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 .
Summary
This is the response to the Amendment/Request for Reconsideration filed on 02/12/2026.
Claims 1-14 and 16-20 remain pending in the application with claims 19-20 are withdrawn from consideration.
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 1-14 and 16-20 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. Claim 1 recites the phrase “substantially parallel” in line 14 that renders the claim indefinite when it is read in light of the specification because the specification does not recite any parallel relationship between the headlap portion and the reveal portion and the roof deck. Furthermore, the word “substantially” implies a degree of parallel alignment between the headlap portion and the reveal portion relative to the roof deck that is not made clear by the originally file disclosure. How much deviation from parallel alignment is still considered “substantially parallel”?
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4, 7-9, 14 and 17-18 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Wray et al. (US 2022/0173694).
Addressing claim 1, Wray discloses a system (figs. 1-14), comprising:
a plurality of photovoltaic modules 110 installed on a roof deck 202 (fig. 9);
a plurality of step flaps 226 (or 36) installed on the roof deck,
wherein each of the plurality of step flaps includes a first layer (sheet of mesh material described in paragraph [0088]) and a second layer (step flap layer 36, [0088]),
wherein the first layer overlaps a portion of the second layer [0088], and
wherein the first layer (sheet of mesh) is attached to at least a portion of an overlapping portion of the second layer within an attachment area (the sheet of mesh material covers the upper surface of the step flap layer that corresponds to the claimed overlapping portion within an attachment area),
wherein an end of each of the plurality of photovoltaic modules overlays a portion of a corresponding one of the plurality of step flaps (figs. 7A-7E); and
a plurality of roofing shingles installed on the roof deck (figs. 13-14),
wherein each of the plurality of roofing shingles includes a head lap portion and a reveal portion (annotated fig. 13), wherein each of the headlap portion and the reveal portion is substantially parallel to the roof deck (fig. 13 shows the annotated headlap portion and the reveal portion are installed flat on the rooftop, which qualifies the headlap portion and the reveal portion as being substantially parallel to the roof deck along their orientation),
wherein an end of a first roofing shingle of the plurality of roofing shingles overlays a first one of the plurality of step flaps (fig. 13), and
wherein the second layer of a second one of the plurality of step flaps vertically above the first one of the plurality of step flaps (fig. 9 shows two step flaps are stacked on top of one another in staggering fashion, which results in the second layer of the top one or the claimed second one of the plurality of step flaps being vertically above the bottom one or the claimed first one of the plurality of step flaps) overlays the headlap portion of the first roofing shingle but does not overlay the reveal portion of the first roofing shingle (fig. 13 shows the second step flap, i.e. the step flap positioned on the surface of the annotated headlap portion of the first roofing shingle; therefore, the second layer of the second step flap overlays the headlap portion of the first roofing shingle but does not overlay the annotated reveal portion of the first roofing shingle as claimed).
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Addressing claim 2, paragraph [0057] discloses the claimed material.
Addressing claims 3-4, paragraph [0058] discloses the claimed materials.
Addressing claim 7, paragraph [0088] discloses the first layer is attached to the second layer by an adhesive.
Addressing claims 8-9, fig. 3 shows the release lines 50a and 50 as the claimed alignment marks with the area in between as the claimed attachment area.
Addressing claim 14, paragraph [0010] discloses the roofing shingle is an asphalt shingle.
Addressing claim 17, fig. 9 shows the claimed configuration.
Addressing claim 18, paragraph [0059] discloses the step flap has a thickness between 0.1 mm to 5 mm [0059].
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.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wray et al. (US 2022/0173694) in view of Keenihan et al. (US 2015/0318427).
Addressing claim 16, Wray is silent regarding the first layer or the second layer of each of the plurality of step flaps includes a fire retardant additive.
Keenihan discloses roofing material includes fillers such as fire retardant or ignition resistant materials [0064].
At the time of the effective filing date of the invention, one with ordinary skill in the art would have found it obvious to modify the first and second layer of Wray with the known fire retardant filler disclosed by Keenihan in order to obtain the predictable result of imparting fire retardant property (Rationale B, KSR decision, MPEP 2143).
Allowable Subject Matter
Pending the 35 USC 112, second paragraph rejection above, claims 5-6 and 10-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 02/12/2026 regarding the 35 USC 102 rejection of claims 1-4, 7-9, 14 and 17-18 as being anticipated by Wray have been fully considered but they are not persuasive. The Applicants argued that fig. 13 of Wray appears to show the underside portion of the shingle with the adhesive with the annotated headlap portion in the Office Action as the reveal portion and the annotated reveal portion as the headlap portion. The argument is not persuasive for the following reasons. The preponderance of evidence from Wray indicates that fig. 13 shows the upper side of the shingles and not the underside as alleged by the Applicants. Fig. 14 shows the upper side of the installation with the flashing 228 overlaying the step flap 226 on the upper surface of the roof deck 202. It is noted that the electrical leads and cables are shown in the orientation disclosed in fig. 14 of the upper side of the installation. Fig. 13 also shows the electrical leads and cables are exposed, which indicates that the orientation shown in fig. 13 is not the underside but is the upper side similarly to that of fig. 14. Likewise, fig. 11 and 12A-12B also show the upper side of the installation that have similar structures as that of fig. 13. Therefore, the preponderance of evidence indicates that fig. 13 shows the upper side of the installation with the portion of the roof shingle positioned under the step flap as the structural equivalence to the claimed headlap portion and the portion of the roof shingle that is not covered by the step flap as the structural equivalence to the claimed reveal portion as discussed in the rejection of claim 1 above. With respect to the Applicants’ assertion that that the markings on the roof shingle are adhesive which indicates that the orientation shown in fig. 13 as the underside of the roof shingle. The argument is not persuasive because the Applicants did not provide any evidence to indicate that the marks shown in fig. 13 are adhesive and fig. 13 depicts the underside of the roof shingles. It is reminded that fig. 11, 12a-12b and 14 show similar structures as those of claim 13 on the upper side of the installation; therefore, the preponderance of evidence indicates that fig. 13 shows the upper side of the roof shingle. It is unclear as to what the marks on the roof shingle in fig. 13 are. For the reasons above, Examiner maintains the position that claims 1-4, 7-9, 14 and 17-18 are anticipated by Wray.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BACH T DINH whose telephone number is (571)270-5118. The examiner can normally be reached Mon-Friday 8:00 - 4:30 EST.
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/BACH T DINH/Primary Examiner, Art Unit 1726 03/02/2026