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 .
Applicant's election with traverse of Group I, claims 15-26 in the reply filed on September 29, 2025 is acknowledged. The traversal is on the ground(s) that the PCT did not require a lack of unity between the original claims. This is not found persuasive because Sung et al. (US 5207891) discloses the binder composition as recited in the instant claim 15.
The requirement is still deemed proper and is therefore made FINAL.
If Group I is found allowable and Groups II and III comprises the same allowable subject matter as Group I, the examiner will consider rejoining Group II and III, claims 27-28.
Claims 26 and 27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on September 29, 2025.
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 19, 20, and 21 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.
Regarding claim 19 (page 6, line 3), the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The recitation of “in particular” in claim 20 (page 9, line 6 and 20; page 10, line 7 and 21), line renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The recitation of “preferably” in claim 20 (page 10, line 4, 6, 13, and 15) and claim 21 (page 11, line 13; page 12, line 1 and 6) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Analysis
Summary of Claim 15:
A binder composition comprising
(a) a bituminous binder; and
(b) a rejuvenating agent from 0.05 to 20 wt.-%, based on the total amount of the binder composition, wherein
the rejuvenating agent comprises at least an asphaltene dispersant, which is selected from the group consisting of alkoxylates, N,N-dialkylamides of aliphatic carboxylic acids, N-alkyl lactames, and poly(alkylamines),
an asphaltene reactivator, which is selected from the group consisting of mono glycidylether and glycidylester, di- and tri glycidylether, diglycidylether of polymeric alcohol, and mixtures thereof with catalysts,
a maltene reactivator, which is a plasticizer, or mixtures thereof.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 15-18, 23, 25, and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Severance et al. (US 20140338565).
Regarding claim 15, Severance et al. disclose a binder composition comprising reclaimed asphalt and a rejuvenating agent, wherein the reclaimed asphalt comprises an asphalt binder and an aggregate, and wherein the rejuvenating agent is present in an amount within the range of 0.1 to 20 wt% based on the combined amounts of aged binder and rejuvenating agent (claim 1), thereby lying within the claimed range of rejuvenating agent as recited in the instant claim. Severance et al. disclose the rejuvenating agents provide desirable softening [0019], thereby reading on a plasticizer and the maltene reactivator of the instant claim. Severance et al. further disclose in Example 15 a mixture of 90 wt% of aged asphalt binder and 10 wt% of rejuvenating agent glycerol monomerate, thereby lying within the instant claimed range.
The asphaltene dispersant and asphaltene reactivator are considered optional and therefore anticipated.
Regarding claim 16, Severance et al. is silent on whether the rejuvenating agent introduces a microstructural change as recited in the instant claim.
However, In view of the substantially identical binder composition of Severance et al., the binder composition of Severance et al. will possess the claimed properties because the microstructural change is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claim 17, Severance et al. disclose in Example 15 the maltene reactivator is 100 wt% of the rejuvenating agent and thereby reads on the instant claim.
Regarding claim 18 and 23, Severance et al. disclose Example 15 comprises a bituminious binder that is an RAP (reclaimed asphalt pavement) (see Table 1), thereby reading on the instant claim 18 and 100 wt% of the total weight of the bituminious binder of instant claim 23.
Regarding claim 25, Severance et al. disclose a binder composition comprising reclaimed asphalt and a rejuvenating agent, wherein the reclaimed asphalt comprises an asphalt binder and an aggregate, and wherein the rejuvenating agent is present in an amount within the range of 0.1 to 20 wt% based on the combined amounts of aged binder and rejuvenating agent (claim 1), thereby lying within the claimed range of rejuvenating agent as recited in the instant claim. Severance et al. disclose the rejuvenating agents provide desirable softening [0019], thereby reading on a plasticizer and the maltene reactivator of the instant claim.
Regarding claim 26, Severance et al. disclose a paved surface comprising the asphalt composition (claim 26), thereby reading on the instant claim.
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 19, 22, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Severance et al. (US 20140338565).
The binder composition disclosed in claim 15 is incorporated herein by reference.
Regarding claim 19 and 22, Severance et al. disclose in Example 15 comprises glycerol monomerate as the rejuvenating agent (Table 1).
Severenace et al. do not disclose in the Examples a maltene reactivator having the formula (7a), (7b), (7c), (7d), or (7e).
However, Severance et al. teach a suitable plasticizer includes dioctyl phthalate, thereby reading on instant formula (7a) when R is a C8 alkyl group. Therefore, it would have obvious to one of ordinary skill in the art to use dioctyl phthalate instead of glycerol monomerate since Severance et al. teach both are suitable rejuvenating agents.
Regarding claim 24, Severance et al. do not teach in Example 15 the composition comprises further additives.
However, Severance et al. do teach additives such as elastomers may be added to the composition [0028]. Therefore, it would have been obvious to one of ordinary skill in the art to add a polymer as taught by Severance et al.
Claims 20 is rejected under 35 U.S.C. 103 as being unpatentable over Severance et al. (US 20140338565) in view of Sung et al. (US 5207891 as listed on IDS dated December 16, 2022).
The binder composition disclosed in claim 15 is incorporated herein by reference.
Regarding claim 20, Severance et al. is silent on the asphaltene dispersant as recited in the instant claim.
Sung et al. teach an asphaltene dispersant comprising polypropylene glycol PPG-400 [col 5, line 10-45], thereby reading on Formula (1) wherein R is H, m is 0, and n is between 6 and 7. Therefore, it would have been obvious to one of ordinary skill in the art to add the asphaltene dispersant of Sung et al. with the binder composition of Severance et al. since both are related to asphalt compositions.
Claims 21 is rejected under 35 U.S.C. 103 as being unpatentable over Severance et al. (US 20140338565) in view of Christiansen et al. (US 3755226).
The binder composition disclosed in claim 15 is incorporated herein by reference.
The examiner refers to the English translation of Funada et al. included in this Office Action.
Regarding claim 21, Severance et al. is silent on the asphaltene reactivator as recited in the instant claim.
Christiansen et al. teach an epoxy bitumen system comprising a diglycidyl ether of a polypropylene glycol (claim 9), thereby reading on polypropylene glycol bis(glycidyl) ether of the instant claim. Christiansen et al. further teach a polypropylene glycol bis(glycidyl) ether DER 732 having an epoxy equivalent weight of 305 to 335 [col 4, 49-60], equivalent to instant formula 5d wherein Rn has the formula 6b and n is 8-9. Christiansen et al. offer the motivation that the polypropylene glycol bis(glycidyl) ether improves flexibility which reduces cracking [col 6, line 44-50]. Severance et al. is also concerned about cracking resistance (abstract). Therefore, it would have been obvious to one of ordinary skill in the art to use the polypropylene glycol bis(glycidyl) ether of Christiansen et al. with the binder composition of Severance et al. with reasonable expectation that the cracking resistance would improve.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763