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 Group II, claims 31 – 42, in the reply filed on 28 May 2026 is acknowledged. The traversal is on the ground(s) that there is no undue effort in examining both Inventions I and II together. This is not found persuasive because the method of claim 23 in Invention I requires particular features of the coating composition and the coating method itself which are not required of the products of claims 31 and 36 in Invention II.
The requirement is still deemed proper and is therefore made FINAL.
Claims 23 – 30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 28 May 2026.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 31 – 42 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2007/0087166 A1) in view of Cheung (US 2021/0253892 A1). The rejections of claims 31 – 35 further rely on Gross (US 2005/0074580 A1) as an evidentiary disclosure.
Regarding claim 31, Lee discloses a roofing shingle (e.g. ¶¶ [0002] – [0034]) comprising:
a substrate having an upper surface and a lower surface, wherein the substrate comprises, e.g., a fiberglass mat (“carrier”: e.g. ¶ [0005]);
a non-foam (per embodiments where “defoamer” is included: e.g. ¶¶ [0027], [0032]), coating composition applied to the upper surface and the lower surface of the substrate (the “carrier” is “impregnated” such that an “adhesive layer” is formed on one surface of the “carrier” to allow “aggregate” to be “at least partially embedded” therein and such that the other surface of the “carrier” allow for adhesion to adhere to other “carriers” in a system of “multiple layers”: e.g. ¶ [0005]), wherein the coating composition comprises a polymeric resin (“organic resins”: e.g. ¶¶ [0010], [0016] – [0018], [0021] – [0024]),
wherein the polymeric resin is, e.g., a methacrylate resin (e.g. ¶¶ [0017], [0018]); and
roofing granules applied to an upper surface of the coating composition applied to the upper surface of the substrate (the aforementioned “aggregate”: e.g. ¶¶ [0002], [0004], [0007] – [0009], [0033], [0034]).
The examiner considers Lee to refer to a roofing shingle in that the roofing granules are selected, at least in part, on their solar reflectance (e.g. ¶¶ [0008], [0009]), indicating the roofing granules form the exterior-most surface, as is typical of roofing shingles (see Gross: e.g. ¶ [0005]).
Although Lee does not explicitly state the coating composition further comprises a carrier and a reaction generator, wherein the carrier comprises a natural oil, a natural resin, a natural wax, a synthetic oil, a synthetic resin, a synthetic wax, or a combination thereof, and wherein the reaction generator comprises at least one of a catalyst or activator, these features would have been obvious in view of Cheung.
Cheung discloses a coating composition for roofing materials, wherein the coating composition comprises a polymeric resin (“acrylic latex”: e.g. ¶¶ [0004], [0007], [0012], [0015], [0020], [0021], [0024], [0025], [0029], [0048], [0057], [0059])), a carrier (“hydrophobic additive”: e.g. ¶¶ [0004], [0006], [0007], [0012], [0014], [0015], [0020], [0021], [0024] – [0028], [0031], [0055], [0056], [0059]), and a reaction generator (“activator formulation”: e.g. ¶¶ [0004], [0011], [0012], [0019], [0037] – [0040], [0044], [0047]),
wherein the carrier comprises, e.g., a synthetic wax (“polyolefin wax”, etc.: e.g. ¶¶ [0006], [0014], [0028]), and
wherein the reaction generator comprises, e.g., an activator (the aforementioned “activator formulation”: e.g. ¶¶ [0004], [0011], [0012], [0019], [0037] – [0040], [0044], [0047]).
Cheung discloses a coating composition with the above components possesses superior water resistance in combination with high wet tensile strength and wet adhesion, thus improving durability of the finished roofing material, particularly in extreme weather conditions, especially when coated onto a reinforcing substrate (e.g. ¶¶ [0023], [0024], [0049]).
Accordingly, it would have been obvious to modify Lee’s roofing shingle such that the coating composition thereof further comprises a carrier, e.g. a synthetic wax, and a reaction generator, e.g. an activator, as Cheung suggests, in order to improve durability in extreme weather conditions while retaining superior water resistance, tensile strength, and wet adhesion.
Regarding claim 32, in addition to the limitations of claim 31, Lee discloses the coating composition comprises the polymeric resin in an amount of 20 percent to 60 percent by weight of a total weight of the coating composition (e.g. ¶ [0021]).
Lee’s range for the amount of the polymeric resin overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 33, in addition to the limitations of claim 31, Cheung discloses the coating composition comprises the carrier in an amount of 0.5 percent to 20 percent by weight, e.g. 1 percent to 5 percent, of a total weight of the coating composition (e.g. ¶ [0031]).
Cheung’s broader range for the amount of the carrier encompasses the claimed range whereas the narrower range is within the claimed range.
“[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Lee’s range for the amount of the polymeric resin overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 34, in addition to the limitations of claim 31, Cheung discloses the coating composition further comprises a filler in an amount of 10 percent to 50 percent, e.g. 30 percent to 45 percent, by weight of a total weight of the coating composition (e.g. ¶ [0030]).
Cheung’s broader range for the amount of filler overlaps the claimed range whereas Cheung’s narrower range for the amount of filler lies within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 35, in addition to the limitations of claim 31, Lee discloses the polymeric resin is polymethyl methacrylate (PMMA) (e.g. ¶ [0018]).
Regarding claim 36, Lee discloses a roofing material (e.g. ¶¶ [0002] – [0034]) comprising:
a substrate having an upper surface and a lower surface, wherein the substrate comprises, e.g., a fiberglass mat (e.g. ¶ [0005]);
a non-foam (per embodiments where “defoamer” is included: e.g. ¶¶ [0027], [0032]), coating composition applied to the upper surface and the lower surface of the substrate (the “carrier” is “impregnated” such that an “adhesive layer” is formed on one surface of the “carrier” to allow “aggregate” to be “at least partially embedded” therein and such that the other surface of the “carrier” allow for adhesion to adhere to other “carriers” in a system of “multiple layers”: e.g. ¶ [0005]), wherein the coating composition comprises a polymeric resin (“organic resins”: e.g. ¶¶ [0010], [0016] – [0018], [0021] – [0024]),
wherein the polymeric resin is, e.g., a methacrylate resin (e.g. ¶¶ [0017], [0018]).
Although Lee does not explicitly state the coating composition further comprises a carrier and a reaction generator, wherein the carrier comprises a natural oil, a natural resin, a natural wax, a synthetic oil, a synthetic resin, a synthetic wax, or a combination thereof, and wherein the reaction generator comprises at least one of a catalyst or activator, these features would have been obvious in view of Cheung.
Cheung discloses a coating composition for roofing materials, wherein the coating composition comprises a polymeric resin (“acrylic latex”: e.g. ¶¶ [0004], [0007], [0012], [0015], [0020], [0021], [0024], [0025], [0029], [0048], [0057], [0059])), a carrier (“hydrophobic additive”: e.g. ¶¶ [0004], [0006], [0007], [0012], [0014], [0015], [0020], [0021], [0024] – [0028], [0031], [0055], [0056], [0059]), and a reaction generator (“activator formulation”: e.g. ¶¶ [0004], [0011], [0012], [0019], [0037] – [0040], [0044], [0047]),
wherein the carrier comprises, e.g., a synthetic wax (“polyolefin wax”, etc.: e.g. ¶¶ [0006], [0014], [0028]), and
wherein the reaction generator comprises, e.g., an activator (the aforementioned “activator formulation”: e.g. ¶¶ [0004], [0011], [0012], [0019], [0037] – [0040], [0044], [0047]).
Cheung discloses a coating composition with the above components possesses superior water resistance in combination with high wet tensile strength and wet adhesion, thus improving durability of the finished roofing material, particularly in extreme weather conditions, especially when coated onto a reinforcing substrate (e.g. ¶¶ [0023], [0024], [0049]).
Accordingly, it would have been obvious to modify Lee’s roofing material such that the coating composition thereof further comprises a carrier, e.g. a synthetic wax, and a reaction generator, e.g. an activator, as Cheung suggests, in order to improve durability in extreme weather conditions while retaining superior water resistance, tensile strength, and wet adhesion.
Regarding claim 37, in addition to the limitations of claim 36, Lee discloses the coating composition comprises the polymeric resin in an amount of 20 percent to 60 percent by weight of a total weight of the coating composition (e.g. ¶ [0021]).
Lee’s range for the amount of the polymeric resin overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 38, in addition to the limitations of claim 36, Cheung discloses the coating composition comprises the carrier in an amount of 0.5 percent to 20 percent by weight, e.g. 1 percent to 5 percent, of a total weight of the coating composition (e.g. ¶ [0031]).
Cheung’s broader range for the amount of the carrier encompasses the claimed range whereas the narrower range is within the claimed range.
“[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Lee’s range for the amount of the polymeric resin overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 39, in addition to the limitations of claim 36, Cheung discloses the coating composition further comprises a filler in an amount of 10 percent to 50 percent, e.g. 30 percent to 45 percent, by weight of a total weight of the coating composition (e.g. ¶ [0030]).
Cheung’s broader range for the amount of filler overlaps the claimed range whereas Cheung’s narrower range for the amount of filler lies within the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 40, in addition to the limitations of claim 36, Lee discloses the polymeric resin is polymethyl methacrylate (PMMA) (e.g. ¶ [0018]).
Regarding claim 41, in addition to the limitations of claim 36, Lee discloses the roofing material further comprises roofing granules applied to an upper surface of the coating composition applied to the upper surface of the substrate (the aforementioned “aggregate”: e.g. ¶¶ [0002], [0004], [0007] – [0009], [0033], [0034]).
Regarding claim 42, in addition to the limitations of claim 36, the examiner considers Lee to refer to a roofing shingle, for instance, in that the roofing granules are selected, at least in part, on their solar reflectance (e.g. ¶¶ [0008], [0009]), indicating the roofing granules form the exterior-most surface, as is typical of roofing shingles (see Gross: e.g. ¶ [0005]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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