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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 8-10, 13, 15, 17, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gittens et al. (WO 2015/112590).
Considering Claims 8-10 and 13: Gittens et al. teaches a roofing granule comprising a hydrophobic surface treatment (¶0010), where the surface treatment comprises greater than 0.5 weight percent of a siloxane polymer (¶0027). Gittens et al. teaches the granule as comprising a ceramic coating on the kaolin (¶0014) that increases the whiteness (i.e. changes the surface color) (¶0054-55).
Considering Claim 15: Gittens et al. does not require the siloxane polymer as being fluorinated.
Considering Claim 17: Gittens et al. teaches a construction article comprising a substrate (¶0058), an organic coating (¶0060) and the roofing granules embedded in the coating (¶0060).
Considering Claims 19 and 20: Gittens et al. teaches the granules as being part of a shingle (¶0004).
Claims 8, 9, 15, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lichtenhan et al. (US 2006/0188732).
Considering Claims 8, 9, 15, and 16: Lichtenhan et al. teaches a particle (Claim 12) that is coated with a silsequioxane polymer (¶0007) in an amount of 1 to 5 weight percent on talc or bentonite (Table 2).
Lichtenhan et al. does not teach that the particles are used as roofing granules. However, this is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MEPP § 2111.02.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fehner et al. (US Pat. 3,397,073) in view of Gittens et al. (WO 2015/112590).
Considering Claims 1, 3, and 7: Fehner et al. teaches a roofing granule comprising a hydrophobic surface treatment (Abstract) comprising a hydrocarbon oil and a silicon containing polymer (3:20-34). Fehner et al. teaches the silicon polymer as being 4.8 parts and the oil as being 95.2 parts (3:20-34).
Fehner et al. is silent towards the range of amounts for the oil and silicon containing polymer. However, Gittens et al. teaches applying a hydrophobic treatment to roofing granules to provide at least 0.5 weight percent of siloxane (¶0027). This would result in greater than 0.5 weight percent of the oil as well, as the oil is present in an amount greater than the siloxane. Fehner et al. and Gittens et al. are analogous art as they are concerned with the same field of endeavor, namely hydrophobically treated roofing granules. It would have been obvious to a person of ordinary skill in the art to have controlled the hydrophobic treatment of Fehner et al. to provide the amount of siloxane of Gittens et al., and the motivation to do so would have been, as Gittens et al. suggests, to provide the desired degree of hydrophobicity (¶0027).
Considering Claim 2: Fehner et al. does not include a polymer represented by the claimed formula, as the long-chain hydrocarbon is not present (3:20-34).
Considering Claim 4: Fehner et al. teaches the granules as comprising kaolin/a porous mineral based granule (Example 1).
Considering Claims 5 and 6: Fehner et al. teaches the granules as comprising a ceramic coating comprising titanium dioxide/a white pigment (Example 1).
Claims 8-10, 13-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fehner et al. (US Pat. 3,397,073) in view of Gittens et al. (WO 2015/112590).
Considering Claims 8, 9, 13, 14: Fehner et al. teaches a roofing granule comprising a hydrophobic surface treatment (Abstract) comprising a silicon containing polymer (3:20-34). Fehner et al. teaches the granules as comprising a ceramic coating comprising titanium dioxide/a white pigment (Example 1), and thus the color of the granules has been changed.
Fehner et al. is silent towards the range of amounts for the silicon containing polymer. However, Gittens et al. teaches applying a hydrophobic treatment to roofing granules to provide at least 0.5 weight percent of siloxane (¶0027). Fehner et al. and Gittens et al. are analogous art as they are concerned with the same field of endeavor, namely hydrophobically treated roofing granules. It would have been obvious to a person of ordinary skill in the art to have controlled the hydrophobic treatment of Fehner et al. to provide the amount of siloxane of Gittens et al., and the motivation to do so would have been, as Gittens et al. suggests, to provide the desired degree of hydrophobicity (¶0027).
Considering Claim 10: Fehner et al. teaches the granules as comprising kaolin/a porous mineral based granule (Example 1).
Considering Claim 15: Fehner et al. does not teach a fluorinated siloxane polymer.
Considering Claims 17-20: Fehner et al. teaches a shingle comprising a surface, an asphalt coated on the surface, and the granules partially embedded in the asphalt (1:35-43).
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Fehner et al. (US Pat. 3,397,073) in view of Gittens et al. (WO 2015/112590) as applied to claim 10 above, and further in view of Teng et al. (US 2008/0086970).
Considering Claims 11 and 12: Fehner et al. and Gittens et al. collectively teach the granules of claim 10 as shown above.
Fehner et al. does not teach the granules as being from the claimed group. However, Teng et al. teaches using an expanded shale/haydite, expanded clay or expanded clay as a roofing granule (¶0009). Fehner et al. and Teng et al. are analogous art as they are concerned with the same field of endeavor, namely hydrophobic treatment of mineral granules. It would have been obvious to a person of ordinary skill in the art to have used the mineral of Teng et al. in the granule of Fehner et al., and the motivation to do so would have been, as Teng et al. suggests, they are lightweight natural materials for shingles (¶0009).
Claims 8-13, 15, 17, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Gittens et al. (WO 2015/112590) as applied to claim 10 above, and further in view of Teng et al. (US 2008/0086970).
Considering Claims 8-13: Gittens et al. teaches a roofing granule comprising a hydrophobic surface treatment (¶0010), where the surface treatment comprises greater than 0.5 weight percent of a siloxane polymer (¶0027). Gittens et al. teaches the roofing granules as being made from kaolin (¶0009), which is a porous material.
Gittens et al. does not teach the granules as being from the claimed group. Gittens et al. teaches the granules as being an aluminosilicate material (¶0006). However, Teng et al. teaches using an expanded shale/haydite, expanded clay or expanded clay as a roofing granule (¶0009). Gittens et al. and Teng et al. are analogous art as they are concerned with the same field of endeavor, namely hydrophobic treatment of mineral granules. It would have been obvious to a person of ordinary skill in the art to have used the mineral of Teng et al. in the granule of Gittens et al., and the motivation to do so would have been, as Teng et al. suggests, they are lightweight natural materials for shingles (¶0009).
Considering Claim 15: Gittens et al. does not require the siloxane polymer as being fluorinated.
Considering Claim 17: Gittens et al. teaches a construction article comprising a substrate (¶0058), an organic coating (¶0060) and the roofing granules embedded in the coating (¶0060).
Considering Claims 19 and 20: Gittens et al. teaches the granules as being part of a shingle (¶0004).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 8-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-7, 9-12, and 14-17 of copending Application No. 18/122,864 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 8-10: Claims 2 and 12 of Application ‘864 teaches a roofing granule comprising porous mineral based granules comprising a hydrophobic coating comprising a silicon containing polymer in an amount of 0.05 to 5 weight percent. This teaches the claimed composition in an anticipatory manner.
Considering Claims 11 and 12: Claims 4 and 5 correspond to instant claims 11 and 12.
Considering Claims 13 and 14: Claims 6 and 7 correspond to instant claims 13 and 14.
Considering Claim 15: Claim 10 corresponds to instant claim 15.
Considering Claim 16: Claim 11 corresponds to instant claim 16.
Considering Claims 17-20: Claim 14-17 correspond to instant claims 17-20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 8-14, 17, 19, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 12, and 15 of copending Application No. 18/122,857 in view of Gittens et al. (WO 2015/112590).
Considering Claims 8-10: Claim 6 of Application ‘857 teaches a roofing granule comprising porous mineral based granules comprising a hydrophobic coating comprising a silicon containing polymer.
Application ‘857 is silent towards the amount of the silicon containing polymer. However, Gittens et al. teaches applying a hydrophobic treatment to roofing granules to provide at least 0.5 weight percent of siloxane (¶0027). Application ‘857 and Gittens et al. are analogous art as they are concerned with the same field of endeavor, namely hydrophobically treated roofing granules. It would have been obvious to a person of ordinary skill in the art to have controlled the hydrophobic treatment of Application ‘857 to provide the amount of siloxane of Gittens et al., and the motivation to do so would have been, as Gittens et al. suggests, to provide the desired degree of hydrophobicity (¶0027).
Considering Claims 11 and 12: Claims 2 and 3 correspond to instant claims 11 and 12.
Considering Claims 13 and 14: Claims 4 and 5 correspond to instant claims 13 and 14.
Considering Claims 17, 19, and 20: Claim 12 and 15 correspond to instant claims 17-20.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed January 7, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Gittens et al. does not teach the claimed granules of claim 8 is not persuasive. While one of the alternative rejections over Gittens et al. is overcome (the rejection with regard to the porous granules), the other rejection still reads on the instant claims. Gittens et al. teaches the granule as comprising a ceramic coating on the kaolin (¶0014) that increases the whiteness (i.e. changes the surface color) (¶0054-55).
B) The applicant’s argument that Fehner et al. teaches an amount of polymer below the claimed range in the examples is not persuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP § 2123. While Fehner et al. teaches a specific example, the reference does not teach the range of useful or desirable amounts of the polymer. As such, a person of ordinary skill in the art would look to other art in the same field of endeavor for guidance on the useful amounts of the siloxane. Gittens et al. teaches applying a hydrophobic treatment to roofing granules to provide at least 0.5 weight percent of siloxane (¶0027). This would result in greater than 0.5 weight percent of the oil as well, as the oil is present in an amount greater than the siloxane. Fehner et al. and Gittens et al. are analogous art as they are concerned with the same field of endeavor, namely hydrophobically treated roofing granules. It would have been obvious to a person of ordinary skill in the art to have controlled the hydrophobic treatment of Fehner et al. to provide the amount of siloxane of Gittens et al., and the motivation to do so would have been, as Gittens et al. suggests, to provide the desired degree of hydrophobicity (¶0027).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05.
C) The applicants argument that there is no reasonable expectation of success in using the amount of Gittens et al. in the granule of Fehner et al. is not persuasive. Both references use the polymer to provide a hydrophobic surface on the particle. Further, the hydrophobic nature of the siloxane particles is well known in the art, as is their utility in forming coatings. Obviousness does not require absolute predictability, but at least some degree of predictability is required. See MPEP § 2143.02. A person of ordinary skill in the art would have a reasonable expectation of success in combining the teachings of Fehner et al. and Gittens et al. due to their similar compositions and utility.
D) The applicant’s arguments with regard to claim 2 are persuasive and the rejection has been withdrawn. However, as the applicant has persuasively argued, Fehner et al. does not teach a siloxane of the structure set forth in claim 2. As the claim requires the absence of polymers of this structure, the claim is thus taught by the coating composition of Fehner et al.
E) 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 porous mineral based granules are not coated) 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). In fact, the claims specifically recite a coated particle in the dependent claims (see claim 13), and thus the coating of Fehner et al. would be within the scope of the claimed invention.
F) The applicant’s argument that application ‘864 only teaches the claimed coating on the additional granules is not persuasive. The additional granules of application ‘864 read on the claimed granules of the instant invention.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767