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 08/07/2026.
Claims 1-3, 5-8, 10, 12 and 15 are presently pending and under examination; claims 4, 9, 11, 13-14, are canceled; claims 1-3, 5, 7-8 and 12 are amended.
The objections to claims 2, 3, 5, 7 and 8 are withdrawn in light of the amendments to the claims.
The rejections of claims 1-3, 5-8, 10, 12 and 15 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims; the rejection of claim 11 is moot as this claim has been canceled.
The 35 U.S.C. 103 rejection of claims 1-3, 5-8, 10, 12 and 15 over Gonzalez Leon is maintained; the rejection of claim 11 is moot as this claim has been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 5-8, 10, 12 and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 1, it is noted that the amendment to claim 1 recites “at least one antioxidant that is a phenol, a phosphite, a hindered amine, a UV absorber, a metal deactivator or mixtures thereof” (see claim 1 at lines 5-6). As such, while the Specification discloses that the antioxidant may be phenolic compounds (i.e., phenols), UV absorbers, metal deactivators, phosphite derivatives, and hindered amine derivatives, the Examiner has been unable to locate any disclosure that would support the antioxidant being a phosphite or a hindered amine. The specification discloses phosphite derivatives and hindered amine derivatives at paragraphs [0076]-[0077], but the Examiner could not find any mention of phosphite or hindered amine.
Claims 2-3, 5-8, 10, 12 and 15 are included herein as each depends from claim 1 which is rejected for the reasons set forth above.
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, 5-8, 10, 12, and 15 remain rejected under 35 U.S.C. 103 as being unpatentable over Gonzalez Leon et al. (U.S 2014/0230693).
Regarding claim 1, Gonzalez Leon et al. (hereinafter “Gonzalez Leon”) teaches an asphalt mix composition and process comprising at least one recycled bituminous product and at least one surfactant as a rejuvenator (meeting claimed “at least one anti-ageing additive”) and a rejuvenating oil (Paragraph 0128; meeting claimed ‘at least one antioxidant’ considering the BRI of ‘antioxidant’; Examiner notes that various additional materials are described as suitable additives in Paragraphs 0101-0113 and that many of these could also be considered to meet the BRI of ‘antioxidant’) (Paragraph 0131) wherein the rejuvenating oils are, e.g., synthetic and/or natural phenolic compounds (Paragraph 0129; meeting claimed “at least one antioxidant that is a phenol”).
Specifically, the surfactant (meeting claimed ‘additive’) is described as Formula 1 (Paragraph 0062) and further that:
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Gonzalez Leon further teaches that the additive is included from 0.05 to 10 wt% (Paragraph 0052).
Gonzalez Leon further teaches the act of combining the components (Paragraph 0125 and 0126). Thus, the act of combining meets the claimed ‘adding’ such that Gonzalez Leon teaches a process as claimed that would also result in the delayed ageing of bitumens absent evidence to the contrary. While Gonzalez Leon does not expressly state that “delayed ageing’ is achieved, it has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Thus, the combination of the components taught by Gonzalez Leon would be expected to achieve the claimed intended use, i.e. delayed ageing of bitumens.
Regarding claim 2, Gonzalez Leon teaches the process as applied to claim 1 above and further teaches that the additive is of Formula 1, A denotes a hydrogen (Paragraph 0063), B represents a bond or a divalent group containing at least one alkylene oxide repeating unit (Paragraphs 0065 and 0069) and d is 1 and Z may be a hydrogen (Paragraph 0068).
Regarding claim 3, Gonzalez Leon teaches the process as applied to claim 2 above and further teaches that the additive is of Formula 1, A denotes a hydrogen (Paragraph 0063), B represents a bond or a divalent group containing at least one alkylene oxide repeating unit, specifically EO and PO with 4 to 500 repeating units, (Paragraphs 0065, 0069, and 0070) and d is 1 and Z may be a hydrogen (Paragraph 0068).
Regarding claim 5, Gonzalez Leon teaches the process as applied to claim 1 above and further teaches that the additive is included from 0.05 to 10 wt% (Paragraph 0052).
Regarding claim 6, Gonzalez Leon teaches the process as applied to claim 1 above and further teaches that fresh or virgin bitumen is known and/or used (Paragraphs 0014 and/or 0046). Fresh or virgin bitumen would be recognized as ‘neat’ by POSITA.
Regarding claim 7, Gonzalez Leon teaches the process as applied to claim 1 above and further teaches that fresh or virgin bitumen is known and/or used (Paragraphs 0014 and/or 0046). Fresh or virgin bitumen would be recognized as ‘neat’ by POSITA. Gonzalez Leon also teaches that aged binder in the RAP can be used (Paragraphs 0012, 0014, and 0033). The combination of both fresh and recycled bitumen sources would be obvious to POSITA in view that it is well known to try to recycle or reuse non-renewable resources such as asphalt and bitumen (see Paragraph 0010).
Regarding claim 8, Gonzalez Leon teaches the process as applied to claim 1 above and further teaches that aged binder in the RAP can be used (Paragraphs 0012, 0014, and 0033).
Regarding claim 10, Gonzalez Leon teaches the process as applied to claim 1 above and further teaches that the composition can be in the form of an emulsion (Paragraphs 0051 and/or 0142).
Regarding claim 12, Gonzalez Leon teaches the process as applied to claim 1 above and further teaches that the additive is included from 0.05 to 10 wt% (Paragraph 0052 and 0130) which meets the claimed range.
Regarding claim 15, Gonzalez Leon teaches the process as applied to claim 1 above and further teaches that the composition is used for road coverings, sidewalks, aircraft runways, cycle paths, and parking areas (Paragraphs 0002, 0004, and 0034). Thus, the material containing the bitumens is and/or would be readily and predictably selected from roads, sidewalks, aircraft runways, cycle paths, and parking areas.
Response to Arguments
Applicant's arguments filed 08/07/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(a) for claims 1-3, 5-8, 10, 12 and 15 as set forth above.
In response to Applicant’s argument that Gonzalez Leon does not disclose the recited antioxidants of claim 1 as amended, the Examiner respectfully disagrees. As discussed in the rejection of amended claim 1 above, Gonzalez Leon explicitly discloses that the rejuvenating oils (meeting the limitation of “antioxidant” as claimed) can be synthetic and/or natural phenolic compounds, i.e., “a phenol” as claimed.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
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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