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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/26/2025 was filed after the mailing of the Non-Final Office Action on 09/26/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment and Status of Claims
Applicant’s amendment, filed 12/23/2025, has been entered. Claims 10, 17, 20, 24, 28, and 29 are amended, no claims are cancelled, and no claims are newly added. Accordingly, claims 10 and 17-33 are pending and considered in this Office Action.
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 10 and 17-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bueno et al. (WO 2017/125421).
Regarding claim 10, Bueno et al. (hereinafter “Bueno”) teaches an asphalt composition comprising asphalt and polyester resin (see Title) wherein the polyester resin (meeting claimed “asphalt modifier”) is formed from an alcohol component-derived constituent unit and a carboxylic acid component-derived constituent unit (Page 6, lines 27-28).
In the interest of making the record clear, the language “derived from an alcohol component containing 80% by mole or more of a linear aliphatic alcohol” and “derived from a carboxylic acid component” is product by process language (MPEP 2113).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, the only structure required for the asphalt modifier is a crystalline polyester has a melting point of 65-160C.
Bueno is silent to describing the characteristics of the polyester resin as “crystalline” and having “a melting point of 65-160C”.
However, it has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, Bueno uses the same reagents in a polycondensation reaction (see Page 10 lines 30-33, Page 23 lines 25-34, as well as Table 1 where EG, i.e. ethylene glycol, is expressly used and, by its chemical structure is 100% linear aliphatic diol), expressly identifies tin(II) compounds as an esterification catalyst (Page 11 line 17; Page 11 line 27 expressly reciting “tin(II) di(2-ethylhexanoate)), and gallic acid (Page 12 line 9) which are the same as those utilized by Applicant as described in the specification (see Tables 1-1, 1-2, 1-3, and Paragraph 0057).
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Thus, there is a reasonable basis to believe that the polyester resin of Bueno would have some crystallinity and/or be crystalline and would possess a melting point of 65-160C absent evidence to the contrary.
Furthermore, it is noted for the clarity of the record that the claimed “crystalline” is construed using BRI because there is no definition or express recitation within the claim of how much crystallinity is required.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). (MPEP 2112.I.).
Regarding claim 17, Bueno anticipates the asphalt composition containing an asphalt and crystalline polyester asphalt modifier having a melting point of 65-160C as explained for claim 10 above.
The features of claim 17 are directed to the product by process language used in claim 10. Notably, Bueno expressly teaches EG, i.e. ethylene glycol, in Table 1.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, the structure required for the crystalline polyester is that the polyester is crystalline and has a melting point of 65-160C. Based upon the evidence of Bueno in comparison to that disclosed by Applicant, the polyester resin of Bueno would be expected to be crystalline and possess a melting point as claimed.
Furthermore, it is noted that the crystalline polyester is formed by the polycondensation reaction between the alcohol component and the carboxylic acid component such that the alcohol component and carboxylic acid components will lose their identity once reacted to yield the resultant polyester. Thus, claim features directed to the product by process language, i.e., features of the chemical structure that is then lost once the polyester is yielded, do not provide further structural/limiting features to the claimed asphalt composition/product.
Regarding claims 18-24, Bueno anticipates the asphalt composition containing an asphalt and crystalline polyester asphalt modifier having a melting point of 65-160C as explained for claim 10 above.
The features of claims 18-24 are directed to the product by process language used in claim 10.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, the structure required for the crystalline polyester is that the polyester is crystalline and has a melting point of 65-160C. Based upon the evidence of Bueno in comparison to that disclosed by Applicant, the polyester resin of Bueno would be expected to be crystalline and possess a melting point as claimed.
Furthermore, it is noted that the crystalline polyester is formed by the polycondensation reaction between the alcohol component and the carboxylic acid component such that the alcohol component and carboxylic acid components will lose their identity once reacted to yield the resultant polyester. Thus, claim features directed to the product by process language, i.e., features of the chemical structure that is then lost once the polyester is yielded, do not provide further structural/limiting features to the claimed asphalt composition/product.
Particularly for claims 20 and 24, and noted expressly in view of the amendment provided 12/23/2025, Bueno teaches EG, i.e. ethylene glycol, (Table 1) which by its chemical structure is 100% linear aliphatic diol.
Regarding claim 25, Bueno anticipates the asphalt composition containing crystalline polyester having a melting point of 65-160C as applied to claim 10 above and further anticipates that the polyester (i.e. asphalt modifier) is included from 5 parts or more to 30 parts or less (Page 18 line 34 to Page 19 line 3).
Bueno’s teaching of 5 parts to 30 parts anticipates the claimed range of 0.1 to 30 parts by mass relative to 100 parts by mass of the asphalt with sufficient specificity.
Regarding claim 26, Bueno anticipates the asphalt composition containing crystalline polyester having a melting point of 65-160C as applied to claim 10 above and further anticipates the inclusion of aggregate (Page 4 lines 1-4).
Regarding claim 27, Bueno anticipates the asphalt composition containing crystalline polyester having a melting point of 65-160C as applied to claim 10 above and further anticipates the method of producing the asphalt composition comprising mixing the asphalt and the crystalline polyester (Page 4 lines 14-15).
Regarding claims 28 and 29, Bueno teaches an asphalt composition comprising asphalt and polyester resin (see Title) wherein the polyester resin (meeting claimed “asphalt modifier”) is formed from an alcohol component-derived constituent unit and a carboxylic acid component-derived constituent unit (Page 6, lines 27-28).
In the interest of making the record clear, the language “derived from an alcohol component containing a linear aliphatic alcohol” and “derived from a carboxylic acid component” is product by process language (MPEP 2113).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, the only structure required for the asphalt modifier is a crystalline polyester has a melting point of 65-160C.
Bueno is silent to describing the characteristics of the polyester resin as “crystalline” and having “a melting point of 65-160C”.
However, it has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, Bueno uses the same reagents in a polycondensation reaction (see Page 10 lines 30-33, Page 23 lines 25-34, as well as Table 1 which expressly identifies EG which is ethylene glycol), expressly identifies tin(II) compounds as an esterification catalyst (Page 11 line 17; Page 11 line 27 expressly reciting “tin(II) di(2-ethylhexanoate)), and gallic acid (Page 12 line 9) which are the same as those utilized by Applicant as described in the specification (see Tables 1-1, 1-2, 1-3, and Paragraph 0057).
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Thus, there is a reasonable basis to believe that the polyester resin of Bueno would have some crystallinity and/or be crystalline and would possess a melting point of 65-160C absent evidence to the contrary.
Furthermore, it is noted for the clarity of the record that the claimed “crystalline” is construed using BRI because there is no definition or express recitation within the claim of how much crystallinity is required.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). (MPEP 2112.I.).
Bueno anticipates the asphalt composition containing crystalline polyester having a melting point of 65-160C and further anticipates the method of producing the asphalt composition comprising mixing the asphalt, aggregate, and the crystalline polyester (Page 4 lines 14-15).
Lastly, Bueno teaches that the polyester (i.e. asphalt modifier) is included from 5 parts or more to 30 parts or less (Page 18 line 34 to Page 19 line 3).
Bueno’s teaching of 5 parts to 30 parts anticipates the claimed range of 0.1 to 30 parts by mass relative to 100 parts by mass of the asphalt with sufficient specificity.
Regarding claim 30, Bueno anticipates the method as applied to claim 28 above and further anticipates that the temperature of the heated aggregate is 130 to 200C (Page 4 lines 14-15) which anticipates the claimed range of 130 to 230C with sufficient specificity.
Regarding claim 31, Bueno anticipates the method as applied to claim 28 above and further anticipates that the mixing comprises mixing at a temperature of 130-200C (Page 4 lines 14-15) which anticipates the claimed range of 130 to 230C with sufficient specificity.
Regarding claim 32, Bueno anticipates the asphalt mixture according to claim 26 above and further anticipates a method of paving a road with such a composition (Page 16 lines 14-18) because Bueno describes a step of laying the asphalt composition to form an asphalt paving material layer (meeting claimed “asphalt pavement material layer”).
Regarding claim 33, Bueno anticipates the method of paving a road as applied to claim 32 above and further anticipates that the asphalt pavement layer is a top course because Bueno discloses the step of ‘forming an asphalt paving material layer’ that is “free from any concern about heat deterioration” (Page 16 lines 10-11). POSITA would understand that the asphalt paving material layer having concerns about heat degradation would be a top course because that is the surface most at risk of heat deterioration. Thus, it necessarily follows that the asphalt paving material layer of Bueno is a top course.
Additionally, there is no mention of the paving layer being a subcourse so there is no sufficient reason to expect the paving material of Bueno to not be a top course.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2016-35037 (Cited in IDS of 12/27/2022; English Machine Translation attached herewith).
Regarding claim 28, JP 2016-35037 teaches an asphalt composition (Paragraphs 0001-0002, 0006) including asphalt, a crystalline material, and aggregate (Paragraph 0006). Specifically, the reference describes that the crystalline material can be a saturated polyester (Paragraph 0029) and that the method of mixing the asphalt, aggregates, and crystalline material occurs in the range of 120C-200C (Paragraph 0042).
In the interest of making the record clear, the language “derived from an alcohol component containing a linear aliphatic alcohol” and “derived from a carboxylic acid component” is product by process language (MPEP 2113).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, the only structure required for the asphalt modifier is a crystalline polyester has a melting point of 65-160C.
Thus, JP 2016-35037 teaches a method for producing an asphalt mixture comprising mixing an asphalt, aggregate and crystalline polyester at temperatures of 120C-200C which would render the aggregate “heated”.
Notably, the reference doesn’t expressly state the order of combining the ingredients but this feature is necessarily met because all manners and orders of combination are embraced by the claim language “simultaneously or in an arbitrary order”.
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
Applicant asserts that the Examiner erred because claim 10 has been misinterpreted and ignores the claimed effect or result of the process on the product.
Examiner disagrees and maintains that Applicant applies an overly narrow reading of the phrase ‘derived from’ to try to distinguish the instantly claimed invention from the prior art. Specifically, ‘derived from’ is product by process language and does not imply or otherwise require that any functional groups, or even chemical identity, must remain from the reagents that the crystalline polyester results from after the reaction.
Notably, Applicant’s arguments fail to address the reasoning in the rejection as it was provided.
See, particularly, that Bueno uses the same reagents in a polycondensation reaction (see Page 10 lines 30-33, Page 23 lines 25-34, as well as Table 1 where EG, i.e. ethylene glycol, is expressly used), expressly identifies tin(II) compounds as an esterification catalyst (Page 11 line 17; Page 11 line 27 expressly reciting “tin(II) di(2-ethylhexanoate)), and gallic acid (Page 12 line 9) which are the same as those utilized by Applicant as described in the specification (see Tables 1-1, 1-2, 1-3, and Paragraph 0057).
Conclusion
As previously indicated but reproduced again for the clarity of the record: The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S. 2,448,585 directed to polyesters prepared by reacting glycols with dicarboxylic acids and that the reaction of diethylene glycol with sebacic acid yields a crystalline polyester (Col. 7 approximately line 1-line 47); U.S. 3,575,908 directed to the polyester resin formed from ethylene glycol and terephthalic acid that is blended with asphalt; and U.S. 3,932,326 describing a copolymer polyester having a melting point of 90-130C.
Applicant's amendment necessitated any 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.
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.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
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