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 .
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 7-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5 and 7, and 9-16 of U.S. Patent No. 12,065,835. Although the claims at issue are not identical, they are not patentably distinct from each other because the structure, features, and composition of the shingle of instant claims 1-3 and 7-16 would have rendered been obvious to one of ordinary skill in the art at the time of invention by one of the shingles of the bundle of shingles of 1, 4, 5 and 7, and 9-16 of U.S. Patent No. 12,065,835. In addition, the structure, features, and composition of the bundle of shingles of instant claim 17 would have rendered been obvious to one of ordinary skill in the art at the time of invention by one of the shingles of the bundle of shingles of 1, 4, 5 and 7, and 9-16 of U.S. Patent No. 12,065,835.
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.
Claims 1, 2 and 7-19 are rejected under 35 U.S.C. 103 as being unpatentable over Aschenbeck et al (US 2017/0321423 A1) in view of Wendt (US 3,042,193 A).
Regarding claims 1 and 7-15, Aschenbeck teaches a shingle (e.g. single layer tabbed shingle) comprising: an asphalt-coated substrate (12, 13, 14) having a first surface at least partially covered in granules (15) on a front side of the shingle and an opposing second surface at least partially covered in backdust (16) on a back side of the shingle; and an adhesive (19a) (para 3, figs 1, 1a).
Regarding the limitations “a primary release section;” “a secondary release section disposed on the back side of the shingle;” and “wherein the primary release section is located on the back side of the shingle;” Aschenbeck teaches the use of adhesive either on the top (19a) or bottom (19b) of the shingle (para 5; figs 1, 1a) wherein one of ordinary skill in the art at the time of invention would have understood that the adhesives are used to bond the bottom of the tab or buttlap portion to the top of the headlap portion (i.e., an overlapping shingle arrangement). Aschenbeck further teaches in a bundle of stacked shingles to prevent adhesion of a shingle's adhesive pattern to an adjacent shingle the portion of the adjacent shingle in facing alignment with the adhesive pattern may be provided with a non-stick surface (i.e., release section) to allow for easy separation of the shingles (para 139-142; figs 16-18).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the location (i.e., front and back of shingle) and number (i.e., primary and secondary) of adhesive sealant strips as well as the number (e.g., primary and secondary) and location (i.e., front and back of shingle) of the non-stick surfaces (i.e., release sections) on the shingles; so that the shingles do not stick together during bundling, but do adhere to one another during installation.
Regarding the limitations “the secondary release section comprising a parting agent material;” “wherein the primary release section comprises a primary release tape;” and “wherein the primary release section comprises a release tape and the secondary release section is free of a release tape;” Aschenbeck teaches the release layer may be any conventional release tape or non-stick coating (i.e., parting agent) known to one of skill in the art (para 181). Therefore, Aschenbeck would have suggested to or otherwise rendered obvious to one of ordinary skill in the art at the time of invention using a release tape and/or coating (i.e., parting agent) for the primary and secondary release sections.
Regarding the limitations wherein the parting agent material is included on the shingle in an amount from 0.005 kg/m2 to 0.022 kg/m2; wherein the parting agent material provides a lap shear of less than 110 lbs. of force to the shingle; wherein the parting agent material is included on the shingle in an amount from 0.005 kg/m2 to 0.010 kg/m2; wherein the parting agent material is included on the shingle in an amount from 0.008 kg/m2 to 0.012 kg/m2;” it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of release coating used to optimize the ability of the release coating to keep the shingles in place but not permanently adhering to one another and therein the force required to separate them (i.e. lap shear) when bundled in a stack together as well as the cost of the individual shingle (e.g., overuse of the release coating).
Regarding the limitations “wherein the primary release section has a width of 0.5 cm to 6 cm and the secondary release section is a longitudinal band having a width of 1 cm to 16 cm;” and “wherein the primary release section has a width of 1 cm to 2.6 cm and the secondary release section has a width of 2 to 8 cm;” it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the size of the release section dimensions; so each would adequately cover the adhesive or sealant on an adjacent shingle when the shingle are in contact with one another when stacked in a bundle.
Furthermore, it is noted that a change in size, scale, proportionality and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); 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). MPEP 2144.04[R-1].
A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, 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).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the shingle of Aschenbeck with the dimensions (i.e., widths of the primary and secondary release sections) based on the prior art's intended application as in the present invention.
Regarding claim 2, Aschenbeck teaches the release layer may be any conventional release tape or non-stick coating (i.e., parting agent) known to one of skill in the art (para 181). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to select the non-stick coating from one of one or more of metal salts of fatty acids, silanes, siloxanes, silicones, silicone rubbers, waxes, styrene-butadiene rubbers (SBR), esters of acrylic resins, polyolefins, or combinations thereof; since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Regarding claim 16, Aschenbeck teaches the species of a laminated shingle (para 4, fig 2).
Regarding claim 17, Aschenbeck teaches the shingles are bundled (para 6, 104).
Regarding claim 18, Aschenbeck teaches a laminated shingle comprising a first substrate comprising a headlap portion (27) and a tab portion (38) each having opposed top and bottom surfaces, the first substrate being coated with a first asphalt coating composition; a second substrate having opposed top and bottom surfaces, the second substrate being coated with a second asphalt coating composition; and an adhesive (29a) adhering a portion of the bottom surface of the tab portion of the first substrate to a portion of the top surface of the second substrate, forming a common bond area (para 4, figs 2, 2a)
Regarding the limitations “ a primary release section located along a portion of the bottom surface of the headlap portion; and a secondary release section located on the bottom surface of the second substrate within the common bond area, wherein the secondary release section comprises a parting agent material;” Aschenbeck teaches the use of adhesive either on the top (29) or bottom (39) of the shingle (para 5; figs 2, 2a); and wherein the adhesive strips may be duplicated and be placed on the top (170a, 180a) or bottom (270, 280) of the shingles (para 4, 99, 103; fig 2a, 4a, 10a). One of ordinary skill in the art at the time of invention would have understood that the adhesives are used to bond the bottom of the tab or buttlap portion to the top of the headlap portion (i.e., an overlapping shingle arrangement). In addition, Aschenbeck teaches in a bundle of stacked shingles to prevent adhesion of a shingle's adhesive pattern to an adjacent shingle the portion of the adjacent shingle in facing alignment with the adhesive pattern may be provided with a non-stick surface (i.e., release section) to allow for easy separation of the shingles (para 139-142, 181-182; figs 16-18; 33, 33a-c).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the location (i.e., front and back of shingle) and number (i.e., primary and secondary) of adhesive sealant strips as well as the number (e.g., primary and secondary) and location (i.e., front and back of shingle) of the non-stick surfaces (i.e., release sections) on the shingles; so that the shingles do not stick together during bundling, but do adhere to one another during installation.
Aschenbeck would have suggested to or otherwise rendered obvious to one of ordinary skill in the art at the time of invention using a release tape and/or coating (i.e., parting agent) for the primary and secondary release sections.
Regarding the limitations wherein the parting agent material is included on the shingle in an amount from 0.005 kg/m2 to 0.022 kg/m2; and wherein the parting agent material provides a lap shear of less than 110 lbs. of force to the shingle; it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of release coating used to optimize the ability of the release coating to keep the shingles in place but not permanently adhering to one another and therein the force required to separate them (i.e. lap shear) when bundled in a stack together as well as the cost of the individual shingle (e.g., overuse of the release coating).
Regarding claim 19, Aschenbeck teaches the release layer may be any conventional release tape or non-stick coating (i.e., parting agent) known to one of skill in the art (para 181). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to select the non-stick coating from one of one or more of metal salts of fatty acids, silanes, siloxanes, silicones, silicone rubbers, waxes, styrene-butadiene rubbers (SBR), esters of acrylic resins, polyolefins, or combinations thereof; since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Aschenbeck as applied to claim 2 above, and further in view of Wendt (US 3,042,193 A).
Aschenbeck teaches the shingle of claim 2.
Aschenbeck fails to suggest wherein the parting agent material comprises a metal salt of a fatty acid; wherein the metal salt of a fatty acid is selected from group consisting of metal laurates, metal myristates, metal palmitates, metal stearates, or combinations thereof; wherein the metal salt of a fatty acid comprises a metal stearate; and wherein the metal stearate is selected from the group consisting of zinc stearate, calcium stearate, aluminum stearate, magnesium stearate, or combinations thereof.
Wendt suggests bundles of roofing shingles that do not stick together wherein the roofing shingles comprise nonadhering agents (i.e., parting agents) such as metal stearates (e.g., calcium stearates) that may be used in a tape form; wherein the nonadhering agents are used on bottom of the shingle (col 1, lines 24-44; col 2, line 72 - col 3, line 75).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the nonadhering agents or parting agents of Wendt for the release coating of Aschenbeck, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Aschenbeck as applied to claim 19 above, and further in view of Wendt.
Aschenbeck teaches the laminated shingle of claim 19.
Aschenbeck fails to suggest wherein the parting agent material comprises a metal salt of a fatty acid; wherein the metal salt of a fatty acid is selected from group consisting of metal laurates, metal myristates, metal palmitates, metal stearates, or combinations thereof; wherein the metal salt of a fatty acid comprises a metal stearate; and wherein the metal stearate is selected from the group consisting of zinc stearate, calcium stearate, aluminum stearate, magnesium stearate, or combinations thereof.
Wendt suggests bundles of roofing shingles that do not stick together wherein the roofing shingles comprise nonadhering agents (i.e., parting agents) such as metal stearates (e.g., calcium stearates) that may be used in a tape form; wherein the nonadhering agents are used on bottom of the shingle (col 1, lines 24-44; col 2, line 72 - col 3, line 75).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the nonadhering agents or parting agents of Wendt for the release coating of Aschenbeck, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783
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