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 01/13/2023, 12/04/2023, and 12/19/2023 have been considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 33-41, 44, and 46 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.
Claim 33 includes the language “[t]he method according to one or more of claim 30…” (emphasis respectfully added for clarity) which is indefinite. It appears that the claim should say “the method according to claim 30,..” and has been interpreted as such. Claims 34-41 depend from claim 33.
Claim 44 includes the language “…determined according to AASHTO-320” which is indefinite because the year of the claimed standard is not recited or defined. As standards are ordinarily revised over time, the metes and bounds of the claim are unclear because the year and/or version of the standard is not specified and would be opaque to the person of ordinary skill in the art to thereby determine where infringement would begin.
Claim 46 includes the language “[t]he method according to o claim 26…” which renders the metes and bounds of the claim indefinite. It appears that this is a typo but a rejection has been made to ensure that the language is required to be amended.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Claim 49 is rejected under 112b as well as 101 because the claimed “method comprising providing the asphalt composition according to claim 48 and including the composition in the preparation of an asphalt mix composition” attempts to claim a process without setting forth any steps involved in the process and/or is an improper definition of a process under 35 U.S.C. 101.
While the claim does not expressly utilize the word “use”, the subject matter embraced by the claim language is effectively the ‘use’ of the product of claim 48. To be clear, the claim is not being distilled to the ‘gist’ of the subject matter; rather, Claim 49 does not constitute a proper process claim and/or set forth the steps required to accomplish a process of using the asphalt composition according to claim 48.
Furthermore, claim 48 is, itself, a product claim that includes product by process language (i.e., ‘obtained according to claim 26’).
Thus, claim 49 is a claim to the ‘method’ comprising ‘providing the asphalt composition having reduced emissions of hydrogen sulfide and obtained according to claim 26’ (i.e., the asphalt composition according to claim 48) and then including the composition in the preparation of an asphalt mix composition is indefinite and not a proper process claim as required by 101.
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 26-30, 33-37, 39, 41, 42, and 44-49 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fleischel et al. (WO 2018/228840; Cited in IDS of 01/13/2023) as evidenced by Sohi’s 2015 Asphalt Magazine Article “H2S can be a danger in the asphalt workplace”.
Regarding claim 26, Fleischel et al. (hereinafter “Fleischel”) teaches a method comprising the steps of heating asphalt pen 50-70 to 150C under oxygen atmosphere under stirring (meeting claimed step (A)), adding 2 wt% of pMDI, i.e. polymeric MDI as described at Page 4 lines 23-34 and Page 12 lines 10-14, (meeting claimed step (B)), further processed at 150C for 5 h and then sealed (meeting claimed step (C)) (Page 17 lines 23-29). Notably, Page 8 lines 11-18 expressly describe that the reaction is under an oxygen atmosphere and that stirring occurs in step c.
Examiner notes that Fleischel does not expressly identify that the starting asphalt, i.e. the pen 50-70, contains hydrogen sulfide or that scavenging said hydrogen sulfide is an intended result of Fleischel’s method.
However, it is well-known in the art that asphaltic materials, such as Fleischel’s pen 50-70 asphalt, contain hydrogen sulfide.
To make the record clear, the evidentiary teachings of “Sohi” are expressly provided to demonstrate that ‘[h]ydrogen sulfide (H2S) is a naturally occurring gas contained in many of the world’s crude oils’, is found in petroleum (including asphalt), and is a known workplace hazard (see “Where is H2S found” section).
Fleischel makes no statement or otherwise provides any indication that the starting asphalt had been pretreated to remove/scavenge any material such as H2S before use.
Thus, it necessarily follows that the pen 50-70 of Fleischel, i.e., the starting asphalt, would contain hydrogen sulfide because it is a naturally occurring compound from the asphaltic source, i.e., crude oil/petroleum.
Next, the person of ordinary skill in the art would recognize that H2S is a thiol.
Fleischel expressly teaches that “[a] thermosetting reactive compound will react with the phenolic, carboxylic, thiol, anhydride and/or pyrrolic group…” (Page 3 lines 28-29); emphasis respectfully added for clarity.
Any reaction with the thiol would thereby reduce the emission and/or scavenge the thiol, i.e., the hydrogen sulfide.
As such, the method of Fleischel, using the same materials and processing conditions as Applicant, would inherently scavenge the hydrogen sulfide present in the starting asphalt.
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).
Regarding claim 27, Fleischel as evidenced by Sohi anticipates the method as applied to claim 26 above and further teaches that the pMDI is included in an amount of 2.0 wt% (Page 17 lines 23-29).
Regarding claim 28, Fleischel as evidenced by Sohi anticipates the method as applied to claim 26 above and further teaches that the pMDI is included (Page 17 lines 23-29). pMDI is “polymeric MDI” and is known as polymethylene polyphenylene polyisocyanate, polyarylene polyisocyanate, and/or polyphenylmethan polyisocyanate (Page 4 lines 23-25). Thus, Fleischel’s pMDI comprises an isocyanate as claimed.
Regarding claim 29, Fleischel as evidenced by Sohi anticipates the method as applied to claim 28 above and further teaches that the pMDI has a functionality of 2.7 (Page 12 lines 10-14).
Regarding claim 30, Fleischel as evidenced by Sohi anticipates the method as applied to claim 28 above and further teaches that the pMDI comprises varying amounts of isomers like 4,4'-, 2,2'- and 2,4' isomers and the 2 rings content of polymeric MDI is in the range of from 20 to 62 (Page 5 lines 25-28). Thus, Fleischer’s pMDI is selected from aliphatic isocyanates and aromatic isocyanates, respectively.
Regarding claims 33-36, Fleischel as evidenced by Sohi anticipates the method as applied to claim 30 above and further teaches the pMDI, i.e. polymeric MDI, comprises varying amounts of isomers like 4,4'-, 2,2'- and 2,4' isomers (Page 5 lines 25-26).
Regarding claim 37, Fleischel as evidenced by Sohi anticipates the method as applied to claim 35 above and further teaches that the pMDI can include modified variants containing carbodiimide (Page 4 line 30).
Regarding claim 39, Fleischel as evidenced by Sohi anticipates the method as applied to claim 33 above and further teaches that the pMDI, i.e., polymeric MDI, has a functionality of 2.7 (Page 12 lines 10-14).
Regarding claim 41, Fleischel as evidenced by Sohi anticipates the method as applied to claim 35 above and further teaches the pMDI has an iron content of 1 to 100 ppm (Page 4 lines 36-37) which meets the claimed range of 1 to 80 ppm because the claimed range lies entirely within the disclsoed range of Fleischel.
Regarding claim 42, Fleischel as evidenced by Sohi anticipates the method as applied to claim 26 above and further teaches the composition has at least 18% by weight based on the total weight of the composition particles with a sedimentation coefficient above 5000 Sved in a white spirit solvent (Page 7 lines 11-13) and that the useful temperature interval is detected according to AASHTO M320 (Table 5 description at Page 16 line 9).
Regarding claim 44, Fleischel as evidenced by Sohi anticipates the method as applied to claim 26 above and further teaches that the asphalt can be any known asphalt (Page 3 lines 39-40) and includes various performance grades such as 52-16, 52-22, 52-28, 52-34,52-40,58-16, 58-22,58-28, 58-34, 58-40, 64-16, 62-44, 62-28, 64-34,64-40,70-16, 70-22, 70-28, 70-34, 70-40, 76-16, 76-11, 76-28, 76-34, and/or 76-40 (Page 4 lines 5-7).
Regarding claim 45, Fleischel as evidenced by Sohi anticipates the method as applied to claim 26 above and further teaches that the temperatures in step A and C are 150C (Page 17 lines 23-29).
Regarding claim 46, Fleischel as evidenced by Sohi anticipates the method as applied to claim 26 above and further teaches that step C occurs for 5 h (Page 17 lines 23-29) and stirring occurs (Page 8 lines 11-18).
Regarding claim 47, Fleischel as evidenced by Sohi anticipates the method as applied to claim 26 above and further teaches that the thermosetting reactive compound can include epoxy resin and/or melamine formaldehyde resin (Page 4 lines 20-21).
Regarding claim 48, Fleischel teaches a method comprising the steps of heating asphalt pen 50-70 to 150C under oxygen atmosphere under stirring (meeting claimed step (A)), adding 2 wt% of pMDI, i.e. polymeric MDI as described at Page 4 lines 23-34 and Page 12 lines 10-14 (meeting claimed step (B)), further processed at 150C for 5 h and then sealed (meeting claimed step (C)) (Page 17 lines 23-29). Notably, Page 8 lines 11-18 expressly describe that the reaction is under an oxygen atmosphere and that stirring occurs in step c as well as step a.
Examiner notes that Fleischel does not expressly identify that the starting asphalt, i.e. the pen 50-70, contains hydrogen sulfide or that scavenging said hydrogen sulfide is an intended result of Fleischel’s method.
However, it is well-known in the art that asphaltic materials contain hydrogen sulfide.
To make the record clear, the evidentiary teachings of “Sohi” are expressly provided to demonstrate that ‘[h]ydrogen sulfide (H2S) is a naturally occurring gas contained in many of the world’s crude oils’, is found in petroleum (including asphalt), and is a known workplace hazard (see “Where is H2S found” section).
Fleischel makes no statement or otherwise provides any indication that the starting asphalt had been pretreated to remove/scavenge any material such as H2S before use.
Thus, it necessarily follows that the pen 50-70 of Fleischel, i.e., the starting asphalt, would contain hydrogen sulfide because it is a naturally occurring compound from the asphaltic source, i.e., crude oil/petroleum.
Next, the person of ordinary skill in the art would recognize that H2S is a thiol.
Fleischel expressly teaches that “[a] thermosetting reactive compound will react with the phenolic, carboxylic, thiol, anhydride and/or pyrrolic group…” (Page 3 lines 28-29); emphasis respectfully added for clarity. Any reaction with the thiol would thereby reduce the emission and/or scavenge the thiol, i.e., the hydrogen sulfide.
As such, the method of Fleischel, using the same materials and processing conditions as Applicant, would inherently scavenge the hydrogen sulfide present in the starting asphalt and the resultant product of the process explained by Fleischel at Page 17 lines 23-29 would be an asphalt composition having reduced emissions of hydrogen sulfide.
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).
Regarding claim 49, Fleischel as evidenced by Sohi anticipates the method as applied to claims 26 and 48 above and Fleischel further teaches that the asphalt is then combined with aggregate (Page 17 line 31 to Page 18 line 2; teaching an asphalt mixture comprising aggregate which meets the claimed ‘asphalt mix composition’).
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.
Claims 31 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Fleischel as evidenced by Sohi as applied to claim 30 above, and further in view of Demangeon et al. (U.S. 4,772,648).
Regarding claims 31 and 32, Fleischel as evidenced by Sohi anticipates the method as applied to claim 30 above but is silent to the particularly claimed species of the aliphatic isocyanates.
Demangeon et al. (hereinafter “Demangeon”) teaches a cationic bitumen emulsion (Title) including a thickening agent such as hexamethylene 1,6-diisocyanate (Col. 8 lines 25-27).
Fleischel and Demangeon are analogous art as they are both from the asphaltic arts and the person of ordinary skill in the art before the effective filing date of the claimed invention would have understood the references to have been from the same field of endeavor.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the claimed invention to include the particular species of hexamethylene 1,6 diisocyanate in view that the composition is well known to be used in asphalt compositions and would provide the benefit of a thickening agent which would be appreciated by persons of ordinary skill as imparting increased thixotropic and rheological control to the artisan when forming the asphalt mix. The thixotropic and rheological characteristics of the asphalt mix would be understood by said artisans to impact the storage stability of the mix.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Fleischel as evidenced by Sohi as applied to claim 37 above.
Regarding claim 38, Fleischel as evidenced by Sohi anticipates the method as applied to claim 37 above but is silent to the particular combination of 4,4’-MDI and carbodiimide.
However, Fleischel does teach that the pMDI comprises modified variants containing carbodiimide (Page 4 line 30) and that the 4,4'MDI isomers are in the range of from 26 to 98%.
Thus, it would be obvious to select the combination of 4,4'-MDI and carbodiimide as both components are taught to comprise the pMDI and it would be obvious to determine the appropriate proportions of the 4,4'MDI and carbodiimide in view that Fleischel expressly teaches the range of 26 to 98% 4,4'MDI which overlaps the claimed range of 65 to 85 wt%. The person of ordinary skill in the art could routinely select and/or determine the remaining percentage/portion of the carbodiimide. To be clear, the reference effectively discloses that the materials other than 4,4'-MDI are present in the amount of 2 to 74% (i.e. 100-26 = 74 and 100-98 =2). Thus, the range of the remaining pMDI elements is 2 to 74% which meets the claimed range of 15 to 35 wt% because the claimed range lies entirely within the effectively disclosed range.
With regard to the particular selection of the combination of 4,4'-MDI and carbodiimide, it has been held that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose… the idea of combining them flows logically from their having been individually taught in the prior art In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Fleischel as evidenced by Sohi as applied to claim 26 above, and further in view of Baumgardner et al. (U.S. 6,569,351).
Regarding claim 43, Fleischel as evidenced by Sohi anticipates the method as applied to claim 26 above but is silent to the inclusion of polymeric additives such as those claimed.
Baumgardner et al. (hereinafter “Baumgardner”) teaches an accelerator gel additive for the use in the product of polymer modified asphalt that results in the polymer and asphalt production temperatures to be lower which, in turn, reduces the production of toxic and flammable gases such as hydrogen sulfide (Abstract).
Specifically, Baumgardner teaches that polymers such as SBR and SBS are used (Col. 4 lines 61-67) and provide decreased curing time and improved storage stability as well as desirable properties (Col. 5 lines 20-25).
As an additional explanation for the record, the person of ordinary skill in the art before the effective filing date of the claimed invention would find the inclusion of SBR, SBS, and other similar polymers to be prima facie obvious because the incorporation of such materials is well-known and routine within the asphaltic arts.
Thus, it would be obvious to modify the composition of Fleischel with the SBR and/or SBS polymers of Baumgardner so as to achieve an improved polymer modified asphalt with desirable properties that has a reduced evolution of toxic and flammable gases such as hydrogen sulfide.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: WO 01/30911 directed to an asphalt composition comprising polymeric MDI (Title) where polymeric MDI is added to a polymer-modified asphalt composition containing SBS (Page 6 lines 20-24).
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738