DETAILED ACTION
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 .
Claim Objections
Claim 12 is objected to because of the following informalities:
With regard to claim 12: Line 4 of the claim, it appears the limitation “the release strip” should be --the release strip of the second roofing shingle-- for consistency and clarity of the claim language.
Appropriate correction is required.
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 1-20 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.
With regard to claim 1: Last line of the claim, the limitation “the strip of sealant material of the adjacent roofing shingle” lacks sufficient antecedent basis. For the purpose of examination, the limitation is considered to be directed to “a strip of sealant material of the adjacent roofing shingle”.
With regard to claim 4: The scope of the claim is unclear. It’s unclear if the limitation “at least one additional layer” is referencing the previously recited at least one layer. Note that the at least one additional layer is recited separately from the at least one layer, but includes the lower surface. Clarification is requested.
With regard to claim 5: Line 2 of the claim, the limitation “the pressure relief channel” lacks sufficient antecedent basis. It’s unclear if the limitation is referring to the roofing shingle or the adjacent roofing shingle. Line 4 of the claim, the limitation “the strip of sealant material of the adjacent roofing shingle” lacks sufficient antecedent basis.
With regard to claim 6: Line 3 of the claim, it’s unclear if the limitation “opposite sides” is referencing the previously recited sides. For the purpose of examination, the limitation is considered to be directed to --opposite of the sides--.
With regard to claim 7: Line 4 of the claim, it’s unclear if the limitation “the sealant material” is referencing the previously recited strip of sealant material.
With regard to claim 9: Line 1 of the claim, the limitation “the pressure relief channel” lacks sufficient antecedent basis. It’s unclear if the limitation is referring to the roofing shingle or the adjacent roofing shingle.
With regard to claim 10: Lines 15-16 of the claim, it’s unclear if the limitation “a stack of roofing shingles” the previously recited stack roofing shingles. Lines 17-18 of the claim, it’s unclear if the limitation “a strip of sealant material” is referencing the previously recited strip of sealant material. Line 18 of the claim, it’s if the limitation “a lower surface” is referencing the previously recited lower surface. Lines 18-20 of the claim, it’s unclear if the limitation “a first roofing shingle” and “a second roofing shingle” is referencing the previously recited plurality of shingles. Line 19 of the claim, it’s unclear if the limitation “a pressure relief channel” is referencing the previously recited pressure relief channel. Line 19 of the claim, it’s unclear if the limitation “an upper surface” is referencing the previously recited upper surface.
With regard to claim 16: Lines 1-2 of the claim, the limitation “the strip of sealant material” lacks sufficient antecedent basis. Line 2 of the claim, the limitation “the pressure relief channel” lacks sufficient antecedent basis.
With regard to claim 17: Lines 7-8 of the claim, the limitation “the pressure relief channel of a first roofing shingle” lacks sufficient antecedent basis. Lines 9-10 of the claim, the limitation “the strip of sealant material of the second roofing shingle” lacks sufficient antecedent basis. Further, the scope of the claim is unclear. Lines 7-11 of the claim recite a first and second shingle, but subsequently recites the cutting of substrate to form a plurality of shingles. Lines 15-16 of the claim, the limitation “the roofing shingle” lacks sufficient antecedent basis. For the purpose of examination, the limitation is considered to be directed to --each roofing shingle--. Lines 26-27 and 29 of the claim, the limitation “the strip of sealant material” lacks sufficient antecedent basis. Line 28 of the claim, it’s unclear if the limitation “a roofing shingle” is referencing the previously recited plurality of shingles. Line 27 of the claim, it’s unclear if the limitation “a stack of roofing shingles” is referencing the previously recited stack of shingles. Lines 28-29 of the claim, it’s unclear if the limitation “a second roofing shingle” is referencing the previously recited plurality of shingles. Line 30 of the claim, the limitation “the first roofing shingle” lacks sufficient antecedent basis. Line 31 of the claim, the limitation “the second roofing shingle” lacks sufficient antecedent basis. Note that “a first roofing shingle” and “a second roofing shingle” have been recited more than once.
Claims 1-20 are examined as best understood.
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) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aschenbeck et al. (US 2011/0072752 A1)
With regard to claim 1: Aschenbeck et al. discloses a roofing shingle (32) comprising:
at least one layer of a shingle material (32) (figs. including:
an upper surface (52) forming an exterior surface of the roofing shingle (32) and having a headlap portion (28) capable of being overlapped by at least one additional roofing shingle arranged in a next higher course of roofing shingles on a roof (fig. 2A);
a lower surface opposite the upper surface (52) (fig. 2A); and
a pressure relief channel (depression 56) formed in the upper surface and extending along a portion of the headlap portion (28) of the roofing shingle (32) (fig. 2A);
a strip of sealant material (48) applied along at least a portion of the lower surface (fig. 2A);
wherein the strip of sealant material (48) applied to the lower surface is not aligned with the pressure relief channel (56) formed in the upper surface (fig. 2A);
wherein the roofing shingle (32) is capable of being stacked in a stack of roofing shingles with the upper surface of the roofing shingle (32) facing upwardly and with the lower surface of the roofing shingle facing downwardly and with the strip of sealant material (48) applied along the lower surface of the roofing shingle (32) aligned with a pressure relief channel formed in an upper surface of an adjacent roofing shingle of the stack of roofing shingles (fig. 2A); and
wherein the pressure relief channel (56) of the roofing shingle (32) is capable of at least partially receive the strip of sealant material of the adjacent roofing shingle therein (fig. 2A). Note that the claim does not recite the adjacent roofing shingle comprises the same configuration as the roofing shingle.
The embodiment of figs. 2A-2B of Aschenbeck et al. does not disclose a release strip positioned over the pressure relief channel.
However, Aschenbeck disclose in the alternative embodiment of fig. 3 a release strip (82) positioned over a pressure relief channel (80).
it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the embodiment of Fig. 2A of Aschenbeck to include a release strip positioned over the pressure relief channel such as taught by the alternative embodiment of Fig. 3 of Aschenbeck in order to provide a known means of preventing adhesion during stacking. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention.
With regard to claim 2: Aschenbeck et al. discloses that the upper surface further includes an exposure portion (30) adjacent the headlap portion (28); and wherein the strip of sealant material (48) is applied to the lower surface opposite the exposure portion (30) (fig. 2A).
With regard to claim 3: Aschenbeck et al. discloses that the pressure relief channel (56) comprises a depression formed in the upper surface and having a depth (62) from 0.05 inch to about 0.50 inch (figs. 2A-2B; par. [0039]), which falls within the claimed range of 0.001 inch to 0.075 inch.
With regard to claim 4: Aschenbeck et al. discloses at least one additional layer (29) attached to the at least one layer and including the lower surface (fig. 2A).
With regard to claim 5: As modified, Aschenbeck et al. discloses the release strip is configured to extend along and at least partially conform to a surface of the pressure relief channel when the roofing shingle and the adjacent roofing shingle are arranged in the stack of roofing shingles with the strip of sealant material of the adjacent roofing shingle at least partially received within the pressure relief channel of the roofing shingle.
With regard to claim 6: Aschenbeck discloses that the pressure relief channel (56) comprises sides, a width that extends between opposite sides, and a depth equal to or less than a thickness of the strip of sealant material 48, (Fig. 2A).
Aschenbeck et al. does not disclose the strip of sealant material comprises a width of 1/8 inch to 1 inch, the width of the pressure release channel exceeds the width of the strip of sealant material by ¼ inch to 1 inch and wherein the release strip overlaps each side of the pressure relief channel by 1 inch or less.
However, it would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the strip of sealant material, the pressure relief channel, and the release strip to have the width and depth as claimed, since such a modification would have involved a mere change in the dimensions of the pressure relief channel, the strip of sealant and the release strip to mitigate unwanted adhesive during stacking and allow for proper adhesion during installation. No new or unpredictable results would be obtained from modifying the strip of sealant material to comprise a width of 1/8 inch to 1 inch, the width of the pressure release channel exceeding the width of the strip of sealant material by ¼ inch to 1 inch and wherein the release strip overlapping each side of the pressure relief channel by 1 inch or less. A change in dimensions is generally recognized as being within the level of ordinary skill in the art.
With regard to claim 7: As modified, when the roofing shingle of Aschenbeck et al. and the adjacent roofing shingle are arranged in the stack of roofing shingles, the release strip of the roofing shingle is received within and at least partially conforms to a surface of the pressure relief channel of the roofing shingle; and wherein the sealant material of the adjacent roofing shingle remains substantially contained within the pressure relief channel of the roofing shingle.
With regard to claim 8: Aschenbeck et al. does not disclose at least one additional strip of sealant material applied to the lower surface in proximity with the strip of sealant material; and wherein the release strip comprises a width sufficient to cover both the strip of sealant material and the at least one additional strip of sealant material.
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have good reason to pursue the known options within his or her technical grasp, as the selected option was one of a finite number of available configurations to place an adequate amount of sealant material to be occupy the pressure relief channel of the adjacent shingle. No new or unpredictable results would be obtained from modifying the roofing shingle of Aschenbeck et al. to include at least one additional strip of sealant material applied to the lower surface in proximity with the strip of sealant material. Such a combination, to one of ordinary skill in the art, would have a reasonable expectation of success, and would be based on ordinary skill and common sense before the effective filing date of the claimed invention. As modified, the release strip comprises a width sufficient to cover both the strip of sealant material and the at least one additional strip of sealant material.
With regard to claim 9: As modified, Aschenbeck et al. discloses a depth of the pressure relief channel comprises a depth that is less than or substantially equal to a thickness of the sealant material of the strip of sealant material (see fig. 3).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,519,176. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the instant claims can be found within the patented claims.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,291,870. Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of the instant claims can be found within the patented claims.
Allowable Subject Matter
Upon the filing of a Terminal Disclaimer, claims 10-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The combination of all the elements of the claimed stack of shingles or steps of the claimed method, in particular the upper surface of the roofing shingles configured to be stacked or is stacked facing upwardly and the lower surface of each shingle facing downwardly where the relationship between the pressure relief channel and strip of sealing material between the shingles is recited is not adequately taught or suggested in the cited prior art of record. Examiner notes that allowability of the claims are subject to reconsideration if the scope of the claim change.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art cited is directed to roofing shingles having sealant/adhesive material.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSIE T FONSECA whose telephone number is (571)272-7195. The examiner can normally be reached 7:00am - 3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571)272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSIE T FONSECA/Primary Examiner, Art Unit 3633
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