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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12034089 in view of Nguyen (11459757) and Sharenko et al (2021/0343886).
Patent 12034089 shows all the claimed limitations except for a plurality of protrusions, the glass layer is located between the anti-reflective coating and roof deck.
Nguyen (figures 11-12) shows a plurality of protrusions on the shingles.
Sharenko et al discloses roofing system having a glass layer located between the coating and the roof deck.
I would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Patent 12034089 to show a plurality of protrusions, the glass layer is located between the anti-reflective coating and roof deck as taught by Nguyen and Sharenko in order to have a glass layer located between the coating and the deck as it enables the usage of the shingles on a roof deck, and having a plurality of protrusions would enable the formations of different shingles with different protrusions rooftop to allow for the selection of different aesthetic shingles for different customers.
Patent 12034089 claims 1-20, as modified shows all the claimed limitations.
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.
Claim(s) 21, 28-32, 39-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sharenko (2021/0343886) in view of Perkins (11431281).
Sharenko shows a roofing system comprising: a roof deck(100); and a plurality of photovoltaic shingles installed on the roof deck, each of the plurality of photovoltaic shingles comprising:; an adhesive layer(30); an anti-reflective coating(14), wherein the anti-reflective coating has an upper surface; and a glass layer(22); wherein the glass layer is located between the anti-reflective coating and the roof deck, the anti-reflective coating covers an entire surface of the glass layer, the plurality of protrusions directly contacts the adhesive layer, the adhesive layer directly contacts the anti-reflective coating, the anti-reflective coating directly contacts the glass layer.
Sharenko does not show the adhesive layer does not cover at least a portion of the upper surface of the anti-reflective coating; wherein the at least a portion of the upper surface of the anti- reflective coating is between the plurality of protrusions,
a plurality of protrusions wherein the anti-reflective coating is located between the plurality of protrusions and the glass layer, wherein the adhesive layer is located between the plurality of protrusions and the anti-reflective coating.
Perkins shows protrusions on the top surface of the shingle.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Sharenko’s structure to show protrusions on the top surface of shingle as taught by Perkins with a reasonable expectation of success in order to form shingles that are aesthetic.
Claim(s) 22-27, 33-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sharenko in view of Perkins.
Sharenko as modified shows all the claimed limitations except for the plurality of protrusions is arranged in a periodic ordered array, the plurality of protrusions comprises a plurality of stripes, the plurality of protrusions comprises a plurality of polygonal pillars, the plurality of protrusions comprises a plurality of quadrilateral pillars, the plurality of protrusions comprises a plurality of non-rectangular quadrilateral pillars, the plurality of protrusions comprises a plurality of rectangular pillars.
Perkins figures 1-11, further shows the use of different protrusions forming a surface of the shingle to form aesthetic surfaces.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Sharenko’s modified structures to show different protrusions on the top surface of shingle as taught by Perkins with a reasonable expectation of success in order to form shingles that are aesthetic and different providing a large surface selection for customers which would result in good sales.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art shows different roof shingles designs.
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/PHI D A/Primary Examiner, Art Unit 3633