Notice of Pre-AIA or AIA Status
This Office Action is in response to the amendment filed April 2, 2024. Claims 4-5 and 19-20 are cancelled. Claims 1-3, 6-18, and 21-24 are rejected as set forth below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first adhesive area” of claims 1-3, 6, 9-10, and 16-18 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 6-10, 16-18, and 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Shiao (US 20210262232-A1), and further in view of Jeppesen (US 20100039226-A1).
In regard to Claim 1, Shiao discloses a roofing shingle (element 200) (Fig 3) [0051], comprising: a first shingle portion (portion with ‘upper layer 110’) (Fig 1) [0041], comprising: a base portion (upper layer 110) (Fig 1) [0041], wherein the base portion (upper layer 110) (Fig 1) [0041] includes a headlap portion (headlap portion 119) (Fig 1) [0041], wherein the headlap portion (headlap portion 119) (Fig 1) [0041] includes an outer surface (front surface 112, back surface 115) (Fig 1) [0041], a plurality of tooth portions (tabs 116) (Fig 1) [0041] extending from the base portion (upper layer 110) (Fig 1) [0041], wherein the plurality of tooth portions (tabs 116) (Fig 1) [0041] comprises at least a first tooth portion (tabs 116) (Fig 1) [0041], and a nail zone (nail zone 160) (Fig 2) [0041] between the headlap portion (headlap portion 119) (Fig 1) [0041] and the plurality of tooth portions (tabs 116) (Fig 1) [0041]; a second shingle portion (backer strip 118) (Fig 1) [0041] positioned to at least partially overlap the first shingle portion (portion with ‘upper layer 110’) (Fig 1) [0041]; a first adhesive area (sealant attachment zone 140) (Fig 1) [0041] on the outer surface (front surface 112) (Fig 1) [0041] of the headlap portion (headlap portion 119) (Fig 1) [0041] and outside the nail zone (nail zone 160) (Fig 2) [0041]. But Shiao does not disclose an RFID tag in the first adhesive line. Jeppesen teaches arranging a RFID tag onto the first layer of material prior to providing the second layer of material (Abstract) and, in some embodiments, one surface of the tag is provided with a suitable adhesive [0042-0046]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing shingle of Shiao to include the RFID tag in the first adhesive line as taught by Jeppesen, in order to accurately identify and track the product after it has been manufactured and to securely attach the RFID tag without needing additional fastening methods.
In regard to Claim 2, Shiao and Jeppesen disclose the roofing shingle of claim 1. Jeppesen discloses the roofing shingle as described above wherein the RFID tag is on a surface of the first adhesive area [0042-0043] but does not disclose wherein the RFID tag is fully within an interior of the first adhesive area. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the RFID tag as disclosed by Jeppesen able to be placed in multiple locations within or on the surface of the shingle as disclosed by Shiao, in order to enable manufacturing flexibility and variability.
In regard to Claim 3, Shiao and Jeppesen disclose the roofing shingle of claim 1. Jeppesen discloses the roofing shingle as described above wherein the RFID tag is on a surface of the first adhesive area [0042-0043].
In regard to Claim 6, Shiao and Jeppesen disclose the roofing shingle of claim 1. Shiao discloses wherein the first adhesive area comprises an asphalt-based adhesive or a sealant [0041, 0045].
In regard to Claim 7, Shiao and Jeppesen disclose the roofing shingle of claim 1. Shiao discloses wherein the first tooth portion comprises: a substrate [0060]; an asphalt-filled layer on the substrate [0060]; and a plurality of granules on the asphalt-filled layer [0002].
In regard to Claim 8, Shiao and Jeppesen disclose the roofing shingle of claim 1. Shiao discloses the roofing shingle as described above wherein the substrate comprises a fiberglass mat [0058].
In regard to Claim 9, Shiao and Jeppesen disclose the roofing shingle of claim 7. Shiao discloses a first adhesive line between the first tooth portion and the second shingle portion [0041], but does not disclose a second adhesive area between the first tooth portion and the second shingle portion. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include additional adhesive lines within the shingle of the combination of Shiao and Jeppesen to provide better wind resistance and enhanced water proofing.
In regard to Claim 10, Shiao and Jeppesen disclose a roofing shingle as described above. Shiao discloses a first adhesive line between the first tooth portion and the second shingle portion [0041], but does not disclose a third adhesive area between the base portion and the second shingle portion. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include additional adhesive lines within the shingle of the combination of Shiao and Jeppesen to provide better wind resistance and enhanced water proofing.
In regard to Claim 16, Shiao discloses a roofing system, comprising: a roof deck [0041]; and a roofing shingle installed on the roof deck (roofing material 200) (Fig 3) [0051], the roofing shingle comprising: a first shingle portion (portion with ‘upper layer 110’) (Fig 1) [0041], comprising: a base portion (upper layer 110) (Fig 1) [0041], wherein the base portion (upper layer 110) (Fig 1) [0041] includes a headlap portion, wherein the headlap portion (headlap portion 119) (Fig 1) [0041] includes an outer surface (front surface 112, back surface 115) (Fig 1) [0041], a plurality of tooth portions (nail zone 160) (Fig 2) [0041] extending from the base portion (upper layer 110) (Fig 1) [0041], wherein the plurality of tooth portions (tabs 116) (Fig 1) [0041] comprises at least a first tooth portion (nail zone 160) (Fig 2) [0041], and a nail zone (nail zone 160) (Fig 2) [0041] between the headlap portion (headlap portion 119) (Fig 1) [0041] and the plurality of tooth portions; a second shingle portion (backer strip 118) (Fig 1) [0041] positioned to at least partially overlap the first shingle portion (portion with ‘upper layer 110’) (Fig 1) [0041]; a first adhesive area (sealant attachment zone 140) (Fig 1) [0041] on the outer surface (front surface 112) (Fig 1) [0041] of the headlap portion (headlap portion 119) (Fig 1) [0041] and outside the nail zone (nail zone 160) (Fig 2) [0041], but Shiao does not disclose an RFID tag in the first adhesive area. Jeppesen teaches arranging a RFID tag onto the first layer of material prior to providing the second layer of material (Abstract) and, in some embodiments, one surface of the tag is provided with a suitable adhesive [0042-0043]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing system of Shiao to include the RFID tag in the first adhesive line in the embodiment of Jeppesen, in order to accurately identify and track the product after it has been manufactured and to securely attach the RFID tag without needing additional fastening methods.
In regard to Claim 17, Shiao and Jeppesen disclose a roofing system of claim 16. Jeppesen discloses the roofing shingle as described above wherein the RFID tag is on a surface of the first adhesive area [0042-0043] but does not disclose wherein the RFID tag is fully within an interior of the first adhesive area. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the RFID tag as disclosed by Jeppesen able to be placed in multiple locations within or on the surface of the shingle of Shiao, in order to enable manufacturing flexibility and variability.
In regard to Claim 18, Shiao and Jeppesen disclose the roofing system of claim 16. Jeppesen discloses the roofing shingle as described above wherein the RFID tag is on a surface of the first adhesive area [0042-0043].
In regard to Claim 21, Shiao and Jeppesen disclose the roofing system of claim 1. Shiao discloses wherein the outer surface (front surface 112) (Fig 1) [0041] is an upper surface of the headlap portion (headlap portion 119) (Fig 1) [0041].
In regard to Claim 22, Shiao and Jeppesen disclose the roofing system of claim 1. Shiao discloses wherein the outer surface (back surface 115) (Fig 1) [0041] is a lower surface of the headlap portion (headlap portion 119) (Fig 1) [0041].
In regard to Claim 23, Shiao and Jeppesen disclose the roofing system of claim 16. Shiao discloses wherein the outer surface (front surface 112) (Fig 1) [0041] is an upper surface of the headlap portion (headlap portion 119) (Fig 1) [0041].
In regard to Claim 24, Shiao and Jeppesen disclose the roofing system of claim 16. Shiao discloses wherein the outer surface (back surface 115) (Fig 1) [0041] is a lower surface of the headlap portion (headlap portion 119) (Fig 1) [0041].
Claims 11 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Pinault (US-7125601-B1), and further in view of Alovert (US 20230222889).
In regard to Claim 11, Pinault discloses a roofing shingle (roofing shingle 30) (Fig 2) [col 8, lines 24-31], comprising: a substrate (substrate 32) (Fig 2, 3); a first asphalt-filled layer (integrated granule product 34) (Fig 2) [col 8, lines 24-32] on the substrate; a plurality of granules (granules 16) (Fig 1) on the first asphalt-filled layer (integrated granule product 34), wherein the plurality of granules (integrated granule product 34) (Fig 2) contact the first asphalt-filled layer to form an uppermost surface of the roofing shingle [col 8, lines 27-29]; Pinault does not disclose an RFID tag on the substrate, wherein the RFID tag is embedded within an interior of the first asphalt-filled layer. Alovert discloses and an RFID tag (RF tag 101) on the substrate, wherein the RFID tag (RF tag 101) is embedded within an interior of the first asphalt-filled layer (smart shingles 331) (Fig 3) [0072]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing shingle disclosed in Pinault to include the RFID tag embedded in the asphalt shingle disclosed in Alovert, in order to ensure long term durability of the RFID tag.
In regard to Claim 13, Pinault and Alovert disclose the roofing shingle of claim 11. Pinault discloses wherein the substrate comprises a fiberglass mat [col 8, lines 41-43].
In regard to Claim 14, Pinault and Alovert disclose the roofing shingle of claim 11. Pinault discloses wherein the roofing shingle (roofing shingle 30) (Fig 2) [col 8, lines 24-31] includes a headlap portion (headlap area 38) (Fig 2) and a reveal portion (tab area 36) (Fig 2) but do not disclose wherein the RFID tag is below the headlap portion. Alovert discloses wherein the RFID tag is arranged in a plurality of locations, including adhered to the underside of a shingle [0064], but does not specifically disclose wherein the RFID tag is below the headlap portion. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the RFID tag as disclosed by Alovert able to be placed below the headlap portion on the shingle of Pinault, in order to enable manufacturing flexibility and variability.
In regard to Claim 15, Pinault and Alovert disclose the roofing shingle of claim 11. Pinault discloses wherein the roofing shingle includes a headlap portion (headlap area 38) (Fig 2) and a reveal portion (tab area 36) (Fig 2) but do not disclose wherein RFID tag is below the reveal portion. Alovert discloses wherein the RFID tag is arranged in a plurality of locations including adhered to the underside of a shingle [0064], but does not specifically disclose wherein the RFID tag is below the reveal portion. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the RFID tag as disclosed by Alovert able to be placed below the reveal portion on the shingle of Pinault, in order to enable manufacturing flexibility and variability.
Claim 12 rejected under 35 U.S.C. 103 as being unpatentable over Pinault (US-7125601-B1) and Alovert (US 20230222889) and further in view of Bondoc (US-4717614-A).
In regard to Claim 12, Pinault and Alovert disclose the roofing shingle of claim 11. Pinault does not disclose a second asphalt-filled layer, wherein the first asphalt-filled layer and the second asphalt-filled layer are on opposite sides of the substrate. Bondoc discloses a second asphalt-filled layer (layer 34) (Fig 3), wherein the first asphalt-filled layer (layer 32) (Fig 3) and the second asphalt-filled layer (layer 34) (Fig 3) are on opposite sides of the substrate (substrate 30) (Fig 3) [col 9, lines 45-47]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the roofing shingle disclosed in Pinault and Alovert to include the second asphalt-filled layer on roofing products disclosed in Bondoc, in order to improve the weather resistance and increase the life of the shingles.
Response to Amendment
Applicant’s arguments with respect to claims 1-3, 6-10, and 16-24 have been considered but are not persuasive.
In regard to Claims 1 and 16, applicant first argues that Shiao in view of Jeppesen supports only general teachings about applying RFID tags to roofing products and that Shiao in view of Jeppesen does not support a first adhesive area at an outer surface of the headlap portion and outside a nail zone, with the RFID tag in that particular adhesive area. The amended claims of 1 and 16 merely relocate the RFID tag to specific areas without providing any special reasoning as to why the placement of the RFID tag in the headlap/nail-zone area is critical. Moreover, how can it be critical to be in a certain layer when applicant claims it being located in multiple different areas in separate independent claims? The applicant provides no reasoning as to why this placement is non-obvious. Therefore, the combination of Shiao in view of Jeppesen teaches all claimed elements. Dependent claims 2, 3, 6-10, 17, 18, and 21-24 depend from amended independent claims 1 or 16 and are unpatentable for at least the same reasons.
In regard to Claim 11, applicant first argues that Pinault does not teach an arrangement in which the granules contact the first asphalt-filled layer to form the uppermost surface of the roofing shingle. Second, applicant argues that Pinault does not disclose an RFID tag embedded within the interior of that first asphalt-filled layer. Applicant’s arguments with respect to these aspects of claims 11- 15 have been considered but are moot because the new ground of rejection relies on a reference that was not applied in the prior rejection of record. In regard to claims 14 and 15, which are dependent on claim 11, the claims state “wherein the RFID tag is below the headlap portion” and “wherein the RFID tag is below the reveal portion”. Claims 14 and 15 merely relocate the RFID tag to specific areas without providing any special reasoning as to why the placement of the RFID tag in the headlap/reveal portion is critical. The applicant provides no reasoning as to why this placement is non-obvious, and because the applicant provides multiple places for the RFID tag, there is no basis to treat any single location as inventive. Therefore, the combination of Pinault in view of Alovert teaches all claimed elements. Dependent claims 12-15 depend from amended claim 11 and are unpatentable for at least the same reasons.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. 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 Audrey Fisher whose telephone number is (571)272-2849. The examiner can normally be reached Monday to Friday 7:30-4:30.
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/Audrey Fisher/Examiner, Art Unit 3635
/BRIAN D MATTEI/Supervisory Patent Examiner, Art Unit 3635
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