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 with traverse of Group I, claims 1-16 in the reply filed on 5/11/2026 is acknowledged. The traversal is on the ground(s) that all of the claims of Group II depend from the claims of Group I; therefore, Groups I-II are not independent or distinct. This is not found persuasive because of the following reasons:
(a) Groups I and II have acquired a separate status in the art in view of their different classification;
(b) Groups I and II require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(c) the prior art applicable to Group I would not likely be applicable to Group II.
3. Applicants are reminded of their right to request rejoinder of method claims with the product claims upon indication of the product claims as being allowable. The method claims must be commensurate with the allowed article claims such that they will be amended to recite all the limitations set out in the allowed article claims. See In re Ochiai 37 USPQ2d 1127.
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 8-12 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.
As to claim 8, the preamble of the claim is directed to a pore filling composition while the body of the claim is related to a pore filling composition and a substrate. Therefore, the preamble is not in line with the body of the claim.
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.
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.
Claims 1-10, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0070481 to Bolkan et al. (hereinafter “Bolkan”) in view of US 6,310,013 to Lokkesmoe et al. (hereinafter “Lokkesmoe”).
As to claims 1, 5, and 8-10, Bolkan discloses a roofing shingle comprising a substrate and a coating composition applied over the substrate to stop the growth of fungi, bacteria and allergens and dust mites on the exterior and interior surfaces of the substrate (abstract; and paragraphs 39 and 47). This is a clear indication that the substrate must have pores incorporated therein so that the coating can penetrate in the interior surface of the substrate through the pores to stop the growth of fungi, bacteria, allergens and dust mites (paragraph 47). The substrate comprises fiberglass shingle (paragraph 47). The coating composition reads on the claimed pore filling composition.
The coating composition comprises 0.1 to 5.0% by weight of an organosilane quaternary ammonium compound (silane quat), 0.1 to 10 % by weight of a bicarbonate salt, and a small amount of alcohol in an amount of 10-50% by weight of the silane quat (paragraphs 26 and 35). The coating composition further includes a surfactant with a mixing ratio of silane quat to surfactant is from 10:1 to 1:3 (paragraph 34).
Bolkan does not explicitly disclose the coating composition comprising alkyl triphenyl phosphonium acetate.
Lokkesmoe, however, discloses a lubricant composition comprising a lubricant and an antimicrobially effective amount of an antimicrobial agent (abstract). The antimicrobial agent includes quaternary ammonium and quaternary phosphonium compounds (column 5, lines 45-50). The antimicrobial agent is present in an amount of up to 10 wt% based on the total weight of the lubricant composition (claim 2). The quaternary phosphonium compounds comprise ethyl triphenyl phosphonium acetate (column 9, lines 30-35).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate ethyl triphenyl phosphonium acetate disclosed in Lokkesmoe in the coating composition of Bolkan, motivated by the desire enhance the antimicrobial properties of the coating composition.
As to claims 2-4, and 6, Bolkan discloses the coating composition comprises 1 wt% antimicrobial agent, 0.05 wt% fluorosurfactant, 0.1 wt% ethoxylated alcohol, and 98.85% water (example 1). Bolkan also teaches that the antimicrobial agent itself is a combination of 12 wt% methanol, 72 wt% 3-(trihydroxylsilyl) propyldimethyl-octadecyl ammonium chloride, 15 wt% chloropropyl trimethyl silanol, and 1 wt% dimethyl C18 amine (paragraph 58). Thus, a concentrated coating composition comprises 62 wt% silane quat, 10.4 wt% methanol, 4.3 wt% fluorosurfactant, and 9.7 wt% ethoxylated alcohol.
As to claim 7, Bolkan discloses the silane quat comprising tetradecyl dimethyl (3-trimethoxysilylpropyl) ammonium chloride (paragraph 24).
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As to claim 12, Bolkan discloses that the coating comprises silane squat, surfactant, alcohol and 98.85 wt% water (example 1). None of the silane squat, surfactant, and alcohol are film-forming agents; hence, they do not contribute to film formation. The combination of the extremely high water content and the absence of the film-forming agents indicates that the coating is unlikely to form a continuous and cohesive layer on the substrate upon application.
As to claim 13, Bolkan discloses that the coating composition is applied to glass (paragraph 59). This is a clear indication that the coating composition should be transparent.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Bolkan in view of Lokkesmoe as applied to claim 1 above, and further in view of US 2011/0027533 to Kennedy et al. (hereinafter “Kennedy”).
Neither Bolkan nor Lokkesmoe discloses the substrate comprising granules.
Kennedy, however, discloses a roofing shingle comprising a substrate and a structural layer on the substrate wherein the structural layer comprises a binder and granules having an average particle size of 266 microns and less than 5% by weight of the granules having a diameter of less than 210 microns (paragraphs 1 and 5).
The granules are ceramic granules which are coated with a copper coating (paragraphs 8 and 12). The granules may be coated with an oil to reduce dust.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use copper coated ceramic granules disclosed in Kennedy to construct a roofing shingle disclosed in Bolkan/ Lokkesmoe motivated by the desire to reduce dust information.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bolkan in view of Lokkesmoe as applied to claim 1 above, and further in view of US 2009/0069270 to McMahon et al. (McMahon).
Bolkan does not explicitly disclose the pore filling composition comprising an ammonium salt.
McMahon, however, discloses a diluting water-stable organosilane composition comprising an organosilane, 5 to 20 wt% of a glycol ether and 0.1 to 5 wt% of at least one cationic surfactant in the presence of an acid wherein the at least one cationic surfactant comprises at least one quaternary ammonium salt (abstract). The quaternary ammonium salt comprises didecyl dimethyl ammonium chloride (paragraph 57). A roofing shingle is treated with the diluting water-stable organosilane composition to provide prolonged antimicrobial protection (paragraph 142).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include at least one a quaternary ammonium salt disclosed in McMahon in the coating composition of Bolkan /Lokkesmoe, motivated by the desire to stabilize the silane quat because the at least one a quaternary ammonium salt keeps the silane quat from self-condense and solid precipitation out of solution during use or storage.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bolkan in view of Lokkesmoe as applied to claim 1 above, and further in view of CN 102246753 (CN’753).
Neither Bolkan nor Lokkesmoe discloses the pore filling composition comprising an ammonium salt.
CN’753, however, discloses an efficient, safe and gentle compound quaternary ammonium disinfectant comprising 0.01-10 wt% of polymeric quaternary ammonium salt, 0.005-8 wt% of didecyl dimethyl ammonium chloride, 0.005-1 wt% dodecyl dimethyl benzyl ammonium chloride, 0.01-0.2 wt% of a synergistic agent and the balance being water (paragraph 10). The synergistic agent is copper sulfate (paragraph 12). The use of the synergistic agent significantly improves the sterilization performance and durability of the disinfectant while maintaining low bactericidal concentration, low toxicity and low irritation (paragraph 14).
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include an efficient, safe disinfectant in the coating composition of Bolkan /Lokkesmoe, motivated by the desire to improve the sterilization performance and durability of the antimicrobial coating material while maintaining low bactericidal concentration, low toxicity and low irritation.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,118,352. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current application are anticipated by those of the US Patent No. 11,118,352.
Conclusion
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights