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 .
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-8, 10, and 12 of U.S. Patent No. 11,898,040. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the broader claimed invention.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, and 6 of U.S. Patent No. 11,795,328. Although the claims at issue are not identical, they are not patentably distinct from each other because the composition achieved by the patented process anticipates the broader claimed invention.
Specification
The disclosure is objected to because of the following informalities: Line 2 of paragraph 1 of the Specification should be updated to reflect that parent application No. 17/715,603 is now U.S. Patent No. 11,898,040.
Appropriate correction is required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Naidoo et al (US 2010/0147190) and Kluttz et al (US 2007/0105986) are considered to represent the closest prior art to the claimed invention.
Naidoo teaches asphalt compositions and products comprising tall oil derived materials and polymers and methods for making the same (par. 33).
Regarding the hardening agent, Naidoo teaches that “tall oil materials” includes man made and naturally occurring tall oil, tall oil pitch, tall oil blends, and similar tall oil products (par. 43). Naidoo teaches that the tall oil materials have a softening point in the range of 75°F to 400°F (abstract).
Regarding the polymer, Naidoo teaches non-limiting examples of suitable polymers to include ethylene vinyl acetate or any other conventionally used asphalt modifier to form the binder component as may be desired for the particular end use application (par. 53).
While Naidoo generally teaches the use of filler, Naidoo does not expressly limit said filler to any particular materials. However, the specific filler materials of instant claim 21 appears to consist only of filler materials that were conventionally known in the art before the filing of the claimed invention, rendering their use prima facie obvious in the absence of unexpected results.
Regardless, Kluttz, in a similar invention directed toward asphalt-based roofing shingles (abstract), teaches that suitable filler materials may include, for example, talk, calcium carbonate, and carbon black (par. 36).
It would have been obvious to one of ordinary skill in the art before the filling of the claimed invention to utilize conventional filler materials as the filler of Naidoo, such as the specific fillers taught by Kluttz, in order to effectively produce a roofing shingle.
It is noted that Naidoo teaches that the compositions may be useful in roofing applications, such as roofing shingles (par. 65). One of ordinary skill would have been able to configure the binder composition of Naidoo for application to a roofing shingle, as Naidoo explicitly directs them to its particular use in roofing shingles.
Regarding the filler, Naidoo teaches both the use of aggregate (par. 60) as well as filler, which may be present in amounts up to 30 wt% (par. 59). Kluttz teaches that roofing shingles comprise from 50-65 wt% of an inert filler (par. 38).
Naidoo teaches that the weight ratio of petroleum based asphalt and tall oil material is in the range of about 1:99 to about 99:1.
However, Naidoo does not expressly require that the at least one polymer is mixed with the hardened asphalt in a weight ratio of 1:100 to 1:5 nor does Naidoo teach that the coating should have a thickness of 20-200 mil, as claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLIN W SLIFKA whose telephone number is (571)270-5830. The examiner can normally be reached Monday-Friday, 9:00 AM-5:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ching-Yiu (Coris) Fung can be reached at 571-270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Colin W. Slifka/ Primary Examiner, Art Unit 1732