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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 03, 2025 has been entered.
Status of the Claims
By amendment filed November 03, 2025, claims 1 and 18 have been amended. Claims 1 through 8, 14 through 27 and 33 through 46 are currently pending.
Response to Arguments
Applicant's arguments filed November 03, 2025 have been fully considered but they are not persuasive.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant’s arguments are not persuasive because applicant has not provided an explanation on how the amended claims produced unexpected results over the prior art. Instead, applicant merely asserts that the narrowed ranges are now commensurate with the scope of the claims and therefore produce unexpected results without providing any more analysis. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP section 716.02(b).
Applicant’s arguments concerning unexpected results are not persuasive because the evidence submitted by applicant does not clearly show that the butadiene concentration of the specialized polymer modified bitumen was critical to achieving the references results. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). See MPEP section 716.02(b). Based on the information provided in the declaration it is not clear if the increase in ideal cracking tests (CT Index) was the result of increasing the butadiene amount in the specialized polymer modified bitumen or was the result of increasing the amount of SBS block co-polymer.
Applicant’s arguments concerning unexpected results are also not persuasive because not enough information is provided within the declaration to determine if the results presented within the declaration would occur across the entire scope of the claims. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP section 716.02(d). The declaration does not provide any information as to what specific compositions were used in the tests and no information as to how the composition were used. Therefore, it cannot be determined if the cited results would occur over the entire scope of the claims.
The results presented by applicant are not persuasive in showing unexpected results because not enough data points have been provided that the show the unexpected results would be obtained across the entire scope of the claims and not outside the claimed ranges. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP section 716.03(d).II. Only two of the results (bars 4 and 3) were within the claimed ranges and the only embodiment below the claimed range (bar 2) had additional components not required by the claims (Elvaloy).
Furthermore, the declaration does not provide a comparison between the claimed invention and that of the closest prior art which is Praw. Applicant alleges that one of the results falls within the taught ranges of Praw but this is not a sufficient comparison to establish that the claimed invention produced unexpected results over the prior art. An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). "A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference." In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978). See MPEP section 716.02(e).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8, 14-27 and 33-36 are rejected under 35 U.S.C. 103 as being unpatentable over Gonzalez Leon et al (U.S. Patent # 10,119,026) in view of Praw et al (WIPO Patent Publication NO. WO2020/035403A1).
In the case of claim 1 and 18, Gonzalez Leon teaches a composition/asphalt mix comprised of aggregate, recycled bitumen/bituminous product and fresh/virgin bitumen (Column 5 Lines 23-59). Gonzalez Leon further teaches that the virgin bitumen was a specialized polymer modified bitumen wherein the polymer comprised styrene/butadiene block co-polymer (Column 12 Lines 20-24, 32-34 and 52-63). Furthermore, Gonzalez Leon teaches having used the composition/mix to form a strain tolerant layer (Column 14 Lines 51-60).
Though Gonzalez Leon teaches having modified the bitumen with a polymer Gonzalez Leon does not specifically that the polymer was a styrene-butadiene-styrene block co-polymer. Gonzalez Leon does teach that the added polymer/styrene-butadiene block copolymer was used to improve the mechanical properties of the mixture (Column 12 Lines 56-63).
Praw teaches a modified asphalt composition comprising 0.1 to 8 wt% of the asphalt composition a polymer comprising SBS copolymer (Abstract). Praw teaches that it was known in the art to have added SBS block co-polymers to asphalt in order to increase the mechanical strength and abrasion resistance of the asphalt (Page 9 Lines 18-29). Praw further teaches that the modified asphalt/bitumen was mixed with aggregate to form an asphalt mixture (Page 16 Lines 1-14).
Based on the teachings of Prawn, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have modified the bitumen of Gonzalez Leon with an SBS block co-polymer in the amount of 0.1 to 8 wt% of the bitumen in order to increase the mechanical strength and abrasion resistance of asphalt mixture. Furthermore, the range of 0.1 to 8 wt% overlapped with the claimed ranges of 3.5% to 8.5%. 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 section 2144.05.I of the MPEP.
As for the limitation that the butadiene was 2.5% to 6% of the specialized polymer modified bitumen Praw teaches that the SBS block co-polymer comprised 20 to 42 wt% of the polymer styrene (Page 9 Line 31 through Page 10 Line 2) meaning that the co-polymer comprised 58 to 80 wt% butadiene. According to Paragraph 0033 of the specification of the present application when the SBS block co-polymer contained 70% butadiene and was 3.0% of the modified bitumen the total butadiene content in the modified bitumen was 2.1%. Therefore, since the SBS block co-polymer of Praw was present in the range of 0.1 to 8 wt% of the modified bitumen/asphalt and had a butadiene content of 58 to 80 wt% the concentration range of the butadiene in the specialized polymer modified bitumen of Gonzalez Leon in view of Praw overlapped with the claimed range and as was discussed previously overlapping ranges are prima facie obvious.
Gonzalez Leon does not specifically teach that the strain tolerant layer had a strain tolerance of greater than 10,000 cycles or 20,000 cycles or 30,000 cycles to failure at 1000 microstrain, 15C and 10 Hz. However, the composition used in the process of Gonzalez Leon in view of Praw was substantially the same as that required by the claims and disclosed within the specification of the present application and therefore the strain tolerant layer produced by the process of Gonzalez Leon in view of Praw would have inherently had the required strain tolerance.
Furthermore, Gonzalez Leon teaches that strain tolerance/tensile strength was a relevant property to the formed pavement layer (Column 15 Line 61 through Column 16 Line 28). Section 2144.05.II.A of the MPEP states, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal strain tolerance properties for the produced layer of Gonzalez Leon in view or Praw through routine experimentation because strain tolerance/tensile strength were relevant pavement properties for the formed layer of Gonzalez Leon in view of Praw.
As for claims 2-5 and 21-24, Gonzalez Leon does not specifically teach that that the recycled bitumen was greater than 5%, 25%, 30% or 35% or the total bitumen content. However, section 2144.05.II.A of the MPEP states, “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”
Gonzalez Leon further teaches that the content of the recycled bitumen in the asphalt mix was a relevant parameter affecting the mechanical properties of the mix/composition (Column 6 Lines 34-44 and Column 13 Lines 10-20 and 29-37).
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined the optimal amount of recycled bitumen as part of the total bitumen content of the composition/mixture of Gonzalez Leon in view of Praw through routine experimentation because the amount of recycled bitumen affected the mechanical properties of the composition/mixture.
As for claims 14-16, Praw did not teach that the butadiene of the polymer had any vinyl attachments.
As for claim 17, Gonzalez Leon teaches that the virgin bitumen further comprised fluxing agents/fluxants and/or polyphosphoric acid (Column 12 Lines 20-55).
As for claims 19 and 20, as was discussed previously, it would have been obvious to have determined these strain tolerance properties through routine experimentation.
As for clams 25-27, as was discussed previously, the specialized polymer was in the amount of 0.1 to 8 wt% of the modified bitumen which overlapped with the claimed ranges of greater than 3%, 4% and 5%. As was discussed previously, overlapping ranges are prima facie obvious.
As for claims 33-35, they are rejected for the same reasons as claims 14-16.
As for claim 36, it is rejected for the same reasons as claim 17.
Conclusion
Claims 1 through 8, 14 through 27 and 33 through 36 have been rejected. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712