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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/10/2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Group VI, claims 11-13, in the reply filed on 05/19/2025 is acknowledged.
Claims 1, 5, 6, 8-10, 15, 16, and 18 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/19/2025.
Response to Amendment and Status of Claims
Applicant's amendment, filed 02/23/2026, has been entered. Claims 1, 5, 8, 11, and 22 are amended, claims 2-4, 7, 14, 17, 19-21, and 24 are or were previously cancelled, claims 1, 5, 6, 8-10, 15, 16, and 18 remain withdrawn as described above, and no claims are newly added. Accordingly, claims 1, 5, 6, 8-13, 15, 16, 18, 22, 23, and 25-28 are pending with claims 11-13, 22, 23, and 25-28 considered in this Office Action.
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 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 11-13, 22, 23, and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Bacon et al. (U.S. 2,182,837; Of Record) in further view of Gaw (GB 1 494 198; Of Record), Reichart (U.S. 4,902,408), Martin et al. (U.S. 2020/0181507), Chugtai et al. (U.S. 2011/0290151; Of Record), and Timcik et al. (U.S. 7,037,955; Of Record).
Regarding claim 11, Bacon et al. (hereinafter “Bacon”) teaches a method where elemental sulphur is added to hot, molten asphalt with strong stirring, and the mixture is heated while being stirred to a temperature above the melting point of sulphur but not higher than about 160C (Page 1, Left Column, lines 42-47).
Thus, Bacon teaches a method of ‘heating bitumen to obtain molten bitumen, preparing a sulphur additive, and contacting the molten bitumen with the sulphur additive to obtain the sulphur modified bitumen composition.
However, Bacon is silent to how the elemental sulphur is prepared and/or achieved.
Gaw teaches a method for reducing emission of hydrogen sulphide from hot mixtures containing sulphur and bitumen wherein a mixture of hydrogen sulphide suppressants may be used such as copper carbonate and diphenylamine among others including ferrous compounds (Page 1, Column 2).
However, Gaw does not expressly teach one of the two H2S suppressants is iron (III) ethylhexanoate and the other H2S suppressant is bentonite clay, wood, charcoal, refinery FCC spent catalyst, refinery DHDS spent catalyst, or a combination thereof.
Reichart et al. (hereinafter “Reichart”) teaches a process for removing hydrogen sulphide using metal compounds such as iron 2-ethylhexanoate (note: iron 2-ethylhexanoate is also known as iron (III) ethylhexanoate) (claim 1; Col. 1 line 61 and Col. 2 line 12).
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.
In the instant case, the selection of iron 2-ethylhexanoate, which is known as a suitable hydrogen sulfide scavenger for the same purpose of hydrogen sulfide suppression in a bitumen additive would be prima facie obvious.
Reichart is silent to the selection of an additional H2S suppressant as claimed.
Martin et al. (hereinafter “Martin”) is directed to scavenger compositions for sulfur species and is particularly concerned with active metal salt or metal chelate scavengers (Paragraph 0011). Notably, Martin teaches at Paragraph 0032 that suitable suspension aids such as modified bentonite (montmorillonite) are used in the scavenger composition. The inclusion of bentonite would aid the metal based scavenger composition from settling in the suspension media which would undesirably limit the scavenging process.
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.
In the instant case, the combination of Martin’s bentonite clay with Reichart’s iron 2-ethylhexanoate, would be prima facie obvious because each are known components used to scavenge hydrogen sulfide.
Thus, it is known from Gaw, Reichart, and Martin to use at least two H2S suppressants to reduce H2S emission in sulphur modified asphalts and would be obvious to include in the sulphur additive for the method of Bacon wherein Reichart and Martin teach the expressly recited species claimed by Applicant.
However, Gaw does not teach the inclusion of the sulphur as a separate additive. To the contrary, Gaw teaches incorporating the hydrogen sulphide suppressants into the sulfur and bitumen mixture.
Chugtai et al. (hereinafter “Chugtai”) teaches sulfur granules used for asphalt production. Chugtai’s pelletized and/or granular sulfur material would be obvious to modify with the H2S suppressants of Gaw so as to create a sulfur pellet for sulfur modified asphalts that has a much lower release of H2S (Paragraph 0016 of Chugtai).
Gaw and Chugtai are silent to the use of a smell masking agent; however, the longstanding problem of the noxious odor of hydrogen sulfide and asphalt generally is well recognized and so it would be obvious to include a smell masking agent but the teachings of Timcik are expressly provided to demonstrate the obviousness of such an inclusion.
Timcik et al. (hereinafter “Timcik”) teaches additives and method for reducing odor particularly for asphalt compositions (Title and Caol. 1 lines 14-20). Specifically, Timcik teaches suitable essential oils for use as smell masking agents (Col. 2 line 27 to Col. 3 line 52).
It would be obvious to combine the features of Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik so as to produce an improved sulfur modified asphalt composition that has reduced hydrogen sulfide emissions and reduced noxious odors.
As to the sulfur additive processing conditions claimed, it would be obvious to achieve the claimed features because the claimed conditions closely mirror the heating conditions required to incorporate the melted sulfur into the bitumen composition, i.e. heating and stirring at above the melting point of sulfur (which is 115.21C) and less than 160C lies within the teachings of Bacon. Additionally, POSITA would find it obvious to determine the appropriate duration for stirring such that it was from 20 to 140 minutes followed by cooling.
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” and 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” Id. At 415-16, 82 USPQ2d at 1395.
On balance, the teachings of Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik support a prima facie determination that the invention as instantly claimed is obvious.
Regarding claim 12, Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik teach the method as applied to claim 11 above and Bacon teaches that the mixture is heated to a temperature above the melting point of sulphur but not higher than about 160C (Page 1, Left Column, lines 42-47). The melting point of elemental sulphur is 115.21C. Thus, Bacon effectively teaches the range of greater than 115.21C to not higher than about 160C which meets the claimed range of 120-160C because the claimed range lies entirely within the disclosed range of Bacon.
Regarding claim 13, Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik teach the method as applied to claim 11 above and Bacon teaches that the mixture is heated and stirred for “a period of time not exceeding four hours” (Page 1, Left Column, line 51) and is subject to “strong stirring” (Page 1, Left Column, lines 44-45) but does not expressly teach the stirring speed.
As to the claimed stirring for a time period in a range of “15 minutes to 180 minutes”, Examiner notes that this is alternatively expressable as 0.25 to 3 hours. In comparison to the teachings of Bacon, Applicant’s claimed range lies entirely within Bacon’s disclosed range. It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In the instant case, Applicant’s claimed range of 0.25 to 3 hours lies within Bacon’s disclosed range of not exceeding four hours.
As to Bacon’s silence regarding a stirring speed, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to determine the appropriate rpm/speed in view of Bacon’s teaching of ‘strong stirring’ such that mixture is sufficiently blended and homogenous.
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 22, Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik teach the method as applied to claim 11 above and Gaw teaches that the suppressants are from 0.001-5 % by weight (Page 1, Right Column) which overlaps the claimed range of 4-7 wt% and Timcik teaches the smell masking agent to be generally from about 0.0001 to about 10% (Col. 4 lines 61-63) which overlaps the claimed range of 0.05-1.0 wt%. POSITA could readily determine the appropriate portions of sulphur and bitumen to include for the sulfur pellet/granule of Chugtai so that it achieves an effective amount of sulfur modification in the composition and/or method of Bacon.
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 23, Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik teach the method as applied to claim 11 above but do not expressly teach that the sulphur is a refinery by-product. However, such a feature would be prima facie obvious because the person of ordinary skill could readily source the sulfur necessary for the desired asphalt composition. Furthermore, the use of a by-product would be particularly useful because it would help reuse leftover and/or waste material.
Regarding claim 25, Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik teach the method as applied to claim 11 above and Timcik teaches that vanilla oleoresin, which would necessarily contain vanillin, and essential oil from geranium (i.e. geraniol) are suitable masking agents (Col. 2 lines 51-52 and Col. 3 line 25 and Col. 4 line 12-13).
Regarding claim 26, Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik teach the method as applied to claim 11 above and Chugtai teaches that the sulphur additive is an a granule or pellet form (Paragraph 0027).
Regarding claim 27, Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik teach the method as applied to claim 11 above and Bacon further teaches that the sulphur may be provided in any amount up to about 50% percent (Page 1, Right Column, Lines 1-4). Naturally, in a mixture comprising sulphur and asphalt, the asphalt portion could comprise the remainder. Thus, it would be obvious to achieve a sulphur amount of 3-8 wt% because it is entirely within the disclosed range of Bacon. Further, POSITA could readily determine the complementary remainder amount of the necessary bitumen/asphalt required, i.e. determining the bitumen to be present in an amount of 92-97%.
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).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik as applied to claim 11 above, and further in view of Saha et al. (WO 2011/074003).
Regarding claim 28, Bacon, Gaw, Reichart, Martin, Chugtai, and Timcik teach the method as applied to claim 11 above but are silent to the sulphur modified bitumen’s resulting properties and/or characteristics such that the sulphur modified bitumen has a penetration point of at least 45 at 25C, a softening point of at least 47C, and an absolute viscosity in a range of 2400 and 3600 poises at 60C.
Saha et al. (hereinafter “Saha”) teaches a crumb rubber modified bitumen composition (Title) where, in Table 1, the typical properties of a VG-30 base bitumen are disclosed as well as the IS-73:2006 specifications, i.e. the standards required for the bitumen to be considered a VG-30 bitumen. Notably, Table 1 shows the VG30 bitumen having a penetration of 63 at 25C, a softening point of 53, and an absolute viscosity of 2887 at 60C as well as the standard requiring a penetration of 50-70, a softening point at a minimum of 47, and an absolute viscosity at a minimum of 2400.
The teachings of Saha demonstrate that the VG-30 bitumen standard is well known and was used within the industry before the effective filing date of the claimed invention. Thus, the decision to choose that the sulphur modified bitumen should be a VG 30 grade would be prima facie obvious selection in view that VG 30 bitumen is well known and conventional within the art. There is no evidence of record to demonstrate that the achievement of a VG30 bitumen composition is unexpected or otherwise patentably significant. Furthermore, ensuring that a composition conforms to accepted industry standards is routine and obvious.
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” and that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results” (MPEP 2141.I.).
Response to Arguments
Applicant's arguments filed 02/23/2026 have been fully considered but they are not persuasive.
The perceived deficiencies of the prior applied references in meeting the limitations of the amended claims are believed to be overcome by Reichart and Martin as further relied upon.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Tong (U.S. 2020/0277498) directed to hydrogen sulfide scavengers for asphalt including metal-containing compounds such as iron 2-ethylhexanoate (Paragraph 0014).
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738