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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 52-60, in the reply filed on 06/25/2026 is acknowledged.
Claims 41-51 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 06/25/2026.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required, the Specification does not disclose a first layer, a second layer and a third layer the first layer located between the second layer and the third layer, wherein the first layer comprises at least one of a polyester, a fiberglass or any combination thereof and the second layer and the third layer each comprise asphalt, graphene and an additive as recited in claim 52.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 52-60 are rejected under 35 U.S.C. 103 as being unpatentable over Grubka et al. (US 2018/0051465) (Grubka) in view of Kelley et al. (US 2021/0087443) (Kelley).
In reference to claims 52-60, Grubka teaches a roofing material used in roofing shingles ([0001]; [0004]) (corresponding to a roofing membrane). The shingle includes a substrate having a top surface and a bottom surface ([0004]) (corresponding to a first layer). A first asphalt layer covers at least a portion of the top surface ([0004]) (corresponding to a second layer, wherein the second layer comprises asphalt). A second asphalt layer covers at least a portion of the bottom surface of the substrate ([0049]) (corresponding to a third layer, wherein the third layer comprises an asphalt; the first layer is located between the second layer and the third layer). Grubka further teaches a material suitable for use as the substrate includes fiberglass or polyester fibers ([0045]) (corresponding to the first layer comprises at least one of a polyester, a fiberglass, or any combination thereof).
Grubka does not explicitly teach the first asphalt layer and the second asphalt layer comprise graphene and an additive, as presently claimed. However, Grubka teaches the asphalt may include various additives and/or modifiers ([0043]).
Kelley teaches a filled coating produced from asphalt shingle waste (ASW) ([0003]). The coating comprises 30 wt% to 50 wt% asphalt based on the total weight of the ASW powder filler coating ([0032]) (corresponding to the second layer comprises 10% to 90% by weight of the asphalt based on a total weight of the second layer; the second layer further comprises at least one filler; the third layer comprises 10% to 90% by weight of the asphalt based on a total weight of the third layer; the third layer further comprises at least one filler). The asphalt coating comprises a polymer modified asphalt coating, wherein the polymer modified asphalt coating is a poly(styrene-butadiene-styrene) (SBS) modified asphalt coating, an atactic poly propylene (APP) modified asphalt coating or any combination thereof ([0041]) (corresponding to an additive; the additive of the second layer comprises at least one of a styrene-butadiene-styrene copolymer, an atactic polypropylene, an ethylene vinyl acetate, or any combination thereof; the additive of the third layer comprises at least one of a styrene-butadiene-styrene copolymer, an atactic polypropylene, an ethylene vinyl acetate, or any combination thereof).
The ASW powder filled coating comprises 70 wt% to 75 wt% limestone powder, granules, impurities and at least one filler material based on the total weight of the ASW powder filled coating ([0032]) (corresponding to the second layer comprises 1% to 70% by weight of the at least one filler based on a total weight of the second layer; the third layer comprises 1% to 70% by weight of the at least one filler based on a total weight of the third layer). The at least one filler includes graphene nanoparticles ([0061]; [0330]) (corresponding to graphene).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Kelley further teaches an improved method of processing and forming useful products from ASW ([0005]). Approximately 11 million tons of ASW is generated in the U.S. each year. ASW can take hundreds of years to decompose in a landfill. Accordingly, ASW presents a major environmental problem ([0005]).
In light of the motivation of Kelley, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the first asphalt coating and the second asphalt coating be the ASW powder filler coating, in order to provide an asphalt coating that uses ASW and helps solve environmental problems, and thereby arriving at the presently claimed invention.
Claim 52 is rejected under 35 U.S.C. 103 as being unpatentable over Grubka in view of A review on the development and application of graphene based materials for the fabrication of modified asphalt and cement (Han).
In reference to clam 52, Grubka teaches a roofing material used in roofing shingles ([0001]; [0004]) (corresponding to a roofing membrane). The shingle includes a substrate having a top surface and a bottom surface ([0004]) (corresponding to a first layer). A first asphalt layer covers at least a portion of the top surface ([0004]) (corresponding to a second layer, wherein the second layer comprises asphalt). A second asphalt layer covers at least a portion of the bottom surface of the substrate ([0049]) (corresponding to the third layer comprises an asphalt; the first layer is located between the second layer and the third layer). Grubka further teaches a material suitable for use as the substrate includes fiberglass or polyester fibers ([0045]) (corresponding to the first layer comprises at least one of a polyester, a fiberglass, or any combination thereof). Grubka further teaches the asphalt may include various additives and/or modifiers ([0043]) (corresponding to the second layer comprises an additive; the third layer comprises an additive).
Grubka does not explicitly teach the first asphalt layer and the second asphalt layer comprise graphene, as presently claimed.
Han teaches the addition of graphene base materials in modified asphalt preparation enhances mechanical properties of the modified asphalt (p. 5; p. 7; p. 23). The inclusion of graphene shows a considerable degree of improvement in the viscosity, high-low temperature performance, anti-fatigue performance and thermal storage stability of styrene-butadienestyrene (SBS) modified asphalt (p. 12-13).
In light of the motivation of Han, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include graphene in the first asphalt coating and the second asphalt coating of Grubka, in order to provide enhanced mechanical properties to the coatings, and thereby arriving at the presently claimed invention.
Claims 52-60 are rejected under 35 U.S.C. 103 as being unpatentable over Grubka in view of Trumbore et al. (US 2009/0004387) (Trumbore) and Han.
In reference to claims 52-60, Grubka teaches a roofing material used in roofing shingles ([0001]; [0004]) (corresponding to a roofing membrane). The shingle includes a substrate having a top surface and a bottom surface ([0004]) (corresponding to a first layer). A first asphalt layer covers at least a portion of the top surface ([0004]) (corresponding to a second layer, wherein the second layer comprises asphalt). A second asphalt layer covers at least a portion of the bottom surface of the substrate ([0049]) (corresponding to the third layer comprises an asphalt; the first layer is located between the second layer and the third layer). Grubka further teaches a material suitable for use as the substrate includes fiberglass or polyester fibers ([0045]) (corresponding to the first layer comprises at least one of a polyester, a fiberglass, or any combination thereof). Grubka further teaches the asphalt may include various additives and/or modifiers ([0043]) (corresponding to the second layer comprises an additive; the third layer comprises an additive).
Grubka does not explicitly teach the first asphalt layer and the second asphalt layer comprise graphene or the additive is at least one of a styrene-butadiene-styrene copolymer, an atactic polypropylene, an ethylene vinyl acetate or combination thereof (claims 53 and 54) , as presently claimed.
Trumbore teaches a roofing shingle coating asphalt ([0001]) The coating asphalt has good weatherability ([0006];[0038]). The coating includes a polymer modified asphalt, wherein the polymer is styrene/butadiene/styrene triblock copolymer (SBS), polypropylene, ethylene/vinyl acetate copolymer (EVA) and mixtures thereof ([0014]; [0015]; [0033]) (corresponding to an additive; the additive of the second layer comprises at least one of a styrene-butadiene-styrene copolymer, an atactic polypropylene, an ethylene vinyl acetate, or any combination thereof; the additive of the third layer comprises at least one of a styrene-butadiene-styrene copolymer, an atactic polypropylene, an ethylene vinyl acetate, or any combination thereof). Trumbore further teaches mixing the coating with a filler ([0045]) (corresponding to the second layer further comprises at least one filler; the third layer further comprises at least one filler). The filler is included in amount from about 30% to about 80% by total weight of the filled coating ([0045]) (corresponding to the second layer comprises 1% to 70% by weight of the at least one filler based on a total weight of the second layer; to the third layer comprises 1% to 70% by weight of the at least one filler based on a total weight of the third layer).
Trumbore further teaches the coating comprises asphalt, about 0.1% to about 3% by weight phosphoric acid, about 0.5% to about 8% by weight wax and about 30% to about 80% by weight the filler ([0029]; [0032]; [0037]; [0044]; [0045]; [0053]). Therefore, it is clear the coating includes about 9% to about 69.4% by weight of asphalt (i.e., 100-(0.1+0.5+30) = 69.4; 100-(3+8+80) = 9) (corresponding to the second layer comprises 10% to 90% by weight of the asphalt based on a total weight of the second layer; the third layer comprises 10% to 90% by weight of the asphalt based on a total weight of the third layer).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In light of the motivation of Trumbore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to have the first asphalt coating and second asphalt coating of Grubka be the asphalt coating of Trumbore, in order to provide asphalt coatings with good weatherability (durability) and increasing the useful life of the roofing material.
Grubka in view of Trumbore does not explicitly teach the first and second asphalt coatings include graphene, as presently claimed.
Han teaches the addition of graphene base materials in modified asphalt preparation enhances mechanical properties of the modified asphalt (p. 5; p. 7; p. 23). The inclusion of graphene shows a considerable degree of improvement in the viscosity, high-low temperature performance, anti-fatigue performance and thermal storage stability of styrene-butadienestyrene (SBS) modified asphalt (p. 12-13).
In light of the motivation of Han, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include graphene in the first asphalt coating and the second asphalt coating of Grubka in view of Trumbore, in order to provide enhanced mechanical properties to the coatings, and thereby arriving at the presently claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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