DETAILED ACTION
This Office action is a reply to the amendment filed on 4/20/2026. Currently, claims 1-15 are pending. Claims 12-13 have been withdrawn. No claims have been cancelled. New claims 14-15 have been added.
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 1-11 and 14-15 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, “the lowermost surface of the shingle” (line 6) is indefinite because the limitation lacks antecedent basis. Note that the claim does not previously recite a lowermost surface of the shingle, and that the shingle as claimed is not inherently limited to having only one lowermost surface. This rejection can be overcome by amending the claim to recite, “a lowermost surface of the shingle” or equivalent.
The remainder of claims in this section are rejected by virtue of dependency upon a rejected base claim.
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, 10 and 15 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 (note that the roof hip or ridge are not positively recited and thus not required and that the claim is drawn to the shingle itself), 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) and such that a front surface of the first portion is the lowermost surface of the shingle (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]).
Claim 4, Grubka further provides 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 34.
Claim 6, Grubka further provides wherein the substrate includes a reinforcement material at the fold line (36 is a tape that nonetheless constitutes a reinforcement material [0029]).
Claim 7, Grubka further provides wherein the predetermined fold line includes a plurality of perforations (“perforation line” [0033]).
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 15, Grubka further provides a length of the substrate being equal to the sum of a length of the first portion and a length of the second portion (annotated Fig. 7).
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.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grubka (US 20100212246) in view of Freiborg (US 4404783).
Claim 14, Grubka teaches all the limitations of claim 1 as above, but does not teach the second portion being at least twice as long as the first portion. Grubka addresses the length of the various portions of the shingle (annotated Figs. 7-9) at least in specification paragraph [0033] and shown in Fig. 3, such that the “height” (equivalent to length as mapped out above in the rejection of claim 1 in this Office action) of various fold portions HT, HFF and HSF can have various desired dimensions and “are largely a matter of design choice” [0033]. It is known in the art to have a second portion being longer than a first portion. Freiborg teaches a multi-purpose roof shingle, wherein a second portion (48; Fig. 6) is at least twice as long as a first portion 62. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the proportions of Grubka’s shingle such that the second portion is at least twice as long as the first portion, with the reasonable expectation of success of using known proportions to form an aesthetically-pleasing thicker front portion of the shingle to give an illusion of depth (col. 3, lines 65-68 and col. 4, lines 1-30), 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.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grubka (US 20100212246) in view of Quaranta et al. (US 20070144077) (‘Quaranta’).
Claim 14, Grubka teaches all the limitations of claim 1 as above, but does not teach the second portion being at least twice as long as the first portion. Grubka addresses the length of the various portions of the shingle (annotated Figs. 7-9) at least in specification paragraph [0033] and shown in Fig. 3, such that the “height” (equivalent to length as mapped out above in the rejection of claim 1 in this Office action) of various fold portions HT, HFF and HSF can have various desired dimensions and “are largely a matter of design choice” [0033]. It is known in the art to have a second portion being longer than a first portion. Quaranta, similar to Freiborg as above teaches a roof shingle that has a second portion (27; Fig. 3) is at least twice as long as a first portion (11, 12; Fig. 3). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the proportions of Grubka’s shingle such that the second portion is at least twice as long as the first portion, with the reasonable expectation of success of using known proportions to form an aesthetically-pleasing thicker front portion of the shingle to give an illusion of depth [0005], 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 and 14-15 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant's arguments filed 4/20/2026 have been fully considered but they are not persuasive. Applicant has amended the claims by adding new limitations. The rejections set forth in this instant Office action have been modified from the previous Office action to address the claims as amended.
Examiner’s Notes
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440
804
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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.
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 JAMES M FERENCE whose telephone number is (571)270-7861. The examiner can normally be reached M-F 7-4pm.
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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
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