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 cancelled Claims 1-15, 20-23, 31, 33-35, 37, and 39-43, amended Claims 16 and 25, and new Claims 45-48 in the response filed on 5/26/2026.
In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
In the instant case, Claim 38 is actually amended to recite limitations from canceled Claim 37. Please note that appropriate correction(s) to the identifiers and/or markings to any changes to the limitation(s) to any claim(s) are required or the Application will be considered non-responsive.
Response to Arguments
Applicant’s arguments with respect to Claims 16-19, 24-30, 32, 36, 38, and 44-48 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim 38 is 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 38 recites the limitation "the total duration starting with the addition of the thermosetting reactive compound in (4) until the subsequent obtainment of the homogenized slurry in (5) is in the range of from 40 s to 2 minutes" (emphasis added). There is insufficient antecedent basis for this limitation in the claim.
Furthermore, it is unclear how the total duration of from 40 s to 2 minutes is satisfied in Steps (4) and (5) when it minimally requires at least 50 seconds. Further clarification and/or correction are required in the next response.
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 16-19, 24-30, 32, 36, 38, and 44-48 are rejected under 35 U.S.C. 103 as being unpatentable over WO 0130913 (“Eling et al.”), in view of WO 2018228840 (“Fleischel et al.”), in view of US Pub. No. 20110196073 (“Fee et al.”), and in view of Anonymous: “Hot Mix Asphalt Paving Handbook, AC 150/5370-14A, Appendix 1, Part II-a”, 2001, pp. 4 0-112 (“Hot-Mix Asphalt Plant Operations”).
With regards to Claims 16, 19, 27-29, 32, 36, and 44-47, Eling et al. teaches a process for preparing an asphalt mix composition, said process comprising:
providing an asphalt composition and heating said composition to a temperature in a range from about 120-150°C;
providing the claimed granular material;
providing one or more thermosetting reactive compounds;
adding the one or more thermosetting reactive compounds provided in (3) to the asphalt composition obtained in (1) forming a mixture and homogenizing the mixture for a sufficient time;
adding the mixture obtained in (4) to the granular material obtained in (2) (Abstract, Page 1: Line 22 bridging over to Page 2: Line 2, and Page 4: Line 30 bridging over to Page 5: Line 29).
Eling et al. teaches the one or more thermosetting reactive compounds comprise one or more compounds selected from the group consisting of polymeric diphenylmethane diisocyanate (MDI) having an average isocyanate functionality of at least 2.5 (Page 1: Line 30 bridging over to Page 2: Line 41). Eling et al. teaches a weight ratio of a total amount of the one or more thermosetting reactive compounds to the asphalt composition is in a range of from 0.1:99.9 to 25:75 (Page 6: Lines 16-18 and Tables 1-2). Eling et al. teaches a weight ratio of the mixture obtained in (4) to the granular material obtained in (2) is in the range of from 0.5:99.5 to 25:75 (Page 5: Lines 17-18).
While Eling et al. teaches polymeric diphenylmethane diisocyanate (MDI), Eling et al. does not teach the claimed specifics for the polymeric MDI. Eling et al. does not explicitly teach homogenizing the mixture of one or more thermosetting reactive compounds and asphalt composition for a duration in a range of from 20 to 25 s. While Eling et al. teaches that its asphalt mix composition using the conventional “hot mix” process (Page 5: Lines 17, 18, 21, and 26-29), Eling et al. does not explicitly disclose heating the granular material to a temperature in a range from 110 to 240°C, and homogenizing the mixture obtained in (4) and the granular material obtained in (2) for a duration in a range from 30 to 60 s and conducted at a temperature in a range of from 150 to 195 °C to form a slurry.
Fleischel et al. teaches an asphalt composition comprising polymeric diphenylmethane diisocyanate having an average isocyanate functionality of at least 2.5. Fleischel teaches polymeric MDI is known in the art and it may comprises varying amounts of isomers like for example 4,4’-, 2,2’- and 2,4’- isomers. Preferably the amount of 4,4’ MDI isomers is in the range of from 26% to 98%. Preferably the 2 rings content of polymeric MDI is in the range of from 20 to 62%. Generally, the purity of the polymeric MDI is not limited to any value, preferably the polymeric MDI has an iron content of from 1 to 100 ppm (Abstract and Page 4: Lines 23-38).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use Fleischel et al.’s polymeric diphenylmethane diisocyanate (MDI) in order to achieve an asphalt composition that remains more constant/stable over a broad range of temperatures and/or even improve physical properties over the temperature range the asphalt composition is subjected to (Page 4: Lines 14-18). Furthermore, one of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings relating to one polymeric MDI in an asphalt composition with another polymeric MDI in an asphalt composition.
Fee et al. teaches a mixture (asphalt binder) of an asphalt composition and one or more thermosetting reactive compounds. Fee et al. recognizes that conventional in-line mixing of the asphalt, in which is the same as Eling et al. (Page 4: Lines 18-25 in Eling et al.), is accomplished in less than 5 minutes, for example in-line mixing of the asphalt is accomplished in several seconds. Therefore, the teachings of Fee et al. overlaps with the claimed time of 20 to 25 s. It would have been obvious to one of ordinary skill in the art at the time of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549. That is, Fee et al. teaches the mixture (asphalt binder) is facilitated by increasing the temperature of the asphalt binder. To facilitate mixing, the temperature is increased to at least the softening point of the asphalt, typically from about 100°C and about 200°C. After the asphalt is heated to a temperature sufficient of mixing purposes, one or more thermosetting reactive compounds are typically introduced into the feed of asphalt to be adequately disperse throughout [0058]. In the light of the instant teachings, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to mix Eling et al.’s mixture in a sufficient amount of time of 20 to 25 seconds in order to save processing time and adequately disperse the thermosetting reactive compound [0058].
Hot-Mix Asphalt Plant Operations recognizes that a purpose of a hot mix asphalt (HMA) plant is to directly blend granular material (aggregate) and asphalt cement together at an elevated temperature to produce a homogenous asphalt paving mixture, under an oxygen containing atmosphere. The granular material is heated to a temperature in a range from 138 to 163 °C and can be used as a single material or a combination of coarse and fine aggregates. The binder material used is normally asphalt cement but may be an asphalt emulsion or one of a variety of modified materials, and it is stored at a temperature in a range from 149 to 177°C in order to be fluid enough to mix properly with the aggregate. Due to heat transfer, one of ordinary skill in the art would recognize that the homogenization of the heated granular material and heated asphalt cement overlaps with the claimed range of 150 to 190°C (Page 41: 1st paragraph on the left column; Page 68: paragraph under “Storage Tanks”, Pages 68-69: 2nd paragraph under “AGGREGATE HEATING AND DRYING, and Figs. 5-1 to 5-8). Hot-Mix Asphalt Plant Operations further teaches that the mixing time for blending of the asphalt cement with the granular material should be no more than that is needed to completely coat the granular material – usually in the range of 25 to 35 seconds (Page 42: 1st paragraph on the left column).
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 Eling et al.’s process for preparing an asphalt mix composition include heating the granular material to a temperature in a range from 138 to 163°C, and homogenizing the mixture obtained in (4) and the granular material obtained in (2) within the claimed duration range and temperature in order to obtain a uniformly mixed slurry.
With regards to Claim 17, Eling et al. teaches after (4) and prior to (5) the mixture obtained in (4) is stored at a temperature in a range from 120-150°C (Page 4: Line 20).
With regards to Claim 18, the prior art of record teaches a thermosetting reactive compound and asphalt composition are homogeneously mixed, however, does not necessarily disclose the speed/mixing rate of 100 rpm or less.
However, Fleischel et al. teaches a process for preparing an asphalt mix composition, said process comprising: providing and heating an asphalt composition, adding one or more thermosetting reactive compounds to the asphalt composition and homogenizing the mixture under 400 rpm (Page 3: Lines 7-11; Page 10: Line 36 bridging over to Page 11: Line 2). 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 speed of the mixing rate to 100 rpm or less in order to sufficiently mix the mixture thoroughly.
With regards to Claim 24, Eling et al. teaches the asphalt composition provided in (1) comprises one or more additives (Page 5: Lines 4-9).
With regards to Claims 25 and 26, Eling et al. does not teach the granular material provided in (2) comprises from 5 to 100 weight % of reclaimed asphalt pavement (RAP), and the granular material/RAP has a grain size in the range from 0.1 to 70 mm.
However, Hot-Mix Asphalt Plant Operations teaches the granular material in asphalt mix composition comprises 5 to 100 weight % of reclaimed asphalt pavement (RAP), wherein RAP has a granular size of below 2 inches (Page 52: 1st paragraph on the right column and Table 8-1 on Page 77). 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 the granular material include RAP with the conventional granular size in order to repurpose old material.
With regards to Claim 30, please see Page 4: Line 8.
With regards to Claim 38, based on the instant teachings above, the prior art of record teaches a total mixing time in steps (4) and (5) overlapping 45 to 60 seconds. While the prior art of record does not disclose the total duration starting with the addition of the thermosetting reactive compound in (4) until the subsequent obtainment of the homogenized slurry in (5), the Examiner deems that one of ordinary skill in the art would optimize the total time to efficiently process the slurry as desired and needed by the user.
With regards to Claim 48, Eling et al. teaches the asphalt composition used in its invention is any asphalt known and generally covers any bituminous compound. Further, its asphalt composition can have a penetration of 80/100 or 180/220 (Page 5: Lines 4-9).
Eling et al. does not teach its asphalt composition having the claimed needle penetration property according to DIN EN 1426.
However, Fleischel et al. teaches its asphalt composition having a needle penetration selected from list consisting of 20-30, 30-45, 35-50, 40-60, 50-70, 70-100, 100-150, 160-220, and 250-330, wherein the needle penetration is determined according to DIN EN 1426 (Page 4: Lines 4-5 and Page 12: Lines 22-28). 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 Eling et al.’s asphalt composition have the claimed needle penetration property in order to achieve a desirable asphalt mix composition for its intended application (e.g. desired climate, traffic loading, construction specifics, etc.).
Claims 16-19, 24-30, 32, 36, 38, and 44-48 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20110196073 (“Fee et al.”), in view of WO 2018228840 (“Fleischel et al.”), and in view of Anonymous: “Hot Mix Asphalt Paving Handbook, AC 150/5370-14A, Appendix 1, Part II-a”, 2001, pp. 40-112 (“Hot-Mix Asphalt Plant Operations”).
With regards to Claims 16, 19, 27-29, 32, 36, 38, and 44-47, Fee et al. teaches a process for preparing an asphalt mix composition, said process comprising:
(1) providing an asphalt composition and heating said composition to a temperature in a range from about 100 to about 200°C [0058];
(2) providing a granular material and heating said material to a temperature greater than about 150°C. Fee et al. also teaches the claimed granular material ([0061], [0062], and [0066]);
(3) providing one or more thermosetting reactive compounds;
(4) adding the one or more thermosetting reactive compounds provided in (3) to the asphalt composition obtained in (1) forming a mixture and homogenizing the mixture for less than 5 minutes. In certain embodiments, homogenizing the mixture is accomplished in several seconds. Therefore, the teachings of Fee et al. overlaps with the claimed time of 20 to 25 s. It would have been obvious to one of ordinary skill in the art at the time of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549;
(5) adding the mixture obtained in (4) to the granular material obtained in (2) forming a slurry and homogenizing the slurry at a temperature greater than 150°C ([0003], [0017], [0039], [0040], [0058], [0061], and [0066]).
Fee et al. teaches its one or more thermosetting reactive compounds is epoxy resins, wherein a weight ratio of a total amount of the one or more thermosetting reactive compounds to the asphalt composition is in a range of about 0.5:99.5 to about 20:80 ([0040] and [0041]). Fee et al. teaches the granular material obtained in (2) accounts at least about 90% by volume of the asphalt mix composition, which overlaps Applicant’s claimed weight ratio of the mixture obtained in (4) to the granular material obtained in (2) [0061].
Fee et al. does not teach its one or more thermosetting reactive compounds comprise polymeric diphenylmethane diisocyanate (MDI) having an average isocyanate functionality of from 2.5 to 2.9 with the claimed specifics. While Fee et al. teaches that its asphalt mix composition using the conventional “hot mix” process [0066], Fee et al. does not explicitly disclose homogenizing the mixture obtained in (4) and the granular material obtained in (2) for a duration in a range from 30 to 60 s to form a slurry.
Fleischel et al. teaches an asphalt composition comprising polymeric diphenylmethane diisocyanate having an average isocyanate functionality of at least 2.5 and epoxy resins. Fleischel teaches polymeric MDI is known in the art and it may comprises varying amounts of isomers like for example 4,4’-, 2,2’- and 2,4’- isomers. Preferably the amount of 4,4’ MDI isomers is in the range of from 26% to 98%. Preferably the 2 rings content of polymeric MDI is in the range of from 20 to 62%. Generally, the purity of the polymeric MDI is not limited to any value, preferably the polymeric MDI has an iron content of from 1 to 100 ppm (Abstract, Page 3: Lines 35-37, and Page 4: Lines 23-38).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to substitute Fee et al.’s epoxy resins for Fleischel et al.’s polymeric diphenylmethane diisocyanate (MDI) in view of the art recognized functional equivalence of the two materials. Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950). Further, it would also have been obvious to use Fleischel et al.’s polymeric diphenylmethane diisocyanate (MDI) in order to achieve an asphalt composition that remains more constant/stable over a broad range of temperatures and/or even improve physical properties over the temperature range the asphalt composition is subjected to (Page 4: Lines 14-18).
Hot-Mix Asphalt Plant Operations recognizes that a purpose of a hot mix asphalt (HMA) plant is to directly blend granular material (aggregate) and asphalt cement together at an elevated temperature to produce a homogenous asphalt paving mixture, under an oxygen containing atmosphere. The granular material used can be a single material or a combination of coarse and fine aggregates. The binder material used is normally asphalt cement but may be an asphalt emulsion or one of a variety of modified materials (Page 41: 1st paragraph on the left column; Figs. 5-1 to 5-8). Hot-Mix Asphalt Plant Operations further teaches that the mixing time for blending of the asphalt cement with the granular material should be no more than that is needed to completely coat the granular material – usually in the range of 25 to 35 seconds (Page 42: 1st paragraph on the left column). 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 Fee et al.’s process for preparing an asphalt mix composition include homogenizing the mixture obtained in (4) and the granular material obtained in (2) for a duration as claimed in order to obtain a uniformly mixed slurry.
With regards to Claim 17, Fee et al. teaches after (4) and prior to (5) the mixture obtained in (4) is stored at a temperature overlapping Applicant’s claimed range ([0001] and [0058]).
With regards to Claim 18, the prior art of record teaches a thermosetting reactive compound and asphalt composition are homogeneously mixed, however, does not necessarily disclose the speed/mixing rate of 100 rpm or less.
However, Fleischel et al. teaches a process for preparing an asphalt mix composition, said process comprising: providing and heating an asphalt composition, adding one or more thermosetting reactive compounds to the asphalt composition and homogenizing the mixture under 400 rpm (Page 3: Lines 7-11; Page 10: Line 36 bridging over to Page 11: Line 2). 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 speed of the mixing rate to 100 rpm or less in order to sufficiently mix the mixture thoroughly.
With regards to Claim 24, Fee et al. teaches the asphalt composition provided in (1) comprises one or more additives ([0050] and [0051]).
With regards to Claim 25, Fee et al. does not teach the granular material provided in (2) comprises from 5 to 100 weight % of reclaimed asphalt pavement (RAP).
However, Hot-Mix Asphalt Plant Operations teaches the granular material in asphalt mix composition comprises 5 to 100 weight % of reclaimed asphalt pavement (RAP), wherein RAP has a granular size of below 2 inches (Table 8-1 on Page 77). 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 the granular material include RAP in order to repurpose old material.
With regards to Claim 26, Fee et al. teaches the granular material provided in (2) displays a grain size within Applicant’s claimed range [0064].
With regards to Claim 30, please see paragraph [0004].
With regards to Claim 38, based on the instant teachings above, the prior art of record teaches a total mixing time in steps (4) and (5) is 45 to 60 seconds. While the prior art of record does not disclose the total duration starting with the addition of the thermosetting reactive compound in (4) until the subsequent obtainment of the homogenized slurry in (5), the Examiner deems that one of ordinary skill in the art would optimize the total time to efficiently process the slurry as desired and needed by the user.
With regards to Claim 48, Fee et al. recognizes that asphalts or bituminous materials are classified as solids, semi-solids, or liquids using a penetration test for consistency or viscosity. In this classification, solid materials are those having a penetration of not more than 1 millimeter when a load of 100 grams is applied for 5 seconds while at 25° C. and semi-solids are those having a penetration of more than 1 millimeter when a load of 50 grams is applied for 5 seconds while at 25° C. Semi-solid and liquid asphalts predominate in commercial practice [0017].
Fee et al. does not teach its asphalt composition having the claimed needle penetration property according to DIN EN 1426.
However, Fleischel et al. teaches its asphalt composition having a needle penetration selected from list consisting of 20-30, 30-45, 35-50, 40-60, 50-70, 70-100, 100-150, 160-220, and 250-330, wherein the needle penetration is determined according to DIN EN 1426 (Page 4: Lines 4-5 and Page 12: Lines 22-28). 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 Fee et al.’s asphalt composition have the claimed needle penetration property in order to achieve a desirable asphalt mix composition for its intended application (e.g. desired climate, traffic loading, construction specifics, etc.).
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 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
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