DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/23/2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted 12/29/2025 has been considered by the examiner.
Response to Amendment and Status of Claims
Applicant’s amendment, filed 12/23/2025, has been entered. Claim 1 is amended, claims 4, 9, 13, and 14 are or were previously cancelled, and no claims are newly added. Accordingly, claims 1-3, 5-8, 10-12, and 15 are pending and considered in this Office Action.
Claim Objections
Claims 2, 3, 5, 7, and 8 are objected to because of the following informalities: instances of ‘the additive’ should be ‘the at least one anti-ageing additive’ or similar language. It is noted that the antecedent basis is not lacking or unclear because of ‘the additive’ but would be more consistent throughout the claim set if recited as such. Appropriate correction is required.
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.
Claims 1-3, 5-8, 10-12, and 15 are 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 1 was amended to limit the ‘at least one anti-ageing additive’ to a compound of Formula (1) only. However, details to deleted Formula (2) remain in the claim.
Claims 2 and 3 require features that were removed from claim 1 such that the metes and bounds of the claim are unclear. See at least ‘group A denoting a hydrogen atom,…”.
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 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.
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’) (Paragraph 0131).
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).
Alternatively, and provided in the interest of compact prosecution, even if Applicant does not believe the ‘rejuvenating oil’ is an 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’.
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 11, Gonzalez Leon teaches the process as applied to claim 1 above. The rejuvenating oil of Gonzalez Leon would meet the BRI of a primary and/or secondary antioxidant because Paragraph 0129 describes the rejuvenating oil as having natural phenolic compounds which the spec identifies as an antioxidant (Paragraph 0076).
Regarding claim 12, Gonzalez Leon teaches the process as applied to claim 1 above and further teaches that the surfactant and rejuvenating oil (i.e. anti-ageing additive to antioxidant) ranges between 1/99 and 50/50 (Paragraph 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 12/23/2025, have been fully considered but they are not persuasive.
With regard to Applicant’s argument that the Gonzalez Leon surfactant promotes increased use of aged and/or recycled bitumen in asphalt mixes while the instant application utilizes an additive to delay or retard the aging process of bitumen in general, this argument is respectfully not found persuasive because the additives as claimed and as taught by Gonzalez Leon are the same. 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).
Further, "the 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738