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 Interpretation
The use of “or” is interpreted to mean optional limitations. The transitional term "comprising", which is synonymous with "including," (i.e., that includes) "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. (MPEP § 2111.03) e.g., any additional structure suggested by the prior art of record.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7, 10-12, and 15-21 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Terrenzio et al (US 5,347,785 A).
Regarding claims 1-7 and 10, Terrenzio teaches a roofing system (e.g., shingle) and granules; wherein at least a portion of said granules are secured to a top surface of said roofing and/or siding material; wherein said top surface of said roofing and/or siding material includes an asphalt; a plurality of said granules are at least partially embedded in said asphalt surface (e.g., a first element, or base shingle, which includes a reinforcing web, preferably, but not restricted to, glass fibers, a primary lager of mineral-stabilized asphalt coating, and a first adherent surfacing material, preferably of mineral granules which are embedded in the first asphaltic coating material) (abstract; col 1, line 49-55).
Terrenzio further teaches the first element also includes an adherent surfacing material; wherein examples include opaque but uncolored granules such as coarsely ground slate, gravel, trap rock, nepheline syenite, granite, shale, and the like; naturally colored slates, greenstone, serpentine, darkly colored sands, basalt, greystone, olivine, and the like; a single type of mineral granule can be used, or one or more types of mineral granules can be employed, the types differing in color and/or particle size to achieve desired decorative effects. (col 6, lines 26-55).
Therefore, Terrenzio would have taught to one of ordinary skill in the art at the time of invention the species of at least a portion of said granules are fully formed of olivine and/or serpentinite; all of said granules are fully formed of olivine and/or serpentinite; wherein a portion of said granules are formed of olivine and/or serpentinite and a portion of said granules are absent olivine and/or serpentinite; granules fully formed of olivine and/or serpentinite and granules that are formed of materials other than olivine and/or serpentinite; wherein said granules that are partially or fully formed of olivine and/or serpentinite are not fully coated with a material that inhibits or prevents CO2 from being absorbed in said olivine and/or serpentinite; and, wherein said top surface of said roofing material includes an asphalt surface; a plurality of said granules are at least partially embedded in said asphalt surface.
Regarding claims 11, 12, and 15-21, Terrenzio teaches a roofing system (e.g., shingle) and granules; wherein at least a portion of said granules are secured to a top surface of said roofing and/or siding material; wherein said top surface of said roofing and/or siding material includes an asphalt; a plurality of said granules are at least partially embedded in said asphalt surface (e.g., a first element, or base shingle, which includes a reinforcing web, preferably, but not restricted to, glass fibers, a primary lager of mineral-stabilized asphalt coating, and a first adherent surfacing material, preferably of mineral granules which are embedded in the first asphaltic coating material) (abstract; col 1, line 49-55).
Terrenzio further teaches the first element also includes an adherent surfacing material; wherein examples include opaque but uncolored granules such as coarsely ground slate, gravel, trap rock, nepheline syenite, granite, shale, and the like; naturally colored slates, greenstone, serpentine, darkly colored sands, basalt, greystone, olivine, and the like; a single type of mineral granule can be used, or one or more types of mineral granules can be employed, the types differing in color and/or particle size to achieve desired decorative effects. (col 6, lines 26-55).
Therefore, Terrenzio would have taught to one of ordinary skill in the art at the time of invention the species of at least a portion of said granules are partially or fully formed of a CO2 absorbing mineral material that includes magnesium, iron and silicate; wherein said CO2 absorbing mineral material includes olivine and/or serpentinite; wherein all of said granules are fully formed of olivine and/or serpentinite; wherein a portion of said granules are formed of olivine and/or serpentinite and a portion of said granules are absent olivine and/or serpentinite; granules fully formed of olivine and/or serpentinite and granules that are formed of materials other than olivine and/or serpentinite; wherein said granules that are partially or fully formed of olivine and/or serpentinite are not fully coated with a material that inhibits or prevents CO2 from being absorbed in said olivine and/or serpentinite; and, wherein said top surface of said roofing material includes an asphalt surface; a plurality of said granules are at least partially embedded in said asphalt surface.
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.
Claims 9, 13, 14, 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over Terrenzio.
Regarding claim 9, Terrenzio teaches the roofing granules provide the desired decorative and aesthetic effects (col 6, lines 45-55); and the Examiner takes official notice that roofing granules were known at the time of invention to provide protection (e.g., durability and UV protection) to the asphalt surface of roofing shingles and roofing membranes. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust surface coverage of the granules on the asphalt shingle (i.e., roofing system) to optimize the decorative and aesthetic effects as well as the protective effects of the roofing granules on the asphalt shingle.
Regarding claim 13, Terrenzio teaches the use of grade #11 roofing granules, i.e., a granule having a size 95% of the granules greater than 425 µm (0.425 mm) and all less than 2.36 mm. This range substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Terrenzio, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding claim 14, Terrenzio teaches the roofing granules (i.e., CO2 absorbing material) provide the desired decorative and aesthetic effects (col 6, lines 45-55); and the Examiner takes official notice that roofing granules were known at the time of invention to provide protection (e.g., durability and UV protection) to the asphalt surface of roofing shingles and roofing membranes. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust surface coverage of the granules on the asphalt shingle (i.e., roofing system) to optimize the decorative and aesthetic effects as well as the protective effects of the roofing granules on the asphalt shingle.
Regarding claims 22-26, Terrenzio teaches a roofing system (e.g., shingle) and granules; wherein at least a portion of said granules are secured to a top surface of said roofing and/or siding material; wherein said top surface of said roofing and/or siding material includes an asphalt; a plurality of said granules are at least partially embedded in said asphalt surface (e.g., a first element, or base shingle, which includes a reinforcing web, preferably, but not restricted to, glass fibers, a primary lager of mineral-stabilized asphalt coating, and a first adherent surfacing material, preferably of mineral granules which are embedded in the first asphaltic coating material) (abstract; col 1, line 49-55).
Terrenzio further teaches the first element also includes an adherent surfacing material; wherein examples include opaque but uncolored granules such as coarsely ground slate, gravel, trap rock, nepheline syenite, granite, shale, and the like; naturally colored slates, greenstone, serpentine, darkly colored sands, basalt, greystone, olivine, and the like; a single type of mineral granule can be used, or one or more types of mineral granules can be employed, the types differing in color and/or particle size to achieve desired decorative effects. (col 6, lines 26-55).
Therefore, Terrenzio would have taught to one of ordinary skill in the art at the time of invention the species of at least a portion of said granules are partially or fully formed of a CO2 absorbing mineral material that includes magnesium, iron and silicate; said CO2 absorbing mineral material includes olivine and/or serpentinite; said granules that are partially or fully formed of a CO2 absorbing mineral material are uncoated granules prior to be applied to said top surface of said roofing and/or siding material.
Regarding the limitation “said granules that are partially or fully formed of a CO2 absorbing mineral material have an average particle size of 450 microns to 5 mm;” Terrenzio teaches the use of grade #11 roofing granules, i.e., a granule having a size 95% of the granules greater than 425 µm (0.425 mm) and all less than 2.36 mm. This range substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Terrenzio, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding the limitation “said granules that are partially or fully formed of a CO2 absorbing mineral material constitute 10-70 wt.% of a total amount of granules on said top surface of said roofing and/or siding material;” Terrenzio teaches the types of granules differing in color and/or particle size to achieve desired decorative effects. (col 6, lines 26-55); and the Examiner takes official notice that roofing granules were known at the time of invention to provide protection (e.g., durability and UV protection) to the asphalt surface of roofing shingles and roofing membranes. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust surface coverage of the granules and the type of granules on the asphalt shingle (i.e., roofing system) to optimize the decorative and aesthetic effects as well as the protective effects of the roofing granules on the asphalt shingle.
Claims 8 are rejected under 35 U.S.C. 103 as being unpatentable over Terrenzio as applied to claim 1 above, and further in view of Fensel et al (US 2003/0152747 A1).
Terrenzio teaches the roofing system of claim 1. Terrenzio further teaches it roofing element can be that of a roofing membrane (claim 22) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention that of a flood coat and gravel system or built-up roofing (BUR).
However, Terrenzio teaches the roofing granules provide the desired decorative and aesthetic effects (col 6, lines 45-55); and the Examiner takes official notice that roofing granules were known at the time of invention to provide protection (e.g., durability and UV protection) to the asphalt surface of roofing shingles and roofing membranes.
Terrenzio fails to suggest said granules on said flood coat and gravel system are from 1/16 inch to 1 inch in diameter; and, said granules are applied to said top surface of said roofing and/or siding material at a coverage of 100 - 400 lbs./100 square feet.
Fensel teaches roofing materials (e.g., shingles, membranes, and built-up roofing (BUR) (i.e., a flood coat and gravel system)) wherein granules larger than 0.25 inch are considered gravel; and granules for BUR systems may exceed 1 inch (para 56). Fensel additionally teaches roofing granules, which are embedded in one surface of an asphalt-impregnated and/or asphalt-coated fiber sheet material, form a coating to provide an inherently weather-resistant, fire-resistant, and/or decorative exterior surface (para 4).
Therefore, per Fensel, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the granule size of the granules used on the membrane of Terrenzio, per the required final application (e.g., a roofing membrane and/or built-up roofing or a flood coat and gravel system).
Fensel teaches roofing materials (e.g., shingles, membranes, and built-up roofing (BUR) (i.e., a flood coat and gravel system)) wherein granules larger than 0.25 inch are considered gravel; and granules for BUR systems may exceed 1 inch (para 56). This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Fensel, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding the limitation “said granules are applied to said top surface of said roofing and/or siding material at a coverage of 100 - 400 lbs./100 square feet;” Terrenzio teaches the roofing granules provide the desired decorative and aesthetic effects (col 6, lines 45-55); Terrenzio teaches the roofing granules provide the desired decorative and aesthetic effects (col 6, lines 45-55); and the Examiner takes official notice that roofing granules were known at the time of invention to provide protection (e.g., durability and UV protection) to the asphalt surface of roofing shingles and roofing membranes. Fensel reinforces this notion by teaching roofing granules, which are embedded in one surface of an asphalt-impregnated and/or asphalt-coated fiber sheet material, form a coating to provide an inherently weather-resistant, fire-resistant, and/or decorative exterior surface (para 4).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust surface coverage of the granules on the asphalt shingle (i.e., roofing system) to optimize the decorative and aesthetic effects as well as the protective effects of the roofing granules on the asphalt shingle.
The limitation “said granules are broadcast onto an adhesive surface on said top surface of said roofing and/or siding material” of the instant claim is a product by process limitation and does not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim 8 and the product of Terrenzio as modified by Fensel.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Terrenzio et al (US 5,488,807 A) also teaches the use of olivine and serpentine roofing granules on shingles (abstract, col 6 , lines 14-25). A Tar & Gravel Roof Guide for Beginners (2021) discusses built-up roofs or BURs (also called a tar and gravel roof) wherein gravel is embedded on the top coat of asphalt (the flood coat), and the systems rely on underlying roofing membranes (entire document). No. 11 Roofing Granules (2022) established the diameter size of #ll grade roofing granules (e.g., 100% passes through an 8-mesh (2.36 mm) sieve, with 95% or more retained on a 35-mesh (425 m) sieve).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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, M. Veronica Ewald can be reached at 571-272-8519. 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.
NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783