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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/29/2026 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 06/29/2026.
Claims 1-3, 5-10 and 13-14 are presently pending and under examination; claims 4, 11-12 and 15-21 are canceled; claim 1 is amended.
The 35 U.S.C. 103 rejection of claims 1-3, 5-10 and 13-14 over LE in view of KURTH is maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-10 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Le, et al. (U.S. Pub. No. 2018/0346658-A1) (hereinafter, “LE”) in view of Kurth, et al. (U.S. Pub. No. 2018/0016438-A1) (hereinafter, “KURTH”), with evidence from RAHA Gilsonite Co, “Properties of Gilsonite”, (hereinafter, “RAHA”) as to the rejection of claims 1-2.
Regarding claim 1, LE teaches a binder composition (see LE at Abstract) comprising:
a plasticity modifying agent (see LE at Abstract and paragraphs [0080], [0083] and [0098], teaching that the composition comprises an oil/ plasticity modifying agent, e.g., a viscosity modifier; although LE also teaches that the composition comprises an oligomerized biorenewable material derived from biomass oil in paragraphs [0047], [0126]-[0127] and [0131], it is not explicitly stated that the composition contains oligomerized biorenewable oil)
that is present in an amount overlapping with and thereby rendering obvious the claimed range of least 10 wt% of the binder composition (see LE at paragraph [0202], teaching that the composition comprises 0.01 to 20 wt% of the plasticity modifying agent; as set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).); and
an asphaltene additive comprising at least 20 wt% to 100 wt% asphaltenes, wherein the asphaltene additive is Gilsonite (see LE at Abstract and paragraph [0074], teaching that the composition comprises Gilsonite as the bitumen, which can be estimated to contain approximately 56.7 to 76.2% asphaltenes by weight as evidenced by RAHA (see RAHA at pg. 3, table of characteristics),
and wherein the asphaltene additive is at least 12 wt% of the composition (see LE at paragraph [0205], teaching that the composition comprises 25 to 99.89 wt% of the bitumen),
wherein the binder composition comprises a pre-blend comprising the plasticity modifying agent and the gilsonite (the composition comprises a blend of the bitumen (gilsonite) and plasticity modifying agent).
However, LE fails to explicitly teach that the plasticity modifying agent (viscosity modifier) is an oligomerized biorenewable oil that is oligomerized via sulfurization, wherein oligomer molecules are at least 10 wt% of the oligomerized biorenewable oil.
KURTH teaches an asphalt binder composition comprising an oligomerized biorenewable oil which is oligomerized via sulfurization and has an oligomer content of 2 to 80 wt%, e.g., 31.8%, 56.18%, 16.0%, etc. (see KURTH at Abstract and paragraphs [0021], [0032], [0053]-[0054], [0060]-[0061] and [0067]-[0068]). KURTH teaches that these oligomerized biorenewable oils are rheology modifiers which enhance the performance of virgin asphalt and/or pavements containing recycled and aged bituminous materials and can provide several benefits, such as extending the useful temperature interval (UTI) of asphalts to a greater degree than other performance modifiers, forming balanced, stable and durable asphalt binders, forming asphalt which has a lower tendency for change in rheological properties as a result of oxidative aging and volatilization, and decreasing production and construction temperatures through increase in aggregate lubrication and aggregate wettability (see KURTH at paragraphs [0002]-[0003], [0036]-[0038], [0039]-[0042]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the binder composition of LE by using oligomerized biorenewable oil which is oligomerized via sulfurization and has an oligomer content of 2 to 80 wt%, e.g., 31.8%, 56.18% or 16.0%, as a viscosity modifier (i.e., rheology modifier) as taught by KURTH (see KURTH at Abstract and paragraphs [0021], [0032], [0042], [0053]-[0054], [0060]-[0061] and [0067]-[0068]). One of ordinary skill in the art could have used the oligomerized biorenewable oil of KURTH as a viscosity modifier with a reasonable expectation of success, yielding the predictable result of modifying the viscosity/rheology of the binder composition. Further, one of ordinary skill in the art would have been motivated to include the oligomerized biorenewable oil of KURTH for the benefit of enhancing the performance of the asphalt and providing benefits such as extending the UTI of the asphalt, decreasing tendency for change in rheological properties as a result of oxidative aging and volatilization, and decreasing production temperatures as taught by KURTH (see KURTH at paragraphs [0002]-[0003], [0036]-[0038], [0039]-[0042]). Further, KURTH teaches that oligomerized biorenewable oils which are oligomerized via sulfurization and have an oligomer content of at least 10 wt% are known viscosity/rheology modifiers for use in bituminous binder compositions, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
This modification of LE in view of KURTH results in a blend wherein the gilsonite would be dissolved in the oligomerized biorenewable oil. LE explicitly teaches that the flowability of bituminous materials is enhanced and a desirable workability achieved by means of dissolving the bituminous materials (see LE at paragraph [0010]), i.e., LE teaches dissolving the bituminous materials. LE also discloses that the bitumen (gilsonite) and plasticity modifying agent, which is the oligomerized biorenewable oil as modified by KURTH, are blended and homogenized at a temperature of 140 to 220 °C, and also provides an example wherein the bitumen and plasticity modifying agent are blended at high RPMs and at a temperature of 180 °C for a total of 1 hour (see LE at paragraphs [0262] and [0444]). Gilsonite is soluble in sulfurized oligomerized biorenewable oil, e.g., as discussed in the present specification at paragraphs [0088]-[0091]; therefore, it would be expected that blending the gilsonite and biorenewable oil of the prior art would result in dissolution of the gilsonite. Specifically, the present specification states that blending the gilsonite and oil at low RPMs and at a temperature of 155 or 180 °C for 1 or 2 hours results in the gilsonite being fully dissolved (see paragraphs [0088]-[0091]). LE explicitly teaches dissolving the bituminous material, and the binder composition of LE in view of KURTH is identical or substantially identical to the claimed binder composition, and is produced by blending/homogenizing the components at a temperature of 140 to 220 °C; therefore, the binder composition of LE in view of KURTH would be expected to have the same or very similar properties as the claimed binder composition, including dissolved gilsonite. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of LE in view of KURTH have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
Although, as discussed above, the prior art combination teaches heating and mixing the gilsonite and oil which would result in the gilsonite dissolving (i.e., digestion), is noted that the limitation of “wherein the pre-blend is formed by digesting the gilsonite in the oligomerized biorenewable oil” is considered product-by-process claim language and is not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Regarding claim 2, as applied to claim 1 above, LE in view of KURTH teaches a binder composition according to claim 1, wherein the low molecular weight and low polarity naphthenic or aromatic molecules, and a saturates fraction, are less than about 30 wt% of the asphaltene additive. The asphaltene additive taught by LE in view of KURTH comprises Gilsonite, which is made of high molecular weight constituents and can be estimated to contain approximately 56.7 to 76.2% asphaltenes by weight, and only 21.0 to 26.7% maltenes (i.e., low molecular weight, low polarity aromatics and saturates) by weight, as evidenced by RAHA (see RAHA at pg. 3, table of characteristics).
Regarding claim 3, as applied to claim 1 above, LE in view of KURTH teaches a binder composition according to claim 1, wherein the binder composition comprises bitumen in addition to any bitumen comprised in the asphaltene additive (see LE at paragraphs [0095], [0199] and [0208], teaching that the composition comprises recycled aggregate such as reclaimed asphalt, which contains bitumen).
Regarding claim 5, as applied to claim 1 above, LE in view of KURTH teaches a binder composition according to claim 1, wherein the oligomerized biorenewable oil has not been blended with any non-oligomerized oil after oligomerization (see KURTH at paragraph [0032]; KURTH teaches embodiments wherein the oligomerized biorenewable oil is not blended with any non-oligomerized oil after oligomerization).
Regarding claim 6, as applied to claim 1 above, LE in view of KURTH teaches a binder composition according to claim 1, wherein the oligomerized biorenewable oil is present in an amount overlapping with and thereby rendering obvious the claimed range of 10 wt% to 80 wt% of the binder composition (see LE at paragraph [0202], teaching that the composition comprises 0.01 to 20 wt% of the plasticity modifying agent, i.e., the oligomerized biorenewable oil). As set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 7, as applied to claim 1 above, LE in view of KURTH teaches a binder composition according to claim 1, wherein the binder composition comprises a polymer modifier, wherein the binder composition is modified using the polymer modifier, or a combination thereof (see LE at Abstract and paragraphs [0080] and [0109], teaching that the composition comprises a polymer modifier, e.g., lignin).
Regarding claim 8, as applied to claim 1 above, LE in view of KURTH teaches a binder composition according to claim 1, wherein the binder composition comprises an acid modifier, wherein the binder composition is modified using the acid modifier, or a combination thereof (see LE at paragraphs [0052,] [0202], [0208] and [0226], teaching that the composition comprises further components such as organic acid as a preserving agent).
Regarding claim 9, as applied to claim 1 above, LE in view of KURTH teaches a binder composition according to claim 1, wherein the binder composition has a high temperature service temperature performance grade of 34 to 122 °C as determined following AASHTO M 320-10, a low temperature service temperature performance grade of -46 to 22 °C as determined following AASHTO M 320-10, or a combination thereof (see LE at paragraph [0212], teaching that the binder composition has a penetration grade of 40/60, 50/70 or 70/100, which, per paragraph [0084] of Applicant’s specification, corresponds to a performance grade of PG 70-16, PG 64-22 or PG 58-28, respectively, i.e., a high/low temperature service temperature performance grade of 70 °C /-16 °C, 64 °C/-22 °C, or 58 °C/-28 °C, respectively).
Regarding claim 10, as applied to claim 1 above, LE in view of KURTH teaches a binder composition according to claim 1, wherein the binder composition has a performance grade as determined following AASHTO M 320-10 of PG 52-34, PG 58-28, PG 58- 34, PG 64-22, PG 64-28, PG 70-16, PG 70-22, or PG 76-22 (see LE at paragraph [0212], teaching that the binder composition has a penetration grade of 40/60, 50/70 or 70/100, which, per paragraph [0084] of Applicant’s specification, corresponds to a performance grade of PG 70-16, PG 64-22 or PG 58-28, respectively).
Regarding claim 13, as applied to claim 1 above, LE in view of KURTH teaches a binder composition according to claim 1. LE in view of KURTH further teaches an asphalt paving comprising: a binder composition according to claim 1; and aggregate (see LE at paragraphs [0001], [0011], [0043], [0052]-[0054], [0090], [0253] and [0258], teaching that the composition contains aggregates and is used to form asphalt pavement comprising aggregates).
Regarding claim 14, as applied to claim 1 above, LE in view of KURTH teaches a binder composition according to claim 1. LE in view of KURTH further teaches a roofing shingle comprising: the binder composition of claim 1; and a base material (see LE at paragraphs [0001] and [0254], teaching using the binder composition in roofing shingles).
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
Applicant argues that “the proposed modification would, at most, use Kurth’s oil as a viscosity or rheology modifier in Le’s binder composition. That is not the same as forming the presently claimed pre-blend by digesting gilsonite in the sulfurized oligomerized biorenewable oil such that the gilsonite is dissolved in that oil” (see Remarks at pg. 5).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because in the prior art the oil is used as a viscosity modifier which is not the same as forming the claimed pre-blend by digesting the gilsonite in the oil so that the gilsonite is dissolved, the Examiner respectfully disagrees. As discussed in the rejection of amended claim 1 above, the new limitation includes process steps directed toward a method of mixing which is considered product-by-process claim language which is not given patentable weight; see MPEP § 2113. Further, as discussed in the rejection above, LE explicitly teaches that the flowability of bituminous materials is enhanced and a desirable workability achieved by means of dissolving the bituminous materials, i.e., LE teaches dissolving the bituminous materials, and also discloses that the bitumen (gilsonite) and plasticity modifying agent (viscosity modifier), which is the oligomerized biorenewable oil as modified by KURTH, are blended and homogenized at a temperature of 140 to 220 °C (see LE at paragraphs [0010], [0262] and [0444]). In addition to LE’s explicit disclosure that dissolving the bituminous materials is beneficial, it would be expected that blending the gilsonite and biorenewable oil would result in dissolution of the gilsonite. The present specification also states that blending the gilsonite and oil at low RPMs and at a temperature of 155 or 180 °C for 1 or 2 hours results in the gilsonite being fully dissolved (see paragraphs [0088]-[0091]). LE explicitly teaches dissolving the bituminous material, and the binder composition of LE in view of KURTH is identical or substantially identical to the claimed binder composition, and is produced by blending/homogenizing the components at a temperature of 140 to 220 °C; therefore, the binder composition of LE in view of KURTH would be expected to have the same or very similar properties as the claimed binder composition, including dissolved gilsonite. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of LE in view of KURTH have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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