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 .
Response to Amendment and Status of Claims
Applicant's amendment, filed 04/13/2026, has been entered. Claims 26, 29, 35, and 48 are amended, claims 1-25, 28, 30-34, 39, 40, 42, 44-47, and 49 are or were previously cancelled, and no claims are newly added. Accordingly, claims 26, 27, 29, 35-38, 41, 43, and 48 are pending and considered in this Office Action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/30/2026 after the mailing of the Non-Final Office Action on 01/12/2026 has been considered by the examiner. The 1.17p fee was paid.
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.
Claim 48 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Buras et al. (U.S. 2005/0145137).
Regarding claim 48, Buras teaches asphalt compositions in Table III having a H2S concentration of less than 1 ppm which anticipates the claimed range of ‘0.2 ppm or below’ with sufficient specificity.
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 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 26, 27, 29, 35-38, 41, and 48 are rejected under 35 U.S.C. 103 as being unpatentable over 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” in further view of Buras et al. (U.S. 2005/0145137).
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.
Fleischel further teaches that 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 aromatic isocyanate as claimed.
However, Fleischel and/or Sohi are silent to the concentration of hydrogen sulfide in the asphalt composition being reduced to less than 0.2 ppm but such a feature would be prima facie obvious in view of the teachings of Buras as follows.
Buras et al. (hereinafter “Buras”) teaches a process for preparing bitumen compositions with reduced hydrogen sulfide emission (Title) where a H2S scavenger is used to reduce the H2S evolution to acceptable levels such as those set by OSHA and/or 50 ppm or below (Paragraph 0027). Buras discloses compositions in Table III where the H2S is reduced to less than 1 ppm (see at least Examples 7 and 10-14).
It would be obvious to use the H2S scavenger to reduce the asphalt composition H2S level to 0.2 ppm or less so that H2S does not pose a workplace and/or health hazard. Buras expressly teaches reducing the level to those set by OSHA and/or 50 ppm or below as well as examples that achieve a reduction to less than 1 ppm. The claimed range of less than 0.2 ppm lies completely within Buras’ disclosed ’50 ppm or below’ and/or less than 1 ppm. 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).
Regarding claim 27, Fleischel as evidenced by Sohi in view of Buras teaches the method as applied to claim 26 above and Fleischel further teaches that the pMDI is included in an amount of 2.0 wt% (Page 17 lines 23-29).
Regarding claim 29, Fleischel as evidenced by Sohi in view of Buras teaches the method as applied to claim 26 above and Fleischel further teaches that the pMDI has a functionality of 2.7 (Page 12 lines 10-14).
Regarding claims 35 and 36, Fleischel as evidenced by Sohi in view of Buras teaches the method as applied to claim 26 above and Fleischel further teaches that 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) 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 claim 37, Fleischel as evidenced by Sohi in view of Buras teaches the method as applied to claim 35 above and Fleischel further teaches that the pMDI can include modified variants containing carbodiimide (Page 4 line 30; meeting BRI of monomeric MDI carbodiimide modified monomeric MDI).
Regarding claim 38, Fleischel as evidenced by Sohi in view of Buras teaches 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).
Regarding claim 41, Fleischel as evidenced by Sohi in view of Buras teaches method as applied to claim 35 above and Fleischel 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 disclosed range of Fleischel.
Regarding claim 48, Fleischel as evidenced by Sohi in view of Buras teaches the method as applied to claim 26 above and the product resultant from that method would be expected to produce an asphalt composition having an H2S concentration of less than 0.2 ppm absent evidence to the contrary. Alternatively, it would be obvious to lower the H2S concentration to as low as possible because H2S is recognized as a health hazard. Buras teaches in Table III various examples that possess an H2S concentration of less than 1 ppm which overlaps the claimed range of less than 0.2 ppm.
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Fleischel as evidenced by Sohi in view of Buras 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 in view of Buras teaches 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.
Response to Arguments
Applicant's arguments filed 04/13/2026 have been fully considered but they are not persuasive.
The perceived deficiencies of Fleischel in meeting the limitations of the amended claims are believed to be overcome by Buras as further relied upon.
Also, Examiner notes that Applicant argues that Fleischel and Sohi do not disclose “the thermosetting reactive compound as an aliphatic isocyanate and aromatic isocyanate” (Page 1 Section IV) but the combination of an aliphatic isocyanate and aromatic isocyanate is not required by the claims.
Conclusion
Reproduced again in the interest of the clarity of the record, 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).
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.
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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