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 terms “or,” “and/or,” “0” (in regards to composition minimum), and “one or more of” are properly interpreted to mean optional limitations that need not be taught by the prior art of record.
Claim Rejections - 35 USC § 112
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 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 1-50 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.
Claim 1 states “said coating material satisfies the requirements under ASTM D6083” which is specific standard for liquid-applied acrylic coatings used in roofing, but prior to which states a number of coatings based on other binders (e.g., polyurethane, silicone, etc.); so the claim language is indirect conflict with itself and therefore would have been unclear to one of ordinary skill in the art at the time of invention.
Claims 1-18 are rejected for failing to cure the deficiencies of claim 1.
Claim 19 states “said coating material satisfies the requirements under ASTM D6083” which is specific standard for liquid-applied acrylic coatings used in roofing, but prior to which states a number of coatings based on other binders (e.g., polyurethane, silicone, etc.); so the claim language is indirect conflict with itself and therefore would have been unclear to one of ordinary skill in the art at the time of invention.
Claims 20-36 are rejected for failing to cure the deficiencies of claim 19.
Claim 32 recites the limitation " wherein said fire retardant " in line 2. There is insufficient antecedent basis for this limitation in the claim. It appears this claim should depend upon claim 20.
Claim 37 states “said coating material satisfies the requirements under ASTM D6083 for a Type I and/or a Type II acrylic coating” which is specific standard for liquid-applied acrylic coatings used in roofing, but prior to which states a coating based on other binders (e.g., vinyl-acrylic, i.e., vinyl acetate & acrylic); so the claim language is indirect conflict with itself and therefore would have been unclear to one of ordinary skill in the art at the time of invention.
Claims 38-50 are rejected for failing to cure the deficiencies of claim 37.
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 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 1-12, 15-30, and 33-36 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer et al (US 2017/0037263 A1) in view of Greenwood et al (US 2021/0071010 A1).
Regarding claims 1-5, 9, 19-23, and 27, Iyer teaches an aqueous roof coatings applied to granulated asphaltic cap sheep sheets (i.e., a prefabricated material) (para 76) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the of invention a method of forming a roofing and/or siding material (and therein a roofing and/or siding material) comprising providing a substrate member that forms at least part of a roofing system of a structure or is configured to subsequently be used as at least part of a roofing system of a structure; wherein said substrate member has a top surface; wherein a top surface of said substrate member and/or a top surface of said coating material includes granules. It is noted that Iyer teaches that of a two-part aqueous coating composition, but further teaches the coatings can be simultaneously co-applied (abstract) therein essentially creating that of a single coating.
Iyer further teaches an acrylic-based coating material that satisfies the requirements under ASTM D6083 (para 31, 87); wherein the coating comprises white primary pigments (e.g., barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)) (i.e., 100% of primary pigment), silicon dioxide (i.e., secondary pigment), and flame retardants (e.g., aluminum trihydrate) (para 57-58, 64, 90, 92, table 1).
Regarding the limitation “said coating material includes less than 10 wt.% titanium dioxide;” Iyer teaches the use of other pigments, i.e., equivalents to titanium dioxide; so it would have been obvious to one of ordinary skill in the art at the time of invention to exclude that of titanium dioxide (i.e., 0 wt.%) if its pigment or other properties are not desired, omission of an element and its function is obvious if the function of the element is not desired (MPEP § 2144.04 II).
Iyer fails to suggest said coating material has an average resulting reflectively in a dried state of at least 60% or an SRI of at least 60 and said pigment extender includes microspheres.
Greenwood teaches coatings with solar reflective properties comprising microspheres (i.e., pigment extenders), organosilane-functionalised colloidal silica (SiO2) particles, an organic binder (e.g., acrylic), and pigments (e.g., zinc oxide) (abstract, para 7, 74-75, 95, 101, 114-115, 117); wherein the microspheres specifically to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance (para 75); wherein the organosilane-functionalised colloidal silica and hollow microspheres can be used in a solar reflective coating composition or a cool roof coating composition, for improving tear resistance, the tensile strength, the dry adherence, and the dirt pick-up resistance to hydrophilic and/or hydrophobic materials (para 13); wherein Greenwood further suggests the use of microspheres and colloidal silica particles result high “whiteness” characteristics and therein enhanced reflectance characteristics (para 117).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the microspheres and colloidal silica particles of Greenwood with the coating compositions or material of Iyer to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance and improved tear resistance, tensile strength, dry adherence, and dirt pick-up resistance to hydrophilic and/or hydrophobic materials. Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of white pigments (e.g., barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)) and microspheres in the coating composition and/or material of Iyer as modified by Greenwood to optimize its whiteness and therein the average resulting reflectively in a dried state and/or its SRI in a dried state.
Regarding claims 6-8, 10, 12, 24-26, 28, and 30, the Examiner takes official notice that one of ordinary skill in the art at the time of invention would have known that pigments would affect the color of the coating composition in its dried state, and therein its whiteness and reflectivity as taught by Greenwood (para 117); and Greenwood further suggests the organosilane-functionalised colloidal silica (i.e., secondary pigment) improves the tear resistance, tensile strength, dry adherence, and dirt pick-up resistance to hydrophilic and/or hydrophobic materials of the coating composition.
Therefore, it would have been it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of primary pigments in the composition, including relative to each other, as well as the amount of secondary pigment (e.g., organosilane-functionalised colloidal silica) in the composition, including relative to the primary pigment, to optimize the color, reflectiveness (or whiteness), the tear resistance, tensile strength, dry adherence, and dirt pick-up resistance to hydrophilic and/or hydrophobic materials of the coating composition in its final dried state on the roofing material and/or siding material.
Furthermore, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Regarding claims 11 and 29, Greenwood teaches the colloidal silica particles suitably have an average particle diameter ranging from about 2 to about 150 nm (para 58) which lies within the range of the instant claims.
Regarding claims 15-18 and 33-36, Iyer teaches the coating composition comprising water, (barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)), polymer base, (e.g., acrylic), glycol, fire or flame retardants, polymer dispersions and polymer dispersing agents (i.e., dispersants), biocides, fillers, and co-solvents (i.e., coalescing solvents) (para 31, 44, 63-65, 68, 57, 58, 60, 70); and Greenwood teaches the use of microspheres (i.e., pigment extenders) (para 7).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust each of the constituents in the composition of Iyer as modified by Greenwood to optimize its properties in a wet state (e.g., viscosity, density, how it applies and flows, wet adherence) as well as its final properties (e.g., tear strength, color or whiteness, tensile strength, dry film adherence, flame retardancy, biocidal ability, etc) in a dried state.
Furthermore, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Claims 13, 14, 31, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer and Greenwood as applied to claims 1, 2, 19, and 20 above, and further in view of Wickert et al (US 6,214,450 B1).
Iyer as modified by Greenwood teaches the method of forming a roofing and/or siding material of claims 1 and 2; and therein the roofing material and/or siding material of claims 19 and 20.
Iyer as modified by Greenwood fails to suggest wherein said primary pigment has an average particle size of 1 nanometer to 500 nanometers; and wherein said fire retardant includes antimony trioxide (Sb2O3).
Wickert teaches roof coatings comprising acrylic latex, flame retardants (e.g., antimony trioxide), hollow microspheres and opacifiers (i.e., pigments including zinc sulfide, zinc oxide, and barium sulfate); wherein the pacifiers have a size of about 0.3 to 0.5 microns (i.e., 300 to 500 nm) which lies within the range of the instant claims (col 1, lines 5-14; col 5, line 45 - col 6, line 60; col 8, lines 27-60).
Therefore, it would have been it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the flame retardants and pacifiers of Wickert for the primary pigments and flame retardants in the coating compositions of Iyer as modified by Greenwood; since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Claims 37, 38, 41, 43, 45, 47, 49 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer et al (US 2017/0037263 A1) in view of Greenwood et al (US 2021/0071010 A1).
Regarding claims 37, 38, 45, and 49, Iyer teaches an aqueous roof coatings applied to granulated asphaltic cap sheep sheets (i.e., a prefabricated material) (para 76) which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the of invention a method of forming a roofing and/or siding material (and therein a roofing and/or siding material) comprising providing a substrate member that forms at least part of a roofing system of a structure or is configured to subsequently be used as at least part of a roofing system of a structure; wherein said substrate member has a top surface; wherein a top surface of said substrate member and/or a top surface of said coating material includes granules. It is noted that Iyer teaches that of a two-part aqueous coating composition, but further teaches the coatings can be simultaneously co-applied (abstract) therein essentially creating that of a single coating.
Iyer further teaches an acrylic-based coating material that satisfies the requirements under ASTM D6083 (para 31, 87); wherein the coating comprises white primary pigments (e.g., barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)) (i.e., 100% of primary pigment), silicon dioxide (i.e., secondary pigment), and flame retardants (e.g., aluminum trihydrate) (para 57-58, 64, 90, 92, table 1).
Regarding the limitation “said coating material includes less than 10 wt.% titanium dioxide;” Iyer teaches the use of other pigments, i.e., equivalents to titanium dioxide; so it would have been obvious to one of ordinary skill in the art at the time of invention to exclude that of titanium dioxide if its pigment or other properties are not desired, omission of an element and its function is obvious if the function of the element is not desired (MPEP § 2144.04 II).
Iyer fails to suggest said coating material has an average resulting reflectively in a dried state of at least 60% or an SRI of at least 60 and said pigment extender includes microspheres.
Greenwood teaches coatings with solar reflective properties comprising microspheres (i.e., pigment extenders), organosilane-functionalised colloidal silica (SiO2) particles, an organic binder (e.g., acrylic), and pigments (e.g., zinc oxide) (abstract, para 7, 74-75, 95, 101, 114-115, 117); wherein the microspheres specifically to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance (para 75); wherein the organosilane-functionalised colloidal silica and hollow microspheres can be used in a solar reflective coating composition or a cool roof coating composition, for improving tear resistance, the tensile strength, the dry adherence, and the dirt pick-up resistance to hydrophilic and/or hydrophobic materials (para 13); wherein Greenwood further suggests the use of microspheres and colloidal silica particles result high “whiteness” characteristics and therein enhanced reflectance characteristics (para 117).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the microspheres and colloidal silica particles of Greenwood with the coating compositions or material of Iyer to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance and improved tear resistance, tensile strength, dry adherence, and dirt pick-up resistance to hydrophilic and/or hydrophobic materials.
Furthermore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of white pigments (e.g., barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)), microspheres (i.e., pigment extenders), and flame retardants in the coating composition and/or final film material, as well as in relationship to one another, of Iyer as modified by Greenwood to optimize its whiteness and therein the average resulting reflectively in a dried state and/or its SRI in a dried state as well as its flame retardancy.
Regarding claim 41, Iyer teaches the coating composition comprising water, (barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)), polymer base, (e.g., acrylic), and fire or flame retardants,) (para 31, 44, 63-65, 68, 57, 58, 60, 70); and Greenwood teaches the use of microspheres (i.e., pigment extenders) (para 7).
Greenwood further teaches coatings with solar reflective properties comprising microspheres (i.e., pigment extenders), organosilane-functionalised colloidal silica (SiO2) particles, an organic binder (e.g., acrylic), and pigments (e.g., zinc oxide) (abstract, para 7, 74-75, 95, 101, 114-115, 117); wherein the microspheres specifically to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance (para 75); wherein the organosilane-functionalised colloidal silica and hollow microspheres can be used in a solar reflective coating composition or a cool roof coating composition, for improving tear resistance, the tensile strength, the dry adherence, and the dirt pick-up resistance to hydrophilic and/or hydrophobic materials (para 13); wherein Greenwood further suggests the use of microspheres and colloidal silica particles result high “whiteness” characteristics and therein enhanced reflectance characteristics (para 117).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust each of the constituents in the composition of Iyer as modified by Greenwood, as well as in relation to one another, to optimize its properties in a wet state (e.g., viscosity, density, how it applies and flows, wet adherence, etc) as well as its final properties (e.g., tear strength, color or whiteness, tensile strength, dry film adherence, flame retardancy, etc) in a dried state.
Furthermore, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Regarding claims 43 and 47, Greenwood teaches the use of hollow microspheres having a diameter of 10 to about 60 μm (para 8, 88). 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 Greenwood, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Claims 39, 40, 42, 44, 46, 48, and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer and Greenwood as applied to claims 37 and 38 above, and further in view of Wickert et al (US 6,214,450 B1).
Regarding claims 39 and 40, Iyer as modified Greenwood teaches the roofing and/or siding material of instant claims 37 and 38. Iyer further teaches the use of a secondary pigment (e.g. silicon dioxide or SiO2); as does Greenwood (e.g., colloidal silica or SiO2) (para 10); wherein the colloidal silica particles of Greenwood suitably have an average particle diameter ranging from about 2 to about 150 nm (para 58) which lies within the range of the instant claims.
Iyer as modified by Greenwood fails to suggest wherein said primary pigment has an average particle size of 1 nanometer to 500 nanometers.
Wickert teaches roof coatings comprising acrylic latex, flame retardants (e.g., antimony trioxide), hollow microspheres and opacifiers (i.e., pigments including zinc sulfide, zinc oxide, and barium sulfate); wherein the pacifiers have a size of about 0.3 to 0.5 microns (i.e., 300 to 500 nm) which lies within the range of the instant claims (col 1, lines 5-14; col 5, line 45 - col 6, line 60; col 8, lines 27-60).
Therefore, it would have been it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the pacifiers of Wickert for the primary pigments and in the coating compositions of Iyer as modified by Greenwood; since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Regarding claim 42, 44, and 46, Iyer teaches the coating composition comprising water, (barytes (barium sulfate) (BaSO4), zinc oxide (ZnO), zinc sulfite (ZnS)), polymer base, (e.g., acrylic), and fire or flame retardants,) (para 31, 44, 63-65, 68, 57, 58, 60, 70); and Greenwood teaches the use of microspheres (i.e., pigment extenders) (para 7).
Greenwood further teaches coatings with solar reflective properties comprising hollow microspheres (i.e., pigment extenders), organosilane-functionalised colloidal silica (SiO2) particles, an organic binder (e.g., acrylic), and pigments (e.g., zinc oxide) (abstract, para 7, 8, 74-75, 88, 95, 101, 114-115, 117); wherein the microspheres specifically to improve the reflectance properties of the coating composition, in particular the visible (VIS) and near (NIR) reflectance (para 75); wherein the organosilane-functionalised colloidal silica and hollow microspheres can be used in a solar reflective coating composition or a cool roof coating composition, for improving tear resistance, the tensile strength, the dry adherence, and the dirt pick-up resistance to hydrophilic and/or hydrophobic materials (para 13); wherein Greenwood further suggests the use of microspheres and colloidal silica particles result high “whiteness” characteristics and therein enhanced reflectance characteristics (para 117).
Furthermore, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust each of the constituents in the composition of Iyer as modified by Greenwood, as well as in relation to one another, to optimize its properties in a wet state (e.g., viscosity, density, how it applies and flows, wet adherence, etc) as well as its final properties (e.g., tear strength, color or whiteness, tensile strength, dry film adherence, flame retardancy, etc) in a dried state.
Regarding claim 48, Greenwood teaches the use of hollow microspheres having a diameter of 10 to about 60 μm (para 8, 88). 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 Greenwood, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding claim 50, Iyer teaches the use of other pigments, i.e., equivalents to titanium dioxide; so it would have been obvious to one of ordinary skill in the art at the time of invention to exclude that of titanium dioxide (i.e., 0 wt.%) if its pigment or other properties are not desired, omission of an element and its function is obvious if the function of the element is not desired (MPEP § 2144.04 II).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. ASTM Standard D6083/D6083M – 24 (2026) is the current referred standard in the instant claims. Kirn (2001) establishes that the standard is meant to apply “all-acrylic polymer” (i.e., excludes other polymers than acrylic). Chueng et al (US 2021/0253892 A1) teaches acrylic latex roofing formulations (abstract).
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.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783