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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-7, in the reply filed on 02/18/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/18/2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/16/2022 has been considered by the examiner.
Supplemental Response filed 03/02/2026
Applicant’s supplemental response addressing the note at Item 4 in the Restriction Requirement mailed 08/20/2025 is acknowledged. Applicant’s response states that Examiner “has considered the term bitumen in a manner that is inconsistent with its accepted meaning” (Page 1 of the supplemental response filed 03/02/2026) and “incorrectly applying a USGS (U.S. Geological Survey) definition which pertains to earth sciences and the extractive industry” (Page 6 of the supplemental response filed 03/02/2026).
Applicant dismisses the evidence from the USGS that “bitumen has an API of less than 10”.
Applicant does not provide any evidence that the instant specification provided a special definition of “bitumen”.
Applicant attempts to provide definitions and references that establish ‘asphalt’ and ‘bitumen’ as synonyms by pointing to those definitions and states that “nowhere does ASTM D8 mention a gravity limit of API 10”.
Applicant does not address the API Gravity definition provided in ASTM D8.
In the interest of the clarity of the record, ASTM D8 expressly defines “API Gravity” as follows:
PNG
media_image1.png
124
516
media_image1.png
Greyscale
Examiner does not (and did not) assert that asphalt and bitumen are not synonymous and the Restriction Requirement mailed 08/20/2025 did not assert that in any way.
The issue, which the supplemental response does not address, is that the property features claimed by Applicant are not ‘bitumen’.
As it stands, these properties would be expected to describe a petroleum product that is a crude oil such as a heavy oil.
There is no special definition of ‘bitumen’ provided by Applicant and so the claims are unclear. An indefiniteness rejection follows below.
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 1-7 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 requires “a bitumen having a dynamic viscosity equal or greater than 35,000 cP (35 Pas), measured at 60C, and an API gravity equal to or greater than 10 degrees”. However, the dynamic viscosity range and API gravity range would not be understood to be ‘bitumen’ within the art and Applicant has not provided a special definition or any other disclosure to put the public on notice that Applicant is acting as their own lexicographer to redefine ‘bitumen’.
Examiner notes the USGS reference that was provided in the Restriction Requirement mailed 08/20/2025 and further provides the following screenshot of an article in ‘petro-online.com’ Petro Industry News:
PNG
media_image2.png
628
1146
media_image2.png
Greyscale
Please note that this source particularly states that bitumen and/or extra heavy oil has an API gravity of below 10.0 degrees.
Thus, there is a conflict between the Applicant’s usage of the term “bitumen having… an API gravity equal to or greater than 10 degrees” and the accepted art usage of ‘bitumen’ that has an API gravity below 10 degrees. A review of the specification does not show that Applicant has provided notice to redefine the term.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Cox et al. (U.S. 2016/0122507; of record) in view of Cui et al. (WO 2015023842; of record).
Regarding claims 1, 4, and 5, Cox teaches (Example 1) a mixture of about 75 wt% bitumen and about 22 wt% of a gas oil wherein the base oil has an API of 31.8. Cox further teaches the inclusion of various additives including one or more glycerides and one or more fatty acids (Paragraph 0015; particularly, “ …diglycerides can include any two fatty acids covalently bonded to a glycerol molecule through ester linkages” meeting claimed ‘polyol’; glycerol is also expressly recited in instant dependent claim 5 and possesses a straight chain and from 3 to 6 carbons as claimed in instant dependent claim 4). Further, Cox teaches that the additive may be included in an amount of about 3 wt% (Example 1) which lies within the claimed range of about 2 to about 6 wt%.
Paragraph 0025 explains that ‘bitumen’ includes any type of bitumen or bituminous material, for example, bitumen that occurs in nature, bitumen recovered during the processing of crude oil and/or other heavy hydrocarbons,…vacuum tower bottoms, atmospheric tower bottoms or a mixture thereof and can have a viscosity such as about 400 poise (equivalent to 40,000 cP).
Cox further teaches that the asphalt binder can be in the form of a cationic, anionic, or non-ionic asphalt emulsion with includes a soap solution to provide the emulsified material (Paragraph 0053; soap solution meeting claimed ‘surfactant’).
However, Cox does not teach the amount of the surfactant or the inclusion of a mineral acid to bring the composition’s pH to the range of from about 2 to about 4, and water.
Cui teaches a method of viscosity reduction of heavy oils include CNSL (i.e. cashew nut shell liquid) where the pH of the mixture with heavy oil composition is adjusted with mineral acid to be less than 10 (Paragraph 0036), includes surfactants such as quaternary ammonium compounds (PEG; where Applicant’s specification identifies ethylene glycol as a suitable preferred polyol at Paragraph 0050), and water (Paragraph 0043 and Abstract).
Notably, Cui teaches that the blending fuel oils and other petroleum products of various sources is done to meet specifications of viscosity, pour point and sulfur defined by the end user (Paragraph 0007). Further, Cui’s Group V oils have an API gravity of less than 10 at 60F and include very heavy residual fuel oils, asphalt products, and very heavy crude oils (Paragraph 0007). Additionally, Cui seeks to respond to the need for ‘safer, renewable, cost effective, green viscosity reducing agent for extraction of oils as well as the processing and transport of heavy and extra-heavy crude oils, residual fuel oils, and tar sands (Paragraph 00008).
While Cox and Cui do not expressly teach the particular ranges of the components as instantly claimed, it would be well within the routine skill of an ordinary artisan to determine the appropriate proportions of the components for the asphalt conditioner and there is no current showing that these ranges are critical or produce unexpected results.
It has been held that ‘where the general conditions of a claim are disclosed in the prior art, it is note 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).
Further, in KSR, the Supreme Court emphasized the need for caution in granting a patent based on the combination of elements found in the prior art. Additionally, the Supreme Court reaffirmed principles based on its precedent that ‘the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results’.
Regarding claim 2, Cox and Cui teach the composition as applied to claim 1 above and Cox teaches bitumen in an amount of 75% (Example 1) which is reasonably close to the claimed upper bound of 70%. In the interest of the clarity of the record, please see the 112b rejection above regarding the use of the term ‘bitumen’.
Alternatively, Cox teaches about 28 wt% of a gas oil having an API gravity of 31.8 (Example 1). While outside of the claimed range of 60-70% bitumen, it would nevertheless be obvious to try differing proportions of the gas oil in the combination in view of the teachings of Cui which teaches that the blending fuel oils and other petroleum products of various sources is done to meet specifications of viscosity, pour point and sulfur defined by the end user (Paragraph 0007).
It has been held that ‘where the general conditions of a claim are disclosed in the prior art, it is note 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).
Further, in KSR, the Supreme Court emphasized the need for caution in granting a patent based on the combination of elements found in the prior art. Additionally, the Supreme Court reaffirmed principles based on its precedent that ‘the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results’.
Regarding claim 3, Cox and Cui teach the composition as applied to claim 1 above and Cox teaches that the additive is provided in an amount of about 3 wt% (Example 1) which lies within the claimed range of from 2 to 4%.
Regarding claim 6, Cox and Cui teach the composition as applied to claim 1 above and Cui teaches the surfactant is included in an amount from about 0.1 to about 5 wt% (Paragraph 0040) which overlaps the claimed range of from 0.1 to 0.3%
Regarding claim 7, Cox and Cui teach the composition as applied to claim 1 above and neither Cox nor Cui expressly teach the amount of mineral acid added. However, determining the amount of acid required to achieve the desired pH would be prima facie obvious and well within the ordinarily skilled artisan’s skill set because adjusting pH is routine and conventional.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Paris-Marcano (U.S. 5,152,886) Method for improving heavy crude oils by reducing the asphaltene content of crude oils and oil-containing tar sands (see at least Table II where the API gravities of the oil samples are provided and are all above 10) where the method also includes one liquid fatty acid as well as at least one inorganic acid such as hydrochloric acid, and at least one light organic solvent and Gutierrez et al. (WO 02/094939) directed to an emulsifier compositions used to prepare asphalt emulsions in water that includes glycerol and/or propylene glycol.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738