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
The amendment filed on 3/20/2025 has been entered.
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 25-37 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, 28, 29, 31, 33, 35 and 37, Frankoski discloses a roofing material comprising: a fiberglass mat, wherein the 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 2, column 1, lines 3-20, column 3, lines 17-45 and column 4, line 66 through column 5, line 49).
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.
Claims 31 and 35, Frankoski discloses a coating may be applied onto the upper surface and the lower surface of the fiberglass mat (abstract, Figure 2, column 3, lines 28-45, and the paragraph bridging columns 4 and 5).
Claims 31 and 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 (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 fiberglass mat (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 fiberglass mat 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 fiberglass mat and the fines are applied to a second side of the coated fiberglass mat (column 4, line 59 through column 5, line 19).
Response to Arguments
Applicant's arguments filed 3/20/2025 have been considered but are mostly moot in view of the new ground(s) of rejection.
Regarding applicant’s argument that Frankoski fails to teach or suggest a coating applied onto the upper surface and lower surface of a fiberglass mat, the examiner respectfully disagrees. In Frankoski, the scrim (60) and mat (65) in combination may be considered the claimed fiberglass mat (comprising machine and transverse direction fibers). Figure 2 of Frankoski shows a coating on both surfaces of said combination. Plus, Frankoski discloses that one or more coatings may be positioned between the scrim and the mat (column 3, lines 28-45).
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 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
Prosecution Insights