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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/18/2025 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 11/18/2025.
Claims 1-15 and 17-23 are presently pending and under examination; claim 16 is canceled; claims 1 is amended; claims 18-23 are new.
New objections to the claims, drawings and specification are present herein.
The 35 U.S.C. 102 rejection of claims 1-6, 9 and 17 over Conaway et al. and the 35 U.S.C. 103 rejections of claims 11 and 14 over Conway et al. in view of Mitchell et al., claims 7-8 over Conaway et al. in view of Mitchell et al. and Moran, and claim 13 over Conaway et al. in view of Mitchell et al. and Adams are withdrawn; the 35 U.S.C. 103 rejection of claims 1-6, 9-10, 12, 15 and 17 over Conaway et al. in view of Mitchell et al. is maintained.
New grounds of rejection are present herein.
Priority
Receipt is acknowledged of copies of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/13/2026 was filed after the mailing date of the final action on 08/25/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “110” (see paragraph [0213] of the present specification). 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “113”, “300”, “531”, “600” and “631” (see Figs. 6, 8 and 10-11). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: no basis or support could be located in the specification for the claim 8 limitation of “wherein the method is carried out until a residual amount of bituminous material adhering to at least one of the grit and the grit, sand and filler is less than at least 3% by weight” (see claim 8 at lines 1-3). Support could be found for less than 3% by weight of bituminous material adhering to only the grit (see the present specification at paragraph [0045]), but not for this amount, or any particular amount, adhering to the sand or filler.
Claim Objections
Claims 1, 4-5 and 22-23 are objected to because of the following informalities:
Claims 1 and 23 contain a spelling error; “addmixed” should read “admixed” (see claim 1 at line 4 and claim 23 at line 2).
Claim 4 contains a grammatical error; it appears that “said mixing comprises” should read “wherein said mixing comprises” (see claim 4 at line).
In claims 5 and 22, there should be a space between numbers and their units; “50°C”, “60°C” and “150°C” should read “50 °C”, “60 °C” and “150 °C”, respectively (see claim 5 at lines 2-3 and claim 22 at line 2).
Claim 23 contains a grammatical error; it appears that “comprising” should read “comprises” (see claim 23 at line 2).
Appropriate correction is required.
Claim Interpretation
For purposes of claim interpretation, “VOC” as recited in claim 15 (see claim 15 at line 2) is interpreted as meaning volatile organic compounds, as this is the typical definition as would be understood by one of ordinary skill in the art.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 and 17-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The scope of claim 1 cannot be ascertained because claim 1 does not include a proper transitional phrase, e.g., “the method comprising”, “the method consisting of”, etc., therefore it cannot be determined whether the scope of claim 1 is meant to be limited only to the recited steps or whether it may include other, unrecited steps.
For purposes of examination, Examiner treated claim 1 as though it recites “A method of processing bituminous road surfacing material from a road demolition… the method comprising: mixing the bituminous road surfacing material…”. Clarification is requested.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1 and 22 each recite the broad recitation “at least one of a peroxide and a bicarbonate”, and the claims also recites “at least one of a hydrogen peroxide and bicarbonate” which is the narrower statement of the range/limitation (see claims 1 and 22 each at lines 6-7). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For purposes of examination, Examiner treated claims 1 and 22 as requiring at least one of a peroxide and a bicarbonate. Clarification is requested.
Claims 2-3 each recite “the addition of the at least one of the hydrogen peroxide and the bicarbonate” (see claims 2-3 each at lines 1-2); however, claim 1, from which claims 2-3 depend, does not require hydrogen peroxide and can include “a peroxide” other than hydrogen peroxide instead (see claim 1 at line 6), and claims 2-3 do not clarify that the hydrogen peroxide is actually required. Therefore, it is unclear from this language whether claims 2-3 actually require hydrogen peroxide and another peroxide would not meet the limitations, or whether a different peroxide would still meet the limitations of claims 2-3, but only if the hydrogen peroxide is included the additional limitations of claims 2-3 must be met.
For purposes of examination, Examiner treated claims 2-3 as though they recite the method according to claim 1, wherein at least one of the hydrogen peroxide and bicarbonate is added. Clarification is requested.
Claim 3 recites the limitation “wherein the addition of the at least one of the hydrogen peroxide and the bicarbonate is guided into the mixture from below” (see claim 3 at lines 1-2); the meaning of “guided into the mixture from below” is unclear. It is not clear to what reference point “from below” is relative, and it is also unclear whether the component is simply guided starting from a location below something or is actually added to the mixture at a location below something, rendering the metes and bounds of the claim indefinite.
For purposes of examination, Examiner treated claim 3 as meaning that at least one of the hydrogen peroxide and the bicarbonate is introduced to the mixture at a point beneath a liquid surface of the mixture, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraphs [0034]-[0035]. Clarification is requested.
Claim 4 recites the limitation “wherein said mixing comprises mixing the bituminous road surfacing material unprocessed, directly with water to form a mixture” (see claim 4 at lines 1-2). The meaning of this limitation is not clear as road surfacing material is a processed material, and claim 1, from which claim 4 depends, even further specifies that the road surfacing material can be, e.g., milled material, i.e., material which has undergone processing via milling. The use of “a mixture” rather than “the mixture” also makes it unclear whether “a mixture” is meant to refer to the same mixture as the mixture of claim 1 (see claim 1 at lines 5-7), or to a new, different mixture.
For purposes of examination, Examiner treated claim 4 as meaning that the road surfacing material is not subjected to intermediate processing steps between crushing/milling and mixing with water, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraphs [0040]-[0041], and treated “a mixture” as referring to the mixture of claim 1. Clarification is requested.
Claims 5-6 each recite the limitation “the steps” (see claims 5-6 each at line 1). There is insufficient antecedent basis for this limitation in the claims. It is also unclear from this language whether there are actually meant to be multiple steps recited, as the plural “the steps” is used but there is only one singular step recited in each claim 5-6.
For purposes of examination, Examiner treated claims 5-6 as though they recite “a step” rather than “the steps”. Clarification is requested.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation “heating the mixture”, and the claim also recites “heating the mixture to a temperature above 50°C” and “heating the mixture to a temperature above 60°C”, which are the narrower statements of the range/limitation (see claim 5 at lines 2-3). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For purposes of examination, Examiner treated claim 5 as requiring a step of heating the mixture. Clarification is requested.
Claim 7 recites the limitation “80%” (see claim 7 at line 4) but does not specify whether this is a percentage measured on the basis of weight or volume, rendering the metes and bounds of the claim indefinite. No information could be located in the specification regarding whether this is a weight percent or volume percent.
For purposes of examination, Examiner treated 80% as meaning 80% by weight. Clarification is requested.
Claim 8 recites the limitation “less than at least 3% by weight” (see claim 8 at line 3). This language does not make sense and does not actually limit the amount to any range at all, as less than at least 3% means less than any amount of 3% or above 3%, i.e., this includes any amount at all.
For purposes of examination, Examiner treated claim 8 as though it recites “less than 3% by weight” rather than “less than at least 3% by weight”. Clarification is requested.
Claim 9 recites the limitation “the step” (see claim 9 at line 1). There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation “wherein the bituminous road surfacing material further comprises at least partly bituminous material with a penetration value of less than 25”; the meaning of the claimed penetration value is unclear as it does not have units.
For purposes of examination, Examiner treated claim 10 as meaning the at least partly bituminous material has a penetration value of less than 25 10-1 mm, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraph [0048]. Clarification is requested.
Claim 12 recites the limitation “the bituminous material floating on the surface” (see claim 12 at line 2). There is insufficient antecedent basis for this limitation in the claim.
Further, claim 12 recites “wherein a difference in density between the bituminous material floating on the surface and the mixture is increased by adding at least one first substance which influences the density” (see claim 12 at lines 1-3). It is not clear to which density “the density” is meant to refer, as “a difference in density” indicates two different densities, the density of floating bituminous material and the density of the mixture. It is also not clear to what material the at least one first substance is being added, as the claim indicates that there are two separate materials, the mixture and floating bituminous material.
For purposes of examination, Examiner treated claim 12 as meaning the method according to claim 1 wherein the method results in at least part of the bituminous material floating on a liquid surface of the mixture, and wherein a difference in density between the bituminous material floating on the surface and the mixture is increased by adding at least one first substance which influences the density of the mixture to the mixture. Clarification is requested.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 13 recites the broad recitation “polymers”, and the claim also recites “styrene-butadiene-styrene and amide esters”, which are the narrower statements of the range/limitation (they are examples of polymers) (see claim 13 at line 3). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For purposes of examination, Examiner treated claim 13 as meaning that the binders comprise polymers. Clarification is requested.
Claim 14 recites the limitation “an adhesion between the bituminous material and gravel of the bituminous road surfacing material” (see claim 14 at lines 1-2); however, there is no “gravel” recited as part of the bituminous road surfacing material of claim 1, so the meaning of a limitation requiring a specific adhesion between the bituminous material and an unrecited and apparently unrequired component is not clear.
For purposes of examination, Examiner treated “gravel” as recited in claim 14 as referring to the grit of claim 1, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraphs [0224] and [0250].
Claim 18 recites the limitation “95%” (see claim 18 at line 2) but does not specify whether this is a percentage measured on the basis of weight or volume, rendering the metes and bounds of the claim indefinite. No information could be located in the specification regarding whether this is a weight percent or volume percent.
For purposes of examination, Examiner treated 95% as meaning 95% by weight. Clarification is requested.
Claim 22 recites the limitation “the bituminous pavement material” (see claim 22 at line 2). There is insufficient antecedent basis for this limitation in the claim.
For purposes of examination, Examiner treated “the bituminous pavement material” as referring to the previously recited bituminous road surfacing material. Clarification is requested.
Claims 11, 15, 17, 19-21 and 23 are included herein as each depends from a claim which is indefinite for reasons set forth above.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 depends from claim 1, which recites “bituminous road surfacing material from a road demolition, the bituminous road surfacing material being in the form of at least one of break out material and milled material” (see claim 1 at lines 1-3), i.e., the bituminous road surfacing material is a processed material; claim 4 recites the further limitation “said mixing comprises mixing the bituminous road surfacing material unprocessed” (see claim 4 at lines 1-2), i.e., the bituminous road surfacing material cannot be a processed material. Claim 4 is therefore of improper dependent form for failing to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 1-2, 4-7, 9, 12, 17-18 and 22-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kazuo Hara (JP-53-118421) (hereinafter, “HARA”; citations herein refer to the attached human-assisted machine translation).
Regarding claim 1, HARA teaches a method of processing bituminous road surfacing material from a road demolition (see HARA at “Pages 1&2”, “Pages 3&4”, “Pages 5&6”, “Pages 7&8” and “Pages 12&13”, teaching a method for recovering asphalt (i.e., bituminous material) from an asphalt mixture which is waste material from road demolition),
the bituminous road surfacing material being in the form of at least one of break out material and milled material (see HARA at “Pages 7&8”, teaching waste materials from road repaving; see HARA at “Pages 14&15”, teaching that the asphalt mixture may be in the form of lumps or crushed pieces),
and the bituminous road surfacing material comprising bituminous material admixed to grit, sand and filler (see HARA at “Pages 7&8”, teaching subjecting waste materials from road repaving work which includes asphalt binder, fine sand and lime powder (i.e., filler”) to stripping treatment, i.e., removal from aggregate; it is known that road pavement comprises grit/gravel aggregate, e.g., as discussed in paragraph [0003] of the present specification),
the method comprising: mixing the bituminous road surfacing material with water to form a mixture, and adding at least one of hydrogen peroxide and bicarbonate to at least one of the water and the mixture (see HARA at “Pages 7&8”, “Pages 14&15”, and “Pages 18&19”, teaching mixing the asphalt mixture with water and hydrogen peroxide).
Regarding claim 2, HARA teaches a method according to claim 1, wherein the addition of the at least one of the hydrogen peroxide and the bicarbonate is controlled such that conglomerates of the bituminous road surfacing material are disaggregated (see HARA at “Pages 7&8”).
Regarding claim 4, HARA teaches a method according to claim 1, said mixing comprises mixing the bituminous road surfacing material unprocessed, directly with water to form a mixture (see HARA at “Pages 7&8” and “Pages 14&15”).
Regarding claim 5, HARA teaches a method according to claim 1, further comprising a step of heating the mixture (see HARA at “Pages 7&8”).
Regarding claim 6, HARA teaches a method according to claim 1, further comprising a step of mechanically processing the mixture (see HARA at “Pages 14&15”, teaching agitating the mixture).
Regarding claim 7, HARA teaches a method according to claim 1, wherein the method is carried out until at least 80% of the grit is separated from the bituminous road surfacing material (see HARA at “Pages 7&8”, “Pages 16&17” and “Pages 18&19”, teaching performing the method until, e.g., 83%, 90% or 94% asphalt (bituminous material) is recovered).
Regarding claims 9 and 17, HARA teaches a method according to claim 1, further comprising the step of collecting the bituminous material at a liquid surface of the mixture, wherein the step of collecting is performed by means of flotation (see HARA at “Pages 14&15”, “Pages 16&17” and “Pages 18&19”, teaching separating the crude asphalt floating on the surface in the liquid).
Regarding claim 12, HARA teaches a method according to claim 1, wherein a difference in density between the bituminous material floating on the surface and the mixture is increased by adding at least one first substance which influences the density, the first substance comprising at least one of an alkali, an acid, a salt and constituents of road surfacing material (see HARA at “Pages 1&2”, “Pages 7&8” and “Pages 14&15”, teaching adding salts or surfactants).
Regarding claim 18, HARA teaches a method according to claim 1, wherein the method is carried out until at least 95% of the grit is separated from the bituminous road surfacing material (see HARA at Tables, Examples 68-69, teaching performing the method until, e.g., 95-96% asphalt (bituminous material) is recovered).
Regarding claims 22-23, HARA teaches a method of processing bituminous road surfacing material from a road demolition (see HARA at “Pages 1&2”, “Pages 3&4”, “Pages 5&6”, “Pages 7&8” and “Pages 12&13”, teaching a method for recovering asphalt (i.e., bituminous material) from an asphalt mixture which is waste material from road demolition),
the bituminous road surfacing material being in the form of at least one of break out material and milled material (see HARA at “Pages 7&8”, teaching waste materials from road repaving; see HARA at “Pages 14&15”, teaching that the asphalt mixture may be in the form of lumps or crushed pieces),
and the bituminous road surfacing material comprising bituminous material admixed to grit, sand and filler (see HARA at “Pages 7&8”, teaching subjecting waste materials from road repaving work which includes asphalt binder, fine sand and lime powder (i.e., filler”) to stripping treatment, i.e., removal from aggregate; it is known that road pavement comprises grit/gravel aggregate, e.g., as discussed in paragraph [0003] of the present specification),
the method comprising: mixing the bituminous road surfacing material with water to form a mixture, and adding at least one of hydrogen peroxide and bicarbonate to at least one of the water and the mixture (see HARA at “Pages 7&8”, “Pages 14&15”, and “Pages 18&19”, teaching mixing the asphalt mixture with water and hydrogen peroxide).
It is noted that the recitation in claim 22 of “wherein the bituminous pavement material is subjected to temperatures exceeding 150 °C during the manufacturing process” is considered product-by-process claim language and is not given patentable weight. The claim is directed toward a method of processing a bituminous material, not toward a method of manufacturing a bituminous material; limitations regarding the manufacture of the material do not limit a method of processing a material and a recitation of exposing the material to a specific temperature in the past during manufacture does not provide clear structural limitations on the bituminous material upon which the claimed method is practiced. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
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 8, 10-11, 15 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over HARA.
Regarding claim 8, HARA teaches a method according to claim 1. Carrying out the process until the desired amount of bituminous material is removed is an obvious matter of routine optimization of the disclosed process to achieve the desired final result. MPEP states that “[W]here 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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, one of ordinary skill in the art would find it obvious, through routine experimentation and optimization, to carry out the process to varying extents to achieve desired recovery of bituminous material, including until a residual amount of bituminous material adhering to the grit is less than at least 3% by weight as claimed.
Regarding claims 10 and 20, HARA teaches a method according to claim 1. As HARA teaches bituminous road surfacing material as recited in claim 1, the bituminous material of HARA would be expected to have the same or overlapping properties as the claimed material, including penetration value. Further, Applicant’s specification states that the penetration value after manufacturing of road pavement is typically around 20 10-1 mm, and then decreases with decreasing age (see Applicant’s specification at paragraphs [0014] and [0048]), and the material of HARA is aged pavement from road demolition, and would therefore be expected to have a penetration value of less than 20 10-1 mm, which is less than 25 as recited by claim 10 and overlaps with less than 15 as recited by claim 20. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “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.
Regarding claims 11 and 21, HARA teaches a method according to claim 1. HARA teaches that the waste asphalt pavement mixture can be in the form of lumps or crushed pieces when mixed with the water (see HARA at “Pages 12&13”), i.e., crushing/milling is not required prior to mixing with water and hydrogen peroxide. It is obvious from the disclosure of HARA that the bituminous road surfacing material may comprise a large conglomerate size when mixed with the water, and the claimed conglomerate size of at least 30% or at least 75% by weight of the material being larger than 5 cm is an obvious matter of process optimization. Since HARA discloses crushing, it recognizes that size is a result effective variable ripe for optimization. MPEP states that “[W]here 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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Regarding claim 15, HARA teaches a method according to claim 1. As HARA teaches bituminous road surfacing material as recited in claim 1, the bituminous material of HARA would be expected to have the same or overlapping properties as the claimed material, including VOC content. Further, Applicant’s specification states that pavement typically contains practically no VOCs when rehabilitation is imminent (see Applicant’s specification at paragraph [0176]), therefore the asphalt pavement material of HARA would be expected to contain less than 1% by weight of VOCs as claimed. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over HARA in view of Newman, Kent, “Polymer-modified Asphalt Mixtures for Heavy-duty Pavements: Fatigue Characteristics as Measured by Flexural Beam Testing”, 2004 FAA Worldwide Airport Technology Transfer Conference, April 2004 (hereinafter, “NEWMAN”).
Regarding claim 13, HARA teaches a method according to claim 1. HARA fails to explicitly mention that the bituminous road surfacing material comprises binders for achieving a bond between bituminous material and gravel, the binders comprising at least one of polymers, styrene-butadiene-styrene and amide esters.
However, bituminous road surfacing materials comprising polymers are known in the art. For example, NEWMAN teaches asphalt pavements comprising polymers, e.g., styrene-butadiene-styrene (see NEWMAN at pg. 1, Introduction).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use method of HARA on an asphalt pavement comprising polymer. HARA teaches using the method on asphalt pavement from road demolition, and asphalt pavement comprising polymers is a known type of asphalt pavement. MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over HARA in view of Trejbal, et al., “Assessment of Adhesion Between Mineral Aggregate and Bituminous Binder Using Digital Image Analysis”, Czech Technical University in Prague, 2018 (hereinafter, “TREJBAL”).
Regarding claim 14, HARA teaches a method according to claim 1. HARA fails to explicitly mention that an adhesion between the bituminous material and gravel of the bituminous road surfacing material is between 70% and 80%.
However, bituminous road surfacing materials with adhesion within this range are known. For example, TREJBAL teaches asphalt pavements with 70-80% adhesion between the bituminous binder and mineral aggregate (see TREJBAL at Abstract).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use method of HARA on an asphalt pavement comprising having 70-80% adhesion as claimed. HARA teaches using the method on asphalt pavement from road demolition, and asphalt pavement comprising 70-80% adhesion is a known type of asphalt pavement. MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claims 1-10, 12-13, 15, 17-20 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Conaway, et al. (US-2004/0222164) (hereinafter, “CONWAY”) in view of Mitchell, et al. (US-6,045,608) (hereinafter, “MITCHELL”).
With respect to claim 1, CONWAY teaches a method of processing bituminous material, the bituminous material being in the form of at least one of break out material and milled material and comprising bituminous material admixed to sand and filler (see CONWAY at Abstract and paragraphs [0002] and [0004], teaching a method of processing materials comprising tar sand, which is a mixture of bituminous material, sand and clay, i.e., filler), the method comprising: mixing the bituminous material with water to form a mixture (see CONWAY at Abstract); and adding at least one of a peroxide and a bicarbonate to at least one of the water and the mixture (see CONWAY at Abstract, teaching bicarbonate and hydrogen peroxide).
CONWAY does not disclose the source of the material is from a road and that the material includes grit. MITCHELL discloses that tar sands are used to produce roads, and discloses an asphalt pavement comprising a mixture of tar sand (which comprises bitumen, sand and filler as discussed above), rock aggregate (i.e., grit) and a small amount of asphalt cement (see MITCHELL at Abstract and col. 5, line 49). Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the road materials of MITCHELL as source material for the process of CONWAY in view of the disclosure therein that any natural or man-made bituminous material may be treated (see CONWAY at paragraph [0002]). One of ordinary skill in the art could have used the road material of CONWAY with a reasonable expectation of success, yielding the predictable result of providing a man-made bituminous mixture comprising tar sand for which is suitable to be treated via the process of CONWAY.
With respect to claim 2, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1, wherein the addition of the at least one of the hydrogen peroxide and the bicarbonate is controlled such that conglomerates of the bituminous road surfacing material are disaggregated (see CONWAY at Abstract).
With respect to claim 3, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1, wherein the addition of the at least one of the hydrogen peroxide and the bicarbonate is guided into the mixture from below (see CONWAY at paragraph [0064]).
With respect to claim 4, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1, wherein said mixing comprises mixing the bituminous road surfacing material unprocessed, directly with water to form a mixture (see CONWAY at Abstract).
With respect to claim 5, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1, further comprising a step of heating the mixture (see CONWAY at Abstract).
With respect to claim 6, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1, further comprising a step of mechanically processing the mixture (see CONWAY at Abstract, teaching intensively shearing the mixture, i.e., mechanically processing).
With respect to claims 7-8 and 18-19, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1, wherein the method is carried out until at least 90% of the hydrocarbons are recovered, i.e., at least 90% of the bituminous material is separated from the mineral substrate particulates and less than 10% of a residual amount of bituminous material adheres to the mineral substrate particulates (see CONWAY at paragraphs [0002]-[0003] and [0025]-[0026]), which overlaps with and thereby renders obvious the claimed ranges. As set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)). Further, carrying out the process until the desired amount of bituminous material is removed is an obvious matter of routine optimization of the disclosed process to achieve the desired final result. MPEP states that “[W]here 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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
With respect to claims 9 and 17, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1, further comprising a step of step of collecting the bituminous material at a liquid surface of the mixture, wherein the step of collecting is performed by means of flotation (see CONWAY at Abstract).
With respect to claims 10 and 20, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1. As CONWAY in view of MITCHELL teaches bituminous road surfacing material as recited in claim 1, the bituminous material of CONWAY in view of MITCHELL would be expected to have the same or overlapping properties as the claimed material, including penetration value. Further, Applicant’s specification states that the penetration value after manufacturing of road pavement is typically around 20 10-1 mm, and then decreases with decreasing age (see Applicant’s specification at paragraphs [0014] and [0048]), therefore the asphalt pavement material of CONWAY in view of MITCHELL would be expected to have a penetration value of less than 20 10-1 mm, which is less than 25 as recited by claim 10 and overlaps with less than 15 as recited by claim 20. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “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.
With respect to claim 12, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1, wherein a difference in density between the bituminous material floating on the surface and the mixture is increased by adding at least one first substance which influences the density, the first substance comprising at least one of an alkali, an acid, a salt and constituents of road surfacing material (see CONWAY at Abstract, teaching that the mixture may contain alkali, e.g. sodium hydroxide).
With respect to claim 13, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1, wherein the bituminous material comprises binders for achieving a bond between bituminous material and gravel, the binders comprising polymers (see MITCHELL at Abstract and col. 4, lines 42-54, teaching including polymer graded asphalt cement, which is a binder comprising polymers).
With respect to claim 15, as applied to claim 1 above, CONWAY in view of MITCHELL teaches a method according to claim 1. As CONWAY in view of MITCHELL teaches bituminous road surfacing material as recited in claim 1, the bituminous material of CONWAY in view of MITCHELL would be expected to have the same or overlapping properties as the claimed material, including VOC content. Further, Applicant’s specification states that pavement typically contains practically no VOCs when rehabilitation is imminent (see Applicant’s specification at paragraph [0176]), therefore the asphalt pavement material of CONWAY in view of MITCHELL would be expected to contain less than 1% by weight of VOCs as claimed. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “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.
With respect to claims 22-23, CONWAY teaches a method of processing bituminous material, the bituminous material being in the form of at least one of break out material and milled material and comprising bituminous material admixed to sand and filler (see CONWAY at Abstract and paragraphs [0002] and [0004], teaching a method of processing materials comprising tar sand, which is a mixture of bituminous material, sand and clay, i.e., filler), the method comprising: mixing the bituminous material with water to form a mixture (see CONWAY at Abstract); and adding at least one of a peroxide and a bicarbonate to at least one of the water and the mixture (see CONWAY at Abstract, teaching bicarbonate and hydrogen peroxide).
CONWAY does not disclose the source of the material is from a road and that the material includes grit. MITCHELL discloses that tar sands are used to produce roads, and discloses an asphalt pavement comprising a mixture of tar sand (which comprises bitumen, sand and filler as set forth above), rock aggregate (i.e., grit) and a small amount of asphalt cement (see MITCHELL at Abstract and col. 5, line 49). Thus, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the road materials of MITCHELL as source material for the process of CONWAY in view of the disclosure therein that any natural or man-made bituminous material may be treated (see CONWAY at paragraph [0002]). One of ordinary skill in the art could have used the road material of CONWAY with a reasonable expectation of success, yielding the predictable result of providing a man-made bituminous mixture comprising tar sand for treatment
It is noted that the recitation in claim 22 of “wherein the bituminous pavement material is subjected to temperatures exceeding 150 °C during the manufacturing process” is considered product-by-process claim language and is not given patentable weight. The claim is directed toward a method of processing a bituminous material, not toward a method of manufacturing a bituminous material; limitations regarding the manufacture of the material do not limit a method of processing a material and a recitation of exposing the material to a specific temperature in the past during manufacture does not provide clear structural limitations on the bituminous material upon which the claimed method is practiced. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive.
Applicant argues:
“it is clear from Conway that the process relates to naturally occurring raw materials, such as oar… Naturally occurring raw materials, such as ore and tar sands, are mechanically and chemically distinct from bituminous road surfacing material from a road demolition which includes bituminous material addmixed to grit, sand and filler… Therefore, an ordinary artisan would not use a process for processing tar sands to process bituminous material from a road demolition… Mitchell would not lead an ordinary artisan to use the method for processing natural ores and sand described in Conway to process bituminous material from a road demolition” (see Remarks at pg. 7-9).
“Amended claim 1 recites that the bituminous road surfacing material comprising bituminous material addmixed to grit, sand and filler. Neither Conway nor Mitchell discloses these features” (see Remarks at pg. 7).
“the mass of road bitumen, granules, sand or crushed sand, grit and filler is rolled to form a very resistant coating, which is insoluble in water and very resistant… the manufacturing of the road surfacing material to be as robust as possible “makes it as difficult as possible to separate the bituminous material from the rock… [a]ging leads to a change in the chemical structure of the bitumen and to higher viscosity and stiffness… For at least these reasons, an ordinary artisan would not use the Conway method for processing road surfacing material from a road demolition” (see Remarks at pg. 7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because CONWAY relates to naturally occurring materials and one of ordinary skill would not use a method for processing natural ores and sand to process bituminous material from a road demolition, the Examiner respectfully disagrees. CONWAY explicitly teaches that the method is used on natural materials and manmade mixtures of hydrocarbons and mineral substrates (see CONWAY at paragraph [0002]). It is explicitly stated that the disclosed method may be used to process man-made mixtures of hydrocarbons to separate bitumen from particles. As discussed in MPEP § 2123, patents are relevant for all they contain, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill, including nonpreferred embodiments, and disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.
In response to Applicant’s argument that CONWAY and MITCHELL do not teach a mixture of bituminous material, grit, sand and filler, the Examiner respectfully disagrees; as set forth in the rejection above, and CONWAY explicitly teaches that the process may be used on natural tar sands or on man-made mixtures comprising tar sands, and MITCHELL explicitly teaches an asphalt pavement which is a man-made mixture comprising tar sands (bitumen, sand and filler) and rock aggregate (grit), therefore one of ordinary skill would find it obvious that the process of CONWAY can be used on the asphalt pavement of MITCHELL.
In response to Applicant’s argument that one of ordinary skill in the art would not use the method of CONWAY to process road surfacing material because Applicant’s specification describes separation of the materials as being difficult, the Examiner respectfully disagrees. Disclosure in the present specification that separation is difficult is not relevant to the rejection based on the teachings of the prior art. CONWAY teaches using the method on an indurate mixture of hydrocarbons and mineral substrates, which may be a man-made mixture (see CONWAY at paragraphs [0002]-[0003]). As set forth in the rejection above, one of ordinary skill in the art would find it obvious to use the method on an asphalt pavement in view of the disclosures of CONWAY and MITCHELL.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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