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 § 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). The granules are exposed to the elements (1:35-43), and thus would be in a prime region of the shingle.
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 imbedded in an organic coating (¶0060) as part of a shingle (¶0004). Gittens et al. teaches the granule as being exposed to the sun during application (¶0005), and thus it would be present in the prime region of the shingle.
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 July 9, 2026 have been fully considered but they are not persuasive, because:
A) 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.
B) 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.
The fact that the siloxane of Fehner et al. changes from hydrophobic to hydrophilic during exposure does not distinguish the coating from that of Gittens et al. Fehner et al. teaches the use of vinylsiloxane polymers or vinyl silanes (Examples), which are the same units allowed in the teaching of Gittens et al. (¶0026). As these compounds have the same chemical structure, they would inherently have the same properties, i.e. the change in hydrophilicity. As such, the teachings would be relevant to a person of ordinary skill in the art.
C) The applicant’s argument that Gittens et al. and Fehner et al. do not teach the granule as being present in the prime region of the shingle is not persuasive. 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). The granules are exposed to the elements (1:35-43), and thus would be in a prime region of the shingle. Gittens et al. teaches the granules as being imbedded in an organic coating (¶0060) as part of a shingle (¶0004). Gittens et al. teaches the granule as being exposed to the sun during application (¶0005), and thus it would be present in the prime region of the shingle.
D) The applicant’s argument that a person of ordinary skill in the art would not replace the aluminosilicate of Gittens et al. with the expanded shale or clay of Teng et al. is not persuasive. The shale and clay of Teng et al. is an aluminosilicate that is capable of calcining, and thus would be suitable for use in Gittens et al. As these compounds are species within the genus disclosed in Gittens et al., there would be a reasonable expectation of success in making the substitution.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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