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 .
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.
Examiner’s Remarks and Claim Interpretation
Applicant’s claims recite “cold-applied thermoplastic bond coat system” and “thermoplastic”. Examiner notes that Applicant’s invention (as evidenced by the specification in paragraph [0044]) is not a traditional thermoplastic, because a traditional thermoplastic requires high heat to melt it, and therefore is not applied “cold”. The claims will be examined accordingly, and therefore “thermoplastic” will not be given the interpretation of a traditional thermoplastic.
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 1-4, 9, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over DE 102011003317 A1 (hereinafter will be referred to as “DE ‘317”) in view of Schoenbrodt et al., US 2021/0309891 A1.
Regarding claim 1, DE ‘317 teaches a reactive cold-applied thermoplastic bond coat system, comprising:
a first component comprising:
a polyacrylate polymer (polymethacrylate or polyacrylate or mixture of both), in an amount of about 1-25% by weight of the composition (bottom half of page 3 of English translation),
acrylate monomers (methacrylates), in an amount of about 20-85% by weight of the composition (top half of page 3 of the English translation),
a plasticizer (dibutyl phthalate or oil; top half of page 7 of the English translation), and
an accelerator, in an amount of about 0-5% by weight of the composition (near the middle of page 3 of the English translation); and
a second component comprising an initiator suspension, such as a peroxide initiator suspension, in an amount of about 1-5% by weight of the composition (bottom half of page 3 of the English translation),
wherein a mixture of the first component and the second component is sprayable or manually appliable and cures to form a solid thermoplastic bond coat (“cold spray plastic”; bottom half of page 3 of the English translation; it is a thermoplastic because it is a plastic that has a soft stage and later hardens in the same way that Applicant’s is a thermoplastic) at ambient temperatures of about -10 °C to about 50 °C (middle of page 4 of the English translation).
While DE ‘317 discloses a polyacrylate polymer in the range of 1-25% by weight of the composition but fails to explicitly disclose the claimed range of about 10-30% and discloses acrylate monomers in the range of about 20-85% by weight of the composition but fails to explicitly disclose the claimed range of 5-45%, it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
While DE ‘317 discloses the use of a plasticizer but fails to disclose the claimed preferred amount of about 0.1-10% by weight of the composition, DE ‘317 discloses that the plasticizer is part of the initiator of the bond coat system and that the initiator is in the range of 0.1-7% by weight of the composition (top half of page 7 of the English translation). Since the claim requires as little as 0.1% and as much as 10% by weight of the composition, it appears that with the initiator being part of the composition that it would be obvious that there would be an overlap of the range disclosed by the prior art.
While DE ‘317 discloses the bond coat system including polymers mixed to form impact-modified molding compositions “in the melt” but fails to disclose a tackifier, in an amount of about 10-50% by weight of the composition, Schoenbrodt teaches a polymer spray for use with concrete and discloses the use of a tackifier in the range of 10-80% by weight of the composition ([0097]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to include a tackifier in an amount of about 10-50% by weight of the composition in view of Schoenbrodt’s disclosure that a tackifier can enhance the adhesion and/or tackiness of the composition (Schoenbrodt’s [0104]) in a bonding system.
Regarding claim 2, the resulting combination includes the polyacrylate polymer of the first component being a polymethacrylate polymer.
Regarding claim 3, the resulting combination includes the first component further comprising at least one additive, mineral fillers, in an amount of about 50-60% by weight of the composition (sixth to last line on page 3 of the English translation of DE ‘317). While there is no explicit disclosure of the claimed 0-50% by weight of the composition, it has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 4, the resulting combination from claim 3 includes the at least one additive being selected from fillers (mineral filler; sixth to last line on page 3 of the English translation of DE ‘317).
Regarding claim 9, the limitation of the bond coat “after curing and upon exposure…” pertains to a property. Since the resulting combination meets the elements of the bond coat, it is obvious that it would have the properties. It is noted that the last limitation does not further limit the thermoplastic bond coat system, and instead pertains to the environment in which the bond coat system is applied and outside factors.
Regarding claim 10, since the resulting combination meets the elements of the bond coat, it is obvious that it would have the properties, and is obvious it would have a viscosity about 6,000 cP.
Regarding claim 11, since the resulting combination meets the elements of the bond coat, it is obvious that it would have the properties, and is obvious that it would be capable of providing the claimed shear adhesion.
Regarding claim 12, since the resulting combination meets the elements of the bond coat, it is obvious that it would have the properties, and is obvious that it would be capable of providing the claimed tensile adhesion.
Regarding claim 26, the elements of the resulting combination of claim 1 make obvious the “kit” comprising those elements, since a user making the bond coat system would have the elements together, which is a kit, to be able to mix and make it. The resulting combination from claim 1 includes the limitation of a mixture of the first component and the second component being sprayable and cures to form a solid bond coat (“cold spray plastic”; bottom half of page 3 of the English translation of DE ‘317). The limitations following “optional” are not required.
Claims 13-15, 18-19, 21-22, 24-25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over DE ‘317 in view of Schoenbrodt as applied to claim 1 and claim 26 above, further in view of Naito, US 2020/0131398 A1.
Regarding claim 13, the resulting combination from claim 1 includes a bond coat system comprising a first component with the claimed limitations of the first component mixed with a second component with the claimed limitations of the second component. While the resulting combination fails to disclose the remaining steps of the claim, Naito teaches a coating and process of constructing roads and discloses forming a road by forming a water-repellant layer which is coating layer on a substrate and then forming an asphalt layer on top of the water-repellant layer ([0038]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination from claim 1 to apply the mixture (bond coat system from claim 1) onto the substrate without the use of heating elements (since the bond coat system is a “cold spray plastic”; bottom half of page 3 of the English translation of DE ‘317) and applying the pavement material onto the bond coat to form a composite of the bond coat and the pavement material, where the composite binds the pavement material to the substrate and provides for a waterproof bond (Naito’s disclosure of water-repellant) between the pavement material and the substrate.
While the resulting combination fails to explicitly disclose allowing the mixture to cure before applying the pavement material on top, it is an obvious modification to allow the mixture to cure first to allow the resin to form properly; adding pavement material before curing is complete would alter the chemical composition of the resin and the resin would not form as designed.
Regarding claim 14, since Naito suggests forming a road using asphalt as the pavement material ([0038]), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the resulting combination to use asphalt as the pavement material.
Regarding claim 15, the resulting combination from claim 14 includes using asphalt. The Examiner took Official Notice in the previous office action that all of the types of asphalt listed in the claimed group are old and well-known. Examiner notes that the claimed “asphalt protection layer” is not a type of asphalt, unlike the others in the claimed group; rather it appears Applicant is referring to a thin layer of asphalt on the top surface of the pavement, which is a known application rather than a type. It has been held that selection of a known material based on its suitability for its intended use is a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Applicant failed to challenge the Official Notice in their arguments. Under the guidelines of MPEP 2144.03, to adequately traverse Official Notice, an applicant must specifically point out the supposed errors in the Examiner's action including stating why the noticed fact is not considered to be common knowledge or well-known in the art. A general allegation that the claims define a patentable invention without any reference to the Examiner's assertion of Official Notice would be inadequate. Since applicant did not adequately traverse the Examiner's assertion of Official Notice, the facts are now considered to be admitted prior art (MPEP 2144.03). Applicant's traversal is considered inadequate because there was no reference to the Examiner's assertion of Official Notice. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use asphalt selected from the group consisting of asphaltic concrete, hot rolled asphalt, stone mastic asphalt, mastic asphalt, porous asphalt, sand carpet, and asphalt protection layer since one of ordinary skill in the art would be able to select one based on its suitability.
Regarding claim 18, the resulting combination includes the step of applying the mixture onto the substrate being performed by spraying the mixture onto the substrate since DE ‘317 discloses “cold spray plastic” (bottom half of page 3 of English translation).
Regarding claim 19, the resulting combination from claim 13 includes the claimed mixture being applied on the substrate. While the resulting combination fails to explicitly disclose the mixture being applied at a coat weight of about 100 gsm to about 1400 gsm, Examiner notes that this is quite a large range in the density/thickness of the coat applied. Further, it has been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have the mixture be applied at a coat weight of about 100 gsm to about 1400 gsm based on obvious design choice by routine experimentation.
Regarding claim 20, DE ‘317 further discloses the second component comprising an initiator could further comprise a third component (an additional initiator; “a mixture containing one or more initiators”; in the bottom half of page 3 of the English translation), which includes the limitation of mixing a third component (additional initiator) together with the second component (initiator) to form an activated third component, and the resulting combination makes obvious subsequently mixing with the first component since that is required to make the bond coat “cold spray” and applied onto the substrate.
Regarding claim 21, the resulting combination includes the limitation that upon application of the pavement material onto the cured bond coat, the pavement material (asphalt) is capable of compacting on the bond coat, such that a water penetration at the interface of the bond coat and the pavement material is in the amount of about 0% to about 50% (since the mixture is a plastic that hardens, water penetration should be about 1% or less which could be 0%).
Regarding claim 22, since the resulting combination meets the elements of the bond coat, it is obvious that it would have the properties.
Regarding claim 23, since the resulting combination meets the elements of the bond coat, it is obvious that it would have the properties, and is obvious it would have a viscosity of about 6,000 cP.
Regarding claim 24, while the resulting combination fails to explicitly disclose the bond coat being applied at a coat weight of about 600 gsm to about 1200 gsm, it has been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have the bond coat be applied at a coat weight of about 600 gsm to about 1200 gsm based on obvious design choice by routine experimentation. The limitation pertaining to a shear adhesion between the substrate and a pavement material is a property; since the resulting combination meets the components, it would appear obvious that it would have that property.
Regarding claim 25, while the resulting combination fails to explicitly disclose the bond coat being applied at a coat weight of about 600 gsm to about 1200 gsm, it has been held that "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to have the bond coat be applied at a coat weight of about 600 gsm to about 1200 gsm based on obvious design choice by routine experimentation. The limitation pertaining to a tensile adhesion between the substrate and a pavement material is a property; since the resulting combination meets the components, it would appear obvious that it would have that property.
Regarding claim 27, the elements of the resulting combination from claim 26 includes the method step of applying (e.g. spraying) the mixture onto the substrate without the use of heating elements since it is a cold spray and allowing the mixture to cure to form a cured bond coat (since DE ‘317 discloses the bond coat being a spray that cures; Abstract and bottom half of page 3 of English translation). The limitations of transporting the first component and second component and mixing the first component and second component at the jobsite are obvious, since it would not make sense to mix the components prior to being at the jobsite, the bond coat would cure and harden before it could be applied (sprayed).
While the resulting combination fails to disclose the limitation of the last clause of the claim, Naito teaches a coating and process of constructing roads and discloses forming a road by forming a water-repellant layer which is coating layer on a substrate and then forming an asphalt layer on top of the water-repellant layer ([0038]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination from claim 26 to apply the mixture (bond coat) onto the substrate and apply the pavement material onto the bond coat to form a composite of the bond coat and the pavement material, where the composite binds the pavement material to the substrate and provides for a waterproof bond (Naito’s disclosure of water-repellant) between the pavement material and the substrate.
While the resulting combination fails to explicitly disclose allowing the mixture to cure before applying the pavement material on top, it is an obvious modification to allow the mixture to cure first to allow the bond coat/resin to form properly; adding pavement material before curing is complete would alter the chemical composition of the bond coat/resin and the bond coat/resin would not form as designed.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over DE ‘317 in view of Schoenbrodt and Naito as applied to claim 14, further in view of Chaney Enterprises “Aggregate Sizing Explained” as an evidentiary reference (NPL; hereinafter will be referred to as “Chaney”).
Regarding claim 16, while the resulting combination includes asphalt but fails to explicitly disclose the average aggregate size of the asphalt, Chaney discloses that 55 mm (which converts to 2.16 inches) and up to about 55 mm are known sizes of asphalt aggregate (page 2). It has been held that selection of a known material based on its suitability for its intended use is a matter of obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the average aggregate size be up to about 55 mm based on obvious design choice selecting from known aggregate sizes.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over DE ‘317 in view of Schoenbrodt and Naito as applied to claim 13, further in view of Jeoffroy et al., US 2018/0087224 A1.
Regarding claim 17, while the resulting combination fails to disclose the substrate comprising a waterproofing membrane, Jeoffroy discusses road pavements ([0002]) and discloses glueing waterproof membranes to the substrate ([0074]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate to comprise a waterproofing membrane as an additional waterproofing layer (in addition to the water-repellant bond coat of the resulting combination) in view of Jeoffroy’s disclosure that providing one or various layers of waterproof membranes prevents water from infiltrating the substrate ([0074]-[0075]) since water can lead to the substrate cracking.
Allowable Subject Matter
Claims 5-8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 6/2/2026 have been fully considered but they are not persuasive.
Applicant argues that DE ‘317 does not teach a thermoplastic coating and teaches away from cold-applied reactive thermoplastic coatings. Applicant appears to be mischaracterizing what DE ‘317 actually teaches. DE ‘317 only teaches away from hot-applied thermoplastic coatings (middle of page 2 under “State of the art”); DE ‘317 teaches “cold spray plastics” (bottom half of page 3 of English translation) just like Applicant’s, with extremely similar components and amounts of the components. See Examiner’s Remarks and Claim Interpretation. Therefore, Applicant’s arguments are not persuasive.
Applicant does not provide arguments to the dependent claims, only relying on these arguments which have been addressed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE J CHU whose telephone number is 571-272-7819. The examiner can normally be reached M-F generally 9:30-5:30.
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/KATHERINE J CHU/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671
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