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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-8, in the reply filed on 12/17/2025 is acknowledged. The traversal is on the ground(s) that “[t]he examiner’s assertion of independence or distinctness is respectfully challenged on both legal and factual grounds that relate to unity of invention” and, generally, that unity of invention exists between the three groupings in the Restriction Requirement mailed 09/08/2025. This is not found persuasive because the instant application did not enter the national stage and, thus, ‘unity of invention’ is not the applicable standard. Insofar as Applicant’s arguments could be applied to the U.S. standard, and not the unity of invention standard, Examiner maintains that the claims are properly restrictable because they are directed to independent and/or distinct inventions and would require significant burden to examine.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 09/08/2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/04/2023 has been considered by the examiner.
Claim Objections
Claim 6 is objected to because of the following informalities: the first instance of “SEBS” should be fully provided in a similar manner to that of ‘polyisobutylene (“PIB”)’ in claim 1. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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 1-3 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Liang (WO 99/27018).
Regarding claims 1 and 6, Liang teaches bituminous compositions prepared with process treated vulcanized rubbers (Title). Specifically, Liang teaches a bituminous composition and a concentrate that is provided as a modifier of the bitumen. The concentrate may include mixtures of polymers such as SEBS, olefinic copolymers such as polypropylene, EVA, EMA, and EPDM copolymers, and other polymers such as polyisobutene (Page 5 lines 2-22; specifically SEBS at line 11 and polyisobutene at line 18). In the interest of the clarity of the record, polyisobutene is also known as polyisobutylene.
Additionally, Liang teaches the optional inclusion of process oil such as aromatic oils (Page 10 lines 1-7).
Thus, Liang teaches a plurality of polymerizing concentrate components including an aromatic oil, a saturated polymer (i.e., SEBS; also meeting instant dependent claim 6 which expressly requires SEBS), an oxidized polymer (i.e. the olefinic copolymers such as polypropylene, EVA, and EMA which contain an oxygen functional group which is consistent with Applicant’s specification at Paragraph 0060), and polyisobutene (i.e. polyisobutylene).
As it applies to the claimed method steps, Liang teaches mixing and heating the concentrate components at a temperature of from 100C to 300C (equivalent to 212-572F; Page 11 lines 24-26) over a period of about 15 minutes to about 8 hours or more (Page 12 lines 1-3) where the claimed ranges of 350-450F for 1 to 7 hours lie entirely within the disclosed ranges of Liang.
Liang also teaches that the concentrate may be used with air blown AC and/or polymer-modified asphalt (Page 19 lines 17-18; where POSITA would recognize air blown AC to be ‘oxidized asphalt’ as claimed and Liang expressly identifies ‘oxidized bitumen’ in a synonymous manner at Page 31 line 15-16).
Example 3 and Table 5 show a combination of the concentrate with oil and oxidized asphalt where the additive components in the Inventive DGR-6/PE-1 sample (i.e., process oil, Gr-6, Recycled polyethylene and maleic anhydride grafted PE) sum to 11.5% which lies within the claimed range of 2 to 20%. Additionally, Example 2 includes an express teaching of 20% (page 27).
Liang further teaches that the blends are produced by heating the bitumen to 356F and then dispersing the concentrate under high shear at higher temperature around 392F for half an hour (Page 22 lines 6-21) which meets the claimed feature requiring heating the oxidized asphalt and the polymerizing concentrate to between 350F and 450F for between 15 minutes and one hour to generate the polymer modified oxidized asphalt.
While Liang does not provide an example that would anticipate the invention as currently claimed, the Supreme Court, in KSR, particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” and that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”.
In the instant case, the selection of a combination of materials individually taught by Liang, such as aromatic processing oil, SEBS, olefinic oxidized polymer, and polyisobutylene, is prima facie obvious. 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).
Further, the selection and determination of the optimal mixing conditions to incorporate the polymerizing concentrate into the oxidized asphalt would be obvious in view of the general conditions taught by Liang. Lastly, there is no evidence provided that would indicate that the method produces unexpected results.
Regarding claims 2 and 3, Liang teaches the method as applied to claim 1 above and further teaches that the concentrate is made by mixing and heating the concentrate components at a temperature of from 100C to 300C (equivalent to 212-572F; Page 11 lines 24-26) over a period of about 15 minutes to about 8 hours or more (Page 12 lines 1-3) where the claimed ranges of 370-410F for 1 to 3 hours lie entirely within the disclosed ranges of Liang.
Regarding claim 7, Liang teaches the method as applied to claim 1 above but does not expressly disclose the percentages of the components that form the polymerizing concentrate.
However, 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).
In the instant case, Liang describes the components as essential (Page 10 line 23-Page 11 line 14) and it would be within the routine skill on the person having ordinary skill in the art to determine the optimum percentages of the essential components for the concentrate as taught by Liang.
Further, Liang teaches that the inventive effect is controlled by a number of variable factors and that ‘the degree of dissociation of the scrap rubber may be controlled to produce a variety of products” (Page 12 lines 7-23).
Regarding claim 8, Liang teaches the method as applied to claim 1 above and further teaches Example 3 and Table 5 which show a combination of the concentrate with oil and oxidized asphalt where the additive components in the Inventive DGR-6/PE-1 sample (i.e., process oil, Gr-6, Recycled polyethylene and maleic anhydride grafted PE) sum to 11.5% which lies within the claimed range of 5 to 12%.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Liang as applied to claim 1 above, and further in view of Misuhara et al. (KR 820000652; Cited in IDS of 04/04/2023).
Regarding claims 4 and 5, Liang teaches the method as applied to claim 1 above but is silent to the molecular weight of the PIB.
Misuhara et al. (hereinafter “Misuhara”) teaches a puncture sealant for a tubeless pneumatic tire (Title) that utilizes a butyl rubber emulsion (note: butyl rubber is a synonym of polyisobutene and polyisobutylene) wherein the butyl rubber has a molecular weight from 500 to 100,000 (Claim).
PIB is a well-known rubber within the asphaltic arts and PIB having a molecular weight of from 500 to 100,000 is known within the art as demonstrated by the teachings of Misuhara.
In KSR, the Supreme Court, particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” and that “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”.
In the instant case, the selection of a butyl rubber and/or polyisobutylene having a molecular weight of from 500 to 100,000 g/mol would not patentably distinguish the invention as claimed because it is a well-known and routine selection that is not expected to produce unexpected results.
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). In the instant case, Misuhara’s disclosure of a 500 to 100,000 g/mol butyl rubber overlaps the claimed ranges of 200-110,000 g/mol (instant dependent claim 4) and 800-2,300 g/mol (instant dependent claim 5).
Therefore, it would be obvious to the person having ordinary skill in the art to select the PIB of Liang to have a molecular weight of from 500-100,000 g/mol as demonstrated by Misuhara because such rubbers are well-known within the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Merley et al. (U.S. 2,485,625) directed to a polyisobutylene-asphalt composition containing a hardening agent (Title) that employs medium molecular weight polyisobutylene with an average molecular weight of about 100,000 to about 150,000 (Col. 4 lines 1-2) as well as blown asphalt (Examples 1-5), Wood (U.S. 3,277,038) directed to asphalt compositions containing butyl rubber (i.e. polyisobutylene; Col. 1 lines 19-20) and/or a blend of polyisobutylene having average molecular weight of 46,000-64,000 and a range of 64,000-100,000 (Col. 2 lines 64-66), and Stephens et al. (U.S. 2012/0302673) directed to the preparation of industrial asphalt comprising SEBS or PIB.
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