DETAILED ACTION
1. Claims 1-2, 5, 7, 9, 11-15, 17, 19, 21, 23-25, 28, 30, 32, 34-36, and 39, as filed by Preliminary Amendment on 09/30/2020, are pending for examination.
Notice of Pre-AIA or AIA Status
2. 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
3. The information disclosure statement (IDS) submitted on 03/16/2023 has been considered by the examiner. An initialed copy is attached.
Claim Objections
4. Claims 2, 11-13, 21, 23-25 are objected to because of the following informalities:
Claims 2 & 25 should be amended to add the word “complex” after “acid” for consistency with its reference in the prior claims.
In claims 11-12 & 24, the word “about” should be removed before the number of carbon atoms. The number of carbon atoms must be an integer, not an approximation.
In claim 13, line 5, “Behenic acid” should start with a lower case ‘b’.
It is suggested that claim 21 delete “or alcohol-aldehyde” from line 2 since claim 21 only recites particular amine-aldehyde complexes.
It is suggested that claim 23 delete “amine-aldehyde or” from line 2 since claim 23 only defines alcohol-aldehyde complexes.
Appropriate correction is required.
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.
5. Claims 5, 19, 28 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 5 and 28 recite the limitation "Cu-acid” in lines 2 & 3. It is logical that this is shorthand for “copper-carboxylic acid”, but it has not previously been recited as such, hence there is insufficient antecedent basis for this limitation in the claims.
Claim 19 recites the limitation "PPA" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, on which claim 19 depends, does not recite PPA. Claim 19 should be amended to depend from claim 17 instead.
Appropriate correction/clarification is required.
Claim Rejections - 35 USC § 103
6. 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 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 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.
7. Claims 1-2, 5, 7, 9, 11-15, 17, 19, 21, 23-25, 28, 30, 32, 34-36, 39 are rejected under 35 U.S.C. 103 as being unpatentable over Poland et al. (US 2017/0022109 A1).
As to independent claim 1, Poland teaches a composition comprising: a copper-carboxylic acid complex and an asphalt composition (see para. 0008: the copper-based complex can include copper carboxylate; para. 0010, 0026: a composition comprising an asphalt and an additive including a copper-based complex).
Poland fails to explicitly disclose a preferred molar ratio of copper (Cu) to carboxylic acid, specifically that the molar ratio is between 1:0.1 and 1:1.5.
However, it would have been obvious for a person of ordinary skill in the relevant arts before the effective filing date of the claimed invention to select the specific claimed range for molar ratio of copper to carboxylic acid (i.e. 1:0.1 to 1:1.5) in the composition taught by Poland, in order to achieve desired properties of the asphalt, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233 and MPEP 2144.05.
As to claim 2, Poland teaches the composition as recited in claim 1, but fails to explicitly disclose the claimed amount of copper in the copper-carboxylic acid complex. However, it is noted that one of ordinary skill in the art would discover the optimum or workable ranges for the % wt. of copper in the copper-carboxylic acid based on routine experimentation and the disclosure of Poland (see para. 0029-0030: the additives may be introduced into the asphalt at any concentration useful to the intended end result). Burden is shifted to the Applicant to provide evidence that the claimed ranges produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. See MPEP 2144.05.
As to claim 5, Poland teaches the composition as recited in claim 1, wherein the copper-carboxylic acid complex comprises from about 10% to 90% Cu-acid complex and from about 90% to 10% organic solvent (see para. 0029: a typical formulation is 50-80% metal carboxylate and 20-50% primary solvent). A prima facie case of obviousness exists because the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. See MPEP 2144.05 I.
As to claim 7, Poland teaches the composition as recited in claim 5, but is silent on the viscosity of the copper-carboxylic acid complex. However, in view of the substantially identical composition, it follows that the composition would have necessarily possessed the claimed viscosity property. See MPEP 2112.01. Alternatively, selecting different chemical reactants or synthesis conditions to achieve the desired properties is achieved by one of ordinary skill in the art without undue experimentation based on the prior art and general technical knowledge.
As to claim 9, it would have been obvious for a person of ordinary skill in the relevant arts before the effective filing date of the claimed invention to select the specific claimed range for molar ratio of copper to carboxylic acid (i.e. 1:0.2 to 1.0:1.0 or 1.0:0.25) in the composition taught by Poland, in order to achieve desired properties of the asphalt, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233 and MPEP 2144.05.
As to claim 11, Poland teaches the composition as recited in claim 2, wherein the copper (Cu) comprises reaction products of Cu metal with a carboxylic acid with 4-22 carbon atoms (see para. 0008).
As to claims 12-13, Poland teaches the composition as recited in claim 1, but fails to explicitly disclose that the copper-carboxylic acid complex is represented by the general formula
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However, Poland teaches the use of copper carboxylates formed by reacting copper with an organic acid, for example octanoic acid isomers or naphthenic acid (see para. 0008; these two acids are listed as options in claim 13). Unless evidence is provided to the contrary, the selection of the particular copper-carboxylic acid complex formula is only a matter that takes the purpose of use, functionality, and desired properties into consideration and that a person skilled in the art chooses suitably based upon the teachings of Poland and general chemical knowledge. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See MPEP 2144.09 and 2144.08.
As to claims 14-15 & 17, Poland teaches the composition as recited in claim 1, wherein the asphalt composition is acidic (see para. 0008 & 0010); claim 14, wherein the asphalt composition comprises an asphalt modifier that comprises mineral acids and/or organic acids (see para. 0008 & 0020); claim 15, wherein the mineral acids comprise polyphosphoric acid (PPA) and/or the other mineral/organic acids recited in claim 17 (see para. 0008 & 0020).
As to claim 19, Poland teaches the composition as recited in claim 1, but fails to explicitly disclose the amount of PPA in the asphalt composition. However, it is noted that one of ordinary skill in the art would discover the optimum or workable ranges for the percent weight of PPA in the composition based on routine experimentation and the disclosure of Poland (see para. 0020 & 0029-0030: asphalt modifiers such as PPA & the additives may be introduced into the asphalt at any concentration useful to the intended end result). Burden is shifted to the Applicant to provide evidence that the claimed ranges produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. See MPEP 2144.05.
As to claims 21 & 23, Poland teaches the composition as recited in claim 1, further comprising an amine-aldehyde complex or alcohol-aldehyde complex (see para. 0008 & 0032). As to the particular amine-aldehyde or alcohol-aldehyde complexes, it has been held to be within the general skill of an artisan to select a particular material on the basis of its suitability for the intended use as a matter of obvious engineering choice. Since Poland teaches these complexes as additives, it would have been obvious to one skilled in the art to prepare a composition containing the specifically claimed amine-aldehydes or alcohol-aldehydes from general knowledge in the art.
As to independent claim 24, Poland teaches a method for scavenging hydrogen sulfide from asphalt, the method comprising: providing a composition comprising: a copper-carboxylic acid complex (see para. 0008, 0010, 0026: the copper-based complex can include copper carboxylate) and adding the composition to an asphalt composition (see para. 0008, 0012, 0017-0024, 0028-0034).
Poland fails to explicitly disclose [1] that the molar ratio of copper (Cu) to carboxylic acid in the copper-carboxylic acid complex is between 1:0.1 and 1:1.5 and [2] that the copper-carboxylic acid complex is represented by the general formula
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.
As to claim 24, difference [1], it would have been obvious for a person of ordinary skill in the relevant arts before the effective filing date of the claimed invention to select the specific claimed range for molar ratio of copper to carboxylic acid (i.e. 1:0.1 to 1:1.5) in the composition taught by Poland, in order to achieve desired properties of the asphalt, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233 and MPEP 2144.05.
As to claim 24, difference [2], Poland teaches the use of copper carboxylates formed by reacting copper with an organic acid, for example octanoic acid isomers or naphthenic acid (see para. 0008). Unless evidence is provided to the contrary, the selection of the particular copper-carboxylic acid complex formula is only a matter that takes the purpose of use, functionality, and desired properties into consideration and that a person skilled in the art chooses suitably based upon the teachings of Poland and general chemical knowledge. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See MPEP 2144.09 and 2144.08.
As to claim 25, Poland teaches the method as recited in claim 24, but fails to explicitly disclose the claimed amount of copper in the copper-carboxylic acid complex. However, it is noted that one of ordinary skill in the art would discover the optimum or workable ranges for the % wt. of copper in the copper-carboxylic acid complex based on routine experimentation and the disclosure of Poland (see para. 0029-0030: the additives may be introduced into the asphalt at any concentration useful to the intended end result). Burden is shifted to the Applicant to provide evidence that the claimed ranges produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. See MPEP 2144.05.
As to claim 28, Poland teaches the method as recited in claim 24, wherein the copper-carboxylic acid complex comprises from about 10% to 90% Cu-acid complex and from about 90% to 10% organic solvent (see para. 0029: a typical formulation is 50-80% metal carboxylate and 20-50% primary solvent). A prima facie case of obviousness exists because the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. See MPEP 2144.05 I.
As to claim 30, Poland teaches the composition as recited in claim 24, but is silent on the viscosity of the copper-carboxylic acid complex. However, in view of the substantially identical composition, it follows that the composition would have necessarily possessed the claimed viscosity property. See MPEP 2112.01. Alternatively, selecting different chemical reactants or synthesis conditions to achieve the desired properties is achieved by one of ordinary skill in the art without undue experimentation based on the prior art and general technical knowledge.
As to claim 32, it would have been obvious for a person of ordinary skill in the relevant arts before the effective filing date of the claimed invention to select the specific claimed range for wt% of copper and molar ratio of copper to carboxylic acid (i.e. 1.0:0.1 to 1:1) in the method taught by Poland, in order to achieve desired properties of the asphalt, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233 and MPEP 2144.05.
As to claims 34-36, Poland teaches the method as recited in claim 24, wherein the asphalt composition is acidic (see para. 0008 & 0010); claim 34, wherein the asphalt composition comprises an asphalt modifier (see para. 0008 & 0020); claim 35, wherein the asphalt modifier comprises polyphosphoric acid (PPA) (see para. 0008 & 0020).
As to the wt% PPA recited in claim 36 and the ppm of copper-carboxylic acid complex recited in claim 39, one of ordinary skill in the art would discover the optimum or workable ranges for the wt% of PPA and ppm of Cu-acid complex used in the method based on routine experimentation and the disclosure of Poland (see para. 0020 & 0029-0030: asphalt modifiers such as PPA & the additives may be introduced into the asphalt at any concentration useful to the intended end result; Examples 1-2 & Tables 1-3 in para. 0036-0041). Burden is shifted to the Applicant to provide evidence that the claimed ranges produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art. See MPEP 2144.05.
Examiner’s Note
8. Examiner has cited particular paragraphs or figures in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. Applicant is reminded that the Examiner is entitled to give the broadest reasonable interpretation to the language of the claims. Furthermore, the Examiner is not limited to Applicants' definition which is not specifically set forth in the claims. See MPEP 2111, 2123, 2125, 2141.02 VI, and 2182.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katie L Hammer whose telephone number is (571)270-7342. The examiner can normally be reached Monday to Friday: 9am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached on 571-272-2817. The fax phone number for the organization where this application is assigned is 571-273-8300.
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KATIE L. HAMMER
Primary Examiner
Art Unit 1761
/KATIE L. HAMMER/Primary Examiner
Art Unit 1761 September 30, 2025