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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/22/2026 has been entered.
Election/Restrictions
Claims 21-22 and 25-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/14/2025.
Response to Amendment
The amendment filed on 1/22/2026 has been entered. Claim(s) 15 is/are currently amended. Claim(s) 1-14, 17-18, 23 and 28 has/have been cancelled. Claim(s) 15-16, 19-22 and 24-27 is/are pending with claim(s) 21-22 and 25-27 withdrawn from consideration. Claim(s) 15-16, 19-20 and 24 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 1/22/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Mohanta does not teach or suggest the starting asphalt performance grades as recited in claim 15. Further, claim 15 recites 94 wt. % to 99 wt.% of a starting asphalt. Mohanta discloses 30-90 % weight of asphalt, a disclosure that is further removed and does not overlap with 94 wt. % to 99 wt.% of claim 15.
In response, the starting asphalt performance grades is disclosed by Hacker as stated in the 103 rejection.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Take In re Aller as a comparison: a temperature of 40-80°C and acid concentration of 25-70% was rejected over a reference teaching a temperature of 100°C and an acid concentration of 10% (see MPEP 2144.05.I). The acid concentration differed from the claimed lower limit by 60%. In the current case, claim 15 recites 94 wt. % to 99 wt.% of a starting asphalt. Mohanta discloses 90 % weight of asphalt. The prior art’s 90% differs from the claimed lower limit of 94% by 4%, which is significantly lower than the In re Aller case. Therefore, the examiner reasonably considers the prior art 90% sufficiently close to the claimed 94% that one of ordinary skill in the art would reasonably expect to obtain the same properties. Besides, applicant did not show that the claimed range of 94-99% is critical to generate unexpected result.
Applicant argued that the technical field of Hacker is an asphalt composition having non-epoxidized oil and a polyolefin. See paragraph [0002] of Hacker. Clearly, Hacker is not in the field of the pending claims for an asphalt composition comprising a thermosetting reactive compound as defined in claim 15. See also page 1, lines 5-6 of the corresponding W02021/148418. The non-epoxidized oil and polyolefin of Hacker do not suggest the thermosetting reactive compound of the pending claims that are compounds having an isocyanate moiety. That is, a non-epoxidized oil and a polyolefin are not isocyanates.
In response, both Mohanta and Hacker are in the technical field of an asphalt composition used in pavement application, as stated in the 103 rejection. Just because Mohanta and Hacker teaches different composition does not mean they are not in the same field of endeavor. Both Mohanta’s and Hacker’s composition comprises asphalt. Hacker teaches the performance grade of the asphalt. It would have been obvious to one of ordinary skill in the art at the time of filing to use the same performance grade asphalt in Mohanta’s composition (see MPEP 2144.07). Applicant did not explain why Hacker’s non-epoxidized oil and polyolefin have to be incorporated into Mohanta’s composition when one of ordinary skill in the art only uses the performance grade of the asphalt from Hacker.
Applicant argued that the particular problem addressed by Hacker is improvement of both low and high temperature performance. See end of paragraph [0007] and Table 1 of Hacker. That is, Hacker is not reasonably pertinent to the problems addressed by the inventors of the pending claims.
In response, a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem). In re Bigio, 381 F.3d, MPEP 2141.01(a).I. Mohanta and Hacker are in the field of endeavor as the claimed invention, that is, an asphalt composition used for pavement application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 15-16, 19-20 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mohanta et al (US 20180016437 A1) in view of Hacker et al (US 20200002229 A1).
Regarding claims 15-16 and 19-20, Mohanta teaches an asphalt composition comprises 30-90 wt% of asphalt, 1-50 wt% of crumb rubber, 0.01-20 wt% of PET derivatives, and preferably 0.1-10 wt% of bi-functional reactive compound [0019, 0026]. The bi-functional reactive compound includes aliphatic bi-functional reactive compounds such as isophorone disocyanate (IPDI) [0025, claim 12], which reads on the claimed aliphatic isocyanate as specified in claims 19-20.
It would have been obvious to one of ordinary skill in the art at the time of filing to select IPDI as the bi-functional reactive compound in Mohanta’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The amount of 0.1-10 wt% overlaps the recited 0.1-6.0 wt% in claim 15 and overlaps the recited 1-5 wt% in claim 16. A prima facie case of obviousness exists where the claimed ranges overlap ranges disclosed by the prior art (MPEP 2144.05.I).
The upper limit of 30-90 wt% of asphalt in Mohanta is sufficiently close to the claimed lower limit of 94 wt% that one of ordinary skill in the art would prima facie expect a composition based on these amounts to have the same properties. It would have been obvious to one of ordinary skill in the art at the time of filing to select amounts within the claimed range based on the close proximity to the prior art range and the reasonable expectation of obtaining a product having the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Mohanta is silent about the starting asphalt performance grade.
In the same field of endeavor, Hacker teaches an asphalt composition, including asphalt of performance grade (PG) 64-16, 64-22, 70-16, 70-22, determined according to AASHTO-M320 [abstract, 0013].
It would have been obvious to one of ordinary skill in the art at the time of filing to select the above PG grade asphalt in Mohanta’s composition, as they are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Regarding claim 24, Mohanta does not teach any of the recited granular material in the asphalt composition. Therefore, Mohanta’s composition is expected to contain none of the recited granular material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762