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
Examiner acknowledges the amended drawings, amended Claims 1, 2, 17, 18, 21, and 23-26, and cancelled Claims 3-16,19, 20, and 22 in the response filed on 8/15/2025.
Response to Arguments
Applicant's arguments filed 8/15/2025 have been fully considered but they are not persuasive.
Applicant stated that a comparison was made between existing treatments (emulsion having about 56% solid asphalt residues applied at a rate of 0.22 gallons per square yard and a fine aggregate applied at a rate of about 2.5 pounds per square yard) and an inventive treatment (emulsion having about 56% solid asphalt residues applied at a lower rate of about 0.18 gallons per square yard and with a fine aggregate of about 2.5 pounds per square yard). The inventive treatment had significantly better friction characteristics at 11 months (especially at high speeds) and still improved the friction of the pavement even at 36 months.
The independent claims recite specific application amounts of both asphalt emulsion and aggregate, plus a claimed concentration of asphalt solids in the emulsion, the surprising friction benefits, as shown by the data disclosed in the application, results from the amounts of all three variables. A person of ordinary skill in the art, armed with LaRusso’s disclosures, would be forced to try an untold number of combinations based on the broad ranges of asphalt emulsion rates and aggregate application rates to arrive at the claimed values, and there is still not teaching or suggestion about the asphalt solids concentration.
However, the Examiner respectfully disagrees. It appears that Applicant is stating that the existing treatments (emulsion having about 56% solid asphalt residues applied at a rate of 0.22 gallons per square yard and a fine aggregate applied at a rate of about 2.5 pounds per square yard) are comparative examples. That is, the Pre-treatment control and Asphalt Emulsion Treatment of 0.22 gals/SY in Table 3 are comparative examples to establish unexpected results.
However, it is noted that Claims 2 and 18 overlap in scope with the argued comparative examples. Claims 2 and 18 recite an emulsion having about 56% solid asphalt residues applied at a rate between about 0.12 and about 0.18 gallons per square yard and a fine aggregate applied at a rate of about 1.25 to about 2.5 pounds per square yard. Due to the term “about”, the limitations of about 0.18 and about 2.5 overlap in scope with a rate of 0.22 gallons per square yard and a fine aggregate applied at a rate of about 2.5 pounds per square yard. Therefore, it is unclear to the Examiner how can Claims 2 and 18 have a critical feature/unexpected result when Applicant appears to state that these features do not produce desirable coefficient of friction at 11 months.
Furthermore, the evidence in the Specification does not support that the asphalt emulsion comprising about 37% or about 56% solid asphalt residues, the emulsion applied at a rate of between about 0.12 and about 0.18 gallons per square yard, and applying a fine aggregate at a rate of between about 0.6 to about 1.25 pounds per square yard or between about 1.25 to about 2.5 pounds per square yard as each being critical (i.e. there is insufficient comparative examples to establish the criticality of these features).
LaRusso et al. teaches a method for applying a coating system to a surface comprising: spraying an asphalt emulsion onto a surface at a rate of 0.15 and 0.25 gallons per square yard, the asphalt emulsion having an asphalt blend comprising gilsonite, wherein at least a portion of the gilsonite is modified to possess a positive charge, one or more polymers, and one or more surfactants. LaRusso et al. further teaches applying a fine aggregate onto the asphalt emulsion applied to the surface at a rate of 1.0 to 5.0 pounds per square yard (Abstract, Col. 3: Lines 30-50, Col. 10: Line 59 bridging to Col. 11: Line 8, and Table 7 disclosing examples of the application rates of the asphalt emulsion and fine aggregate that overlaps with Applicant’s limitations). Friction was also evaluated, wherein the friction tests were made in order to gauge the consistency of the surface’s friction over time. As shown in Table 8, the friction also increased over time (Col. 12: Lines 3-67 disclosing its inventive concepts also having several benefits and surprising results, wherein the inventive coating systems attain improved friction characteristics that have not been observed in typical pavement coating applications with light to medium (or higher) application levels). Because Applicant has not provided sufficient evidence and/or comparative examples that isolate these features as being critical, and so fails to provide evidence against the closest prior art of LaRusso et al.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 17, 18, 21, and 23-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-14 of U.S. Patent No. 10982097. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims would be obvious in view of the patented claims.
Claim Objections
Claims 17, 21, and 24-26 are objected to because of the following informalities: In Claim 17, please amend “rage” to “rate". Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 25 and 26 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 17, in which Claim 25 is dependent from, recites an aggregate material for application to a pavement coated with the asphalt emulsion at a rage (rate) of between 0.6 to about 1.25 pounds per square yard. Claim 25 has broadened the lower limit by reciting “about 0.6 pounds per square yard”.
Claim 26 also fails to further limit the subject matter of Claim 17. Claim 17 recites an aggregate material for application to a pavement coated with the asphalt emulsion at a rage (rate) of between 0.6 to about 1.25 pounds per square yard, wherein the asphalt emulsion is applied to the pavement at a rate of between about 0.12 to about 0.18 gallons per square yard. Claim 26 recites ranges that are outside the ranges recited in Claim 17.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 2, 17, 18, 21, and 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. No. 10982097 (“LaRusso et al.”).
With regards to Claims 1 and 2, LaRusso et al. teaches a method for applying a coating system to a surface comprising: spraying an asphalt emulsion onto a surface at a rate of 0.15 and 0.25 gallons per square yard, the asphalt emulsion having an asphalt blend comprising gilsonite, wherein at least a portion of the gilsonite is modified to possess a positive charge, one or more polymers, and one or more surfactants. LaRusso et al. further teaches applying a fine aggregate onto the asphalt emulsion applied to the surface at a rate of at least 1.0 pound per square yard (Abstract, Col. 3: Lines 30-50, Col. 10: Line 59 bridging to Col. 11: Line 8, and Table 7 disclosing examples within or overlapping the claimed ranges – e.g. the asphalt emulsion is sprayed at a rate of 0.18 gallons per square yard and the fine aggregate is applied at a rate of 1.5 or 3.0 pounds per square yard).
LaRusso et al. teaches the amount of asphalt blend in the emulsion can vary. In one example, the asphalt blend may comprise between about 50.0% to about 70.0% by weight of the emulsion. The amount of the asphalt cement in the asphalt blend is at least 85% by weight, and the amount of the gilsonite in the asphalt blend is at least 15% by weight. LaRusso et al. further teaches that the asphalt blend and/or the amount of amount of gilsonite may comprise more or less than the ranges disclosed above (Col. 5: Lines 15-31 and Col. 7: Lines 24-31).
LaRusso et al.’s asphalt blend will necessarily comprise solid asphalt residues (or are substantially equivalent to each other), and therefore the disclosed concentrations above will necessarily overlap the claimed concentrations of the solid asphalt residues. The Examiner, however, acknowledges that LaRusso et al. does not explicitly disclose the claimed concentrations of the solid asphalt residues.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have determined the optimum value of a results effective variable, such as the concentration of solid asphalt residues, especially given the knowledge in the art that the concentration can impact the overall asphalt emulsion properties. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art to optimize the asphalt emulsion to comprise about 37% or about 56% solid asphalt residues by weight of the asphalt emulsion in order to achieve a coating system with improved friction characteristics (Col. 12: Lines 58-60).
With regards to Claims 17, 18, and 23-26, LaRusso et al. teaches a system for surface treating a pavement comprising an asphalt emulsion, the asphalt emulsion including an asphalt blend comprising an asphaltite (gilsonite) naturally containing nitrogen-containing polar resins, wherein at least a portion of the nitrogen-containing polar resins are modified to possess a positive charge, one or more polymers, and one or more surfactants. LaRusso et al. further teaches an aggregate material for application to a pavement coated with the asphalt emulsion at a rate of 1.0 to 5.0 pound per square yard, wherein the asphalt emulsion is applied to the pavement at a rate of 0.15 to 0.25 gallons per square yard (Abstract, Col. 3: Lines 30-50, Col. 4: Lines 21-37, Col. 10: Line 59 bridging to Col. 11: Line 8, and Table 7 disclosing examples within or overlapping the claimed ranges).
LaRusso et al. teaches the amount of asphalt blend in the emulsion can vary. In one example, the asphalt blend may comprise between about 50.0% to about 70.0% by weight of the emulsion. The amount of the asphalt cement in the asphalt blend is at least 85% by weight, and the amount of the gilsonite in the asphalt blend is at least 15% by weight. LaRusso et al. further teaches that the asphalt blend and/or the amount of amount of gilsonite may comprise more or less than the ranges disclosed above (Col. 5: Lines 15-31 and Col. 7: Lines 24-31).
LaRusso et al.’s asphalt blend will necessarily comprise solid asphalt residues (or are substantially equivalent to each other), and therefore the disclosed concentrations above will necessarily overlap the claimed concentrations of the solid asphalt residues. The Examiner, however, acknowledges that LaRusso et al. does not explicitly disclose the claimed concentrations of the solid asphalt residues.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have determined the optimum value of a results effective variable, such as the concentration of solid asphalt residues, especially given the knowledge in the art that the concentration can impact the overall asphalt emulsion properties. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re After, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art to optimize the asphalt emulsion to comprise about 37% or about 56% solid asphalt residues by weight of the asphalt emulsion in order to achieve a coating system with improved friction characteristics (Col. 12: Lines 58-60).
With regards to Claim 21, LaRusso et al. teaches wherein 98% or more of the aggregate material passes through a No. 14 sieve and 15%-45% of the aggregate material passes through a No. 30 sieve (Table 2).
Conclusion
THIS ACTION IS MADE FINAL. 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 LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785