DETAILED ACTION
This Office action follows the Restriction Requirement set forth on 12/29/2025 and is responsive to applicant’s reply filed on 2/4/2026. Claims 1-13 are pending.
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 .
Election/Restrictions
Applicant’s election without traverse of Invention I, including claims 1-11 in the reply filed on 2/4/2026 is acknowledged.
Claims 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/4/2026.
Information Disclosure Statement
The Information Disclosure Statements filed on 4/14/2025 and 5/24/2024 are being considered.
Drawings
The drawings filed on 5/24/2024 are acceptable for examination.
Specification
The disclosure is objected to because of the following informalities:
“arrange near” (as filed, two recitations: [0047] and [0071]) is objected to because the limitation appears to contain a typo. This objection can be overcome by reciting, “arranged near” or equivalent.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grubka (US 20100212246).
Claim 1, Grubka provides a shingle for use on a roof hip or ridge, the shingle comprising:
a substrate (substrate 44 of shingle 26) having a top edge (see annotated Figs. 7-9 of Grubka shown below in Examiner’s Notes) and a bottom edge (annotated Figs. 7-9), a front surface (annotated Figs. 7-9) extending between the top edge and the bottom edge (annotated Figs. 7-9), and a rear surface (annotated Figs. 7-9) extending between the top edge and the bottom edge (annotated Figs. 7-9);
wherein a first portion of the substrate (annotated Figs. 7-9) is configured to be folded below a second portion of the substrate (under the broadest reasonable interpretation, the first portion is folded with respect to the second portion such that the first portion is located below the second portion, as exceedingly broadly claimed; annotated Figs. 7-9), such that a rear surface of the first portion (annotated Figs. 7-9) contacts a rear surface of the second portion (annotated Figs. 7-9);
wherein the first portion of the substrate includes the bottom edge (annotated Figs. 7-9);
wherein a rear surface of the first portion includes a nail zone (“three-layered stack 53 can be fastened by any desired fastening method, such as for example, roofing nails” (not shown); [0050]; see “nail zone” in annotated Figs. 7-9);
wherein a rear surface of at least one of the first portion and the second portion includes a first adhesive (the rear surface of the second portion includes a first adhesive 39, which is a tape comprising adhesive; annotated Figs. 7-9); and
wherein a front surface of the second portion includes a second adhesive (second adhesive 66; annotated Figs. 7-9).
Claim 2, Grubka further provides wherein the substrate comprises a glass fiber mat [0040].
Claim 3, Grubka further provides wherein the substrate comprises an asphalt coating (46; [0040]).
wherein the substrate is a unitary body (under the broadest reasonable interpretation of unitary in light of the specification and under the plain meaning to mean forming a single or uniform entity, Grubka’s substrate is a unitary body, as exceedingly broadly claimed; alternatively, the shingle 26 meets the claimed unitary requirement; [0034]; Fig. 5).
Claim 5, Grubka further provides wherein the first portion of the substrate is configured to be folded below the second portion of the substrate about a predetermined fold line 40.
Claim 6, Grubka further provides wherein the substrate includes a reinforcement material at the fold line (39 is a tape that nonetheless constitutes a reinforcement material “to prevent breakage of the shingle blank 26 as the shingle blank 26 is folded about the second perforation line 40” [0037]).
Claim 7, Grubka further provides wherein the predetermined fold line includes a plurality of perforations (“perforation line” [0037]).
Claim 8, Grubka further provides wherein the substrate includes a reinforcement material at the nail zone (39 is a tape that nonetheless constitutes a reinforcement material “to prevent breakage of the shingle blank 26 as the shingle blank 26 is folded about the second perforation line 40” [0037]).
Claim 10, Grubka further provides wherein the second adhesive is proximate to the top edge of the substrate (annotated Figs. 7-9).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grubka (US 20100212246).
Claim 9, Grubka teaches all the limitations of claim 1 as above. Although Grubka teaches the nail zone and the first adhesive being generally in the same area of the shingle (note that the “nail zone” as exceedingly broadly claimed is essentially an area in which nails can be passed through, and Grubka states that nails can be passed through portion 53, see dashed box in annotated Figs. 7-9). It would have been obvious to one of ordinary skill in the art, before the filing date of the invention, to designate the nail zone being closer to the bottom edge than the first adhesive, such that a distance between the nail zone and the bottom edge is smaller than a distance between the first adhesive and the bottom edge, with the reasonable expectation of success of ensuring that the nails are covered and sealed to prevent water intrusion to create a secure shingle system (Grubka [0033]; [0037]), and since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claim 11, Grubka teaches all the limitations of claim 1 as above. Although Grubka appears to further teach the first portion constituting about 5% to about 50% (note that about was treated as a relative term to mean approximately in a broad sense, in light of applicant’s specification and under the plain meaning) of the substrate (annotated Figs. 7-9), Grubka does not specifically recite the first portion constituting such percentage of the substrate. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the shingle such that the first portion constitutes about 5% to about 50% of the substrate, with the reasonable expectation of success of ensuring sufficient wind resistance, water intrusion protection, structural integrity and durability, superior aesthetic appeal and a secure fastening point of the roofing shingle, and since such a modification would have involved a mere change in proportion. A change in proportion is generally recognized as being within the level of ordinary skill in the art. In Gardner v. TEC Systems, INC., 725 F.2D 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Examiner’s Notes
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403
917
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Annotated Figs. 7-9 of Grubka (US 20100212246)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892. See in particular Quaranata et al. (US 20070144077), which appears to teach all of the claimed elements and features of the claimed invention, and Freiborg (US 3913294), which appears to teach substantially all of the claimed elements and features, except for certain details of the first and second adhesives.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M FERENCE whose telephone number is (571)270-7861. The examiner can normally be reached M-F 7-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached at 571-270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES M. FERENCE
Primary Examiner
Art Unit 3635
/JAMES M FERENCE/Primary Examiner, Art Unit 3635