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 Arguments
In their response dated 1/22/2026, the applicants amended independent claim 21 to further limit the definition of asphalt. Additionally the applicants amended claim 21 to further define EVA polymer as one containing more than 50% of vinyl acetate.
While the amendments overcome the prior art of Romero when utilized alone, the examiner would like to clarify the basis for obviousness. It should be noted that case laws directed to fire extinguishing system are unrelated to the chemical compositions where the term “an analogous art” is much broader in scope based on types of compounds or compositions as utilized in the reference to make an article and the function these compounds play within the composition. This is because the compounds and their properties are mutually exclusive and one compound can be used for different reasons. At the same time, examiner’s reasons for combining the references does not have to fall in line with applicant’s reasons. However, the case law cited by the applicants is a perfect example of how things can change when statutes according the MPEP and 35 C.F.R are not followed or some aspects of the prosecutions are not properly considered.
Airbus S.A.S. v. Firepass Corporation. In the application for US 6,418,752 the PTAB overturned examiner’s rejection because as asserted, the prior art reference fails to qualify as a relevant prior art because it is not analogous to the claimed invention. In doing so, the Board declined to consider record evidence relied on by Airbus that demonstrate the knowledge and perspective of a person skilled in the art at the time of the invention. The Board’s decision to reverse examiner’s rejection was vacated and remanded for reconsideration in view of evidence provided by the Airbus. Without going into details of the evidence submitted, the Court stated following:
There are two separate tests that define the scope of analogous art. 1) whether the art is from the same field of endeavor regardless of the problem addressed and 2) if the reference is not within the field of endeavor, whether the reference is reasonably pertinent to the particular problem with which the inventor is involved. While the Court agreed with Board’s determination that the reference was not in the same field of endeavor, the Court did not agree with Board’s interpretation of “reasonably pertinent”.
In order to determine the applicable field of endeavor, the factfinding must consider explanations of the invention’s subject matter in the patent application including the embodiment’s function and structure of the claimed invention. While the disclosure of references is the primary focus, one must consider each reference disclosure in view of the “reality of circumstances” and weight those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor.
Having said that, the knowledge of a person of ordinary skill in the art which was demonstrated in the references provided by the Airbus can be relevant to establishing the scope of the field of endeavor. The references provided by Airbus were considered by the Court as reasonably pertinent to the particular problem with which the inventor was involved. The pertinence of the references as a source of solution to the inventor’s problem must be recognizable with the foresight of a person of ordinary skill in the art and not with the hindsight of the inventor’s successful achievements. This aspect of the Boards decision was reversed by the Court. In case of Airbus dilemma, one of ordinary skill in the art would have to understand how lower oxygen levels and higher nitrogen level affect humans and their ability to breath and function in enclosed spaces. Consequently, the evidence provided by the Airbus is inextricably tied to the knowledge and perspective of a person of ordinary skill in the art at the time invention was filed.
In the instant case, the obviousness rejection over Kawabata in view of Romero, where the Romero was utilized to supplement additives known in the art is relevant. Specifically, Kawabata reference discloses asphalt composition in an emulsion comprising emulsifiers which applicants refer to as wetting agents. Romero further disclosed use of EVA with higher VA content which would still allow it to function as an emulsifier, especially when fillers of Kawamata include crushed stone [0038].
New prior art will be applied as necessitated by amendment.
Claim Objections
Claim 36 is objected to because of the following informalities: Claim 36 recites KS L ISO13007-2. The standard is part of the ISO 13007 series which is a global standard for classification and testing of adhesives. The standard is crucial for maintaining the quality and durability of ceramic tile installation as it helps to ensure that adhesives can withstand environmental condition and provide strong bond. While applicants can claim whatever property they want, the examiner fails to see how this standard is relevant to asphalt composition that is used paving, sealing, coating and roofing and the like. The application is directed to a composition that is subject to vehicle trading and road performance. These fields of endeavor do not require tile, wherein tile is not even mentioned in the instant specification as originally filed. It should also be noted that the adhesion requirements for tile are very different from the adhesion requirements for pavement compositions therefore the examiner is not clear as to how relevant the tile adhesion property is to the asphalt adhesion. The examiner requests that the applicants provide comment regarding this method and how it applies to the asphalt composition for roads, especially if (at least in US) Department of Transportation is responsible for developing, tools, standards, guidance and specification for asphalt pavement engineering. These standards are maintained by AASHTO (for US). Appropriate action is required.
Drawings
The drawings are objected to because Figure 4 (page 3 of the drawings) has number 5 in front of term “Figure 4”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action .
Claims 21-25, 28, 30-38 are rejected under 35 U.S.C. 103 as being unpatentable over Murthy (US 2016/0333183) in view of Kawabata (JP 2001-115034) and as evidenced by PG 82-22 technical data sheet.
With respect to claims 21, 22 and 33, Murthy discloses asphalt composition with EVA optionally in presence of additives (Abstract) wherein EVA has vinyl acetate content of at least 50% (claim 1) [0029]. The asphalt is a petroleum based [0026]. The asphalt composition is originally in a powder form and uses emulsifiers to form aqueous asphalt emulsion (liquid) [0027]. In addition to emulsifiers the composition comprises other additives such as fillers [0007].
While Murthy teaches that the asphalt composition can be in form of emulsion, the type of emulsifier (meets the limitation of wetting agent) suitable for such purpose is not disclosed.
Kawabata discloses another composition for asphalt emulsion, and discloses emulsifiers suitable for such purpose. The emulsifiers include polyoxyethylene alkyl phenyl ether, polyoxyethylene nonyl phenol ether, polyoxyethylene sorbitan fatty acid ester and the like [0026]. Wherein polyoxyethylene meets polyethylene glycol The amount of emulsifier is 0.5-7 parts by weight [0028].
With respect to claim 23, the EVA polymer described above has an ethylene content of 1-40% as such the content of the EVA will be 60-99% [0029].
With respect to claim 24, the glass transition temperature of EVA polymer in specific example is -7oC [0060]. Other EVA polymers that meet the limitation of the glass transition temperature are VeoVa9 and VeoVa10 [0033].
With respect to claims 25 and 32, inorganic fillers include limestone, chalk, graphite, talc, fly ash, quartz, glass fiber, cellulose fiber, wherein component such as clay is non-meltable [0046].
With respect to claim 28, crosslinking agent of Murthy is utilized in amount of 0.05-5 wt.% [0037].
With respect to claims 30 and 31, Murthy discloses use of compounds such as polyvinyl alcohol in amount of 1-20 wt.% [0037] and styrene-butadiene based polymers in amount of 0-10 wt.% [0043] as well as oils and polyamines [0045].
With respect to claim 34, Murthy discloses use of trialkoxysilanes [0031]. It is well established in the art that alkoxysilanes are known for its use as coupling agents or adhesion promoters. Adhesion is an important factor for Murthy.
With respect to claims 35 and 36, While Murthy does not disclose the properties with specific ASTM methods, he teaches that the binder has to meet or exceed PG 82-22 standard to meet hot temperature climate and heavy traffic loads. With that there are specific requirements the binder has to meet. For example, viscosity at 135oC is less than 3.0 Pa·s which encompasses the claimed range of less than 500 cps and it is requirement to meet viscosity standard for the PG 82-22 binder. The viscosity is measures using ASTM D4402 (see technical datasheet for various requirements to meet the PG 82-22 standards for asphalt binder).The PG 82-22 binder is meant for roadways with high traffic loads and frequent freeze-thaw cycles.
In PG 82-22 mass change is related to the stripping rate and it is crucial aspect of mass transfer. The maximum mass change for PG 82-22 is 10%, which means the stripping rate has to be less than 10% encompassing instantly claimed range of less that or substantially equal to 5%.
The S-value in PG 82-22 indicates maximum tensile strength which is critical factor of determining performance under a load. The maximum tensile strength value for this standard is 300 MPa, which means the tensile strength will be less than 300 MPa which is more than 38 kgf. Wherein indirect tensile strength is derived from properties such as direct tensile strength, elasticity or fatigue by applying a compressive. Consequently the indirect tensile strength is also expected to be higher than 38 kgf. Having said that following is established:
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount.
In instant claim the only amount claimed is the amount of wetting agent and the content of vinyl acetate within EVA polymer. The other component required in independent claims 21 on which claims 35 and 36 depend is an asphalt binder which includes petroleum binder.
Therefore, the claimed effects and physical properties, maximum load break, indirect tensile strength and adhesion strength would naturally arise and be achieved by a composition with all the claimed ingredients. (keep in mind that viscosity and stripping rate were met and are required in order to meet or exceed the PG 82-22 standard disclosed in Murthy
"Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
In other words, composition of Murthy teaches the petroleum based asphalt binder, EVA polymer having VA content of at least 50% and wetting agent selected from the cited Markush group along with the amount utilized. These the same components recited in the instant claim 21. The invention of Murthy also comprises further components as defined in the dependent claims of the instant invention at fall within claimed ranges and/or species. These include aggregates, fillers, crosslinking agents, coupling agents. Polyvinyl alcohol of Murthy has the same degree of hydrolysis as that utilized in instant invention along with its amounts and EVA polymer has a glass transition temperature within the instantly claimed range.
Consequently, the components of the claimed binder composition are the same and their amounts are within claimed ranges, therefore the properties will be expected to meet instant claims 35 and 36 as well.
With respect to claims 37 and 38, the asphalt binder comprises aggregate [0015] and a filler [0046], wherein asphalt binder is utilized in ana mount of 4-9 wt.% based on the total weight of the mix [0016].
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed that Murthy as modified by Kawabata meets the instant claims. While Murthy may not get into details with respect to the limitations of few of dependent claims, the goal of his invention is in use of EVA alcohol having at least 50% of the vinyl acetate content, and its effects on the adhesion properties of the binder composition. Based on applicant’s arguments and the nature of EVA as described in instant specification use of the same type EVA and its function as adhesion promoter is also the focus of the instant invention.
Claims 26, 27 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Murthy (US 2016/0333183) in view of Kawabata (JP 2001-115034) and as evidenced by PG 82-22 technical data sheet as applied to claims 21-25, 28, 30-38 above, and further in view of Avramidis (WO 2019/190624).
Discussion of Murthy and Kawabata from paragraph 1 of this office action is incorporated here by reference.
While Murthy discloses use of amines, crosslinking agents and fillers, the goal of his disclosure is use of EVA having more than 50% vinyl acetate content in making asphalt binder emulsion wherein the asphalt is a petroleum asphalt.
Murthy discloses use of claimed fillers but does not disclose their amounts (cl. 26).
Murthy teaches use of polyamines as an additive but fails to define what the amines are and their content (cl. 27).
Murthy teaches use of cross linking agents and their amounts, but does not identify any specific crosslinking agents (cl. 29).
In the same field of endeavor, Avramidis discloses asphalt binder in an emulsion, which comprise carboxylated polymer (vinyl acetate) styrene butadiene polymer, aggregate fillers, crosslinkers and additives that are common to both Avramidis and Murthy. Wherein asphalt of Avramidis is also petroleum based as it utilizes bitumen as its source.
With respect to claim 26, Avramidis discloses fillers (p. 23, l. 18-25) such as fly ash, talc, cellulose, limestone, chalk (calcium carbonate), clay and the like, which are also the same fillers as those of Murthy. Avramidis also teaches use of aggregate just like Murthy. The content of the fillers can be up to 5 parts by weight of binder composition (100%) and since content of carboxylated polymer is at most 25 parts, then the content of filler based on the content of carboxylated polymer 20% (claim 7) or less.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art to utilize the fillers of Murthy in the amounts disclosed by Avramidis to make an emulsion of asphalt binder. One of ordinary skill in the art would readily know that too much filler will affect asphalt emulsion by reducing workability, higher viscosities, decreased moisture resistances and the content of the binder will be reduced.
With respect to claim 27, as it was mentioned in paragraph 1, Murthy discloses use of polyamines but falls short of defining them.
Avramidis teaches use of polyamines, as component that decreases the trying time of the asphalt compositions (p. 11, l. 13-15). The preferred polyamines are polyethyleneimines and its derivatives (p. 12-14) in an amount of 1-10 wt.%.
Other types of amines that can be utilizes in Avramidis include aminoalcohols and alkyl amines, which are utilize to maintain pH of the composition to be greater than 7. This is also critical function because pH higher than 7 will reduce demulsification rate (emulsion stability) and enhances hydrogen bonding. The amount of such base would be 2.5 wt.% or less (p. 16, l. 25-28; p. 17, l. 1-6).
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize amines of Avramidis in the disclosed amounts as the amines of Murthy and therefore obtain the claimed invention. Such modification would provide stability to the emulsion and would facilitate hydrogen bonding within the binder composition. While Avramidis uses these compounds for different reasons, the courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Consequently, alkyl amines, alcohol amines and polyethyleneimine will act as wetting agents as well because compounds having the same chemical structures have properties that are mutually exclusive to them.
With respect to claim 29, Avramidis discloses crosslinking agents suitable for asphalt emulsions. The crosslinking agents can be utilized along with accelerators and antireversion agents (p. 21, l. 22 through p. 22, l. 35). Suitable crosslinking/vulcanizing agents include sulfur compounds, peroxides (p.21), sulfides (p. 22) and the like.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize the crosslinking agents of Avramidis in amount as taught by Murthy and thereby obtain instant invention. Such compounds upon crosslinking will increase the tensile strength and elongation of the copolymer (p. 21), while antireversion agent to prevent decrease in crosslink density (p. 23).
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time of the filing to utilize the crosslinking agents of Avramidis in the composition of Murthy and thereby obtain instant invention. Such modification will have the same effect on the asphalt emulsion which includes improvement in tensile properties and elongation.
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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 12 February, 2026