2025DETAILED ACTION
This is a non-final Office Action on the merits for U.S. App. 18/112,548. Receipt of the RCE, amendments, and arguments filed on 07/10/2025 is acknowledged.
Claims 1-26 are pending.
Claims 1-26 are examined.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/10/2025 has been entered.
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.
Claim(s) 1-17 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Rotz et al. (CA 2883204) in view of Araki (U.S. Publication 2017/0197879) and Verhoff et al. (U.S. Patent 10,774,535).
Regarding claim 1, Rotz et al. disclose a bituminous composition suitable for use in roofing materials (see paragraph 46), the bituminous composition comprising: a bituminous component comprising:
an asphalt component in an amount in the range of 75-95 wt% of the bituminous component (paragraph 9 discloses the asphalt feedstock, or asphalt component, is between 65% to about 99% of the total weight of the bitumen composition, which overlaps the range as defined);
a rubber polymer in an amount of 5-20 wt% of the bituminous component (paragraph 9 teaches one or more additives can be provided between 0.5 and 10 wt% of the bitumen composition, which overlaps the range as defined, and where paragraph 36 discloses such an additive can include rubber), and
a polyolefin wax in an amount up to 5% of the bituminous component (paragraph 9 discloses a polyolefin wax which can be provided in the range between 0.5 and 25 wt% of the bitumen composition, which also overlaps the range as defined).
However, Rotz et al. do not specifically disclose use of a filler component comprising of at least one of the components as defined and in the range as defined. It is highly well known in the art, as evidenced by Araki, that asphalt compositions can comprise of additives that include inorganic fillers, which can comprise of magnesium carbonate, magnesium hydroxide, wollastonite, and others, where such additives can be 50 parts by mass or less based on 100 parts by mass of the asphalt material. See paragraph 154. Though Applicant removed reference to wollastonite as one of the filler components of claim 1, the prior art of record teach that all of such filler components are interchangeable for one another to provide fire resistance to the assembly. Col. 10, ll. 14-34 of Verhoff et al. teaches that such filler elements of shingle assemblies can comprise of fire-retardant materials which include huntite, hydromagnesite, zinc borate, magnesium hydroxide and others, as well as can comprise of mixtures and blends of any number of such individual fire-retardant materials as needed. Applicant provides no criticality for which set of fillers is used and teaches that all of or some of such fillers can be used with one another to obtain the same end result of fire resistant. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the filler of Rotz et al. comprise of huntite and hydromagnesite or magnesium hydroxide and zinc borate, or combinations thereof, as taught in Verhoff et al. and Araki, since the prior art teach such fillers can be interchanged with one another to obtain the same fire-retardant characteristic end result and also since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (CCPA 1960). Furthermore it would have been obvious before the effective filing date of the claimed invention to have constructed the bituminous composition of Rotz et al. to comprise of such a filler within the range of 20-70% of the bituminous composition, such as 50 wt% or less of the asphalt as taught in Araki, in order to provide the bituminous composition with better characteristics, such as fire retardance while balancing the costs of the construction and other characteristics of the asphalt material.
Regarding claim 2, Rotz et al. in view of Araki and Verhoff et al. render obvious the asphalt component has a pen range lying above 100 pen (paragraph 24 of Rotz et al. discloses the asphalt component can be roofing-grade bitumen in any one of the following hardness grades, 100/150, 150/200, 200/300 and 300+ dmm pen, thus overlapping the range as defined).
Regarding claim 3, Rotz et al. in view of Araki and Verhoff et al. render obvious the asphalt component is a 150-200 pen asphalt (paragraph 24 of Rotz et al. discloses the asphalt component can be roofing-grade bitumen in any one of the following hardness grades, 100/150, 150/200, 200/300 and 300+ dmm pen, thus overlapping the range as defined).
Regarding claim 4, Rotz et al. in view of Araki and Verhoff et al. render obvious the asphalt component is present in an amount in the range of 80-95 wt% of the bituminous component (paragraph 9 of Rotz et al. discloses the asphalt feedstock, or asphalt component, is between 65% to about 99% of the total weight of the bitumen composition, which overlaps the range as defined).
Regarding claim 5, Rotz et al. in view of Araki and Verhoff et al. render obvious the rubber polymer comprises (or is) one or more styrene block copolymers (paragraph 38 of Rotz et al. discloses SBS can be used for the rubber, which is a styrene block copolymer).
Regarding claim 6, Rotz et al. in view of Araki and Verhoff et al. render obvious the polyolefin wax is a polyethylene wax, a polypropylene wax, or a wax copolymer of ethylene and propylene (see paragraph 39 of Rotz et al.).
Regarding claim 7, Rotz et al. in view of Araki and Verhoff et al. render obvious wherein the polyolefin wax is present in an amount in the range of 0.5 - 4 wt% of the bituminous component (paragraph 9 of Rotz et al. discloses a polyolefin wax which can be provided in the range between 0.5 and 25 wt% of the bitumen composition, which also overlaps the range as defined).
Regarding claim 8, Rotz et al. in view of Araki and Verhoff et al. render obvious the total amount of the huntite, hydromagnesite, magnesium hydroxide, and/or zinc borate is in the range of 20-65% of the bituminous component (Araki discloses in paragraph 154 that the filler can be added at 50 parts per 100 parts or less of the asphalt, and thus overlaps the range as defined, where such features would be provided within Rotz et al. as explained above).
Regarding claim 9, Rotz et al. in view of Araki and Verhoff et al. render obvious the filler component comprises both huntite and hydromagnesite (Col. 10, ll. 14-34 of Verhoff et al. teaches that huntite or hydromagnesite or combinations thereof can be used together as such a filler, where such features would be provided within Rotz et al. as explained above).
Regarding claim 10, Rotz et al. in view of Araki and Verhoff et al. render obvious the huntite and hydromagnesite are present in a huntite:hydromagnesite ratio in the range of 1:4 to 4:1 (Applicant provides no criticality for such a range of ratios between each filler material and the ratio appears to depend on end user preference. As explained above, col. 10, ll. 14-34 of Verhoff et al. teach that mixtures and blends of any number of such fire-retardant materials can be used and thus teaches that such combination of materials is a design choice. Therefore, it would have been obvious before the effective filing date of the claimed invention to have used the huntite to hydromagnesite ratio within the prior art to fall within the range as defined in order to provide the end user with the needed fire retardance as needed and also since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).).
Regarding claim 11, Rotz et al. in view of Araki and Verhoff et al. render obvious the filler component further comprises wollastonite (see Araki at paragraph 154, where such a wollastonite filler would be provided with the other pair of filler components within Rotz et al. as taught in Verhoff et al. and as explained above).
Regarding claim 12, Rotz et al. in view of Araki and Verhoff et al. render obvious the filler component comprises the wollastonite, huntite, and hydromagnesite (as explained above, Verhoff et al. and Araki teach that such three filler components can be used separately or in combination with one another, where it would have been obvious to have used a filler component with all three of such components within Rotz et al., as taught in Araki and Verhoff et al., since the prior art teach such fillers can be interchanged with one another to obtain the same fire-retardant characteristic end result and also since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (CCPA 1960).).
Regarding claim 13, Rotz et al. in view of Araki and Verhoff et al. render obvious the filler component comprises the wollastonite, huntite, hydromagnesite, and zinc borate (as explained above, Verhoff et al. and Araki teach that such four filler components can be used separately or in combination with one another, where it would have been obvious to have used a filler component with all four of such components within Rotz et al., as taught in Araki and Verhoff et al., since the prior art teach such fillers can be interchanged with one another to obtain the same fire-retardant characteristic end result and also since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (CCPA 1960).).
Regarding claim 14, Rotz et al. in view of Araki and Verhoff et al. render obvious the filler component comprises magnesium hydroxide and zinc borate (as explained above, Verhoff et al. teach that such magnesium hydroxide and zinc borate filler components can be used separately or in combination with one another, where it would have been obvious to have used a filler component with those specific two components within Rotz et al., as taught in Verhoff et al., since the prior art teach such fillers can be interchanged with one another to obtain the same fire-retardant characteristic end result and also since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (CCPA 1960).).
Regarding claim 15, Rotz et al. in view of Araki and Verhoff et al. render obvious the filler component comprises zinc borate (as explained above, Verhoff et al. teach that such a zinc borate filler component can be used separately or in combination with other filler components, where it would have been obvious to have used a filler component with zinc borate as one of the components within Rotz et al., as taught in Verhoff et al., since the prior art teach such fillers can be interchanged with one another to obtain the same fire-retardant characteristic end result and also since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (CCPA 1960).).
Regarding claim 16, Rotz et al. in view of Araki and Verhoff et al. render obvious the claimed invention except specifically for a viscosity at 375 degree F in the range of 3500 to 8000 cp. However, paragraph 19 of Rotz et al. disclose that the bitumen’s penetration, softening point and viscosity can be optimized and adjusted to industry standards by adding polyolefin to it. Thus, the prior art of record teach such values for viscosity of the bituminous composition is optimizable and is a design choice based on the end user preferences, where it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have constructed the viscosity of the composition of Rotz et al. to fall within the range as defined, such as by modifying the polyolefin component of such a composition as taught in Rotz et al., in order to meet certain industry standards or end user requirements and also since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (CCPA 1955).
Regarding claim 17, Rotz et al. in view of Araki and Verhoff et al. render obvious a penetration index at 77 degrees F in the range of 20-70 dmm (see tables 1 and 2 of Rotz et al., which discloses a range of 28.4-61.4 dmm for multiple different compositions, which fall within the range as defined).
Regarding claim 24, Rotz et al. in view of Araki and Verhoff et al. render obvious the polyolefin wax is a polypropylene wax (see paragraph 39 of Rotz et al.).
Claim(s) 18-23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Rotz et al. in view of Araki, Verhoff et al., and Kalkanoglu et al. (CA 2783777).
Regarding claim 18, Rotz et al. in view of Araki and Verhoff et al. render obvious a roofing shingle comprising: at least one layer of bituminous composition according to claim 1, where paragraph 46 of Rotz et al. discloses such an asphalt can be used for making roofing shingles except specifically for the substrate which the asphalt is applied to and the granules adhered to the top surface of the bituminous composition. However, as evidenced by paragraph 39 of Kalkanoglu et al., roofing shingles are highly well known in the art to be constructed from a substrate coated with bitumen to yield a bitumen coated substrate and adhere granules thereto to form a typical roofing shingle. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed a roofing shingle with the bituminous composition of Rotz et al. in view of Araki by coating a substrate with the bituminous composition and adhering granules thereto, as taught in Kalkanoglu et al., in order to construct a typical roofing shingle that can survive the elements and sun exposure during use.
Regarding claim 19, Rotz et al. in view of Araki, Verhoff et al., and Kalkanoglu et al. render obvious a roofing system comprising: a roof structure; and disposed on the roof structure, a plurality of roofing shingles according to claim 18 (as explained above, Rotz et al. in view of Araki, Verhoff et al., and Kalkanoglu et al. render obvious such roofing shingles as taught in claim 18, where figures 5, 6, and 7 of Kalkanoglu et al. depict the roof which such shingles would typically be positioned upon in order to form a typical roof surface).
Regarding claim 20, Rotz et al. in view of Araki, Verhoff et al., and Kalkanoglu et al. render obvious the roofing system has a slope in the range of 2:12 to 12:12 (Kalkanoglu et al. disclose slopes of 3:12, 4:12, and 6:12 can be formed with such shingles, which fall within the ranges as defined and which roofs would be formed by the shingles of Rotz et al. as explained above).
Regarding claim 21, though Rotz et al. in view of Araki and Verhoff et al. disclose the composition according to claim 1, as explained above, and Rotz et al. teach such a composition is to be used to form a shingle or membrane for a roof (see paragraph 3), Rotz et al. does not specifically disclose the substrate which the asphalt is applied to. However, as evidenced by paragraph 39 of Kalkanoglu et al., roofing shingles or membranes are highly well known in the art to be constructed form a substrate coated with bitumen to yield a bitumen coated substrate. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed a roofing membrane with the bituminous composition of Rotz et al. in view of Araki by coating a substrate with the bituminous composition, as taught in Kalkanoglu et al., in order to construct a typical roofing membrane that can survive the elements and sun exposure during use.
Regarding claim 22, Rotz et al. in view of Araki, Verhoff et al., and Kalkanoglu et al. render obvious the roofing membrane further comprises a second bituminous composition disposed on a bottom side, opposite the top side, of the bituminous membrane (paragraph 26 of Kalkanoglu et al. discloses the same or a different bituminous coating can be applied to the upper surface and bottom surface of the substrate comprising a mat #808 saturated in bituminous material #810, where it would have been obvious to have applied such a bituminous composition of the prior art to both sides of a roofing membrane in order to use common practices to form a roofing membrane for use).
Regarding claim 23, Rotz et al. in view of Araki, Verhoff et al., and Kalkanoglu et al. render obvious the second bituminous composition is different from the first bituminous composition (paragraph 26 of Kalkanoglu et al. teaches that the same or different materials with different properties can be used for such bituminous composition coatings, where such features would be provided within Rotz et al. as explained above).
Regarding claim 25, Rotz et al. in view of Araki and Verhoff et al. render obvious a roofing shingle comprising: at least one layer of bituminous composition according to claim 1, where paragraph 46 of Rotz et al. discloses such an asphalt can be used for making roofing shingles except specifically for the substrate which the asphalt is applied to and the bituminous composition is disposed within the porous substrate. However, as evidenced by paragraph 39 of Kalkanoglu et al., roofing shingles are highly well known in the art to be constructed from a substrate coated with bitumen to yield a bitumen coated substrate and adhere granules thereto to form a typical roofing shingle. Paragraph 26 of Kalkanoglu et al. teaches the porous substate #808 of the membrane is saturated with a bituminous material #810, and coated on an upper surface with another bituminous coating #807 and on a lower surface by additional bituminous material #811. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed a roofing shingle with the bituminous composition of Rotz et al. in view of Araki and Verhoff et al. by providing the bituminous composition within the porous substrate, as taught in Kalkanoglu et al., in order to construct a typical roofing shingle that can survive the elements and sun exposure during use.
Claim(s) 26 is rejected under 35 U.S.C. 103 as being unpatentable over Rotz et al. in view of Araki.
Regarding claim 26, Rotz et al. disclose a bituminous composition suitable for use in roofing materials (see paragraph 46), the bituminous composition comprising: a bituminous component comprising:
an asphalt component in an amount in the range of 75-95 wt% of the bituminous component (paragraph 9 discloses the asphalt feedstock, or asphalt component, is between 65% to about 99% of the total weight of the bitumen composition, which overlaps the range as defined);
a rubber polymer in an amount of 5-20 wt% of the bituminous component (paragraph 9 teaches one or more additives can be provided between 0.5 and 10 wt% of the bitumen composition, which overlaps the range as defined, and where paragraph 36 discloses such an additive can include rubber), and
optionally a polyolefin wax in an amount up to 5% of the bituminous component (paragraph 9 discloses a polyolefin wax which can be provided in the range between 0.5 and 25 wt% of the bitumen composition, which also overlaps the range as defined).
However, Rotz et al. do not specifically disclose use of a filler component comprising of at least one of the components as defined and in the range as defined. It is highly well known in the art, as evidenced by Araki, that asphalt compositions can comprise of additives that include inorganic fillers, which can comprise of magnesium carbonate, magnesium hydroxide, wollastonite, and others, where such additives can be 50 parts by mass or less based on 100 parts by mass of the asphalt material. See paragraph 154. Applicant provides no criticality for which set of fillers is used and teaches that all of or some of such fillers can be used with one another to obtain the same end result of fire resistant. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the filler of Rotz et al. comprise of a filler within the range of 20-70% of the bituminous composition, such as a wollastonite that is 50 wt% or less of the asphalt as taught in Araki, in order to provide the bituminous composition with better characteristics, such as fire retardance, and also since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (CCPA 1960).
Response to Arguments
Applicant's arguments filed 07/10/2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding Applicant’s arguments that “Araki is silent with respect to a bituminous composition with a filler component comprising at least one of” the component sets defined within a range as defined, as explained above, Araki explicitly teaches in paragraph 154 that fillers provided within an asphalt composition can be provided 50 parts by mass or less based on 100 parts by mass of the asphalt, where such fillers can include one or more of wollastonite, magnesium hydroxide, calcium sulfate, magnesium carbonate, flame retardants, as well as others. Thus, Araki teaches the obviousness of adding such fillers within the asphalt composition within the range as broadly defined. Furthermore, as the claims and specification were originally filed, Araki taught use of wollastonite, which could have been used by itself as the filler for such a composition and thus provide the needed fire resistance as needed. Though Applicant removed such a component from claim 1, the originally filed specification teaches that all of such compositions used as filler can be used in place of one another or combined, where col. 10, ll. 14-34 of Verhoff et al. teaches that such filler elements of shingle assemblies can comprise of fire-retardant materials which include huntite, hydromagnesite, zinc borate, magnesium hydroxide and others, as well as can comprise of mixtures and blends of any number of such individual fire-retardant materials as needed and thus overlaps the filler components which Araki teaches can be used and which can be interchanged for one another. Thus, the prior art, when taken as a whole, teach the obviousness of such a filler component(s) in the range as defined and thus renders such features obvious. The rejections are considered proper and are upheld.
Regarding Applicant’s arguments that “the inclusion of the claimed fillers in an amount over 35% is critical in order to achieve fire resistance benefits,” it is noted that the claims have a lower limit of 32.5% and not 35% as Applicant argues. Furthermore, though the compositions of FR1 and FR2 which include fillers of 30% have been noted in figure 2, FR5 included a similar 30% filler composition but such a product was not evaluated and thus it cannot be assumed that all compositions which include 30% fillers or less would not function as defined. Applicant does not provide any further criticality for the now narrower range for the composition of the filler within the asphalt composition as defined and the tables and evaluations provided within the figures appear to explain that an increase in the amount of fire retardant material within a composition would increase the fire resistance of such a product, which is expected and known in the art. What is also missing from such evaluations and tables within the claims is any filler composition which is provided more than 42.5% and how such filler would affect the overall characteristics of the composition, and thus does not provide any criticality for the higher percentages within the range as defined. Thus, since Araki discloses such a filler should be 50% or less than the asphalt composition, Araki overlaps such a range of values evaluated and defined in the claimed invention and thus teaches such a range is known and used in the art.
Furthermore, it does not appear there is any criticality with respect to the type of components used for such a filler as defined. Samples FR9, FR11, FR12, and FR13 use the same percentage of filler (40%) while altering the amount of each component within the filler, i.e. raising or lower the amount of zinc borate or magnesium hydroxide within FR11 and FR13 or raising or lowering the amount of wollastonite or huntite and hydromagnesite within FR9 and FR12, where such different amounts of each respective filler drastically changes the average after flame time or average burned percentage of the sample relative to one another. Thus, it appears there is no criticality with respect to the specific filler component used as each specific filler component provides its own expected characteristic and, as explained above, the originally filed specification teaches such fillers can be used in place of one another. Thus, since Araki and Verhoff et al. teach such fillers as defined and used in the art and Araki teach the range as defined at which such fillers can be provided is known and commonly used in the art, the prior art of record is thus considered to teach such known and expected ranges and compositions as broadly defined. The rejections are considered proper and are upheld.
Regarding Applicant’s arguments that “the inventors have found that when the level of filler is increased to such levels, small amounts of polyolefin wax should be added in order to keep the composition at a viscosity at which it may be processed for roofing purposes,” Rotz et al. already teaches such features in paragraphs 36 and 39, where paragraph 36 teaches such an asphalt composition can comprise one or more additives which can improve certain properties of the asphalt product, such as penetration, hardness, viscosity and softening point, where such an additive can include a polyolefin wax as taught in paragraph 39. Paragraph 37 of Rotz et al. further defines the range at which such an additive is to be provided within the asphalt composition, which overlaps such a range as defined. Thus, the prior art of record teach such polyolefin waxes are known and used in the art and thus would not provide any unexpected results when provided within an asphalt composition. Such features as defined are thus not considered critical or unexpected and the prior art of record is considered to render such features obvious as explained above.
Conclusion
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635