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 .
Response to Amendment
This office action is in response to the Amendment filed on 07/27/2026.
Claims 20 and 22-36 are presently pending and under examination; claims 1-19, 21 and 37-38 are canceled; claims 20, 22, 28-30 and 34-36 are amended.
The objection to the specification is withdrawn in light of the amendments to the specification.
The objections to claims 22, 28-30 and 34-36 are withdrawn in light of the amendments to the claims; the objection to claim 38 is moot as this claim has been canceled.
The rejections of claims 22 and 30 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims; the 112(b) rejections of claims 24-27, 29 and 31-32 are maintained; some of the 112(b) rejections of claim 28 are withdrawn, and others are maintained as set forth below.
All grounds of nonstatutory double patenting rejection are withdrawn in light of the amendments to the claims.
The 35 U.S.C. 102 rejections of claims 20, 22-30 and 35-36 over FLEISCHEL and of claims 20, 22-31 and 33 over PRAW, and the 35 U.S.C. 103 rejections of claim 34 over FLEISCHEL, claim 34 over PRAW, and claim 32 over PRAW in view of SCHATZ are withdrawn in light of the amendments to the claims; the rejections of claims 21 and 37-38 are moot as these claims have been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
For purposes of claim interpretation, “MDI” as recited in claims 24-32 is interpreted as meaning methylene diphenyl diisocyanate, as this would appear most in keeping with Applicant’s intent as discussed in the specification at pg. 12, line 13.
For purposes of claim interpretation, “Sved” as recited in claims 35-36 is interpreted as meaning Svedberg units, i.e., 10-13 seconds, as this would be the meaning as understood by one of ordinary skill in the art and as discussed in the present specification at pg. 31, lines 21-22.
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 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.
13. Claims 20 and 22-36 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.
14. With respect to claim 20, it is noted that the amendment to claim 20 now recites “A method comprising applying to a roofing material an asphalt composition” (see claim 20 at lines 1-2). As such, while the specification discloses that the asphalt composition is for use in weatherproofing applications and is used to form a weatherproofing material such as a shingle for a roofing application, the Examiner has been unable to locate any disclosure that would support the limitation of applying an asphalt composition to a roofing material. No mention of a method of applying an asphalt composition to a roofing material or of a step of specifically applying an asphalt composition to any material could be located in the specification.
Claims 22-36 are included herein as each depends from claim 20 which is rejected for the reasons set forth above.
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 24-29 and 31-32 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.
Claims 24-25 each recite limitations for the aromatic isocyanate, but do not indicate whether or not the aromatic isocyanate is actually required to meet the limitations of the claim, as in claim 23, from which claims 24-25 depend, the aromatic isocyanate is optional. It is not clear whether the aromatic isocyanate is required in claims 24-25, or whether claims 24-25 mean that the aromatic isocyanate, if present, requires the further limitations recited (i.e., aromatic isocyanate is not required to meet the limitations of claims 24-25).
For purposes of examination, Examiner treated claims 24-25 as meaning the method according to claim 23, wherein the isocyanate is an aromatic isocyanate, i.e., an aromatic isocyanate is required to meet the claim limitations. It is noted that Applicant’s remarks filed 07/27/2026 state that “One skilled in the art would understand that the further limitations on the aromatic isocyanates of claims 24 and 25 happen when the aromatic isocyanates is present”; this does not clarify whether or not the aromatic isocyanate is required to meet the claim limitations, or is still optional, as discussed above. Clarification is requested.
Claims 26-29 each recite limitations for the polymeric MDI, but do not indicate whether or not the polymeric MDI is actually required to meet the limitations of the claim, as in claim 24, from which claims 26-29 depend, the polymeric MDI is optional. It is not clear whether the polymeric MDI is required in claims 26-29, or whether claims 26-29 mean that the polymeric MDI, if present, requires the further limitations recited (i.e., polymeric MDI is not required to meet the limitations of claims 26-27 and 29).
For purposes of examination, Examiner treated claims 26-29 as meaning the method according to claim 24, wherein the aromatic isocyanate is a polymeric MDI, i.e., a polymeric MDI is required to meet the claim limitations. Clarification is requested.
Claims 31-32 each recite limitations for the monomeric MDI, but do not indicate whether or not the monomeric MDI is actually required to meet the limitations of the claim, as in claim 25, from which claims 31-32 depend, the monomeric MDI is optional. It is not clear whether the monomeric MDI is required in claims 31-32, or whether claims 31-32 mean that the monomeric MDI, if present, requires the further limitations recited (i.e., monomeric MDI is not required to meet the limitations of claims 31-32).
For purposes of examination, Examiner treated claim 31 as meaning the method according to claim 25, wherein the aromatic isocyanate is a monomeric MDI, i.e., a monomeric MDI is required to meet the claim limitations of claims 31-32. Clarification is requested.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 20, 22-30 and 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Fleischel, et al. (U.S. Pub. No. 2020/0199025-A1) (hereinafter, “FLEISCHEL”) in view of Uhrmacher (U.S. Pat. No. 2,859,125-A) (hereinafter, “UHRMACHER”).
Regarding claim 20, FLEISCHEL teaches a method comprising applying an asphalt composition (see FLEISCHEL generally at Abstract and paragraphs [0001]-[0004] and [0048]),
wherein said composition comprises at least one thermosetting reactive compound (see FLEISCHEL at Abstract),
wherein the total amount of thermosetting reactive compounds in the composition is 0.1 to 10.0 wt.-% based on the total weight of the composition (see FLEISCHEL at Abstract),
and wherein at least one thermosetting reactive compound is an isocyanate (see FLEISCHEL at paragraph [0001], teaching polymeric MDI).
FLEISCHEL does not explicitly mention that the asphalt composition is applied to a roofing material; however, FLEISCHEL explicitly states that the composition can be used as any classical asphalt compositions of the art, e.g., for coatings, particularly for waterproofing (see FLEISCHEL at paragraphs [0048]-[0049]), i.e., it can clearly be used for roofing applications.
Additionally, it is well known in the art to apply asphalt compositions to roofing materials. For example, UHRMACHER teaches a method comprising applying an asphalt composition to a roofing material (see UHRMACHER at col. 1, lines 15-20). UHRMACHER teaches that it is common practice to apply an asphalt coating to roofing felt (see UHRMACHER at col. 1, lines 24-26), and that this can provide a roofing material which is weatherproof (see UHRMACHER at col. 1, lines 15-20 and col. 4, lines 10-13).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the asphalt composition of FLEISCHEL to a roofing material as taught by UHRMACHER (see UHRMACHER at col. 1, lines 15-20), as UHRMACHER teaches that this is a known, common use of asphalt compositions and as FLEISCHEL teaches that the asphalt composition can be used as any classical asphalt compositions of the art (see UHRMACHER at col. 1, lines 24-26; see FLEISCHEL at paragraph [0048]). Additionally, one of ordinary skill in the art would be motivated to apply the asphalt composition to a roofing material for the benefit of providing the roofing material with a weather resistant coating (see UHRMACHER at col. 1, lines 15-20 and col. 4, lines 10-13; see FLEISCHEL at paragraphs [0003]-[0004] and [0048]-[0049]).
Regarding claim 22, FLEISCHEL in view of UHRMACHER teaches a method according to claim 20, wherein the thermosetting reactive compounds are present in a total amount of from 1.0 wt.% to 5.0 wt.%, based on the total weight of the asphalt composition (see FLEISCHEL at paragraph [0038], teaching not more than 5.0 wt.% and at least 0.9 wt.%, e.g., 1 to 1.9 wt.%).
Regarding claim 23, FLEISCHEL in view of UHRMACHER teaches a method according to claim 20, wherein the isocyanate is selected from aromatic isocyanates or aliphatic isocyanates (see FLEISCHEL at paragraph [0001], teaching polymeric MDI).
Regarding claim 24, FLEISCHEL in view of UHRMACHER teaches a method according to claim 23, wherein the aromatic isocyanate is selected from monomeric MDI, polymeric MDI, toluene diisocyanate, polymeric toluene diisocyanate, or 1,5- naphthalene diisocyanate (see FLEISCHEL at paragraph [0001], teaching polymeric MDI).
Regarding claim 25, FLEISCHEL in view of UHRMACHER teaches a method according to claim 23, wherein the aromatic isocyanate is monomeric MDI and/or polymeric MDI (see FLEISCHEL at paragraph [0001], teaching polymeric MDI).
Regarding claim 26, FLEISCHEL in view of UHRMACHER teaches a method according to claim 24, wherein the polymeric MDI has a functionality of at least 2.5 (see FLEISCHEL at paragraph [0030]).
Regarding claim 27, FLEISCHEL in view of UHRMACHER teaches a method according to claim 24, wherein the polymeric MDI has a functionality in the range 2.5 to 4 (see FLEISCHEL at paragraphs [0030], [0084]-[0085] and [0089], teaching functionality of 2.7 or 2.9).
Regarding claim 28, FLEISCHEL in view of UHRMACHER teaches a method according to claim 24, wherein the amount of polymeric MDI is of from 0.5 to 2.0 wt.% based on the total weight of the composition (see FLEISCHEL at paragraph [0038], teaching 0.5 to 1.8 wt.%).
Regarding claim 29, FLEISCHEL in view of UHRMACHER teaches a method according to claim 24, wherein the amount of polymeric MDI is of from 2.0 to 5.0 wt.% based on the total weight of the composition (see FLEISCHEL at paragraph [0038], teaching 2.1 to 3.7 wt.%).
Regarding claim 30, FLEISCHEL in view of UHRMACHER teaches a method according to claim 24, wherein the polymeric MDI has an iron content in the range of from 1 to 100 ppm by weight (see FLEISCHEL at paragraph [0031]).
Regarding claim 34, FLEISCHEL in view of UHRMACHER teaches a method according to claim 20, wherein the thermosetting reactive compound comprises at least one epoxy resin and/or at least one melamine formaldehyde resin (see FLEISCHEL at paragraph [0024]). FLEISCHEL does not explicitly mention that the isocyanate and the epoxy and/or melamine formaldehyde resin are used together; however, FLEISCHEL explicitly states that it is understood that combinations of preferred embodiments are within the scope of the present invention (see FLEISCHEL at paragraph [0023]), i.e., it would be obvious to one of ordinary skill in the art that an embodiment comprising the isocyanate and an embodiment comprising the epoxy resin and/or melamine formaldehyde resin can be used in combination, i.e., these thermosetting reactive compounds can be used together.
Regarding claim 35, FLEISCHEL in view of UHRMACHER teaches a method according to claim 20, wherein at least 18% by weight based on the total weight of the composition are particles with a sedimentation coefficient above 5000 Sved in a white spirit solvent (see FLEISCHEL at Abstract).
Regarding claim 36, FLEISCHEL in view of UHRMACHER teaches a method according to claim 20, wherein at least 20% by weight based on the total weight of the composition are particles with a sedimentation coefficient in a range of from 10000 to 1000000 Sved in a white spirit solvent (see FLEISCHEL at claim 2).
Claims 20, 22-31 and 33-36 are rejected under 35 U.S.C. 103 as being unpatentable over Praw, et al. (WO-2020/035403-A1) (hereinafter, “PRAW”) in view of UHRMACHER.
Regarding claim 20, PRAW teaches a method comprising applying an asphalt composition (see PRAW generally at Abstract and pg. 1, lines 6-12 and 19-26 and pg. 16, lines 1-6),
wherein said composition comprises at least one thermosetting reactive compound (see PRAW at Abstract and pg. 1, lines 6-12),
wherein the total amount of thermosetting reactive compounds in the composition is 0.1 to 10.0 wt.-% based on the total weight of the composition (see PRAW at Abstract, teaching 0.1 to 8 wt.%),
and wherein at least one thermosetting reactive compound is an isocyanate (see PRAW at Abstract).
PRAW does not explicitly mention that the asphalt composition is applied to a roofing material; however, PRAW explicitly states that the composition can be used as any classical asphalt compositions of the art, e.g., for coatings, particularly for waterproofing (see PRAW at pg. 16, lines 1-6), i.e., it can clearly be used for roofing applications.
Additionally, it is well known in the art to apply asphalt compositions to roofing materials. For example, UHRMACHER teaches a method comprising applying an asphalt composition to a roofing material (see UHRMACHER at col. 1, lines 15-20). UHRMACHER teaches that it is common practice to apply an asphalt coating to roofing felt (see UHRMACHER at col. 1, lines 24-26), and that this can provide a roofing material which is weatherproof (see UHRMACHER at col. 1, lines 15-20 and col. 4, lines 10-13).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to apply the asphalt composition of PRAW to a roofing material as taught by UHRMACHER (see UHRMACHER at col. 1, lines 15-20), as UHRMACHER teaches that this is a known, common use of asphalt compositions and as PRAW teaches that the asphalt composition can be used as any classical asphalt compositions of the art (see UHRMACHER at col. 1, lines 24-26; see PRAW at pg. 16, lines 1-6). Additionally, one of ordinary skill in the art would be motivated to apply the asphalt composition to a roofing material for the benefit of providing the roofing material with a weather resistant coating (see UHRMACHER at col. 1, lines 15-20 and col. 4, lines 10-13; see PRAW at pg. 1, lines 19-26 and pg. 16, lines 1-6).
Regarding claim 22, PRAW in view of UHRMACHER teaches a method according to claim 20, wherein the thermosetting reactive compounds are present in a total amount of from 1.0 wt.% to 5.0 wt.%, based on the total weight of the asphalt composition (see PRAW at pg. 5, lines 24-35, teaching at least 0.9 wt.% and not more than 5.0 wt.%, e.g., 1 to 3.9 wt.%).
Regarding claim 23, PRAW in view of UHRMACHER teaches a method according to claim 20, wherein the isocyanate is selected from aromatic isocyanates or aliphatic isocyanates (see PRAW at pg. 5, line 37 - pg. 6, line 3, teaching toluene diisocyanate and polymeric or monomeric MDI).
Regarding claim 24, PRAW in view of UHRMACHER teaches a method according to claim 23, wherein the aromatic isocyanate is selected from monomeric MDI, polymeric MDI, toluene diisocyanate, polymeric toluene diisocyanate, or 1,5- naphthalene diisocyanate (see PRAW at pg. 5, line 37 - pg. 6, line 3, teaching toluene diisocyanate and polymeric or monomeric MDI).
Regarding claim 25, PRAW in view of UHRMACHER teaches a method according to claim 23, wherein the aromatic isocyanate is monomeric MDI and/or polymeric MDI (see PRAW at pg. 6, lines 2-3).
Regarding claim 26, PRAW in view of UHRMACHER teaches a method according to claim 24, wherein the polymeric MDI has a functionality of at least 2.5 (see PRAW at pg. 7, lines 11-12).
Regarding claim 27, PRAW in view of UHRMACHER teaches a method according to claim 24, wherein the polymeric MDI has a functionality in the range 2.5 to 4 (see PRAW at pg. 7, lines 11-13, teaching functionality of 2.8, 2.9 or 3.0).
Regarding claim 28, PRAW in view of UHRMACHER teaches a method according to claim 24, wherein the amount of polymeric MDI is of from 0.5 to 2.0 wt.% based on the total weight of the composition (see PRAW at pg. 5, lines 24-35, teaching 1.1 to 2.0 wt.%).
Regarding claim 29, PRAW in view of UHRMACHER teaches a method according to claim 24, wherein the amount of polymeric MDI is of from 2.0 to 5.0 wt.% based on the total weight of the composition (see PRAW at pg. 5, lines 24-35, teaching 2.1 to 3.7 wt.%).
Regarding claim 30, PRAW in view of UHRMACHER teaches a method according to claim 24, wherein the polymeric MDI has an iron content in the range of from 1 to 100 ppm by weight (see PRAW at pg. 7, lines 15-16).
Regarding claim 31, PRAW in view of UHRMACHER teaches a method according to claim 25, wherein the monomeric MDI is a carbodiimide modified monomeric MDI (see PRAW at pg. 7, lines 19-28).
Regarding claim 33, PRAW in view of UHRMACHER teaches a method according to claim 20, wherein the asphalt composition further comprises at least one polymer selected from styrene / butadiene / styrene copolymer (SBS), styrene butadiene rubber (SBR), neoprene, polyethylene, low density polyethylene, oxidized high density polyethylene, polypropylene, oxidized high density polypropylene, maleated polypropylene, ethylene-butyl-acrylate-glycidyl-methacrylate terpolymer, ethyl vinyl acetate (EVA), polyphosphoric acid (PPA), or a combination of two or more of the aforementioned (see PRAW at Abstract).
Regarding claim 34, PRAW in view of UHRMACHER teaches a method according to claim 20, wherein the thermosetting reactive compound comprises at least one epoxy resin and/or at least one melamine formaldehyde resin (see PRAW at pg. 15, lines 8-21). PRAW does not explicitly mention that the isocyanate and the epoxy and/or melamine formaldehyde resin are used together; however, PRAW explicitly states that it is understood that combinations of preferred embodiments are within the scope of the present invention (see PRAW at pg. 4, lines 28-29), i.e., it would be obvious to one of ordinary skill in the art that an embodiment comprising the isocyanate and an embodiment comprising the epoxy resin and/or melamine formaldehyde resin can be used in combination, i.e., these thermosetting reactive compounds can be used together.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over PRAW in view of UHRMACHER, as applied to claim 31 above, and further in view of Schatz, et al. (WO-2020/126585-A1) (hereinafter, “SCHATZ”).
Regarding claim 32, PRAW in view of UHRMACHER teaches a method according to claim 31, wherein the carbodiimide modified monomeric MDI comprises 4,4’-MDI and carbodiimide (see PRAW at pg. 7, lines 19-28). However, PRAW does not explicitly mention that the carbodiimide modified monomeric MDI comprises 65 wt.% to 85 wt.% of 4,4'-MDI and 15 wt.% to 35 wt.% of carbodiimide.
SCHATZ teaches a method of providing an asphalt composition comprising 0.1 to 10 wt.% of monomeric MDI (see SCHATZ at Abstract and pg. 1, lines 5-7), wherein the monomeric MDI is carbodiimide modified monomeric MDI comprising 70 to 80 wt.% of 4,4’-mMDI and 20 to 30 wt.% of carbodiimide (see SCHATZ at pg. 4, line 34 - pg. 5, line 9), which overlaps with and thereby renders obvious the claimed ranges of 65 to 85 wt.% and 15 to 35 wt.%, respectively.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of PRAW by using the 4,4’-MDI in an amount of 50 to 80 wt.% and the carbodiimide in an amount of 20 to 30 wt.% in the carbodiimide modified monomeric MDI as taught by SCHATZ (see SCHATZ at pg. 4, line 34 - pg. 5, line 9). One of ordinary skill in the art could have used the carbodiimide and mMDI in these amounts with a reasonable expectation of success, yielding the predictable result of providing a carbodiimide modified monomeric MDI which is suitable for use as a thermosetting reactive compound in asphalt compositions and will improve the physical properties of the asphalt composition such as being more constant over a range of temperatures, having better storage stability at high temperature, having increased elastic response, etc. (see SCHATZ at pg. 2, lines 20-26).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “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))
Response to Arguments
Applicant’s arguments filed 07/27/2026 with respect to claims 20 and 22-36 have been considered but are moot because the arguments do not apply to the new combination of references as set forth in the grounds of rejection above.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(a) for claims 20 and 22-36 and under 35 U.S.C. 103 for claims 20, 22-30 and 34-36 over FLEISCHEL in view of UHRMACHER, claims 20, 22-31 and 33-36 over PRAW in view of UHRMACHER, and claim 32 over PRAW in view of UHRMACHER and SCHATZ as set forth above.
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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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