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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/11/2025 has been entered.
Response to Amendment
Examiner acknowledges cancelled Claims 1-15, 20-23, 33, 34, 39, and 41, amended Claim 16, and new Claim 43 in the response filed on 12/11/2025.
Response to Arguments
Applicant's arguments filed 12/11/2025 have been fully considered but they are not persuasive.
Applicant amended claim 16 to recite that (i) homogenizing the mixture in step (4) is from 20 to 40 s and (ii) homogenizing the slurry in step (5) is from 20 to 80 s. As a result claim 16 more closely aligns with the Examples of the present application, which demonstrate unexpected benefits.
Applicant states “Thus, it has again quite surprisingly been found that even after an extremely short mixing step after addition of the thermosetting reactive compound of only a few seconds, the resulting asphalt displays quality which is comparable to that of asphalt which was subject to 7 h of mixing. This is highly unexpected considering the enormous difference in the duration of the mixing stage between the inventive and the comparative example.”
However, Applicant’s arguments are unpersuasive. Applicants are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results must be provided by Applicants. A mere pointing to data requiring the Examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D'Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
While the Examiner acknowledge Applicants’ Table 3 and statement, Applicants have not necessarily provide evidence that forming a homogenizing mixture by adding one or more thermosetting reactive compounds to the asphalt composition in a mixing time of 20 to 40 s, and homogenizing the slurry in step (5) from 20 to 80 s are critical in providing an unexpected result. The Examiner is also unclear what the argued unexpected result is. Applicant’s Example 4 merely states that its process for preparing an asphalt mix composition “leads to a product with excellent properties” without disclosing what the property is. Furthermore, the data set forth in Table 3 and Example 4 are not commensurate in scope with the instant claims.
Eling and Fee, respectively, discloses short mixing times and not necessarily subjected to “7 h of mixing”. Applicant has not provided enough evidence/comparative examples that isolate the mixing time variables as being critical, and so fails to provide evidence against the closest prior art, Eling and Fee. For the reasons set forth above, unexpected results have not been persuasively demonstrated.
Applicant further argues that Fee et al. discloses rapid in-line mixing of asphalt compositions, specifically in the range of 1-10 seconds. Eling et al. provides a general disclosure related to asphalt mixing, but does not specify any concrete mixing times within the range now claimed. Neither Fee nor Eling provides any examples or disclosures.
However, Applicant’s arguments are unpersuasive. 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).
In that regard, Fee et al. teaches “in-line mixing of the asphalt is accomplished in less than 5 minutes, for example, in line mixing of the asphalt is accomplished in several seconds [0058]. That is, Fee et al. also recognizes that its mixing time is extremely short. Eling et al. teaches mixing for a sufficient time. Examples include between 1 and 120 minutes (Pages 4 and 5).
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Claim Objections
Claim 25 is objected to because of the following informalities: To promote clarity, please amend the limitation “the granular material provided in” to “the granular material provided in (2)”. Appropriate correction is required.
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, 17, 19, 24-32, 35-38, 40, 42, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over WO 0130913 (“Eling 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. 40-112 (“Hot-Mix Asphalt Plant Operations”).
With regards to Claims 16, 19, 27-29, 31, 32, 35, 36, 38, 40, 42, and 43, 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 polyisocyanates having an average isocyanate functionality of at least 2.5 (Pages 2-3 and Claim 1). 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).
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 130 to 195 °C to form a slurry.
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 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 37, based on the instant teachings above, the prior art of record teaches a total mixing time in steps (4) and (5) overlapping 40 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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Eling et al., in view of Fee et al., and in view of Hot-Mix Asphalt Plant Operations, as applied to Claim 16 above, and further in view of WO 2018228840 (“Fleischel et al.”).
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.
Claims 16, 17, 19, 24-32, 35-38, 40, 42, and 43 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20110196073 (“Fee et al.”), in view of in view of WO 0130913 (“Eling 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, 31, 32, 35, 36, 38, 40, 42, and 43, 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 one or more polyisocyanates having an average isocyanate functionality of from 2.6 to 2.8. 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.
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 a 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, and 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. further teaches the one or more thermosetting reactive compounds comprise one or more compounds selected from the group consisting of polyisocyanates having an average isocyanate functionality of at least 2.5 (Pages 2-3 and Claim 1). 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). 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 one or more thermosetting reactive compounds comprise one or more polyisocyanates having an average isocyanate functionality of from 2.6 to 2.8 to improve the rheological and mechanical properties of the asphalt (Page 3: Lines 5-16).
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 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 37, based on the instant teachings above, the prior art of record teaches a total mixing time in steps (4) and (5) is 40 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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Fee et al., Eling et al., and in view of Hot-Mix Asphalt Plant Operations as applied to Claim 16 above, and further in view of WO 2018228840 (“Fleischel et al.”).
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.
Conclusion
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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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785