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 .
Response to Amendment and Status of Claims
Applicant’s amendment, filed 08/01/2025, has been entered. Claims 14 and 28-31 are amended, claims 24-27 are cancelled, and claims 32 and 33 are newly added. Accordingly, claims 14-23 and 28-33 are pending and considered in this Office Action.
Applicant’s amendment to the specification appears acceptable.
Applicant’s amendment to remove the trademark “Tween 20” from the claims has obviated the previous 112 rejections.
Claim Objections
Claims 32 and 33 are objected to because of the following informalities: Claim 32 appears to have an extra space between the words ‘amount’ and ‘of’ while Claim 33 is missing punctuation to end the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
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 14-23 and 28-33 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 preamble of claim 14 recites “[a]n asphalt binder additive composition comprising…”. The metes and bounds of the claim are indefinite because it is unclear if “asphalt binder” is actually required.
In the last action, see Non-Final Rejection mailed 03/27/2025, Examiner articulated for the record that “asphalt binder… is the intended use of the claimed additive composition” and that it is not considered a limitation and is of no significance to claim construction because the body of the claim fully and intrinsically sets fort all of the limitations of the claimed invention and the preamble merely states the purpose or intended use of the invention (see Item 12. “Regarding claims 14…” section).
Applicant’s arguments, filed 08/01/2025, at page 2 states that “the recitation of ‘asphalt binder’ is relevant to claim construction, if only because it defines the field of endeavor of the claimed invention. This is particularly relevant because the Hyldgaard publication is not from the same field of endeavor as the claimed invention and is not reasonably pertinent to the problems faced by the present inventors. Hyldgaard is thus not properly cited as prior art against the rejected claims”.
Applicant’s arguments now call the metes and bounds of the claims into question.
Applicant appears to agree with Examiner that ‘asphalt binder additive composition’ is the intended use of the claimed additive composition because “it defines the field of endeavor of the claimed invention”. However, it is well settled that “where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation” (Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 48-81; see MPEP 2111.02.II).
Applicant then attempts to disqualify the Hylgaard prior art reference by arguing that the prior art is not used for the intended purpose as an ‘asphalt binder additive’.
If Applicant insists that asphalt binder is a limitation and/or the composition must be used as an asphalt binder additive, then amendments to that effect must be made. Notably, the instant invention is to a product and not a method. Further, no amount of ‘asphalt binder’ is recited in the body of the claim.
Thus, the metes and bounds of the claim are indefinite because it is not clear if the invention requires asphalt binder and/or the composition must be used as an additive to an asphalt binder.
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 14-23 and 28-33 are rejected under 35 U.S.C. 103 as being unpatentable over Hyldgaard et al. (U.S. 6,342,208; Cited in IDS of 01/10/2023).
Regarding claims 14, 18, and 22, it is noted that ‘asphalt binder’ (see preamble) is the intended use of the claimed additive composition. It has been held that “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999) MPEP 2112.02.II. In the instant case, ‘asphalt binder’ is not considered a limitation and is of no significance to claim construction.
Hyldgaard et al. (hereinafter “Hyldgaard”) teaches an oil-in-water emulsion (Title; claim 1 of Hyldgaard; meeting claimed ‘carrier matrix’) that includes an oily phase in an amount of about 1-50% (Col. 13 lines 55-58; lies fully within the claimed range of “1 to 80% oil”) and stearic acid (claim 9 of Hyldgaard; meeting claimed ‘curing agent’).
With regard to the amended feature requiring “up to 5% w/w of a surfactant”, the range “up to 5%” includes zero. Thus, the surfactant is optional to meet claim 14.
Regarding claims 15-17, Hyldgaard teaches the composition as applied to claim 14 above and further teaches that the oily phase is present in an amount of about 1-50% (Col. 13 lines 55-58).
Regarding claim 19, Hyldgaard teaches the composition as applied to claim 14 above and further teaches that the emulsion may contain a drug substance (claim 22 of Hyldgaard) and names methyl salicylate at Col. 21 line 58 which meets the claimed masked curing agent.
Regarding claims 20 and 23, Hyldgaard teaches the composition as applied to claim 14 above and further teaches that the emulsion may contain a drug substance (claim 22 of Hyldgaard) and names methyl salicylate at Col. 21 line 58 which meets the claimed masked curing agent. The inclusion of both stearic acid and methyl salicylate would produce a combination of ‘a curing agent’ and ‘a masked curing agent’ and therefore meet the claim limitation requiring both.
Regarding claim 21, Hyldgaard teaches the composition as applied to claim 14 above and further teaches that linseed oil may be used (claim 17 of Hyldgaard) which would produce/render a ‘linseed oil-in-water emulsion’ as claimed.
Regarding claim 28, Hyldgaard teaches the composition as applied to claim 14 above and further teaches the inclusion of surfactant (claim 1, 8, 9, and/or Col. 10 lines 21-55 notably including ‘mixtures’ of surfactants) and that the surfactant is included from “about 5 to about 40%” (Col. 11 lines 41-44).
Hyldgaard’s “about 5” meets the claimed “5 wt%” as well as some values a little below 5 wt% in view of the word “about”.
Regarding claim 29, Hyldgaard teaches the composition as applied to claim 28 above and further teaches that suitable surfactants are “polyoxyethylene sorbitan monoesters (e.g. Tween series and/or ‘polysorbate’), polyoxyethylene sorbitan fatty acid triesters (e.g. Tween series and/or polysorbate)” (Col. 11 lines 45-48).
Hyldgaard that identify the genus of ‘polyoxyethylene sorbitan monoesters and… triesters’ with an express suggestion of “Tween series”, for the person of ordinary skill in the art to select polysorbate 20 (MPEP 2144.08).
Regarding claims 30 and 31, Hyldgaard teaches the composition as applied to claim 29 above but fails to teach that the surfactant is 0.5 wt% polysorbate 20 or 1.0 wt% polysorbate 20. While Hyldgaard does not expressly identify the species “polysorbate 20”, it would be obvious, because of the teachings of Hyldgaard that identify the genus of ‘polyoxyethylene sorbitan monoesters and… triesters’ with an express suggestion of “Tween series”, for the person of ordinary skill in the art to select polysorbate 20 (MPEP 2144.08). Additionally, in view of Hyldgaard’s teaching of “about 5 to about 40%” surfactant” (Col. 11 lines 41-44), a teaching of ‘about 5’ would be considered reasonably close to the claimed values in the absence of evidence showing that the surfactant values of 0.5 and 1 wt% are critical.
It has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, the proportion are so close that prima facie one skilled in the art would have expected them to have the same properties.
Alternatively, 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).
Regarding claims 32 and 33, Hylgaard teaches the composition as applied to claim 14 above but fails to teach that the surfactant is present in an amount of 0.1 to 1% (instant claim 32) or 0.5 wt% (instant claim 33).
However, Hyldgaard teaches the inclusion of surfactant (claim 1, 8, 9, and/or Col. 10 lines 21-55 notably including ‘mixtures’ of surfactants) and that the surfactant is included from “about 5 to about 40%” (Col. 11 lines 41-44).
A teaching of ‘about 5’ would be considered reasonably close to the claimed values in the absence of evidence showing that the surfactant values of 0.5 and 1 wt% are critical.
It has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Alternatively, 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).
Finally, it has been held that “a change in form, proportions, or degree will not sustain a patent” Smith v Nichols, 88 U.S. 112, 118-19 (1874) (MPEP 2144.05).
Response to Arguments
Applicant's arguments filed 08/01/2025 have been fully considered but they are not persuasive.
In response to Applicant's argument that Hyldgaard is not a proper prior art reference because it is not directed to the use of the composition as an asphalt binder, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to Applicant’s argument that Hyldgaard is not analogous art to the claimed invention because it is directed to an oil-in-water emulsion for treating skin of mammals and therefore is not analogous art to the invention because Hyldgaard is not from the same field of endeavor as the claimed invention and not reasonably pertinent to the problems faced by the present inventors, Examiner respectfully disagrees. Applicant’s claim does not even require asphalt binder and Applicant could disqualify Hyldgaard by actually requiring asphalt binder as a component of the composition. Going further to make the record clear, Hyldgaard is a single reference 103 over the claimed invention, i.e. a composition requiring an oil-in-water emulsion having 1 to 80% oil and an agent. Applicant’s arguments are not commensurate in scope with the claimed invention and Hyldgaard is properly prior art to the invention as claimed. Again, the only recitations in the claimed invention directed to asphalt binder are those in the preamble and such recitations merely specify the intended use of the composition. As Hyldgaard’s structure is capable of being used as an asphalt binder additive, Hyldgaard meets the claim.
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.
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
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