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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5 – 7, 9, 11 and 13 – 15 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As written, claim 1 and 9 recite, in combination, that the coating on the substrate includes limestone as the filler with the softening point of 180oF – 235 oF as measured according to ASTM D36, in addition to the other components as claimed. However, while the specification has support for each component in claim 1, the combination of the elements together, specifically with respect to the addition of limestone with the softening point as recited is not clearly supported in the disclosure. Of note, the only mention of the formulation with limestone specifically is paragraph 155, page 71, “example 9” – which notes that each of the samples (A – H) are separately mixed with limestone filler. There is no table which provides data on the softening point, penetration point or viscosity for each of the samples when the formulations are mixed with the limestone filler. There are other portions of the specification which discuss fillers and limestone (see paragraph 120), but it only cites the filler in terms of “in some embodiments.” As such, there is no mention of the single embodiment with limestone and the components in claim 1 or 9, wherein the softening point is that which is claimed. Thus, it is unclear as to whether 1) the limestone will affect the softening point, 2) or what actual desirable results were reported and 3) how the other properties of penetration point, viscosity are also affected. Furthermore, the discussion with respect to example 9 states that the limestone is mixed in an amount 10% – 90% by weight of the limestone filler. Claim 1 has no percentage of limestone filler recited and the amount of filler required in the dependent claim is narrower (claim 7 and 15 recites a range of 10% – 80% by weight). Thus, it would appear that claim 1 is a combination of multiple embodiments for which there is no support for the entirety of the embodiment recited in claim 1.
Claims 3, 5 – 7, 11 and 13 – 15 are thereby rejected by virtue of their dependency on claims 1 and/or 9 respectively.
Claims 1, 3, 5 – 7, 9, 11 and 13 – 15 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As written, claim 1 and 9 recite, in combination, that the coating on the substrate includes limestone as the filler with the softening point of 180oF – 235 oF as measured according to ASTM D36, in addition to the other components as claimed. However, the metes and bounds of the claim(s) are unclear as it seems applicant has combined mutually-exclusive species into one embodiment. While the specification has support for each component in claim 1, the combination of the elements together, specifically with respect to the addition of limestone with the softening point as recited renders the claim indefinite. Of note, the only mention of the formulation with limestone specifically is paragraph 155, page 71, “example 9” – which notes that each of the samples (A – H) are separately mixed with limestone filler. There is no table which provides data on the softening point, penetration point or viscosity for each of the samples when the formulations are mixed with the limestone filler. Thus, it is unclear as to whether 1) the limestone will affect the softening point, 2) or what actual desirable results were reported and 3) how the other properties of penetration point, viscosity are also affected.
Claims 3, 5 – 7, 11 and 13 – 15 are thereby rejected by virtue of their dependency on claims 1 and/or 9 respectively.
Claim Rejections - 35 USC § 103
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, 3, 5 – 7, 9, 11, 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harrington, JR, et al. (US 2007/0039274 A1) in view of Sylvester (US 7,087,665) and further in view of Trumbore, et al. (US 2009/0004387 A1).
With respect to claim 1 and 7, Harrington, JR, et al. teach a roofing shingle, comprising: a substrate (paragraph 0019, examiner notes that the substrate is a roofing ‘mat’) wherein the substrate comprises a fiberglass mat (paragraph 0019, examiner notes that typical mats may include heat-softenable mineral material such as a nonwoven web of glass fibers); a coating directly on the substrate (examiner notes that the reference teaches “coating” the mat), wherein the coating comprises bituminous material (i.e, asphalt, paragraph 0020) and/or a polymeric material (ground tire rubber, paragraph 0020). Harrington, JR, et al. teach that the coating material is “organic based” and forms the continuous phase of the coating material and thus, examiner contends that because Harrington, JR et al. teach that the ‘organic’ based coating material comprises bituminuous (asphalt) and/or polymeric material (i.e, ground tire rubber), the organic, continuous phases may be comprised of both the asphalt and rubber material combined. In addition, the organic material constitutes at least 20% organic material (paragraph 0020) and often at least 40% by weight (paragraph 0020). The coating may also comprise filler (not a polymer comprising styrene) which may be a filler of inorganic particulate material such as ground limestone in an amount of about 40 – 80 wt. % (paragraph 0020 – 0021), which overlaps the claimed range of filler in claim 7 of between 10 – 80 wt. %. Reference also teaches granules on the coating (paragraph 0034).
Harrington, JR, et al., however do not specifically teach the separate percentages of the asphalt and rubber, nor teaches that the asphalt is oxidized and makes no mention, specifically of the softening point.
With respect to the separate percentages of asphalt and rubber, Sylvester teach emulsions of rubber modified asphalt cement used for paving and other applications. Typical amounts in weight percent for such slurries include 45 – 50 wt% asphalt with about 5 – 55 wt % rubber (column 4, lines 40 – 50).
Thus, the examiner contends that it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention, to include the wt. percent of asphalt and rubber per the teachings of Sylvester into the coating composition of Harrington, JR, et al., as the wt. percents as recited are typical for a rubber-modified asphalt. Examiner notes that the range of asphalt in Sylvester, lies within the claimed range of 10 – 90% in claim 1 and within the range of 10 – 80% in claim 7, respectively. Examiner further notes that the range of rubber in Sylvester overlaps the claimed range of rubber in claim 1. In both cases, as the ranges overlap and are typical for a rubber-modified asphaltic composition, a prima facie case of obviousness exists.
With respect to the asphalt being oxidized, Trumbore, et al. teach a process for producing a coated roofing shingle. The shingle is comprised of a substrate (i.e, typically, can be a fiber glass mat or a glass fiber mat [paragraph 0003]). The coating is comprised of asphalt mixed with fillers like rubber (synthetic or natural) and limestone. Trumbore, et al. continue by stating that typical formulations include oxidized asphalt (paragraph 0004). In addition, Trumbore, et al. teach target ranges for the asphalt coating softening point. Typical softening point or target softening point is 190oF to 235oF which can obtained via ASTM D36 (paragraph 0034 and 0036) for the asphalt coating.
Thus, the examiner contends that it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to formulate the asphalt coating with the wt. percent per Sylvester, further modified to be oxidized asphalt, which per Trumbore, et al. may be used in asphalt compositions for coatings, wherein the resulting softening point is between 180oF – 235 oF as this is a typical range or target range for the softening point per the teachings in Trumbore, et al.
With respect to claim 3, the examiner notes that while the primary reference of Harrington, JR, et al. is silent with respect to the rubber being devulcanized rubber, Sylvester teaches rubber-modified asphalt compositions containing crumb rubber from recycled tires maybe devulcanized (column 4, lines 24 – 35). Thus, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to use devulcanized rubber in the asphalt compositions per Sylvester.
With respect to claim 5, the combination of Harrington, JR, et al., Sylvester and Trumbore, et al. render obvious the penetration point. Per Trumbore, et al. typical penetration point target range for a coating is at least about 15 dmm at 77 oF (paragraph 0034) with tighter ranges from 16 dmm – 24 dmm at 77oF (paragraph 0035). Measurement of the penetration point is also per ASTM D5 (paragraph 0036). These ranges overlap the claimed range of 15 dmm – 30 dmm and thus, it would have been obvious to one of ordinary skill in the art to formulate the asphalt coating composition to the penetration point as claimed as these are typical or target per Trumbore, et al.
With respect to claim 6, the asphalt coating of Harrington, JR, et al. as modified by Sylvester and Trumbore, et al., would result in a target viscosity as recited. Per Trumbore, et al. typical viscosities for an asphalt coating is between 130 – 420 cps measured via ASTM D4402 (paragraph 0035 – 0036). This range overlaps the claimed range and thus, it would have been obvious to one of ordinary skill in the art to formulate the asphalt coating composition to the viscosity as claimed as these are typical or target per Trumbore, et al.
With respect to claim 9 and 15, Harrington, JR, et al. teach a roofing system (paragraph 16) comprising: a roof substrate (abstract, paragraph 0016, reference teaches that the shingles are placed a roof), a plurality of roofing shingles on the roof substrate, each of the plurality of roofing shingles (paragraph 0019), comprising: substrate (paragraph 0019, examiner notes that the substrate is a roofing ‘mat’) wherein the substrate comprises a fiberglass mat (paragraph 0019, examiner notes that typical mats may include heat-softenable mineral material such as a nonwoven web of glass fibers); a coating directly on the substrate (examiner notes that the reference teaches “coating” the mat), wherein the coating comprises bituminous material (i.e, asphalt, paragraph 0020) and/or a polymeric material (ground tire rubber, paragraph 0020). Harrington, JR, et al. teach that the coating material is “organic based” and forms the continuous phase of the coating material and thus, examiner contends that because Harrington, JR et al. teach that the ‘organic’ based coating material comprises bituminuous (asphalt) and/or polymeric material (i.e, ground tire rubber), the organic, continuous phases may be comprised of both the asphalt and rubber material combined. In addition, the organic material constitutes at least 20% organic material (paragraph 0020) and often at least 40% by weight (paragraph 0020). The coating may also comprise filler (not a polymer comprising styrene) which may be a filler of inorganic particulate material such as ground limestone in an amount of about 40 – 80 wt. % (paragraph 0020 – 0021), which overlaps the claimed range of filler in claim 15 of between 10 – 80 wt. %. Reference also teaches granules on the coating (paragraph 0034).
Harrington, JR, et al., however do not specifically teach the separate percentages of the asphalt and rubber, nor teaches that the asphalt is oxidized and makes no mention, specifically of the softening point.
With respect to the separate percentages of asphalt and rubber, Sylvester teach emulsions of rubber modified asphalt cement used for paving and other applications. Typical amounts in weight percent for such slurries include 45 – 50 wt% asphalt with about 5 – 55 wt % rubber (column 4, lines 40 – 50).
Thus, the examiner contends that it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention, to include the wt. percent of asphalt and rubber per the teachings of Sylvester into the coating composition of Harrington, JR, et al., as the wt. percents as recited are typical for a rubber-modified asphalt. Examiner notes that the range of asphalt in Sylvester, lies within the claimed range of 10 – 90% in claim 9 and within the range of 10 – 80% in claim 15, respectively. Examiner further notes that the range of rubber in Sylvester overlaps the claimed range of rubber in claim 1. In both cases, as the ranges overlap and are typical for a rubber-modified asphaltic composition, a prima facie case of obviousness exists.
With respect to the asphalt being oxidized, Trumbore, et al. teach a process for producing a coated roofing shingle. The shingle is comprised of a substrate (i.e, typically, can be a fiber glass mat or a glass fiber mat [paragraph 0003]). The coating is comprised of asphalt mixed with fillers like rubber (synthetic or natural) and limestone. Trumbore, et al. continue by stating that typical formulations include oxidized asphalt (paragraph 0004). In addition, Trumbore, et al. teach target ranges for the asphalt coating softening point. Typical softening point or target softening point is 190oF to 235oF which can obtained via ASTM D36 (paragraph 0034 and 0036) for the asphalt coating.
Thus, the examiner contends that it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to formulate the asphalt coating with the wt. percent per Sylvester, further modified to be oxidized asphalt, which per Trumbore, et al. may be used in asphalt compositions for coatings such that the resulting softening point is between 180oF – 235 oF as this is a typical range or target range for the softening point per the teachings in Trumbore, et al.
With respect to claim 11, the examiner notes that while the primary reference of Harrington, JR, et al. is silent with respect to the rubber being devulcanized rubber, Sylvester teaches rubber-modified asphalt compositions containing crumb rubber from recycled tires maybe devulcanized (column 4, lines 24 – 35). Thus, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to use devulcanized rubber in the asphalt compositions per Sylvester.
With respect to claim 13, the combination of Harrington, JR, et al., Sylvester and Trumbore, et al. render obvious the penetration point. Per Trumbore, et al. typical penetration point target range for a coating is at least about 15 dmm at 77 oF (paragraph 0034) with tighter ranges from 16 dmm – 24 dmm at 77oF (paragraph 0035). Measurement of the penetration point is also per ASTM D5 (paragraph 0036). These ranges overlap the claimed range of 15 dmm – 30 dmm and thus, it would have been obvious to one of ordinary skill in the art to formulate the asphalt coating composition to the penetration point as claimed as these are typical or target per Trumbore, et al.
With respect to claim 14, the asphalt coating of Harrington, JR, et al. as modified by Sylvester and Trumbore, et al., would result in a target viscosity as recited. Per Trumbore, et al. typical viscosities for an asphalt coating is between 130 – 420 cps measured via ASTM D4402 (paragraph 0035 – 0036). This range overlaps the claimed range and thus, it would have been obvious to one of ordinary skill in the art to formulate the asphalt coating composition to the viscosity as claimed as these are typical or target per Trumbore, et al.
Response to Arguments
Applicant’s arguments, see page 8, filed January 28, 2026, with respect to the rejection(s) of claim(s) 1 and 9 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Harrington, JR, et al., Sylvester, and Trumbore, et al.
Applicant’s primary argument is that the previously-cited reference of Flanigan, teaches a pre-treated RMAC softening point of 110 – 120oF and furthermore, this RMAC does not contain limestone. Applicant continues by stating that Flanigan teaches the RMAC emulsion cures to form a cured coating with a softening point greater than about 310oF. Thus, the primary reference of Fianigan 1) does not teach or render obvious a limestone filler in the asphalt coating composition, wherein the coating has a softening point of 180oF – 235oF. In other words, the reference (even in combination with Roberts), fails to teach or render obvious a coating WITH limestone WITH the softening point as claimed.
Examiner finds the argument persuasive and upon further search, has cited Harrington, JR, et al. as the primary reference which teaches the coating composition directly contacting a fiberglass mat, the coating including asphalt, rubber (ground tire rubber), with granules on the coating and limestone filler. Sylvester is cited for teaching the wt. percentage of asphalt, rubber and using delvulcanized rubber, while the tertiary reference of Trumbore, et al. teach the use of oxidized asphalt, and target ranges for the softening point, penetration point and viscosity.
In addition, based on applicant’s argument and a review of the specification in light of the argument(s) that the combination of reference(s) fails to teach the inclusion of limestone filler in the composition with the softening point as claimed, the examiner has also rejected the claims under 35 USC 112(b and 35 USC 112(a). It is unclear as to the metes and bounds and whether mutually exclusive species have all been combined. The specification repeatedly uses “in some embodiments” in several passages but there is not one embodiment which encompasses all the components of claim 1 with the softening point as claimed. Furthermore, the examiner notes that the only mention of a coating composition with limestone is on the last page of the specification; however, per paragraph 155, “each of the samples (A – H) is separately mixed with limestone to obtain an asphalt coating…” It is unclear whether the specification concludes softening point is affected by the addition of limestone or not and whether the components in each embodiment may be combined in one embodiment as written in claim 1 and 9.
Conclusion
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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/MARIA V EWALD/ Supervisory Patent Examiner, Art Unit 1783