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 .
This communication responds to the application and amended claim set filed March 7, 2023. Claims 1-19 are currently pending.
Priority
This application claims priority to provisional 63/318,452, filed March 10,2022.
Claim Objections
Claims 14 and 15 are objected to because of the following informalities:
Claims 14 and 15 recite “the one elastomeric polymer materials”. It is suggested “the one elastomeric polymer materials” be replaced with “the one or more elastomeric polymer materials” as recited in claim 1 to ensure consistency.
Appropriate correction is required.
Claim Analysis
Summary of Claim 1:
A non-asphalt-based sealant composition having high adhesion for sealing cracks and joints in polar concrete pavements and other polar substrates, the non-asphalt-based sealant composition comprising:
A polar non-asphaltic sealant base blend comprising
one or more polar non-asphaltic base resins having functional groups for hydrogen bonding,
one or more processing oils,
one or more plasticizing materials, and
the one or more polar non-asphaltic base resins being present in the polar non- asphaltic sealant base blend in a total amount which both (i) is equivalent to an amount of at least 30% by weight of a total final weight of the non-asphalt-based sealant composition and (ii) causes the non-asphalt-based sealant composition to undergo hydrogen bonding when applied to polar substrates and
one or more elastomeric polymer materials.
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 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.
Claims 1-8, 10-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Bindschedler et al. (US PG Pub 2016/0304698 A1 as listed on the IDS dated 4/17/2023).
Regarding claims 1-6, Bindschedler et al. teach a liquid sealing system composition comprising 20 to 60% of a binder of vegetable origin ([0163]-[0164]), wherein the binder of vegetable origin comprises 30% to 50% of a plasticizing fraction comprising an oil and 50% to 70% of a structuring fraction comprising a modified vegetable resin such as a fortified-rosin ester (claim 1 and 6), wherein the fortified-rosin ester is obtained by esterifying a fortified rosin with a polyol including pentaerythritol, glycerol, ethylene glycol, among others([0107]-[0109]), thereby reading on the polar rosin esters of claims 1-6 containing ester, hydroxyl and carboxylic acid functional groups for hydrogen bonding, as required by instant claims; wherein the amount of the rosin esters in the liquid sealing system composition is from 10 wt.% to 42 wt.% (i.e. maximum amount of binder in the liquid sealing system composition is 60% and maximum amount of rosin ester in the binder is 70%, thus 60% x 70% = 42 % of rosin ester in the liquid sealing composition), thereby overlapping with the claimed amount (at least 30 wt.% by weight of claim 1 and 35-65 wt.% of claim3. Further, 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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Bindschedler et al.
Bindschedler et al. further teach the plasticizing fraction of the binder further comprises from 95-98%, of oil and from 2-5% of a heat stabilizer [0093] selected from epoxidized soybean oil (which correspond to the plasticizer) (claim 2); thereby reading on the processing oil and the plasticizer respectively. It is acknowledged that Bindschedler et al. teach the liquid sealing system composition does not contain any asphalt [0221]. Additionally, Bindschedler et al. teach the composition further comprises a polymer (claims 9,11, 13) including styrene-butadiene-styrene, styrene-isoprene-styrene ([0120], [0133]), thereby reading on the one or more elastomeric polymer material.
Moreover, given that the rosin ester resin contain polar groups and it is present in an amount of at least 30% by weight of the total final weigh of the liquid sealing system composition, therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have expected that the polar non-asphaltic resin of Bindschedler et al. would undergo hydrogen bonding when applied to polar substrates and is capable of having a high adhesion for sealing cracks and joints in polar concrete pavements, as required by the instant claim.
Bindschedler et al. do not particularly teach the elastomeric polymer materials together with the polar-non asphaltic base resin, processing oil and plasticizer.
However, Bindschedler et al. teach all the ingredients including the rosin esters, the processing oil, the plasticizer and a polymer such as SBS with "sufficient specificity" that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it "obvious to try" the rosin ester, the processing oil, the plasticizer and elastomeric polymer material, as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. V. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding claim 7, Bindschedler et al. teach the composition further comprises a polymer (claims 9,11) and provide as example a polyurethane obtained by reacting a polyol or a mixture of polyols having a number of OH functions of between 1.5 and 3 with a polyisocyanate or a mixture of polyisocyanates having a number of NCO functions of between 1.6 and 3 and a chain extender diol such as an alkanediol ([0137], [0138], [0170]), thereby reading on the polyurethane resin as recited by i).
Regarding claims 8 and 10-12, Bindschedler et al. teach the liquid sealing system composition comprises 20 to 60% of a binder of vegetable origin ([0163]-[0164]), wherein the binder of vegetable origin comprises 30% to 50% of a plasticizing fraction comprising an oil, wherein the plasticizing fraction of the binder comprises from 95-98% of oil and from 3-5% of a heat stabilizer [0093] selected from epoxidized soybean oil, which correspond to the plasticizer of instant claims 11 and 12 (claim 2). Thus, the amount of the processing oil is between 5.7-29.4 wt.% (i.e.60wt.% x 50 wt.% x 98wt.% = 29.4%) and the amount of epoxidized soybean oil (plasticizer) is between 0.12 -1.5 wt.%, which overlaps for the claimed range of plasticizer (0.5-6 wt.%), thereby a prima facie case of obviousness being established. MPEP 2144.05.
Bindschedler et al. do not particularly teach the claimed range for the processing oil as recited in the instant claim.
However, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (See MPEP 2144.05 (I) (citing Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium . "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys.").) Thus, absent any showing of unexpected results or criticality, the difference in weight fraction of the processing oil between the liquid sealing composition of Bindschedler et al. (29.4 wt.%) and the claimed range (35 wt.%) is negligible.
Regarding claims 13-15, Bindschedler et al. teach elastomeric polymer material including SBS, SIS in an amount of from 5% to 30% ([0120], [0133]) thereby reading on the from 2% to 20% by weight of one or more elastomeric polymer materials, based upon the total weight of the non-asphalt-based sealant composition.
Regarding claims 16 and 19, Bindschedler et al. teach liquid sealing system composition further comprises a filler (claim 11), wherein the filler is selected from titanium dioxide, calcium carbonate, and mixtures thereof ([0148],[0169]), thereby reading on the color-neutralizing materials as required by the instant claim, wherein the filler is present in an amount of from 15% to 50% [0120], thereby reading on the claimed ranges of titanium dioxide and inorganic filler (3% to 20% of titanium dioxide and 6.5-24% of inorganic filler), as required by the instant claims.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bindschedler et al. (US PG Pub 2016/0304698 A1) in view of Hanriyuu et al. (JPH10219214A) as listed on the IDS dated 4/17/2023, full English Machine translation herewith.
Regarding claim 9, Bindschedler et al. teach the non-asphalt-based sealant composition of claim 8 as set forth above and incorporated herein by reference.
Bindschedler et al. do not particularly teach the aromatic content of the processing oil. Hanriyuu et al. teach binder composition for sealing application (abstract, [0050]) comprising a
processing oil, wherein the processing oil have an aromatic content of at least 50 wt.% based upon a total weight of the processing oil, wherein the content of the aromatic oil in the composition is 70 wt.% or less ([0014]-[0015]. Hanriyuu et al. offer the motivation of using the aromatic oil to provide a sealant with improved mechanical properties and enhanced water resistance [0037]. In light of these benefits, it would have been obvious to one of ordinary skill in the art to use an aromatic plasticizer as disclosed by Hanriyuu et al. in the sealant composition of Bindschedler et al., thereby arriving to the claimed invention.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bindschedler et al. (US PG Pub 2016/0304698 A1) in view of Lungren et al. (US2020/0032063 A1) as listed on the IDS dated 4/17/2023.
Regarding claims 17 and 18, Bindschedler et al. teach the non-asphalt-based sealant composition of claim 1 as set forth above and incorporated herein by reference.
Bindschedler et al. are further silent on the gilsonite. Bindschedler et al. are silent on the amount of pigment material that imparts color.
Lungren et al. teach the use of gilsonite as an additive in coatings and pavement applications, wherein gilsonite improves bonding, resist water stripping, increases flexibility, reduce cracking and also functions as a pigment providing a deep, rich color that resist fading [0005]-[0006]. Additionally, Lungren et al. teach gilsonite control seepage and reduce permeability and cracking in cementitious and binder systems, which implies its suitability as a sealing additive. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Bindschedler et al. and Lungren et al. to incorporate the gilsonite as taught by Lungren et al. due to their ability to improve properties such as adhesion, durability, and impart color to the non-asphalt-based sealant composition ([0004],[0005]), thereby reading on the pigment that imparts color of claim 17 and the gilsonite of claim 18.
Referring to the amount of pigment material that imparts color, it is noted that Lungren et al. teaches gilsonite provides color that resist fading [0005]. By adjusting the amount of gilsonite, the properties and color would result in a desired color intensity and properties. Thus, the amount of gilsonite would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of the claimed invention. As such, without showing unexpected results, the claimed amount of gilsonite cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of gilsonite present in the sealant of Bindschedler et al. in view of Lungren et al. to reach the desired color, flexibility, adhesion, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure
Godivier et al. (EP2303950B1) teach a binder emulsion for coatings, wherein 10-70 wt.% of rosin ester resin is combined with 20-90 wt.% of aromatic oil and a styrene butadiene rubber (claims 1-2, 5)-7 based on the weight of the binder, wherein the aromatic oil have an aromatic content greater than 50 wt.% (claims 3-4).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763