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 and Status of Claims
Applicant’s amendment, filed 10/17/2025, has been entered. Claims 60 and 65 are amended, claims 70 and 77 are cancelled, and no claims are newly added. Accordingly, claims 60-69, 71-76, 78, and 79 are pending and considered in this Office Action.
Applicant’s amendment has obviated the previous rejection under 102(a)(1) over the teachings of Evans.
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 71-76 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.
Claims 71-76 depend from directly or indirectly from cancelled claim 70 and thus are rejected as incomplete (MPEP 608.01(n)(V)).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code, Graham v. Deere factual inquiries, and presumption of common ownership not included in this action can be found in the prior Office action.
Claims 60-69, 71-76, 78, and 79 are rejected under 35 U.S.C. 103 as being unpatentable over Evans et al. (WO 92/18558).
Regarding claim 60 and 62-65, Evans et al. (hereinafter “Evans”) teaches a polyurethane-containing sealant and coating (Title) with a specific example including a UUD containing H12MDI (i.e. an isocyanate; meeting instant dependent claims 62-65) (Page 22 Example A-2) that is added to an asphalt emulsion (Page 25, Example C-1). Evans teaches various formulations of the combined materials where Example E-11 includes 5 parts by weight UUD, 5 parts latex, and 90 parts asphalt emulsion (meeting claimed percentages). The asphalt emulsion and UUD are water-based (see Page 15 lines 11-14, Page 16 lines 3-5, Page 17 lines 1-20) and, thus, meet the claim limitation requiring the composition to include water.
Evans further teaches that copolymeric materials such as styrene-butadiene copolymers may be included (Page 19 lines 2-6; meeting claimed ‘copolymer derived from one or more ethylenically unsaturated monomers selected from the group consisting of styrene, butadiene, met(acrylate) monomers, vinyl acetate, vinyl ester monomers, and combinations thereof) but does not describe the amount of copolymer.
However, it would be well within the routine skill of an ordinary artisan to determine the appropriate amount of copolymer added to the asphalt composition such that the copolymer is present in an amount of from 0.5% to 10% by weight based on the weight of the asphalt emulsion. Notably, there is no evidence provided that demonstrates that the range of “from 0.5% to 10%” copolymer is critical or produces unexpected results.
It would be obvious to follow the teachings of Evans such that the asphalt emulsion includes copolymers such as styrene-butadiene because Evans expressly teaches that such materials may be included. Additionally, Evans states that the compositions are “likewise useful in coating and/or sealing an aging, chalky, rough, powder and/or flexible surface in need of such coating or sealing, particularly roofing and pavement surfaces” (Page 15 lines 15-17) and that “employing these UUDS… results in fairly dramatic improvements in performance of the composition so modified” (Page 15 lines 21-24).
It has been held that ‘where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Lastly, in KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art”.
Regarding claim 61, Evans teaches the emulsion as applied to claim 60 above and further teaches that the asphalt is present in an amount of 90 parts (Example E-11) which meets the claimed range of from 50 to 99% by weight, based on the weight of the asphalt emulsion.
Regarding claim 66, Evans teaches the emulsion as applied to claim 60 above and further teaches that isocyanates such as 1,5-naphthalene diisocyanate (Page 9 line 23) are suitable. The selection of 1,5-naphthalene diisocyanate would result in the selection of an isocyanate comprising an aromatic group.
While Example A-2 of Evans utilized H12MDI, it would be obvious to substitute a different isocyanate that is also taught by Evans to be suitable such as 1,5-naphthalene diisocyanate.
It has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Regarding claim 67, Evans teaches the emulsion as applied to claim 60 above but is silent to the express reactions of the components within the composition.
However, it is prima facie expected that the isocyanate would react with the asphalt to form a polymer network in the asphalt emulsion absent evidence to the contrary.
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, it has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 68, Evans teaches the emulsion as applied to claim 60 above and further teaches that the isocyanate is present in an amount of 5 parts (Example E-11) which meets the claimed range of from 0.05% to 45%, based on the weight of the asphalt emulsion.
Regarding claim 69, Evans teaches the emulsion as applied to claim 60 above and further teaches that the term asphalt includes all useful bituminous materials (Page 17 line 1) and specifically gives examples of material such as straight run asphalt, which would meet the BRI of ‘unmodified asphalt’.
Regarding claim 71, Evans teaches the emulsion as applied to claim 60 above and further teaches that copolymeric materials such as styrene-butadiene copolymers may be included (Page 19 lines 2-6).
Regarding claim 72, Evans teaches the emulsion as applied to claim 70 above but fails to provide an express teaching of the particular percentage of the copolymeric constituents such that the styrene-butadiene is from 20:80 to 80:20.
However, styrene-butadiene copolymers are well known and conventional.
The particular ratio of styrene to butadiene would not be expected to patentably distinguish the claimed asphalt emulsion.
It has been held that ‘where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 73 and 75, Evans teaches the emulsion as applied to claim 70 above and further teaches that polymers can be prepared with a polyhydric alcohol and a polycarboxylic acid (Page 8 lines 5-16).
Additionally Example B2 of Evans uses a modified styrene-acrylic dispersion which would provide/require acrylic monomers to create the copolymer.
Regarding claim 74, Evans teaches the emulsion as applied to claim 73 above but is silent to the copolymer comprising from 0.5 to 10% by weight carboxylic acid monomers.
However, carboxylic acid monomers are well known as is the modification of asphaltic material with carboxylic acid monomers. Thus, it would be well within the routine skill of an ordinary artisan to determine the appropriate amount of carboxylic acid monomers.
Additionally, there is no evidence provided that demonstrates that the range of 0.5-10 wt% carboxylic acid monomers is critical or produces unexpected results.
Regarding claim 76, Evans teaches the emulsion as applied to claim 70 above and further teaches the inclusion of styrene-butadiene copolymer (Page 19 line 6) which is known to have a glass transition temperature of -55 to -35C which lies within the claimed range.
Regarding claims 78 and 79, Evans teaches the emulsion as applied to claim 60 above and further teaches that the urethane prepolymer includes polyol such as polyoxyalkylene polyether polyols as well as glycols (Page 7 lines 4-25).
Response to Arguments
Applicant's arguments filed 10/17/2025 have been fully considered but they are not persuasive.
It is noted that the features of claim 70 have been amended into independent claim 60 but the language “wherein the copolymer is present in an amount of from 0.5% to 10% by weight based on the weight of the asphalt emulsion” is new.
Applicant argues that the claimed invention is patentably distinguished because of the inventions “critical combination” of i) an asphalt content of 50% by weight or greater, ii) an isocyanate content of 0.05% by weight or greater, and iii) the presence of a copolymer derived from ethylenically unsaturated monomers selected from the group consisting of styrene, butadiene, meth(acrylate) monomers, vinyl acetate, vinyl ester monomers, and combinations thereof” (Page 2 of Remarks). However, the data Applicant relies upon from the specification at Tables 1 and 2 are not commensurate in scope with the features of independent claim 60 for at least the reason that Applicant selects examples with at least 2% isocyanate while the claim merely requires at least 0.05% isocyanate. Additionally, all the other examples in Table 1 are 0% isocyanate. To make the record clear, Table 1 only shows examples having 0% isocyanate and 2% isocyanate. This is not sufficient to demonstrate criticality across the entirely claimed range.
Applicant has the burden of explaining proffered data and a mere allegation that there is a synergistic effect is not persuasive.
Lastly, the claims do not require performance characteristics or other properties of the resultant asphalt emulsion.
Conclusion
Reproducing the references previously listed as pertinent prior art from the Non-Final Office Action: Bonnet (U.S. 2005/0124736) directed to a compositions based on aqueous dispersions of bitumen and polyurethane, Hernandez (U.S. 2006/0276559) directed to water-based asphalt coating composition, Rajalingam (U.S. 6,271,305) directed to bituminous polyurethane interpenetrating elastomeric network developed by in situ reaction of polyols with different isocyanates and polyisocyanates in bituminous materials, Demangeon (U.S. 4,772,648) directed to cationic emulsions of bituminous binders and polyurethane thickening agent, and Fleischel (WO 2020/126585) directed to an asphalt composition comprising 0.1 to 10 wt% monomeric MDI.
Additionally, the prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S. 4,548,966 directed to an asphalt emulsion containing diisocyanate, styrene-butadiene latex, as well as other copolymers and U.S. 7,491,756 example screenshot below with highlights applied:
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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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738