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 with traverse of Species 2 from Species Group 1, Species 1 from Species Group 2, and Species 7 from Species Group 3, in the reply filed on 7/2/2026 is acknowledged. The traversal is on the ground that there would be no undue burden on the examiner to search for all the species. This is not found persuasive because there is a search and/or examination burden for the patentably distinct species, because the claims to the different species recite the mutually exclusive characteristics of such species and the species require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries). In addition, these species are not obvious variants of each other based on the current record. The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by USPAP 2022/0056271 to Tibah or, in the alternative, under 35 U.S.C. 103 as obvious over USPAP 2022/0056271 to Tibah in view of USPAP 2024/0010839 to Hamer and/or USPAP 2023/0024411 to Mercado.
Claim 1, Tibah discloses a filled asphalt mix comprising: an asphalt blend comprising: asphalt, a first polymer additive, and ground tire rubber having a mesh size of above 80 mesh; and a filler (see entire document including [0034]-[0038]). In the event that it is shown that the applied prior art does not disclose the claimed embodiment with sufficient specificity, the invention is obvious because the prior art specifically discloses the claimed constituents.
Claim 2, considering that the applied prior art discloses a substantially identical mix in terms of components and amounts, the claimed property appears to be inherent. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). Plus, it would have been obvious to one having ordinary skill in the art to optimize the asphalt blend based on the desired final product properties such as the claimed NAF.
Claim 3, the filler comprises limestone [0038].
Claim 4, Tibah does not appear to mention a specific filler content amount but Mercado and Hamer each disclose that it is known in the art to include 40 to 90 wt% filler (see entire documents including [0007] of Mercado and [0125] of Hamer). Therefore, it would have been obvious to one having ordinary skill in the art to vary the amount of filler, such as claimed, based on the final product properties.
Claim 5, the asphalt mix comprises a softening point of at least 250° F and not greater than 320° F [0037].
Claims 6-8, Tibah discloses a penetration at 77° F of 12 to 44 dmm [0037]. Considering that the applied prior art discloses a substantially identical mix in terms of components and amounts, the claimed properties appear to be inherent. Plus, it would have been obvious to one having ordinary skill in the art to optimize the asphalt blend based on the desired final product properties such as the claimed penetration.
Claim 9, Tibah does not appear to mention a filled asphalt viscosity but Mercado discloses that it is known in the art to construct a roofing shingle with a blend having the claimed viscosity [0005]. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the mix of Tibah from any suitable viscosity, such as claimed, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 10, the asphalt comprises paving grade asphalt [0025].
Claims 11 and 17, the first polymer additive is a styrene-butadiene-styrene (sbs) polymer [0034].
Claims 12 and 18, the examiner takes official notice that conventionally commercially available sbs polymers are either radial or linear. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the sbs of Tibah from linear or radial sbs, because it is conventional and/or because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 13, the asphalt blend further comprises a wax [0025].
Claim 14, the blend comprises at least 2.0 wt. % ground tire rubber (Table 1).
Claim 15, Tibah does not appear to mention a specific wax composition but the examiner takes official notice that the claimed wax compositions are conventional wax compositions used to make asphalt roofing shingles. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the wax of Tibah from one or more of the claimed wax compositions, because it is conventional and/or because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 16, the asphalt blend comprises at least 2.0 wt. % ground tire rubber for a total weight of the blend and not greater than 25 wt. % ground tire rubber for a total weight of the blend (Table 1).
Claim 19, Tibah discloses that the asphalt mix may be used to make roofing shingles [0038] and that it is known to include a fiberglass mat [0006]. Plus, Mercado discloses that is known and obvious in the roofing shingle art to coat a fiberglass mat with an asphalt mix ([0046] and [0047]).
Claim 20, Tibah does not appear to specifically mention bundling the disclosed roofing shingles but the examiner takes official notice that it is conventional in the art to sell roofing shingles as a bundle of roofing shingles. Therefore, it would have been obvious to one having ordinary skill in the art to bundle the shingles of Tibah because it is conventional and/or to provide a final bulk product to consumers.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by USPAP 2024/0010839 to Hamer or, in the alternative, under 35 U.S.C. 103 as obvious over USPAP 2024/0010839 to Hamer in view of USPAP 2022/0056271 to Tibah and/or USPAP 2023/0024411 to Mercado.
Claim 1, Hamer discloses a filled asphalt mix comprising: an asphalt blend comprising: asphalt, a first polymer additive, and ground tire rubber having a mesh size of above 80 mesh; and a filler (see entire document including [0045], [0051], [0116] and [0120]). In the event that it is shown that the applied prior art does not disclose the claimed embodiment with sufficient specificity, the invention is obvious because the prior art specifically discloses the claimed constituents.
Claim 2, considering that the applied prior art discloses a substantially identical mix in terms of components and amounts, the claimed property appears to be inherent. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). Plus, it would have been obvious to one having ordinary skill in the art to optimize the asphalt blend based on the desired final product properties such as the claimed NAF.
Claim 3, the filler comprises limestone [0120].
Claim 4, the filler content may be as claimed [0125].
Claim 5, the asphalt mix comprises a softening point of at least 250° F and not greater than 320° F [0133].
Claims 6-8, Hamer discloses a penetration at 77° F of 15 to 50 dmm [0131]. Considering that the applied prior art discloses a substantially identical mix in terms of components and amounts, the claimed properties appear to be inherent. Plus, it would have been obvious to one having ordinary skill in the art to optimize the asphalt blend based on the desired final product properties such as the claimed penetration.
Claim 9, Hamer does not appear to mention a filled asphalt viscosity but Mercado discloses that it is known in the art to construct a roofing shingle with a blend having the claimed viscosity [0005]. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the mix of Hamer from any suitable viscosity, such as claimed, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 10, the asphalt may comprise paving grade asphalt ([0076] and [0088]).
Claims 11 and 17, the first polymer additive is a styrene-butadiene-styrene (sbs) polymer [0116].
Claims 12 and 18, the examiner takes official notice that conventionally commercially available sbs polymers are either radial or linear. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the sbs of Hamer from linear or radial sbs, because it is conventional and/or because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 13, Hamer does not appear to mention the asphalt blend comprising a wax but Tibah discloses that it is known in the art to include a wax (see entire document including [0025]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to include wax, because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 14, the blend comprises at least 2.0 wt. % ground tire rubber (Table 1).
Claim 15, Tibah does not appear to mention a specific wax composition but the examiner takes official notice that the claimed wax compositions are conventional wax compositions used to make asphalt roofing shingles. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to make the wax from one or more of the claimed wax compositions, because it is conventional and/or because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics.
Claim 16, the asphalt blend comprises at least 2.0 wt. % ground tire rubber for a total weight of the blend and not greater than 25 wt. % ground tire rubber for a total weight of the blend [0005].
Claim 19, Hamer discloses that the asphalt mix may be used to make roofing shingles [0023] comprising a fiberglass mat [0137]. Plus, Mercado discloses that is known and obvious in the roofing shingle art to coat a fiberglass mat with an asphalt mix ([0046] and [0047]).
Claim 20, Hamer does not appear to specifically mention bundling the disclosed roofing shingles but the examiner takes official notice that it is conventional in the art to sell roofing shingles as a bundle of roofing shingles. Therefore, it would have been obvious to one having ordinary skill in the art to bundle the shingles of Hamer because it is conventional and/or to provide a final bulk product to consumers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T PIZIALI whose telephone number is (571)272-1541. The examiner can normally be reached Monday-Thursday 7am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW T PIZIALI/Primary Examiner, Art Unit 1789
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