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 .
Response to Amendment
Examiner acknowledges canceled Claims 1-11, amended Claims 12-15 and 20, withdrawn-currently amended Claim 17, withdrawn Claims 18-19, and new Claims 23-26 in the response filed on 10/6/2025.
Response to Arguments
Applicant's arguments filed 10/6/2025 have been fully considered but they are not persuasive.
Applicant argues that the Office fails to provide any rationale as to why “10 wt% or less bio-oil” teaches 11 wt% to 25 wt% bio-oil” as recited. Nowhere does Hacker contemplate an asphalt composition greater than about 10 wt% bio-oil. Instead, Hacker’s examples illustrate compositions having 2.5 wt% corn oil, 3.0 wt% corn oil, 4.0 wt% corn oil, 5.0 wt% corn oil, and 6.0 wt% corn oil, as the highest. Hacker, Table 1.
However, Applicant’s arguments are unpersuasive. A proper evaluation of the reference must include a determination of what the reference reasonably conveyed to one having ordinary skill in the art. To this end, it is believed that, giving the broadest reasonable interpretation of the term “about”, the range taught by Hacker et al. overlaps in scope with the claimed range (i.e. the teaching of “about 10 wt%” overlaps in scope with the claimed lower end value of “11 wt%”).
According to the Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs, Ltd. (Schall, Gajarsa, McKinney) Ratio decision the term about a certain number has a range of literal infringement. Case No. 04-CV-73698. For example this decision the ratio of 1:5 was agreed upon having a range that expanded from 1:3.6 to 1:7.1. This is 28% below and 42% above the said 1:5. In light of this court decision, the about 10 wt% disclosed in Hacker may have an upper limit of 14.2 wt%.
Further, it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed....” In re Fulton, 391 F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Applicant argues that Example 2 and Comparative Example 4 of the specification as filed, the bio-oil, when present in the claimed range of “11 wt% to 25 wt%”, provides a sharp threshold effect/unexpected result.
However, the evidence pointed to in the specification is not commensurate in scope with the claims. In particular, the evidence does not support that any type of bio-oil with a concentration range of 11 wt% to 25 wt% is critical and unexpected. According to Example 2, The resulted asphalt composition is an oxidized asphalt composition with a kinematic viscosity at 100°C of less than 700 cP. The oxidated asphalt composition comprises two different types of bio-oils (i.e. corn or soybean oil). Table 1 also discloses 13.4 wt% or 15.7% of corn oil and 14.5 wt% of soybean oil. For the reasons set forth above, the data does not establish the criticality of the claimed bio-oil range.
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.
Claims 12, 14-16, 23, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20200002229 (“Hacker et al.”), in view of US Pub. No. 20140174981 (“Moran et al.”), and in view of JP 2010111720 (“Ogata”).
With regards to Claims 12 and 15, Hacker et al. teaches an asphalt composition comprising about 85 to about 97 weight percent of an asphalt fraction, about 2 to about 10 weight percent of bio-oil, and 5.0 weight percent or less of an oxidized bio-oil (e.g. absent). Hacker et al. teaches the asphalt composition comprising a high temperature performance grade of (52 to 88) and low temperature performance grade of (-22 to -40), and a hardness grade of 300 dmm or lower (Abstract, [0011], [0013], [0014], [0017], [0018], [0022], and [0036]).
Hacker et al. does not explicitly teach an asphalt fraction comprising a high temperature performance grade of 58 or higher, and the asphalt composition having a kinematic viscosity at 100°C of 1000 cSt or less.
Moran et al. teaches an asphalt composition comprising an asphalt fraction having a high temperature performance grade of 52-65. Moran et al. further recognizes that the addition of deasphalted residue (hydrocarbonaceous fraction) can have the asphalt composition have a performance grade at a high temperature of 52 or lower ([0024], [0039], and [0044]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have a high temperature performance grade of 58 or higher in Hacker et al.’s asphalt fraction in order to withstand appropriate high temperatures without excessive deformation.
Ogata teaches a bioasphalt composition having a kinematic viscosity at 100°C that is 1000 cSt or less (Example 1 and Table 1). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Hacker et al.’s asphalt composition have a kinematic viscosity as claimed in order to achieve a suitable workability.
With regards to Claim 14, Hacker et al. teaches the bio-oil comprises 10 wt% or more of triglycerides relative to a weight of the bio-oil (e.g. animal fat) [0018].
With regards to Claim 16, due to Hacker et al.’s asphalt composition comprising a bio-oil, it is intrinsic that the carbon intensity of the asphalt composition is lower than an asphalt fraction. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to optimize the carbon intensity relationship as claimed in Hacker et al.’s asphalt composition and asphalt fraction in order to reduce greenhouse gases and be environmentally friendly product.
With regards to Claims 23 and 24, the instant claims recite “the asphalt composition can be oxidized …” (emphasis added). The asphalt composition does not necessarily require it to be an oxidized asphalt composition. Therefore, Hacker et al. teaching an asphalt composition meets the instant limitation.
Claims 13 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20200002229 (“Hacker et al.”), in view of US Pub. No. 20140174981 (“Moran et al.”), and in view of JP 2010111720 (“Ogata”) as applied to Claim 12 above, and further in view of US Pub. No. 20190016965 (“Aldous et al.”).
-AND-
Claims 20, 22, 25, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20200002229 (“Hacker et al.”), in view of US Pub. No. 20140174981 (“Moran et al.”), in view of JP 2010111720 (“Ogata”), and in view of US Pub. No. 20190016965 (“Aldous et al.”).
With regards to Claim 13, the prior art of record teaches an asphalt fraction as set forth above. Hacker et al. teaches the asphalt composition comprising a low temperature performance grade of (-22 to -40) [0037]. Considering that the majority of the asphalt composition is the asphalt fraction [0014], one of ordinary skill in the art would recognize that the asphalt fraction has similar low temperature performance grade as the asphalt composition.
Hacker et al. does not teach its asphalt fraction comprising a hydrocarbonaceous fraction comprising a dynamic viscosity at 130°C of 8.0 P or more and a high temperature performance grade of 58 or higher.
However, Aldous et al. teaches compositions and methods for forming compositions by using a three-product deasphalting method to form a deasphalted oil, a resin, and deasphalter rock. The outputs from the deasphalting process are used in asphalt products that has a penetration at 25°C of 65 dmm or less (Abstract, Table 3, [0017], [0018], [0041], and [0046]). Due to Aldous et al. disclosing deasphalter rock (hydrocarbonaceous fraction), it is intrinsic that it has a dynamic viscosity at 130°C of 8.0 P or more and a high temperature performance grade of 58 or higher. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to incorporate a hydrocarbonaceous fraction, such as the deasphalter rock demonstrated by Aldous et al., into Hacker et al.’s asphalt fraction in order to be suitable for further commercial use with desirable properties as disclosed in paragraph [0041].
With regards to Claim 20, please see rejected Claims 12 and 13 above.
With regards to Claims 21 and 22, the prior art of record teaches the asphalt fraction comprising a high temperature performance grade of 58 or more as set forth above.
Hacker et al. does not teach the asphalt fraction comprising a kinematic viscosity at 100°C of 1000 cSt or more.
However, Aldous et al. teaches its asphalt fraction including a deasphalter resin (hydrocarbonaceous fraction) comprises a kinematic viscosity at 100°C of 5000 cSt or more ([0012] and [0018]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Aldous et al.’s asphalt fraction have a high kinematic viscosity as claimed for better formation of commercial grade asphalt [0018].
With regards to Claims 25 and 26, the instant claims recite “the asphalt composition can be oxidized …” (emphasis added). The asphalt composition does not necessarily require it to be an oxidized asphalt composition. Therefore, Hacker et al. teaching an asphalt composition meets the instant limitation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
US Pub. No. 20200131403 discloses an oxidized asphalt composition comprising about 0.1% to about 10% by weight of corn oil. The oxidized asphalt composition have a penetration value of at least about 15 dmm and a softening point between about 190°F and about 235°F (about 87.78°C to about 112.78°C) (Abstract, [0010], [0011], and [0040]).
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 LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785