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 .
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al. (US 2019/0292788).
Regarding claims 1, 4-5, and 9, Hong discloses a solar reflective roofing granule (30) comprising a base particle (12) coated with a cured coating composition (34) comprising a binder (36; instant polymer carrier) and at least one, infrared-reflective white pigment (38; instant functional pigment) (Fig. 2, 0054, 0075). The coating composition (34) further comprising from about 1 to 20 percent by weight of inert mineral particles (32) based on weight of the granule (0054), overlapping the claimed 5 to 80 wt% of functional mineral filler in claim 1, from about 5 to 60 wt% in claim 4, and from about 15 to 20 wt% in claim 5.
Hong teaches the granules having a solar reflectance greater than about 20 percent (0016), overlapping the claimed greater than or equal to 8%.
Regarding the overlapping ranges in claims 1, 4, and 5, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Hong does not disclose the solar reflectance being measured using a solar reflectometer, however, an overlapping range would be expected as patentability is not based upon method of measurement but whether or not the property would have been obvious in view of the prior art.
Furthermore, Hong does not teach the binder extruded with the pigment/mineral filler, however, claim 1 includes product by process language with regards to the recitation of “extruded”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 2, Hong teaches organic binder including polyamides, polyesters, epoxy resins, polyurethanes, vinyl resins, acrylic polymers, poly(meth)acrylate materials and copolymers with styrene (0083 and 0084).
Regarding claim 3, Hong teaches inert mineral particles including talc, silica, and clay (0050).
Regarding claims 6 and 7, Hong does not expressly teach an amount of the binder, however, “[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”). In this case, Hong do not specify the workable ranges for amount of binder, but they do describe the general conditions of the claim, namely amount of inert mineral particles and pigment particles. It would not be inventive to discover the workable ranges by routine experimentation of the invention taught by Hong.
Regarding claims 8 and 10, Hong teaches the pigment present in an amount of 1 to 60 percent by weight (0022), overlapping the claimed greater than 0 wt% to about 20 wt% in claim 8 and about 0.1 to 10 wt% in claim 10 (MPEP 2144.05).
Regarding claim 11, Hong teaches white pigment including titanium dioxide and zinc oxide (0054).
Regarding claim 12, Hong teaches the composition includes a light stabilizer (0027).
Response to Arguments
Applicant’s arguments filed 6/26/2026 have been fully considered but they are not persuasive. Applicant argues that Hong does teaches a mineral-rock core with a cured surface coating and not a granule body in which a polymer carrier is extruded with the powder mixture. Applicant further argues that the coating-layer percentages are not of an extruded polymer-based granule.
With respect to “extruded” recitation, it must be emphasized that it is the patentability of the product that is in issue and not the patentability of the process steps employed to prepare the product. See MPEP section 2113. Applicant has not clearly shown a structural difference between the granules taught in Hong and the claimed polymer-based granule. It is unclear what structure is imparted based upon the claimed method of extrusion. Applicant’s specification teaches that an exemplary embodiment of extrusion of the polymer carrier with the powder mixture is carried out using a twin-screw extruder (see specification 0038). As evidenced by nanoscience, in twin screw extrusion, melted polymer and particles are mixed and the mixture extruded (What is a twin screw extruder? and Figure 1). It is unclear how this is structurally different from the mixture as taught in Hong. Applicant is reminded that the claims use open ended language with the recitation of “comprising” thus the coating of the mixture being on base particles is not excluded from the structure of the claimed granule.
Correspondance
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 ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA J WEYDEMEYER/ Primary Examiner, Art Unit 1781
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