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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 14th, 2026, has been entered.
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 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Teng et al (US2009/0110818A1).
With regards to claim 1, Teng discloses a roofing shingle comprising a shingle mat 14 including an asphalt coating 18 depicted as having an upper surface and a lower surface (i.e., a shingle comprising a sheet of roofing material having a first side and a second side) and a layer of granules positioned along the upper surface (i.e., at least one patch of granules positioned along the first side of the sheet of roofing materials), wherein the layer of granules includes alternate granules 36 depicted as having a first density (i.e., the at least one patch of granules comprises a first plurality of granules defining a first partial granule patch positioned along the sheet of roofing material and having a first granule density) and prime granules 57 depicted as having a second density and located on top of the alternate granules 36 (i.e., a second plurality of granules defining a second partial granule patch positioned on top of the first plurality of granules and having a second granule density) (Teng: abstract; para. [0015] and [0019]-[0020]; claim 1; Fig. 3). It is additionally noted that the present specification appears to use the term “density” rather broadly (i.e., as best understood from the present specification, a person of ordinary skill would consider density as referring to any density known in the art, such as either a number density or a volume density, though such densities would be similar since the granules depicted in the present drawings and as known in the art are similar in diameter). Teng further discloses that in a given sheet, the alternate granules 36 constitute approximately 10 percent of the total granules (the total granules, as best understood, being the combination of alternate granules 36 and prime granules 57, and therefore, the second granule density of the second partial granule patch is different from the first granule density of the first granule patch) (Teng: para. [0025]). In particular, this density may be such that a first granule density is less than the final density. It is further noted that the alternate granules 36 and prime granules 57 constitute the total layer of granules disclosed in Teng, which is depicted as having a total granule density (i.e., the first and second granule partial patches together define the at least one patch of granules having a final granule density, and since the total amount of granules must be greater than the sum of the alternate granules and prime granules, the final granule density must be greater than either the first granule density or the second granule density) (Teng: Fig. 3). In addition, with respect to the language “a second plurality of granules defining a second partial granule patch positioned directly on top of and contacting the first plurality of granules and having a second granule density”, it is noted that Figure 3 of Teng depicts such a configuration. Since at least two of the granules of the second partial granule patch are on top of the first plurality of granules, the present limitation is met. Alternatively, the two granules 57 which touch the first plurality of granules may be considered, by themselves, to constitute a second partial granule patch meeting the present claims.
Regarding the amended claim language “formed from a first partial charge of granules” and “formed from a second partial charge of granules applied on top of the first partial granule patch”, it is noted that this language constitutes-product-by-process language. Such language does not limit the claimed invention to the material performance of the recited steps, but rather, only the structure implied, per MPEP 2113. In the present case, the claims require first and second pluralities of granules, such that the second partial granule patch is on top of the first granule patch, and Teng discloses such a product.
Regarding the amended claim language “first granule density less than a final granule density of the at least one patch of granules”, since the final granule density is essentially the combination of the first and second pluralities of granules, the first granule density is necessarily less than the final granule density (i.e., as the first granule density is a subcomponent of the final granules) (see above discussion).
Regarding the claim language “wherein the granules of the second partial granule patch fill in spaces between granules of the first plurality of granules to create the at least one patch of granules, the second partial granule patch having a second granule density less than the final granule density,” It is noted that Figure 3 of Teng depicts the granules of the second granule patch located between (i.e., filling spaces between granules) of the first plurality of granule patch (see above discussion). In addition, since the final granule density is essentially the combination of the first and second pluralities of granules, the second granule density is necessarily less than the final granule density (i.e., as the second granule density is a subcomponent of the final granules) (see above discussion).
With regards to claim 2, Teng depicts individual alternate granules 36 (i.e., portions of the first granule patch) which have thicknesses which are less than those of individual prime granules 57 (i.e., portions of the second granule patch) (Teng: Fig. 3). It is noted that the claim only requires “a thickness” having the clamed structure (i.e., the present claim is met if the first partial granule patch has any conceivable thickness which is less than that of the second granule patch).
With regards to claim 3, the sheet of roofing material comprises an asphalt coating 18 which is depicted as applied along at least the first side thereof (Teng: para. [0023]-[0024]; Fig. 3).
With regards to claim 4, the alternate granules 37 and prime granules 57 are depicted as applied in specific amounts (i.e., predetermined amounts) (Teng: Fig. 3). In the interest of compact prosecution, it is noted that the language “predetermined amount” is rather broad in that, technically, whether or not a given amount is “predetermined” does not imply a particular structure (i.e., any amount can be considered to be a “predetermined amount”).
With regards to claim 5, Teng discloses that in a given sheet, the alternate granules 36 constitute approximately 10 percent of the total granules (the total granules, as best understood, being the combination of alternate granules 36 and prime granules 57, and therefore, the first predetermined amount of granules, at least by volume, is less than the second predetermined amount of granules) (Teng: para. [0025]).
With regards to claim 6, Teng discloses that in a given sheet, the alternate granules 36 constitute approximately 10 percent of the total granules (the total granules, as best understood, being the combination of alternate granules 36 and prime granules 57, and therefore, the first predetermined amount of granules, at least by volume, is less than one-half of a total predetermined amount of granules) (Teng: para. [0025]).
With regards to claim 7, since, as best understood, the alternate granules 37 are contained entirely within the first granule patch, the second granule density of the second granule patch (i.e., the density of prime granules 57) is necessarily greater than the first granule density, which is zero (i.e., since there are no alternate granules 37 in the second granule patch) (see above discussion). Furthermore, by virtue of being physically present, the second plurality of granules (i.e., prime granules 57) include at least an amount of granules which are capable of filling in spaces between granules of the first density of granules, as depicted by Teng (Teng: Fig. 3).
With regards to claim 8, Teng discloses a roofing shingle comprising a shingle mat 14 including an asphalt coating 18 depicted as having an upper surface and a lower surface (i.e., a shingle comprising a sheet of roofing material having a first side and a second side) and a layer of granules positioned along the upper surface (i.e., at least one patch of granules positioned along the first side of the sheet of roofing materials), wherein the layer of granules may be viewed as subdivided into a first partial granule patch, second granule patch, and third granule patch, wherein the first partial granule patch is defined by a first plurality of granules, is positioned along the sheet of roofing material, and has a first granule density, the second granule patch is defined by a second plurality of granules, is positioned on top of the first plurality of granules, and has a second granule density, and the third granule patch is defined by a third plurality of granules, is positioned on top of the second granule patch, and has a third granule density (Teng: abstract; para. [0015] and [0019]-[0020]; claim 1; Fig. 3). Further, it is noted that in such case, the second granule patch may be considered to only conclude granules which are directly on top of and contacting the first plurality of granules. As can be seen from Figure 3 of Teng, the second granule density of the second partial granule patch is different from the first granule density of the first partial granule patch, and the third granule density of the third partial granule patch is different from the second granule density of the second granule patch (Teng: Fig. 3). It is further clear from Figure 3 of Teng that the combination of the first, second, and third granule patches collectively define a granule patch having a final granule density greater than the first granule density, the second granule density, or the third granule density (Teng: Fig. 3). As best understood, the term “desired” does not substantially provide structure (i.e., the final granule density is “desired” in that it is acknowledged and selected by Teng) (Teng: Fig. 3).
Regarding the amended claim language “formed from a first partial charge of granules” and “formed from a second partial charge of granules applied on top of the first partial granule patch”, it is noted that this language constitutes-product-by-process language. Such language does not limit the claimed invention to the material performance of the recited steps, but rather, only the structure implied, per MPEP 2113. In the present case, the claims require first and second pluralities of granules, such that the second partial granule patch is on top of the first granule patch, and Teng discloses such a product.
Regarding the amended claim language “first granule density less than a desired final granule density of the at least one patch of granules”, since the final granule density is essentially the combination of the first and second pluralities of granules, the first granule density is necessarily less than the final granule density (i.e., as the first granule density is a subcomponent of the final granules) (see above discussion).
Regarding the claim language “wherein the granules of the second partial granule patch fill in spaces between granules of the first plurality of granules to create the at least one patch of granules and having a second granule density less than the final granule density,” It is noted that Figure 3 of Teng depicts the granules of the second granule patch located between (i.e., filling spaces between granules) of the first plurality of granule patch (see above discussion). In addition, since the final granule density is essentially the combination of the first and second pluralities of granules, the second granule density is necessarily less than the final granule density (i.e., as the second granule density is a subcomponent of the final granules) (see above discussion).
With regards to claim 9, the first, second, and third pluralities of granules are depicted as applied in specific amounts (i.e., predetermined amounts) (Teng: Fig. 3). In the interest of compact prosecution, it is noted that the language “predetermined amount” is rather broad in that, technically, whether or not a given amount is “predetermined” does not imply a particular structure (i.e., any amount can be considered to be a “predetermined amount”).
With regards to claim 10, Teng depicts the first predetermined amount of granules and the third predetermined amount of granules to be less than half of a total predetermined amount of granules of the at least one patch of granules (Teng: Fig. 3).
With regards to claim 11, by virtue of being physically present, the second plurality of granules include at least an amount of granules which are capable of filling in spaces between granules of the first plurality of granules, as depicted by Teng (Teng: Fig. 3).
With regards to claim 12, the first partial granule patch is depicted as having a thickness which is different from a thickness of the second partial granule patch, and the thickness of the second partial granule patch is depicted as different from a thickness of the third partial granule patch (Teng: Fig. 3).
With regards to claim 13, Teng depicts the at least one patch of granules as having a total thickness defined by a combination of the thickness of each of the first partial granule patch, the second granule patch, and the third partial granule patch (Teng: Fig. 3).
With regards to claim 14, the sheet of roofing material according to Teng comprises an asphalt coated sheet (see above discussion).
With regards to claim 15, Teng discloses a roofing shingle comprising a shingle mat 14 including an asphalt coating 18 depicted as having an upper surface and a lower surface (i.e., a shingle comprising a sheet of roofing material having a first side and a second side) and a layer of granules positioned along the upper surface (i.e., at least one patch of granules positioned along the first side of the sheet of roofing materials), wherein the layer of granules may be viewed as subdivided into a first partial granule patch and a second granule patch, wherein the first partial granule patch is defined by a first plurality of granules, is positioned along the sheet of roofing material, and has a first granule density, and the second granule patch is defined by a second plurality of granules, is positioned on top of the first plurality of granules, and has a second granule density (Teng: abstract; para. [0015] and [0019]-[0020]; claim 1; Fig. 3). Further, it is noted that in such case, the second granule patch may be considered to only conclude granules which are directly on top of and contacting the first plurality of granules. As can be seen from Figure 3 of Teng, the second granule density of the second partial granule patch is different from the first granule density of the first partial granule patch, and the third granule density of the third partial granule patch is different from the second granule density of the second granule patch (Teng: Fig. 3). Similarly, it is clear from Figure 3 of Teng that each of the first and second partial granule patches comprise first and second predetermined amounts of granules, respectively. It is further clear from Figure 3 of Teng that the combination of the first and second granule patches collectively define a granule patch having a final granule density greater than the first granule density and the second granule density (Teng: Fig. 3). As best understood, the term “desired” does not substantially provide structure (i.e., the final granule density is “desired” in that it is acknowledged and selected by Teng) (Teng: Fig. 3).
Regarding the amended claim language “formed from a first partial charge of granules” and “formed from a second partial charge of granules applied on top of the first partial granule patch”, it is noted that this language constitutes-product-by-process language. Such language does not limit the claimed invention to the material performance of the recited steps, but rather, only the structure implied, per MPEP 2113. In the present case, the claims require first and second pluralities of granules, such that the second partial granule patch is on top of the first granule patch, and Teng discloses such a product.
Regarding the amended claim language “first predetermined amount of granules and less than a final granule density of the at least one patch of granules”, since the final granule density is essentially the combination of the first and second pluralities of granules, the first granule density is necessarily less than the final granule density (i.e., as the first granule density is a subcomponent of the final granules) (see above discussion).
Regarding the claim language “wherein granules of the second partial granule patch fill in spaces between granules of the first plurality of granules to create the at least one patch of granules” and “the second predetermined amount of granules and less than the desired final granule density”, it is noted that Figure 3 of Teng depicts the granules of the second granule patch located between (i.e., filling spaces between granules) of the first plurality of granule patch (see above discussion). In addition, since the final granule density is essentially the combination of the first and second pluralities of granules, the second granule density is necessarily less than the final granule density (i.e., as the second granule density is a subcomponent of the final granules) (see above discussion).
With regards to claim 16, it is clear from Figure 3 of Teng that the first partial granule patch has a thickness that is less than a thickness of the second granule patch, and further, the at least one patch of granules has a thickness defined by a combination of the thickness of the first partial granule patch and the second partial granule patch (Teng: Fig. 3).
With regards to claim 17, it is clear from Figure 3 of Teng that the first predetermined amount of granules comprises less than one-half of a total predetermined amount of granules of the at least one patch of granules (Teng: Fig. 3).
With regards to claim 18, since, as best understood, the first plurality of granules are contained entirely within the first granule patch, the second granule density of the second granule patch is necessarily greater than the first granule density, which is zero (i.e., since there are no first granules the second granule patch) (see above discussion). Furthermore, by virtue of being physically present, the second plurality of granules include at least an amount of granules which are capable of filling in spaces between granules of the first density of granules, as depicted by Teng (Teng: Fig. 3).
With regards to claim 19, the shingle of Teng further comprises a third partial granule patch positioned on top of the second granule patch, the third granule patch comprising a third predetermined amount of granules, and wherein the third partial granule patch has a third granule density that is different from at least one of the first granule density and the second granule density and is determined by the third predetermined amount of granules (Teng: Fig. 3).
With regards to claim 20, it is clear from Figure 3 of Teng that the first predetermined amount of granules and the third predetermined amount of granules comprise less than half of a total predetermined amount of granules of the at least one patch of granules (Teng: Fig. 3).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
On pages 9-10, Applicant summarizes the previous grounds of rejection, and then argues that the claims as amended require coordinated partial charges which cooperate to create the claimed final granule patch. On pages 10-11, Applicant cites to the present specification, noting that the specification describes coordination and synchronization as possible, and then concludes that Teng describes applying granules 36 differently, and that substantially all of the granules are coated with asphalt. Applicant further concludes on pages 11-12, that Teng does not form a first partial granule patch which awaits completion. These arguments are not found persuasive, both because they are directed to product-by-process language which fails to imply a structural difference between the present claims and the invention of Teng, and since they are not commensurate in scope with the present. Applicant appears to be arguing that the claims require the material performance of the recited application steps (i.e., applying granules via charges). However, the present claims are product claims. Therefore, the argued language is in product-by-process form. Teng need not teach Applicant’s process steps as claimed. In addition, Application of granules via an applicator, or as a charge, does not imply a coordinated or synchronized structure. As best understood, the claimed granule locations (i.e., that the second plurality of granules is positioned on top of the first plurality of granules, such that granules of the second plurality fill in spaces between granules of the first plurality) are the only structure implied by the present product-by-process language. Figure 3 of Teng expressly depicts these structural elements. Therefore, Applicant’s amended claim language is not seen as distinguishing over Teng.
On page 12, Applicant argues that Figure 3 of Teng fails to depict the structure of the claims as amended. The Examiner disagrees. Figure 3 of Teng need not depict application of granules applied via the claimed product-by-process steps. In addition, Figure 3 of Teng depicts granules of the second granule patch which fill in spaces of the first granule patch, such that each of the first and second partial granule patches have a granule density less than that of the final granule density.
Conclusion
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/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783
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