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
This office action is in response to the Amendment filed on 01/23/2026.
Claims 1-3, 5-10 and 13-14 are presently pending and are 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The 35 U.S.C. 103 rejection of claims 1-3, 5-10 and 13-14 over LE in view of FOREST is withdrawn in light of the amendments to the claims.
New grounds of rejection are present herein in light of the amendments to the claims.
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.
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).
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)”.
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 01/23/2026 with respect to claim(s) 1-3, 5-10 and 13-14 have been considered but are moot because the arguments do not apply to the new combination of references as set forth in the grounds of rejection above.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 103 for claims 1-3, 5-10 and 13-14 over LE in view of KURTH as set forth above.
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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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