DETAILED ACTION
This is a final Office Action on the merits for U.S. App. 18/915,617. Receipt of the amendments and arguments filed on 08/20/2026 is acknowledged.
Claims 1-30, 32, and 33 are pending.
Claim 31 is cancelled.
Claims 1-30, 32, and 33 are examined.
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) 1, 7, 10, 13, 19, 22, 25, and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Loftus et al. (U.S. Publication 2013/0065020) in view of Lee et al. (U.S. Publication 2015/0291827), as recited in the previous Office Action.
Regarding claim 1, Loftus et al. disclose a roof shingle (#20) comprising:
EPDM (layer #22 of figure 2C is disclosed as comprising of EPDM, see paragraph 38), the EPDM comprising an outward facing surface (#22A) and a substrate facing surface (#22B), the outward-facing surface comprising a reveal and a conceal (as depicted in figure 3 and disclosed in paragraph 40, such a shingle #20, and thus the EPDM layer #22, can be structured so as to look like a three tab conventional shingle and installed in the same manner, where the tab portion would comprise of the reveal section and the top section above the tabs which is to be covered by an adjacent shingle would comprise the conceal portion), the reveal being visible when the roof shingle is installed and the conceal being covered by an upslope adjacent roof shingle when the roof shingle is installed (see figure 3 and the explanation above);
a reinforcement core (#200; see figure 2C), the reinforcement core embedded within the EPDM (see figure 2C and paragraph 55);
an adhesive sealant (#26) the adhesive sealant applied to the substrate-facing surface for binding the roof shingle to a downslope adjacent roof shingle or a substrate (as disclosed in paragraph 66, the embodiment of figure 2C can be used to form possible configurations of the shingle as depicted in figures 6-11, where figure 6 depicts a second adhesive layer #26 on the substrate facing side #22b of the shingle); and
a plurality of granules (#28), the plurality of granules being located on at least a portion of a surface of the reveal (figure 2C depicts the granules are provided throughout the shingle, where paragraph 54 discloses such granules can be provided with different colors and applied so as to give the appearance of a three tab shingle);
wherein the EPDM being molded above and below the reinforcement core (see figure 2C and paragraph 40); and
the plurality of granules being adhered (#24) to at least a portion of the surface of the reveal (see figure 2C and the explanation above).
However, Loftus et al. do not disclose the granules are constructed from an EPDM material as defined. Paragraph 45 of Loftus et al. teach such granules #28 can take a wide variety of forms, with an example being a dense, non-porous UV-ray resistant natural mineral particles coated in ceramic. Such granules, as taught in Loftus et al., are used to provide UV protections, heat resistance, and environmental protection to the roofing assembly such that the roofing shingles will last years of external use. EPDM is a known material which inherently comprises of UV-protection, heat resistance, and environmental protection when in use. Lee et al. teach that both EPDM granules and inorganic granules, such as talc, silica and ceramic particles, are interchangeable materials with one another and used as granules for exposed surfaces in order to provide slip resistance to such a surface while also providing UV absorbing characteristics, heat absorbing characteristics and other functions to the surface as needed. See paragraphs 38-41. Therefore, it would have been obvious before the effective filing date of the claimed invention to have substituted the mineral granules of Loftus et al. for EPDM granules, as taught in Lee et al., since Lee et al. teach such granule materials can be substituted and interchanged with one another in order to yield the same predictable result of providing a slip resistant surface with UV and heat protection. KSR Int’l Co. V. Teleflex Inc., 550 U.S. 398 (2007).
Regarding claim 7, Loftus et al. in view of Lee et al. render obvious the surface of the reveal comprises geometric tabs, the geometric tabs configured to alternate with geometric tabs of both the upslope adjacent roof shingle and the downslope adjacent roof shingle (see figure 3 of Loftus et al., where the shingle #20 can be constructed with slots to form three tabs with each shingle and thus allow the shingle to form a tab aesthetic roof assembly with other shingles).
Regarding claim 10, Loftus et al. in view of Lee et al. render obvious the roof shingle is operable for use on a steep-slop roof, the steep-slope roof having a pitch of greater than or equal to 2:12 (see paragraphs 34-36 and 40 of Loftus et al., where the shingle can be configured for use on steep-slope roofs greater than 4:12, as well as low slope roofs which fall within the slope range as defined).
Regarding claim 13, Loftus et al. disclose a method of producing a roof shingle (#20), the method comprising:
molding EPDM (layer #22 of figure 2C is disclosed as comprising of EPDM, see paragraph 38) above and below a reinforcement core (#200; see figure 2C and paragraph 55), the reinforcement core embedded within the EPDM (see paragraph 55 and figure 2C), the EPDM comprising an outward facing surface (#22A) and a substrate facing surface (#22B), the outward-facing surface comprising a reveal and a conceal (as depicted in figure 3 and disclosed in paragraph 40, such a shingle #20, and thus the EPDM layer #22, can be structured so as to look like a three tab conventional shingle and installed in the same manner, where the tab portion would comprise of the reveal section and the top section above the tabs which are to be covered by an adjacent shingle would comprise the conceal portion), the reveal being visible when the roof shingle is installed and the conceal being covered by an upslope adjacent roof shingle when the roof shingle is installed (see figure 3 and the explanation above);
adhering a plurality of granules (#28) to at least a portion of a surface of the reveal (figure 2C depicts the granules are provided throughout the shingle, where paragraph 54 discloses such granules can be provided with different colors and applied so as to give the appearance of a three tab shingle); and
applying an adhesive sealant (#26) to the substrate-facing surface for binding the roof shingle to a downslope adjacent roof shingle or a substrate (as disclosed in paragraph 66, the embodiment of figure 2C can be used to form possible configurations of the shingle as depicted in figures 6-11, where figure 6 depicts a second adhesive layer #22 on the substrate facing side #22b of the shingle).
However, Loftus et al. do not disclose the granules are constructed from an EPDM material as defined. Paragraph 45 of Loftus et al. teach such granules #28 can take a wide variety of forms, with an example being a dense, non-porous UV-ray resistant natural mineral particles coated in ceramic. Such granules, as taught in Loftus et al., are used to provide UV protections, heat resistance, and environmental protection to the roofing assembly such that the roofing shingles will last years of external use. EPDM is a known material which inherently comprises of UV-protection, heat resistance, and environmental protection when in use. Lee et al. teach that both EPDM granules and inorganic granules, such as talc, silica and ceramic particles, are interchangeable materials with one another and used as granules for exposed surfaces in order to provide slip resistance to such a surface while also providing UV absorbing characteristics, heat absorbing characteristics and other functions to the surface as needed. See paragraphs 38-41. Therefore, it would have been obvious before the effective filing date of the claimed invention to have substituted the mineral granules of Loftus et al. for EPDM granules, as taught in Lee et al., since Lee et al. teach such granule materials can be substituted and interchanged with one another in order to yield the same predictable result of providing a slip resistant surface with UV and heat protection. KSR Int’l Co. V. Teleflex Inc., 550 U.S. 398 (2007).
Regarding claim 19, Loftus et al. in view of Lee et al. render obvious the reveal comprises geometric tabs, and the geometric tabs are configured to alternate with geometric tabs of both the upslope adjacent roof shingle and the downslope adjacent roof shingle (see figure 3 of Loftus et al., where the shingle #20 can be constructed with slots to form three tabs with each shingle and thus allow the shingle to form a tab aesthetic roof assembly with other shingles).
Regarding claim 22, Loftus et al. in view of Lee et al. render obvious the roof shingle is operable for use on a steep-slop roof, the steep-slope roof having a pitch of greater than or equal to 2:12 (see paragraphs 34-36 and 40 of Loftus et al., where the shingle can be configured for use on steep-slope roofs greater than 4:12, as well as low slope roofs which fall within the range as defined).
Regarding claim 25, Loftus et al. disclose a hip/ridge roof shingle (#20; see figure 1 and paragraph 40, where the shingle #20 can be configured for use as a traditional shingle in the hip or ridge areas) comprising:
EPDM (layer #22 of figure 2C is disclosed as comprising of EPDM, see paragraph 38), the EPDM comprising an outward facing surface (#22A) and a substrate facing surface (#22B), the outward-facing surface comprising a reveal and a conceal (as depicted in figure 3 and disclosed in paragraph 40, such a shingle #20, and thus the EPDM layer #22, can be structured so as to look like a three tab conventional shingle and installed in the same manner, where the tab portion would comprise of the reveal section and the top section above the tabs which are to be covered by an adjacent shingle would comprise the conceal portion), the reveal being visible when the hip/ridge roof shingle is installed and the conceal being covered by an adjacent roof shingle when the hip/ridge roof shingle is installed (see figure 3 and the explanation above);
a reinforcement core (#200; see figure 2C), the reinforcement core embedded within the EPDM (see figure 2C and paragraph 55);
an adhesive sealant (#26), the adhesive sealant applied to the substrate-facing surface for binding the hip/ridge roof shingle to the adjacent roof shingle or a substrate (as disclosed in paragraph 66, the embodiment of figure 2C can be used to form possible configurations of the shingle as depicted in figures 6-11, where figure 6 depicts a second adhesive layer #22 on the substrate facing side #22b of the shingle); and
a plurality of granules (#28), the plurality of granules being located on at least a portion of a surface of the reveal (figure 2C depicts the granules are provided throughout the shingle, where paragraph 54 discloses such granules can be provided with different colors and applied so as to give the appearance of a three tab shingle);
wherein the EPDM being molded above and below the reinforcement core (see figure 2C and paragraph 40); and
the plurality of granules being adhered (#24) to at least a portion of the surface of the reveal (see figure 2C and the explanation above).
However, Loftus et al. do not disclose the granules are constructed from an EPDM material as defined. Paragraph 45 of Loftus et al. teach such granules #28 can take a wide variety of forms, with an example being a dense, non-porous UV-ray resistant natural mineral particles coated in ceramic. Such granules, as taught in Loftus et al., are used to provide UV protections, heat resistance, and environmental protection to the roofing assembly such that the roofing shingles will last years of external use. EPDM is a known material which inherently comprises of UV-protection, heat resistance, and environmental protection when in use. Lee et al. teach that both EPDM granules and inorganic granules, such as talc, silica and ceramic particles, are interchangeable materials with one another and used as granules for exposed surfaces in order to provide slip resistance to such a surface while also providing UV absorbing characteristics, heat absorbing characteristics and other functions to the surface as needed. See paragraphs 38-41. Therefore, it would have been obvious before the effective filing date of the claimed invention to have substituted the mineral granules of Loftus et al. for EPDM granules, as taught in Lee et al., since Lee et al. teach such granule materials can be substituted and interchanged with one another in order to yield the same predictable result of providing a slip resistant surface with UV and heat protection. KSR Int’l Co. V. Teleflex Inc., 550 U.S. 398 (2007).
Regarding claim 27, Loftus et al. in view of Lee et al. render obvious the reveal achieves adhesion to a lower substrate throughout an entirety of the reveal (paragraphs 68-70 and figure 6 of Loftus et al. depicts the adhesive is provided on the bottom surface #22B of the EPDM #22 and thus on an entirety of the reveal in order to attach the entire shingle to a flat roof).
Regarding claim 28, Loftus et al. in view of Lee et al. render obvious the hip/ridge shingle is configured to be affixed to a roof using two rows of nails, the two rows of nails deployed in the conceal, and the two rows of nails comprising four nails, the four nails comprising two nails deployed in a first row of nails on the conceal of the adjacent roof shingle and two nails deployed in a second row of nails on the conceal (such two rows of nails are not positively defined and such limitations only define how the shingle is configured to be affixed to a roof, where paragraph 70 of Loftus et al. teaches mechanical fasteners can be used to attach such a shingle as needed and thus such a shingle is configured to be affixed with four nails as defined).
Regarding claim 29, Loftus et al. in view of Lee et al. render obvious the first row of nails is deployed in the reinforcement core about 0.5 inch to 1.0 inch from an edge of the conceal and the second row of nails is deployed in the reinforcement core about 0.5 inch - 1.0 inch from an edge of the conceal (Such limitations again further define the nails with are configured to be used to affix the shingle to the roof, where such nails are not positively defined and the shingle of Loftus et al. is configured to be nailed to a substrate as defined. However, if the Examiner is considered to over broadly interpret such limitations and for compact prosecution purposes, paragraph 58 of Loftus et al. discloses the reinforcing layer #200 provides a higher nail pull through force than a conventional shingle and thus placement of such nails within such locations where the reinforcement layer is located would have been obvious for increased connection strength purposes. Furthermore, one of ordinary skill in the art would understand the appropriate location of such nails in order to prevent uplift and water from penetrating below the shingle, where such a 1 inch spacing of the nails from the edge is common in the art and two rows of nails to increase connection strength is also known, (see, for example, JLC (Chotiner, Michael, Roofing with Asphalt Shingles, JLC The Journal of Light Construction, May 21, 2014, https://www.jlconline.com/how-to/roofing/roofing-with-asphalt-shingles_o) and Zhang (U.S. Publication 2001/0022055)) where it would have been obvious to have placed the fasteners from 0.5 to 1 inch from a respective edge of the shingle for proper attachment of the shingle to the substrate and also since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70 (CCPA 1950).).
Claim(s) 2, 14, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Loftus et al. in view of Lee et al., Heulings (ES 2596102), and Ohtsuka et al. (U.S. Patent 5,651,837), as recited in the previous Office Action.
Regarding claims 2, 14, and 26, Loftus et al. in view of Lee et al. render the claimed invention obvious, including the reinforcement core is embedded throughout an entirety of the conceal and the rest of the shingle as defined in claim 24 and as taught in figure 2C and paragraph 55 of Loftus et al., except for the reinforcement core comprises galvanized steel. However, it is highly well known in the art, as evidenced by Heulings et al., that roof tiles constructed from a composite rubber can include a reinforcing gauze formed from polyester, fiberglass, nylon or woven or nonwoven sheets of metal fibers. See the highlighted portions on page 11 of the English translation. Furthermore, it is common knowledge in the art, as evidenced by Ohtsuka et al., that galvanized steel is a common material used with roofing elements for their environmental resistance and strength. See col. 9, l. 65 - col. 10, l. 13. Therefore, it would have been obvious before the effective filing date of the claimed invention to have substituted the reinforcement core of Loftus et al. for a metal mesh reinforcement core constructed from galvanized steel, as taught in Heulings et al., since fiberglass and metal meshes are taught in Heulings as being interchangeable with one another and galvanized steel is a common metal used in the roofing art to provide the product with exterior resistance and strength and also since 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 for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416 (CCPA 1960).
Claim(s) 3 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Loftus et al. in view of Lee et al. and Leibrook (U.S. Patent 3,407,556), as recited in the previous Office Action.
Regarding claims 3 and 15, Loftus et al. disclose in paragraph 70 that mechanical fasteners can be used to attach the shingle #20 to a roof deck, except for marks configured for locations of nails and being located on the conceal. However, it is highly well known in the art, as evidenced by Leibrook, that shingles can be constructed with nail marks #28 in order to provide a location for the installer to place the nails on the shingle in the conceal area such that the nail is covered by a next vertical layer of shingles, as depicted in figures 3 and 4. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the shingles of Loftus et al. to comprise of nail marks in the conceal of the shingle, as taught in Leibrook, in order to assist in installing such a shingle on a roof.
Claim(s) 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Loftus et al. in view of Lee et al., Leibrook, and JLC (Chotiner, Michael, Roofing with Asphalt Shingles, JLC The Journal of Light Construction, May 21, 2014, https://www.jlconline.com/how-to/roofing/roofing-with-asphalt-shingles_o), as recited in the previous Office Action.
Regarding claims 4 and 16, Loftus et al. in view of Lee et al. and Leibrook render obvious the claimed invention except specifically for the spacing between marks is 5 to 7 inches apart from one another such that 6 marks are provided. However, it is highly well known in the art, as evidenced by JLC, that shingles attached to high wind or steep slope roofs are attached using six nails equal spaced from one another, where typical lengths for shingles being 36 to 39.375 inches and a 1 inch gap between the outer nails and the edge of the shingle would provide a range of between 5 and 7 inches between the nails. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the nail marks of Loftus et al. in view of Lee et al. and Leibrook to be spaced between 5 and 7 inches from one another, as taught in JLC, in order to allow for proper installment of the shingles to a steep sloped roof that meets code and typical product warranties.
Claim(s) 5, 9, 17, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Loftus et al. in view of Lee et al. and Vermillion et al. (U.S. Publication 2013/0025224), as recited in the previous Office Action.
Regarding claims 5 and 17, Loftus et al. in view of Lee et al. render the claimed invention obvious except specifically for the adhesive sealant is located up to about 0.5 inch from a leading edge of the roof shingle into the reveal. However, it is highly well known in the art, as evidenced by Vermillion et al., that shingles can be constructed with a row of sealants #96S applied to the bottom of the shingle below the reveal section of the shingle such that the sealants are spaced a distance D2 of about .5 inches from the leading edge #74C. See paragraph 54 and figure 4. Therefore, it would have been obvious before the effective filing date of the claimed invention to have applied the sealants of Loftus et al. in a row that is spaced from the leading edge of the shingle by about 0.5 inches, as taught in Vermillion et al., in order to provide a sufficient amount of sealant to adhere the shingle to a next lower shingle while also providing a cost effective assembly that is cheaper than covering the entire bottom of the shingle with adhesive.
Regarding claims 9 and 21, Loftus et al. in view of Lee et al. render the obvious the claimed invention except specifically for the reveal is about 5-7 inches in vertical height. However, it is highly well known in the art, as evidenced by Vermillion et al., that the exposed reveal region #84 of a shingle can comprise of a height equal to the height H1 of the cutouts between tabs, which can be between 5.5 and 5.75 inches, although other heights can be used as desired. See paragraph 48 and figure 2. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the shingle reveal of Loftus et al. such that is between 5 and 7 inches in height, as taught in Vermillion et al., in order to construct the panel to desired aesthetics and also construct the panel to traditional shingle standards to maintain uniformity with common roof coverings.
Regarding claim 23, though Loftus et al. do not specifically disclose the EPDM and reinforcement core are calendered, it is common knowledge in the art, as evidenced by Vermillion et al., that rollers #54 and #56 press against the shingle elements to cut the tabs and other patterns out of the shingle material. See paragraph 43 and figure 1. Therefore, it would have been obvious before the effective filing date of the claimed invention to have calendered the EPDM and reinforcement core of the shingle of Loftus et al., as taught in Vermillion et al., in order to cut the material into the required pattern for later installation.
Claim(s) 6 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Loftus et al. in view of Lee et al., Wenstrup (U.S. Publication 2021/0332591) and JLC, as recited in the previous Office Action.
Regarding claims 6 and 18, Loftus et al. in view of Lee et al. render obvious the claimed invention except specifically for the reinforcement core is about 0.01 - 0.05 inch thick. However, it is highly well known in the art, as evidenced by Wenstrup, that such reinforcement cores #100 for shingles can comprise of a thickness between 5 and 15 mils, which overlaps the lower values of the range as defined. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the reinforcement core of Loftus et al. to comprise of a thickness between 0.01 and 0.05 inches, as taught in Wenstrup, in order to provide an appropriate balance between strength and cost effectiveness for the shingle.
Furthermore, Loftus et al. disclose in paragraph 55 that the reinforcement core can be inside the membrane layer #22 or between the membrane layers #22 but does not specifically disclose the length of such a core. However, it is highly well known in the art, as evidenced by JLC, that such shingles are typically constructed to lengths of 36 to 39.375 inches. See the figures at the bottom of page 6. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the reinforcement core of Loftus et al. to extend between 35-40 inches in length and thus extend the length of a typical shingle length, as taught in JLC, in order to strengthen the entire length of the shingle and form a shingle of standard dimensions that can be used to replace typical shingles in the art.
Claim(s) 8 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Loftus et al. in view of Lee et al. and Jenkins (U.S. Publication 2015/0089892), as recited in the previous Office Action.
Regarding claims 8 and 20, Loftus et al. in view of Lee et al. render the claimed invention obvious except for the tabs are about 4 to 5 inches in horizontal length. However, it is highly well known in the art, as evidenced by Jenkins that the width W1-5 of tabs of a roofing shingle can be at least about 5 inches. See paragraph 33 and figure 3A. Such dimensional values for the width of the shingles appears to be aesthetic in function and does not affect the functioning of shingle. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the width of the tabs of the shingle of Loftus et al. to be from about 4 to 5 inches width, as taught in Jenkins, in order to provide the roofing with an aesthetic as wanted by the end user and also since where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. 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).
Claim(s) 11 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Loftus et al. in view of Lee et al., or in the alternative in view of Lee et al. and Vermillion et al., as recited in the previous Office Action.
Regarding claims 11 and 32, Loftus et al. in view of Lee et al. render obvious the EPDM and the reinforcement core are calendared (In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. the EPDM and core of the shingle, does not depend on its method of production, i.e. the EPDM and core are calendared. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The shingles of Loftus et al. are configured to be calendared and comprise of patterns and sizes which can be formed through calendaring and thus meet such limitations as broadly defined. However, if the Examiner is considered to over broadly interpret such a process step as not imparting significant structure to the shingles, it is highly well known in the art, as evidenced by Vermillion et al., that rollers #54 and #56 press against the shingle elements to cut the tabs and other patterns out of the shingle material. See paragraph 43 and figure 1. Therefore, it would have been obvious before the effective filing date of the claimed invention to have calendered the EPDM and reinforcement core of the shingle of Loftus et al., as taught in Vermillion et al., in order to cut the material into the required pattern for later installation.).
Claim(s) 12, 24, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Loftus et al. in view of Lee et al. and Clausing et al. (U.S. Patent 4,421,807), as recited in the previous Office Action.
Regarding claims 12, 24, and 33, Loftus et al. teach the use of an adhesive protrusion tab (or release tape #32) which is configured to be placed on the second adhesive sealant #26 and prevent premature adherence of the sealant to other materials until removal of the tab. However, Loftus et al. do not disclose the tab is to protrude from a leading edge of the reveal. It is highly well known in the art, as evidenced by Clausing et al., that adhesive protrusion tabs #16 and #14 can extend from respective edges #16/17 of a roof covering #11 in order to provide for easier removal of the tabs from the edges when adhesion is required. See figures 1 and col. 4, ll. 26-39. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the adhesive protrusion tabs of Loftus et al. to protrude from the leading edge of the shingle, as taught in Clausing et al., in order to allow for easier identification and removal from the shingle during the adhesion and assembly steps of the forming the roof.
Claim(s) 30 is rejected under 35 U.S.C. 103 as being unpatentable over Loftus et al. in view of Lee et al. and Srinivasa et al. (U.S. Publication 2022/0186499), as recited in the previous Office Action.
Regarding claim 30, Loftus et al. in view of Lee et al. render the claimed invention obvious except for the conceal is about 6 inches and the reveal is about 6 inches in height. However, it is highly well known in the art, as evidenced by Sriniviasa et al., that the heights of such shingles can be constructed as needed for aesthetics and the end user, where the height of the headlap portion/conceal #610 can be 6 inches while the exposed area/reveal #612 can also be 6 inches. See paragraph 92 and figure 7. Therefore, it would have been obvious before the effective filing date of the claimed invention to have constructed the conceal and reveal of Loftus et al. to be 6 inches in height, as taught in Srinivasa et al., in order to provide the shingle with standard dimensions and provide the roof the needed aesthetics as needed by the end user.
Terminal Disclaimer
The terminal disclaimer filed on 08/20/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patents 12,234,649 and 12,421,726 has been reviewed and is accepted. The terminal disclaimer has been recorded. Therefore, the double patenting rejections of the previous Office Action are withdrawn.
Response to Arguments
Applicant's arguments filed 08/20/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s arguments that the term “reinforcement core” involves “providing rigidity and resisting deformation” where the Loftus invention would not benefit from a rigid reinforcement core and would render such an invention inoperable for its intended purpose, the present specification does not provide a special definition for the term “reinforcement core,” where the specification instead discloses “the reinforcement core may provide rigidity, structural integrity and longevity to the EPDM shingle.” Rigidity is a characteristic which the reinforcement core can provide but does not specifically define that such a core is rigid or how much rigidity is added. Furthermore, in each instance of the related parent or child applications of the present application, the allowable subject matter was noted in reference to when such a reinforcement core was explicitly defined as being rigid. Since the present claims do not positively define that such a reinforcement core need be rigid and the reinforcement core of the prior art adds rigidity and strength to the known roof shingle, the rejections are thus considered proper and are upheld.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant argues the features which the secondary reference Lee fails to meet, when the Lee reference was provided to show the obviousness of using EPDM granules in place of other granule types for UV protection and slip resistance and thus would have yielded the same predictable results when such granules are provided within the invention of Loftus et al.
Regarding Applicant’s arguments that “Lee’s disclosure is generic and optional” and discloses “polypropylene granules---not EPDM granules--- as the preferred embodiment,” a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Furthermore, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Lee provides multiple different types of materials which can be used for such granules which can be interchanged with one another and thus renders obvious use of such EPDM granules as defined. The rejections are considered proper and are upheld.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Lee provides a list of granule materials which can be used and substituted for one another in order to yield the same predictable UV protection and slip resistance characteristic results for the surface which the granules are applied to. KSR provided that the rationale of a “simple substitution of one known element for another to obtain predictable results” would have been obvious to one of ordinary skill in the art. KSR Int’l Co. V. Teleflex Inc., 550 U.S. 398 (2007). Therefore, since Lee provides multiple materials can be used for such granules, which materials overlap with those used in Loftus et al., and substitution of any of such materials would have yielded the same predictable result to one of ordinary skill in the art, the rejections are thus considered proper and are upheld.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the present case, Lee provides known materials for the granules which can be substituted for the material used in Loftus et al. which can be used to yield the same predictable result of slip resistance and UV protection and thus provides knowledge which was within the level of ordinary skill at the time the claimed invention was filed. The rejections are thus considered proper and are upheld.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/THEODORE V ADAMOS/Primary Examiner, Art Unit 3635
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