the coating is applied onto the polymer-based coating layer forming a coated polymer-based coating layer (Figure 2, column 3, lines 17-45 and the paragraph bridging columns 4 and 5). Therefore, it would have been obvious to one having ordinary skill in the art to construct the roofing shingle with any desired configuration, such as claimed, because it is within the general skill of a worker in the art to select a known configuration on the basis of its suitability and desired characteristics.
Claim 45, the roofing material is a roofing shingle [0070].
Claim 46, the roofing shingle is one of (i) a single layer shingle or (ii) a laminated shingle having two or more layers [0070].
Claims 47 and 49, Eastep does not appear to mention the roofing material comprising granules but Frankoski discloses that it is conventional in the art to coat a surface of a coated shingle with granules (paragraph bridging columns 4 and 5). Therefore, it would have been obvious to one having ordinary skill in the art to construct the product of Eastep with granules, as taught by Frankoski, to produce a product suitable for use as a roofing shingle.
Claims 48 and 49, Eastep does not appear to mention the roofing material comprising fines but Frankoski discloses that it is conventional in the art to coat a surface of a shingle with fines (column 4, lines 59-65). Therefore, it would have been obvious to one having ordinary skill in the art to construct the product of Eastep with fines, as taught by Frankoski, to produce a product suitable for use as a roofing shingle.
Claims 25-27, 29-32, 34-37 and 39-49 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 5,822,943 to Frankoski in view of USPAP 2019/0309518 to Swayne, USPN 4,112,174 to Hannes, USPAP 2005/0148250 to O’Connor, and/or USPAP 2021/0403708 to Eastep.
Claims 25, 29, 31, 35 and 37, Frankoski discloses a roofing material comprising: a single layer fiberglass scrim (60) and a single layer fiberglass mat (65) (Figure 2, column 3, lines 17-27, and the paragraph bridging columns 4 and 5). The single layer fiberglass scrim (60) of Frankoski is considered the claimed single layer fiberglass mat. Frankoski discloses that the single layer fiberglass scrim (60) comprises a plurality of fibers, with the plurality of fibers comprising (i) a first set of fibers extending in a machine direction, and (ii) a second set of fibers extending in a transverse direction, with the transverse direction being perpendicular to the machine direction (see entire document including Figure 2, column 1, lines 3-20, column 3, lines 17-45 and column 4, line 66 through column 5, line 49).
Regarding the claimed single layer fiberglass mat being uncoated, Frankoski discloses that the scrim/mat composite is formed and then asphalt coated (paragraph bridging columns 4 and 5). Therefore, Frankoski teaches that the intermediate product of the invention (prior to coating) is uncoated. Plus, O’Connor discloses that it is conventional in the art to construct a multilayer shingle substrate and then coat the substrate (see entire document including [0028]-[0035] and [0040]). Therefore, it would have been obvious to one having ordinary skill in the art to construct the coated substrate shingle of Frankoski by any suitable method, such as disclosed by O’Connor, because it is conventional and/or because within the general skill of a worker in the art to select a production step order on the basis of its suitability and desired characteristics.
Frankoski does not appear to mention the roofing material being in roll form but Swayne discloses that it is known in the art to construct roofing material in shingle or roll form (see entire document including [0002] and [0012]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the roofing material of Frankoski in any suitable form, such as a roll, because it is within the general skill of a worker in the art to select a known roofing material form on the basis of its suitability and desired characteristics for the intended application.
Frankoski does not appear to mention the basis weight of the fiberglass mat but Hannes discloses that it is known in the art to construct a fiberglass mat with a basis weight of about 2 lbs/csf to provide a roofing material with improved tear strength (see entire document including column 1, lines 13-16, column 2, lines 35-38 and column 6, lines 34-64). Therefore, it would have been obvious to one having ordinary skill in the art to construct the fiberglass mat of Frankoski with a basis weight of about 2 lbs/csf to provide the roofing material with improved tear strength.
Frankoski discloses that the (woven or nonwoven) scrim preferably has a 10x10 (1:1) thread configuration (column 3, lines 53-61 and column 5, lines 42-48) but Frankoski does not limit the scrim to said configuration. O’Connor discloses that it is known in the art to construct a scrim layer with about 1 to about 10 yarns per inch in each of the machine and transverse directions and that more yarns may be present in the machine direction than the transverse direction (see entire document including [0022]-[0024]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the scrim of Frankoski with any desired fiber ratio, such as claimed, because it is within the general skill of a worker in the art to select a machine direction to transverse direction fiber ratio on the basis of its suitability and desired characteristics.
Claims 25-27, 31, 32, 35 and 36, considering that the roofing material taught by the applied prior art is substantially identical to the claimed roofing material in terms of structure, materials and fiberglass mat basis weight, the claimed properties appear to be inherent. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977).
Claims 30 and 34, the fibers further comprise a third set of (randomly oriented) mat fibers wherein some of the fibers inherently extend in a third direction that is between the machine direction of the roll of fiberglass mat and the transverse direction of the roll of fiberglass mat (Figure 2, column 3, lines 17-45 and column 4, line 66 through column 5, line 49). Plus, Frankoski discloses that more than one scrim may be present (column 3, lines 28-45) and Eastep discloses that it is known in the art to include multiple fiber layers with each layer having a different fiber direction based on the desired structural support (see entire document including Figure 5, [0067], [0068] and [0070]). Therefore, it would have been obvious to include additional scrim layers with different fiber directions, such as claimed, based on the desired structural support.
Claim 35, the fiberglass scrim (60) of Frankoski is considered the claimed substate.
Claim 35, Frankoski discloses an upper coating (70) may be applied onto the upper surface of the fiberglass scrim (60) and a lower coating (65 or 65+75) may be applied to the lower surface of the fiberglass scrim (abstract, Figure 2, column 3, lines 28-45, and the paragraph bridging columns 4 and 5).
Claim 39, the coating comprises at least one of asphalt, a polymer-modified asphalt, or a non-asphaltic polymeric coating (abstract and the paragraph bridging columns 4 and 5).
Claim 40, the coating at least partially infiltrates the fiberglass mat of the substrate (abstract and the paragraph bridging columns 4 and 5).
Claim 41, roofing material may further comprise a second substrate positioned on the upper surface of the coated substrate (Figure 2, column 3, lines 17-45 and the paragraph bridging columns 4 and 5).
Claim 42, the coating is applied onto an upper surface and a lower surface of the second substrate, thereby forming a coated second substrate (Figure 2, column 3, lines 17-45 and the paragraph bridging columns 4 and 5).
Claim 43, the roofing material may further comprise a polymer-based coating layer positioned between the coated substrate and the coated second substrate (Figure 2, column 3, lines 17-45 and the paragraph bridging columns 4 and 5).
Claim 44, the coating is applied onto the polymer-based coating layer, thereby forming a coated polymer-based coating layer (Figure 2, column 3, lines 17-45 and the paragraph bridging columns 4 and 5).
Claim 45, the roofing material is a roofing shingle (title and abstract).
Claim 46, the roofing shingle is one of (i) a single layer shingle or (ii) a laminated shingle having two or more layers (abstract).
Claim 47, the roofing material further comprises granules (paragraph bridging columns 4 and 5).
Claim 48, the roofing material further comprises fines (column 4, lines 59-65).
Claim 49, the granules are applied to a first side of the coated substrate and the fines are applied to a second side of the coated substrate (column 4, line 59 through column 5, line 19).
Response to Arguments
Applicant's arguments filed 9/22/2025 have been fully considered but they are not persuasive.
The applicant asserts that Frankoski fails to teach or suggest a single layer fiberglass mat that is uncoated. The examiner respectfully disagrees. Regarding the claimed single layer fiberglass mat being uncoated, Frankoski discloses that the scrim/mat composite is formed and then asphalt coated (paragraph bridging columns 4 and 5). Therefore, Frankoski teaches that the intermediate product of the invention (prior to coating) is uncoated. Plus, O’Connor discloses that it is conventional in the art to construct a multilayer shingle substrate and then coat the substrate (see entire document including [0028]-[0035] and [0040]). Therefore, it would have been obvious to one having ordinary skill in the art to construct the coated substrate shingle of Frankoski by any suitable method, such as disclosed by O’Connor, because it is conventional and/or because within the general skill of a worker in the art to select a production step order on the basis of its suitability and desired characteristics.
The applicant asserts that the applied prior art fails to teach or suggest a roll shape. The examiner respectfully disagrees. Frankoski does not appear to mention the roofing material being in roll form but Swayne discloses that it is known in the art to construct roofing material in shingle or roll form (see entire document including [0002] and [0012]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the roofing material of Frankoski in any suitable form, such as a roll, because it is within the general skill of a worker in the art to select a known roofing material form on the basis of its suitability and desired characteristics for the intended application.
The applicant asserts that the applied prior art fails to teach or suggest the claimed fiberglass mat basis weight. The examiner respectfully disagrees. Frankoski does not appear to mention the basis weight of the fiberglass mat but Hannes discloses that it is known in the art to construct a fiberglass mat with a basis weight of about 2 lbs/csf to provide a roofing material with improved tear strength (see entire document including column 1, lines 13-16, column 2, lines 35-38 and column 6, lines 34-64). Therefore, it would have been obvious to one having ordinary skill in the art to construct the fiberglass mat of Frankoski with a basis weight of about 2 lbs/csf to provide the roofing material with improved tear strength.
In response, the applicant asserts that Hannes fails to teach the claimed first fiber direction and second fiber direction. Applicant’s argument is not commensurate in scope with the rejection. Frankoski, not Hannes, is relied upon to teach said limitation.
The applicant asserts that the applied prior art fails to teach or suggest the claimed ratio. The examiner respectfully disagrees. Frankoski discloses that the (woven or nonwoven) scrim preferably has a 10x10 (1:1) thread configuration (column 3, lines 53-61 and column 5, lines 42-48) but Frankoski does not limit the scrim to said configuration. O’Connor discloses that it is known in the art to construct a scrim layer with about 1 to about 10 yarns per inch in each of the machine and transverse directions and that more yarns may be present in the machine direction than the transverse direction (see entire document including [0022]-[0024]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the scrim of Frankoski with any desired fiber ratio, such as claimed, because it is within the general skill of a worker in the art to select a machine direction to transverse direction fiber ratio on the basis of its suitability and desired characteristics.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
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