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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3, 5, 6, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Cha et al. (WO 2007/123382 A1) in view of Sakashita et al. (JP 2001192560 A; machine translation referred to herein) and Ohtsuka et al. (US 5,925,695; cited in Applicant’s IDS).
Regarding claims 3, 5, 6, and 10, Cha teaches an asphalt composition having improved mechanical properties and anti-aging performance (Abstract). The composition includes 90-99.9 wt% of asphalt or bitumen and 0.1-10 wt% of a polymer (p. 3, lines 13-17), as well as 0.001-1 wt% of a stabilizer (p. 7, lines 18-19). Suitable stabilizers include tris(2,4-di-t-butylphenyl)phosphite (p. 7, lines 13-14).
Cha further suggests the use of mixtures of two stabilizers in combination (p. 7, lines 16-17). Cha does not teach 3,3’-dithiopropionic acid dioctadecylester as claimed.
In the same field of endeavor, Sakashita teaches an asphalt composition comprising 3-15 parts by weight of a copolymer (Abstract). The composition may further comprise various antioxidants (i.e. stabilizers). Suitable antioxidants include phosphorus-based compounds such as tris(2,4-di-t-butylphenyl)phosphite and sulfur-based compounds such as distearyl thiodipropionate (i.e. 3,3’-dithiopropionic acid dioctadecylester) (p. 3-4, [0024]). These antioxidants are recited in parallel as equally suitable alternatives to one another and are therefore recognized by the prior art as equivalents suitable for the same purpose (i.e. as antioxidants/stabilizers for asphalt compositions including minor amounts of a polymer).
It would have been obvious to one of ordinary skill in the art at the time of filing to combine Sakashita’s 3,3’-dithiopropionic acid dioctadecylester with Cha’s tris(2,4-di-t-butylphenyl)phosphite, as the two are recognized by the prior art as equivalents suitable for the same purpose. It is prima facie obvious to combine equivalent materials when the equivalence is recognized by the prior art. See MPEP 2144.06. Additionally, Cha expressly suggests the use of combinations of antioxidants, and Sakashita demonstrates that 3,3’-dithiopropionic acid dioctadecylester is suitable for use in this capacity in similar compositions. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Cha further teaches that the asphalt composition is processed into an emulsified state before use (p. 4, lines 3-5). Neither Cha nor Sakashita teach a polyalkylene glycol monoalkyl ether glycol as claimed.
In the same field of endeavor, Ohtsuka teaches an asphalt-based composition comprising a copolymer (col. 1, lines 13-20). The composition further includes 0.06-8 parts by weight of an emulsifier per 100 parts asphalt (equivalent to approximately 0.06-7.4 wt%). Amounts of emulsifier below this range lead to decreased stability, while amounts above this range are economically disadvantageous (col. 12, lines 1-10). Suitable emulsifiers include nonionic surfactants (col. 12, lines 11-13) such as polyoxyethylene alkyl ether (col. 12, lines 30-31). Example 9 illustrates the use of polyoxyethylene stearyl ether (col. 24, lines 5-7), i.e. a polyethylene glycol monoalkyl ether, as a nonionic surfactant.
It would have been obvious to one of ordinary skill in the art at the time of filing to modify Cha in view of Sakashita as applied above, and further in view of Ohtsuka to include 0.06-7.4 wt% of a nonionic emulsifier such as polyoxyethylene stearyl ether in order to achieve increased stability.
Modification of Cha in view of Sakashita and Ohtsuka results in a composition comprising asphalt or bitumen; 0.001-1 wt% tris(2,4-di-t-butylphenyl)phosphite; 0.001-1 wt% 3,3’-dithiopropionic acid dioctadecylester; and 0.06-7.4 wt% of polyoxyethylene stearyl ether (i.e. a polyalkylene glycol monoalkyl ether). This reads on the bituminous composition of claims 3 and 5, as well as the asphalt composition of claims 6 and 10.
Response to Arguments
The Applicant's arguments filed 8 October 2025 have been fully considered but they are not persuasive.
Beginning at page 6 of the remarks, the Applicant argues that the field of bitumen and asphalt development an unpredictable science wherein it is not possible to take isolated aspects of individual teachings and use such features in combination with any assumed expectation of success.
Chemistry is generally acknowledged as an unpredictable art. See, e.g., MPEP 2164.03. In the context of rejections under 35 U.S.C. 103, at least some degree of predictability is required. However, obviousness does not require absolute predictability but rather a reasonable expectation of success. See MPEP 2143.02.
The proposed modification of Cha in view of Sakashita involves selection of a stabilizer recognized as being suitable for use in a similar composition and recited in parallel with alternative stabilizers already identified by Cha as being suitable. The proposed modification in view of Ohtsuka involves the use of an emulsifier additive recognized by the prior art as being suitable for use in similar compositions and resulting in the various improvements articulated above.
In both cases, the proposed modifications involve selection of known additives and employing them for the same purpose in the same type of composition. While this type of modification may not carry with it absolute predictability, one of ordinary skill in the art would have a reasonable expectation of success as required in a proper rejection under 35 U.S.C. 103.
The Applicant argues that when starting from Cha, one skilled in the art would not look to Ohtsuka without also taking Sakashita into consideration. The Applicant observes that Sakashita does not teach the use of antioxidants in its examples, and the Applicant characterizes Sakashita as teaching away from the use of polar compounds such as ethers at [0015].
Sakashita at [0015] does not appear to teach away from the use of polar compounds, but rather suggests limiting the content of such polar compounds present in a reaction solvent to “an appropriate amount”. In other words, polar compounds may be present. It is also important to note that this portion of Sakashita relates to polymerization conditions used to form a block copolymer.
This portion of Sakashita does not in any way exclude polar compounds when forming asphalt-based compositions comprising the block copolymer after it has been polymerized. While antioxidants are not present in the polymerization reactions illustrated in Sakashita’s examples, such additives are expressly suggested for use in asphalt compositions which contain block copolymers similar to those formed in the examples (p. 3-4, [0024]).
Thus, it is not reasonable to interpret Sakashita as teaching away from either the use of polar compounds like Ohtsuka’s dispersant or antioxidants.
The Applicant argues that Ohtsuka fails to teach adding antioxidants or stabilizers to asphalt compositions.
The Applicant’s characterization of Ohtsuka is accurate inasmuch as the reference only generally suggests the use of various conventional additives (col. 12, lines 60-62). Nevertheless, the portions of the claimed composition not expressly taught by Ohtsuka are disclosed by Cha and Sakashita as discussed above. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.
The Applicant argues that the claimed invention leads to consistent and predictable improvements in short term aging. The Applicant cites the examples presented in the instant specification in support of this statement.
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected and therefore indicative of nonobviousness. See MPEP 716.02.
Neither the Applicant’s arguments nor the instant specification appear to make any assertion that the inventive examples are surprising or unexpected, nor has the Applicant provided any statement to that effect through other evidentiary submissions, such as an affidavit or declaration under Rule 132.
In contrast, the Applicant characterizes the experimental data as “predictable”. A predictable trend in experimental data does not appear to be either surprising or unexpected; therefore, the experimental data in question cannot be relied upon to establish non-obviousness.
Additionally, any objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). Applicants have the burden of explaining the data proffered as evidence of non-obviousness. See MPEP 716.02(b). The examples in the specification are not reasonably commensurate in scope with the claims, and the Applicant has provided no explanation regarding how the exemplified results could reasonably be extended to the full scope of the claims. The examples are therefore insufficient to establish non-obviousness of the claims.
The Applicant appears to present new experimental data in Appendices 1 and 2. Arguments presented by the Applicant cannot take the place of evidence in the record. Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results. See MPEP 716.01(c). Any additional data not present in the instant specification and not submitted in an appropriate affidavit or declaration cannot be relied upon to establish nonobviousness.
The Applicant argues that modification of Cha in view of Sakashita and Ohtsuka fail steps (2) and (3) of the Graham factual inquiries.
The Applicant characterizes steps (2) and (3) of the Graham inquiries as (2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately; and (3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As discussed in MPEP 2143, these inquiries are part of exemplary rationale (A) discussed by the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). In exemplary rationale (A), four factors must be articulated in addition to the Graham factual inquiries. In other words, factors (1)-(4) are not themselves the Graham inquiries.
Neither the current nor the previous Office action rejected any of the pending claims using KSR rationale (A); therefore, the inquiries noted in the Applicant’s arguments need not be addressed. The rejection under 35 U.S.C. 103 incorporates the basic factual inquiries required by Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966) (see MPEP 2141(II) for Graham inquiries (A)-(C)). The rejection is therefore proper.
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.
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/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762