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 .
Examiner’s Note
The Examiner acknowledges the amendments of claims 1, 3, 10 – 11, and the cancellation of claim 6. Claims 13 – 20 were previously withdrawn from consideration. Claims 1 – 5 & 7 – 12 are examined herein.
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 – 2, 4 – 5 & 7 – 12 are rejected under 35 U.S.C. 103 as being unpatentable over Falkiewicz et al. (U.S. Patent No. 7,678,467), in view of Manandhar et al. (U.S. Patent No. 5,744,524), and Petiraksakul (“Effect of Stearate/Stearic Acid Coating on Filled High Density Polyethylene Properties,” Loughborough University, Doctoral Thesis, 2000).
With regard to claim 1, Falkiewicz et al. teach a roofing product, such as a shingle (Col. 9, Lines 34 – 36), comprising saturated felts/mats (i.e., “a substrate”) coated with a composition of asphalt and mineral filler (Col. 10, Lines 33 – 45). Surface material is applied by dispensing granules onto the hot, coated surface of the asphalt sheet (i.e., “at least a portion of the asphalt-coated sheet comprises a plurality of granules disposed thereon”) (Col. 11, Lines 27 – 39). The coating composition comprises asphalt mixed with mineral filler such that the filler is at least 50% by weight of the total formulation (Col. 7, Line 66 – Col. 8, Line 2), which includes Applicant’s claimed range of greater than 60 wt.%. The shingles had a CD tear strength according to ASTM D1992 in the range of 2,073-2,170 g for both PPA-free and PPA filled coatings (Table E, Col. 18, Lines 20 – 35). The granule adhesion-rub loss of both filled and unfilled samples, according to ASTM D4977 of less than 1.0 g (Table D, Col. 17, Lines 22 – 48).
Falkiewicz et al. do not teach at least one modifying agent comprising a fatty acid, a metal hydroxide, a salt of a fatty acid, or mixtures thereof.
Manandhar et al. teach an asphaltic composition comprising a dispersion aid (i.e., “at least one modifying agent”) selected from a number of options, including stearic acid (i.e., “fatty acid”) or aluminum stearate (i.e., “a salt of fatty acid”) or mixtures thereof dispersion aid for improving the dispersion of the asphaltic compound components (Col. 2, Lines 9 – 29 & Col. 3, Lines 41 – 54). Filler particles can be selected from *calcium carbonate, talc, silica, or mixtures thereof (Col. 2, Lines 14 – 17 & Col. 3, Lines 26 – 33). The dispersion agent is present in the amount of about 0.1 to about 5 parts by weight based on the total weight of the asphaltic composition, which is about 0.1 to about 5 wt.% of the composition (Col. 2, Lines 32 – 42 & Col. 3, Lines 54 – 58). The dispersing aid(s) may act as a surface-active agent or “surfactant” for reducing surface tension between components and improving the dispersion thereof (Col. 5, Lines 31 – 35).
Therefore, based on the teachings of Manandhar et al, it would have been obvious to one ordinary skill in the art prior to the effective filing date to incorporate a dispersion agent (i.e., “modifying agent”), such as a fatty acid or a salt of a fatty acid, into an asphalt composition comprising asphalt and filler for improving the dispersion of the asphalt and filler components in the composition.
Manandhar et al. teach effective dispersion occurs when the dispersion aid is present in the amount of about 0.1 to about 5 wt.% of the composition, which overlaps with Applicant’s claimed range of 0.01 wt.% to about 10 wt.% modifying agent. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Manandhar et al. do not explicitly claim the at least one dispersion aid “at least partially coats” the filler.
However, Manandhar et al. claim a method of improving the dispersion of filler in an asphaltic compound comprising blending filler with dispersing agent, allowing said filler and said dispersing agent to react to product an oriented reaction product, before blending the oriented reaction product with asphalt to produce a filled, oriented asphaltic compound (Mamandhar’s claim 1 & Col. 5, Line 51 – Col. 6, Line 9). The dispersing aid(s) may act as a surface-active agent or “surfactant” for reducing surface tension between components and improving the dispersion thereof (Col. 5, Lines 31 – 35).
Applicant’s specification teaches the filler is coated by a method of modifying the filler by combining the filler and the modifying agent as a pre-mixture before combining with the asphalt (spec, paragraphs [0009] & [0032]). The modifying agent may be present in a powder or liquid form (spec, paragraphs [0009] & [0035]). The combination of the modifying agent with the filler is effective to incorporate the functional group of the modifying agent onto the filler, thereby modifying the surface energy of the filler (spec, paragraph [0035]).
Manandhar et al. teach a similar method step of modifying the filler by pre-mixing with the same type of dispersion agent with the same type of fatty acid as the method disclosed in Applicant’s specification for the purpose of modifying the surface energy of the filler particle, and thus results in a filler particle that is at least partially coated with said modifying agent. Therefore, one of ordinary skill in the art would expect similar method steps taught by Manandhar et al. inherently results in filler particles at least partially coated with fatty acid dispersion aid.
MPEP 2112 [R-3] states:
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Falkiewicz et al. teach the asphalt may (optionally) comprise a polymer modifier (i.e., “polymer additive”), wherein the polymer modifier is preferably between about r and about 15 wt.% of the asphalt (Col. 8, Lines 37 – 39 & Col. 8, Line 61 – Col. 9, Line 3). In other words, the polymer modifier is present in the 0 – 12 wt.% based on the entire asphalt composition. As discussed above, Falkiewicz et al. teach at least 50% and no greater than about 70% by weight of the total formation. Excluding the presence of modified filler, the polymer modifier is present in roofing composition in the amount of 0 – 70 wt.%, which includes Applicant’s claimed range of less than 10 wt.%. Polymers modify the asphalt by providing integrity at different temperatures, increasing the useful temperature range, and increasing the elastic component of the asphalt (Col. 8, Lines 8 – 32). Although polymer modifications are typically considered beneficial, the cost is high. Therefore, polymer modifies are typically only added to asphalts used to make very high-grade shingles and a small segment of commercial roofing products (Col. 8, Lines 33 – 55).
Manandhar et al. do not teach the surface free energy of the modified filler particles.
Petiraksakul teaches plastic products, such as a HDPE matrix, wherein the HDPE matrix is filled with filler particles coated (modified) with a coating agent. A decrease in surface free energy of the filler occurs due to coating the filler particles with the coating agent gives increased filler dispersion in the HDPE matrix and wettability of filler leadings to a higher toughness when fillers are coated (pg. 228). Inorganic filler particles, such as MgOH and CaCO3, are surface modified (coated) with coating agents, such as metal stearate, such as MgSt, CaSt, ZnSt, such that the modified filler has a surface free energy of 20.54 – 21.29 mJ/m2 (1 mJ/m2 = 1 mN/m) (see Table 5.1 below, pgs. 175 – 176, 204 – 205, 211, & 227).
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720
840
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Therefore, based on the teachings of Petiraksakul, it would have been obvious to one of ordinary skill in the art to modify the filler with a metal stearate coating that has a surface free energy in the range of 20.54 – 21.29 mN/m for optimizing dispersion of the filler particles throughout the polymer matrix of the asphalt composition taught by Falkiewicz et al.
With regard to claim 2, Manandhar et al. teach the dispersion aid includes aluminum stearate (i.e., “a salt of a fatty acid is a metal stearate”) and stearic acid fatty acid (Col. 2, Lines 9 – 29, Col. 3, Lines 41 – 54 & 50 – 64, Col. 4, Line 65 – Col. 5, Line 15).
With regard to claim 4, as discussed above for claims 2 – 3, Manandhar et al. teach the dispersion aid includes aluminum stearate (salt of a fatty acid, metal stearate) and stearic acid (fatty acid), each of which are free of an amine.
With regard to claim 5, Falkiewicz et al. teach a typical mineral filler is limestone (Col. 7, Lines 55 – 56).
With regard to claim 7, Manandhar et al. do not explicitly teach the granule scrub loss according to ASTM D4977 is improved by greater than or equal to about 10% based on a lost mass as compared to a lost mass of a comparable shingle not including the modifying agent.
However, the shingle taught by the combined teachings of Falkiewicz et al. and Manandhar et al. comprises the same amount of modifying agent as recited in Applicant’s claim 1, and therefore would be expected to inherently have the same improved granule scrub loss (i.e., “greater than or equal to about 10% based on a lost mass) compared to a roofing shingle which does not include said modifying agent.
With regard to claims 8 – 9, as discussed above for claim 1, Falkiewicz et al. teach the mineral filler is at a concentration of no greater than about 70 wt.% of the asphalt, which overlaps with Applicant’s claimed range of greater than 68% (claim 8), or greater than or equal to 70% (claim 9) based on the weight of the total solids content of the asphalt composition. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 10, as discussed above for claim 1, Manandhar et al. teach the dispersion agent (i.e., “modifying agent”) is present in the amount of about 0.1 to about 5 wt.% of the composition, which includes Applicant’s claimed range of about 0.10 wt.% to about 1.8 wt.%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 11, as discussed above for claim 1, Manandhar et al. teach the dispersion agent (i.e., “modifying agent”) is present in the amount of about 0.1 to about 5 wt.% of the composition, which overlaps with Applicant’s claimed range of less than or equal to 1.0 wt.%. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to claim 12, as discussed above for claim 1, Falkiewicz et al. teach at least 2,000 g CD tear resistance in samples containing mineral filler (Table E).
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Falkiewicz et al. (U.S. Patent No. 7,678,467), in view of Manandhar et al. (U.S. Patent No. 5,744,524), and Petiraksakul, as applied to claim 1 above, and further in view of Fu et al. (US 2021/0164228 A1).
With regard to claim 3, Manandhar et al. teach the dispersing aid acts as a wetting agent to promote wetting of the filler materials (Col. 5, Lines 36 – 45). Examples of the dispersing aid/wetting agent (Applicant’s “modifying agent”) is a salt of a fatty acid (Col. 3, Lines 41 – 58). Manandhar et al. do not include calcium hydroxide in this list.
Fu et al. teach an asphalt-based roofing material (paragraphs [0067]) comprising wetting agents such as calcium hydroxide, non-ionic silicones, salts of fatty acids, alkylbenzene sulfonates, alkyl sulfates, alkyl ether sulfates, ethyoxylates, amphoteric surfactants, nonionic surfactants, and combinations thereof (paragraphs [0076] - [0078] & [0084]).
Therefore, based on the teachings of Fu et al., it would have been obvious to one of ordinary skill in the art prior to the effective filing date to substitute the salt of a fatty acid dispersing aid (modifying agent) of the modified filler, taught by Manandhar and Petiraksakul, with other art recognized equivalents known for the same purpose as wetting agents, such as calcium hydroxide (i.e., “modifying agent”). In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). See MPEP 2144.06.II.
The references cited above do not teach the surface free energy of a calcium hydroxide modified filler.
However, a calcium hydroxide modified filler, wherein the filler is limestone (see discussion of claim 5 above), inherently has the same structure as Applicant’s calcium hydroxide modified filler. Therefore, the modified filler inherently has the same property, such as a surface free energy below 35 mN/m.
It has been held that where the claimed and prior art products are identical or substantially identical in structure or are produced by identical or a substantially identical processes, a prima facie case of either anticipation or obviousness will be considered to have been established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ 430, 433 (CCPA 1977), In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed products. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Response to Arguments
In light of Applicant’s amendment of claim 11, the rejection of claim 11 under 35 U.S.C. §112(b) is withdrawn.
Applicant argues, “Falkiewicz does not teach at least partially coating the filler with a fatty acid/metal stearate/metal hydroxide, nor includes any disclosure of the filler’s SFE values meeting ≤35 mN/m. The shingle performance metrics cited by the Examiner are reported for PPA-modified binder systems without any coated-filler disclosure. Id. at 17:24 – 48; Office Action, p. 4. Thus, Falkiewicz discloses a binder-phase PPA modification, not a modified filler coated with the modifying agent for surface energy reduction” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues, “Manandhar teaches a polymer-modified membrane technology with low filler and high concentrations of polymer, and does not disclose a coated filler meeting the claimed SFE limits, nor the claims high-filler/low-polymer shingle. Manandhar addresses polymer-modified asphalt compounds for membranes, typically compounding about 70 – 45 parts asphalt, 15 – 25 parts polymer, and 15 – 25 parts filler, with about 0.1 – 5 parts dispersing aid such as stearic acid or aluminum stearate to improve dispersion. Manandhar, 2:9-42, 3:41-58” (Remarks, Pg. 7).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. The rejection cited the secondary reference of Manandhar to demonstrate it would have been obvious for one of ordinary skill in the art be motivated to modify the surface of the filler taught by the primary reference of Falkiewicz et al. As discussed above, Falkiewicz et al. teaches the presence of polymer modifier (modifier) is optional, and may be present in the amount of up to 12 wt.%, based on the total asphalt composition, and therefore in the amount of 0 – 67 wt.%, when excluding the amount of filler. Applicant’s claimed range of less than 10 wt.% is within the range of 0 – 67 wt.% taught by the primary reference of Falkiewicz et al.
One of ordinary skill in the art would not be motivated to modify the content of polymer modifier (additive) taught by the primary reference with the polymer content taught by the secondary reference. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues, “Manandhar describes an ‘oriented reaction product’ formed by blending filler with dispersing aid and allowing reaction before blending with polymer-modified asphalt, but teaches that technique specifically in the context of high-polymer loading asphalt and fails to specifically address formation of coated filler particles. Id. at 5:51-6:9.
“The Examiner’s inherency theory for the ‘at least partially coated’ filler does not reach the combination of amended claim 1. The Office Action reasons that Manandhar’s pre-blend and ‘oriented reaction product’ would inherently result in filler particles ‘at least partially coated,’ but Manandhar fails to provide any basis to assert that coated filler particles are inherently operable with a high-filler, low-polymer composition or that such coated filler particles would achieve the claimed surface energy metrics. Manandhar is teaching as addressing dispersion issues arising from elevated levels of polymer loading through the order and stabilization of the polymer such that a person of ordinary skill would lack any motivation to apply those teachings to address filler surface chemistry issues arising in the high-filler coating composition of the present application. Applicant’s specification and data are expressly directed to reducing the filler’s surface energy via at least partial coating with the modifying agent. See ¶¶ [0034] – [0039], [0089] – [0090]; Examples 5 – 6 (demonstrating treated fillers achieving ~21 mN/m SFE versus untreated fillers at ~33 mN/m). This improvement in the filler surface chemistry is not taught or reasonably suggested by the cited art and is central to the improved granule adhesion and stable processing. According, the inherency rationale does not apply; the claimed coated-filler surface-energy limits are functional properties tied to a specific coated state of the filler that is neither inevitably produced by Manandhar’s low-filler, high-polymer membrane process nor suggested by Falkiewicz’s binder-phase PPA chemistry” (Remarks, Pgs. 7 – 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. First, Applicant has misunderstood the teachings of Manandhar with regard to the polymer and the dispersion aid. As previously discussed, Manandhar’s method of combining the filler particles and the dispersion aid is similar to Applicant’s method of manufacturing the modifying the surface of filler particles with modifying agent (dispersion aid).
Second, as Applicant noted, Manandhar describes a step of blending filler with dispersing aid and allowing reaction before blending with polymer-modified asphalt. This is the same as Applicant’s surface treatment step for modifying the filler particle surface. Although Manandhar discusses their desire to improve the prior art with regard to polymer loading, the high polymer loading is not pertinent to the inherent structural feature that results from blending filler particles and dispersion aid before mixing the inherently coated
Third, Applicant has misunderstood the science of interparticle forces between modified filler particles and polymer binder, as opposed to the interparticle forces between filler particles without the dispersion/modifying agent and polymer binder. Contrary to Applicant’s assertion, one of ordinary skill in the art understands that a reduced interfacial tension is not a means of controlling modifier-coated filler surface energy. Rather, the coating for modifying the surface of the filler particles is selected based on the desired surface energy of the modified surface, which controls (i.e., reduces) interfacial tensions between the (modified) filler particles and the polymer binder.
The entire point of this step taught by Manandhar and Petiraksakul is to coat the filler particles with the dispersion/coating/modifying aid (before combining with polymer) in order to improve dispersion of the filler particles in the polymer binder by modifying the surface of said filler particles with a low surface energy coating that has a greater affinity for the polymer binder, and thus easier dispersion, than the filler particles without the coating (dispersing agent). A thorough discussion of the science of the Manandhar’s dispersing aid (coating/modifying agent) and a polymer binder is found in Petiraksakul.
Applicant’s claimed surface energy is specific to the coated filler particle and not the polymer, and thus the surface energy is not dependent on the polymer content or type of polymer. Petiraksakul’s Table 5.1 further supports surface energy specific to the type of particle and coating, regardless of the polymer content or type of polymer.
Fourth, as discussed in the rejection above, Petiraksakul’s Table 5.1 teach the surface energy of the is specific to the type of coating modification. Modified filler particles with a lower surface energy disperse more easily throughout the polymer binder.
Applicant argues, “In view of the foregoing, the Examiner’s reliance on mere range overlap and inherency is misplaced. Neither Falkiewicz nor Manandhar recognizes the need to attain the claimed filler surface condition in a high-filler (at least 60 wt.%), low-polymer (less than 10 wt.%) roofing composition, nor do they teach how to do so” (Remarks, Pg. 8).
EXAMINER’S RESPONSE: Applicant's arguments have been fully considered but they are not persuasive. As discussed above, the surface energy of the modified filler particles is not dependent on the polymer content. Falkiewicz teach the recited filler and polymer content in the roofing composition. Petiraksakul teach the surface energy of various types of modified filler particles dispersed in polymer binder.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 NICOLE T GUGLIOTTA whose telephone number is (571)270-1552. The examiner can normally be reached M - F (9 a.m. to 10 p.m.).
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/NICOLE T GUGLIOTTA/Examiner, Art Unit 1781
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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