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 .
Examiner’s Note
The examiner notes that the invention, in summary, is a method for changing the color and texture of ceramic roofing tile. In other words, per the specification, the invention is directed to matching old tiles on a roof. Matching it entails removing the old, damaged tile and replacing it with a new tile; however, the new tile must be aged or weather to match the existing aesthetic of the roof already in place. Aging or weathering the tile entails treating or exposing the new tile to acid treatments (using nitric, citric or equivalent acids) which both etches it (i.e., changes its texture) and discolors it. The resulting tile is therefore, one where the coating has been removed (or stripped) and the substrate materials on its surface etched and removed, resulting in an aged or discolored tile.
In addition, examiner notes that the preamble has been amended to state “concrete” roofing tiles instead of “ceramic” tiles; however, the examiner contends that the change in type of tile does not materially or substantively change the steps in the body of the claim. Per applicant’s specification, the method appears to be equally applicable to ceramic (technical field, see page 1 which describes the applicant’s method to weathering new ceramic tile), concrete or even cement (see page 8, which discusses the method of exposing cement tile to higher acid concentrations). Thus, examiner contends that the preamble, as amended, does not change how the prior art is applied by the examiner.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 – 4, 10 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over “How to make new roof tiles look old” (herein referred to as “Roof NPL” - NPL, dated December 3, 2021) in view Koreltz, et al. (US 5,637,559) and further in view of “A Method of Aging Marble” (herein referred to as “Marble NPL” dated June 4, 2021) or Horton, Jr, et al. (US 2007/0022911 A1).
With respect to claim 1, Roof NPL teaches a method for changing the color and texture of ceramic roofing tile, comprising: a) identifying a damaged tile to be replaced (Roof NPL states that it should be feasible to determine the color and quality of the tile by looking at the area covered by the headlap. The reference continues by stating that it is important to remove, clean and maintain the appearance of the roof, b) clean the damaged tile, c) optically measuring the damaged tile to yield a color determination (Roof NPL states that you can inspect the tile’s visual appearance, determine its color and finish and match any replacement tiles to ensure the roof’s aesthetic appearance) and d) select a replacement tile (Roof NPL states that it is possible to go to the same source as the original tiles or use salvaged tiled depending on the aesthetic that is desired – whether it be the new or old appearance of the roof).
Roof NPL, however, do not specifically teach the steps of stripping the tile and immersing/exposing it to acid solution(s) in order to weather or change its appearance (as recited in steps e) through j). However, the examiner contends that stripping a tile of its coating or sealant is obvious and known to one of ordinary skill in the art.
For example, Koreltz, et al. teach floor stripping compositions which are used for stripping vinyl tile of several coats of commercially-available urethane/acrylic finish.
With respect to exposing tile to acid (i.e, nitric acid for a predetermined amount of time), “Marble NPL” teaches that it is known to make a stone object look as if it has lasted and been around for years. The stone article or artifact is exposed (i.e, painted) with nitric acid solution or hydrochloric acid solution). The acid treated surfaces are rinsed with water and allowed to dry. After a period of time and additional water rinsing, the article will appear aged.
Alternatively, Horton, Jr, et al. teach a method of manufacturing luminescent tile and installing such tile on a pool floor. After installation of the tile on the pool floor, it may be exposed or treated with an acid wash (paragraph 0033). Muriatic acid (solution of hydrochloric acid) or the like may be used to remove excess coating and/or substrate materials from the tile. This acid treatment will allow for more surface exposure of the tile. In either case, both “Marble NPL” and Horton, Jr, et al. teach the use of acid solutions to change the texture and/or color of the tile since the substrate materials on the tile surface are removed.
The examiner therefore, contends that it would have been obvious to one of ordinary skill in the art at time the invention was filed to include in the method of Roof NPL, stripping the tile per Koreltz, et al. and the additional steps of “Marble NPL” or Horton, Jr, et al. for the purpose of removing the sealant on the tile and thereby, exposing it to acid solutions in order to remove the substrate materials from its surface, which in turn, can weather it and give it an old look.
With respect to claims 2 – 4, while the combination of “Roof NPL, Koreltz, et al., “Marble NPL” and Horton, Jr, et al. are not specific as to the application of citric acid or the concentrations of the sulfuric and/or hydrochloric acids, the use of any of the acids and their concentrations is obvious as the exposure of the tile to the acids will etch the surfaces thereof. In addition, the examiner contends that it would be obvious based on the teachings in the combination of references, that the concentrations if dilute or strong will produce differing effects. In other words, the surface may be etched or texturized substantially vs not and the color may be affected substantially vs not.
With respect to claim 10 and 13, “Roof NPL” teaches a process for matching the color and texture of a new ceramic roofing tile to a weather tile, comprising: a) identifying a weathered tile to be replaced (Roof NPL states that it should be feasible to determine the color and quality of the tile by looking at the area covered by the headlap. The reference continues by stating that it is important to remove, clean and maintain the appearance of the roof, b) clean the weathered tile, c) optically measuring the weathered tile to yield a color determination (Roof NPL states that you can inspect the tile’s visual appearance, determine its color and finish and match any replacement tiles to ensure the roof’s aesthetic appearance) and d) select a replacement tile (Roof NPL states that it is possible to go to the same source as the original tiles or use salvaged tiled depending on the aesthetic that is desired – whether it be the new or old appearance of the roof).
Roof NPL, however, do not specifically teach the steps of stripping the tile and immersing/exposing it to acid solution(s) in order to weather or change its appearance (as recited in steps e) through j). However, the examiner contends that stripping a tile of its coating or sealant is obvious and known to one of ordinary skill in the art. For example, Koreltz, et al. teach floor stripping compositions which are used for stripping vinyl tile of several coats of commercially-available urethane/acrylic finish. With respect to exposing tile to acid (i.e, nitric acid for a predetermined amount of time), “Marble NPL” teaches that it is known to make a stone object look as if it has lasted and bean around for years. The stone article or artifact is exposed (i.e, painted) with nitric acid solution or hydrochloric acid solution). The acid treated surfaces are rinsed with water and allowed to dry. After a period of time and additional water rinsing, the article will appear aged. Alternatively, Horton, Jr, et al. teach a method of manufacturing luminescent tile and installing such tile on a pool floor. After installation of the tile on the pool floor, it may be exposed or treated with an acid wash (paragraph 0033). Muriatic acid (solution of hydrochloric acid) or the like may be used to remove excess coating and/or substrate materials from the tile. This acid treatment will allow for more surface exposure of the tile. In either case, both “Marble NPL” and Horton, Jr, et al. teach the use of acid solutions to change the texture and/or color of the tile since the substrate materials on the tile surface are removed.
The examiner therefore, contends that it would have been obvious to one of ordinary skill in the art at time the invention was filed to include in the method of Roof NPL, stripping the tile per Koreltz, et al. and the additional steps of “Marble NPL” or Horton, Jr, et al. for the purpose of removing the sealant on the tile and thereby, exposing it to acid solutions in order to remove the substrate materials from its surface, which in turn, can weather it and give it an old look.
With respect to the concentration of the acid solutions, while the combination of “Roof NPL, Koreltz, et al., “Marble NPL” and Horton, Jr, et al. are not specific as to the application of citric acid or the concentrations of the sulfuric and/or hydrochloric acids, the use of any of the acids and their concentrations is obvious as the exposure of the tile to the acids will etch the surfaces thereof. In addition, the examiner contends that it would be obvious based on the teachings in the combination of references, that the concentrations if dilute or strong will produce differing effects. In other words, the surface may be etched or texturized substantially vs not and the color may be affected substantially vs not.
With respect to the phrase “wherein the second predetermined period of time is less than the first predetermined period of time,” examiner contends that the combination of references recites that the exposure to the acid is after a period of time and that the time of exposure is an optimizable parameter which depends on the amount of aging or coloring that the user desires and thus, examiner contends that the first predetermined amount of time and the second predetermined amount of time are obvious parameters which one of ordinary skill in the art may choose.
Claim(s) 5 – 6 and 11 – 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Roof NPL” in view of Koretz, et al., “Marble NPL” or Horton, Jr, et al. as applied to claims 1 – 4, 10 and 13 above, and further in view of Ono, et al. (US 2011/0039113 A1).
“Roof NPL”, Koretz, et al., “Marble NPL” and Horton, Jr, et al. teach the features as recited above, but do not teach that the damaged or weathered tile is assigned first L*, a* and b* values and then assigned second values after acid treatment, respectively.
It is noted, however, the combination of references appreciates matching the newly-‘weathered’ or ‘made to look old’ tile with those already in place and thus, the examiner contends that comparing the L*, a* and b* values is simply a matter of using the Hunter lab colorimeter in order to measure color values. Ono, et al. teach the use of a colorimeter to measure lightness values and color values (paragraph 0038 and 0039) or ceramic fired bodies. Values are measure and compared and can be adjusted according to the desired color specification.
Thus, the examiner contends that it would be obvious to one of ordinary skill in the art at the time the invention was filed, to assign L*, a* and b* values per Ono, et al. and compare it accordingly in order to achieve the proper ‘color’ of the tiles.
Response to Arguments
Applicant’s arguments filed February 19, 2026 with respect to the previous rejection of claims 10 – 13 under 35 USC 112(b) have been considered and are persuasive in light of the amendment to claim 10 and thus, the rejection has been withdrawn.
Applicant's arguments filed February 19, 2026 with respect to the prior art have been fully considered but they are not persuasive. With respect to the rejection of claim 1 and 10 and its dependent claims, Applicant argues:
The present office action states that it would have been obvious to combine the tile replacement process of RoofNPL with the stripping process of Koreltz with the acid washes of MarbleNPL and Horton. Such a combination would not result in the methods of aging new concrete roof tiles to match older tiles as recited in claims 1 and 10 of the present application.
Independent claims 1 and 10 both require several additional steps which are not disclosed or even suggested by the cited art. Claims 1 and 10 both require that the treated tile be immersed in nitric acid, that the nitric acid have a concentration of between 0.5N and 1.5N, and that the treated tile be colored so as to match a specific damaged tile being replaced. None of RoofNPL, Koreltz, MarbleNPL, and Horton either alone or in combination disclose or even suggest these steps.
Only MarbleNPL mentions the use of nitric acid but is silent as to the concentration of acid to be used and as to the amount of time the wash should be left on the piece. MarbleNPL fails to mention immersion of the workpiece in the acid which is required by claims 1 and 10 nor does it discuss using nitric acid to make one marble piece match another marble piece, but rather only describes generally ageing a piece of marble. MarbleNPL also never discusses if the disclosed techniques for artificially aging marble (a metamorphic rock) might work on other materials such as concrete (a composite of aggregate and cement) nor how the techniques might have to be altered to work with other materials.
Horton only discusses using hydrochloric acid to remove residue from the surface of a newly installed tile and never discusses using hydrochloric acid to alter the color of a new tile to match an older tile. That is, Horton only describes using hydrochloric acid to clean and brighten a new tile and not how to use an acid to artificially age a tile. RoofNPL and Koreltz never mention using acid to alter the color of a tile or surface.
Examiner concedes in that the art may be silent with respect to specific steps; however, the examiner contends that the steps in their entirety are rendered obvious over the prior art combination.
Starting with the primary reference of Roof NPL, Roof NPL appreciates that a tile may age and while the roofer may suggest moving an older tile to the front elevation so that the new work is less noticeable, the examiner contends that Roof NPL appreciates 1) the appeal of an aging tile and 2) the placement of the aging tile on the roof in order to blend in. Examiner concedes that the reference does not teach the steps of cleaning or stripping the new tile and thus, turns to the additional references. Koretz teaches that a floor stripping compound may be used to strip tile of its finishes. Examiner concedes that Koretz does not teach the use of an acid composition and thus, turns to Marble NPL which teaches that exposure to acid does age the surface of the tile, aging it. While Marble NPL may teach the use of acid solutions to age marble and is silent to the possibility of the technique or concrete, ceramic or cement, the examiner contends that Marble is not cited for the teaching of the cement or concrete. The primary reference of Roof NPL is cited for teaching the roof tile. In addition, examiner contends that the acid solution in Marble NPL based on the teachings in Koretz and Horton, JR are equally pertinent to roof tiles and not only to marble. Furthermore, based on the combination as a whole, each reference appreciates the use of an acid solution to age tile and change its texture or color. Based on this and the fact that Roof NPL appreciates the look of ‘aging tile’ in place of new tile to blend in with the remainder of the roof, the examiner contends that the combination of references as a whole renders obvious stripping a new tile, exposing it to acid for some of amount of time depending on the desired color change, drying it and measuring the color to ensure it “blends” in with the remaining roof tile. In addition, while the references may not specifically teach the concentrations as claimed, examiner contends (as noted in the rejection) that the concentrations are obvious. Higher acid concentrations or adjusting the concentrations thereof are known per the teachings in the art for the purpose of stripping a coating or coatings from a finished surface and thus, aging it.
With respect to dependent claims 5 – 6 and 11 – 12, applicant argues that the reference of Ono does not remedy the shortcomings of Roof NPL, Koretz, Marble NPL and/or Horton. Applicant argues that Ono does not teach changing the color of the tile using nitric acid of between 0.5 N and 1.5 N, nor does it teach a second acid. Examiner is unpersuaded by these arguments because Ono was introduced for its teaching of a colorimeter to measure lightness values and color values (paragraph 0038 and 0039) of ceramic fired bodies. Values are measure and compared and can be adjusted according to the desired color specification.
Thus, the examiner contends that it would be obvious to one of ordinary skill in the art at the time the invention was filed, to assign L*, a* and b* values per Ono, et al. and compare it accordingly in order to achieve the proper ‘color’ of the tiles.
Examiner contends that because the references of Roof NPL, Koretz, Marble NPL and Horton render obvious the steps of weathering the tile via acid exposure, drying it and measuring its color for the purpose of producing an aged tile to match the existing roof, it would obvious per the teachings in Ono to measure values and assign the L*, a* and b* values as recited.
References of interest
Aszman, et al. (US 4,501,680) teaches the use of acid compositions to clean tile.
Miekka, et al. (US 2008/0023667 A1) teach the use of tile etchant solutions.
Conclusion
THIS ACTION IS MADE FINAL. 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 MARIA VERONICA EWALD whose telephone number is (571)272-8519. The examiner can normally be reached Mon-Fri ~9am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Srilakshmi Kumar can be reached at 571-270-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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