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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/26/2026 has been entered.
Response to Amendment and Status of Claims
Applicant’s amendment, filed 01/26/2026, has been entered. Claims 14, 32, and 33 are amended, no claims are newly cancelled, and no claims are newly added. Accordingly, claims 14-23 and 28-33 are pending and considered in this Office Action.
Claim Interpretation
The preamble of the amended claim 14 is “A composition formulated to be an additive to asphalt binder, the composition comprising…” which expresses the intended use of the composition, i.e., that the composition must be ‘formulated to be an additive to asphalt binder’.
The body of the claim sets forth all of the structural requirements of the composition such that the composition must include a) a carrier matrix; b) an agent selected from the group consisting of a curing and a masked curing agent; and c) up to 5% w/w of a surfactant, wherein the carrier matrix is an oil-in-water emulsion, and further wherein the oil-in-water emulsion is from 1 to 80% oil.
Moreover, the language ‘formulated to be an additive to asphalt binder’ imparts no structural features and/or disavows no features. To be clear, there is no recognized material that would inherently be precluded from the claim scope due to an incompatibility with asphalt binder. Applicant has not disclosed any such materials either.
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).
Thus, Applicant’s claim embraces any compositions that possess a carrier matrix, an agent selected from the group consisting of a curing and a masked curing agent; and c) up to 5% w/w of a surfactant, wherein the carrier matrix is an oil-in-water emulsion, and further wherein the oil-in-water emulsion is from 1 to 80% oil.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 14-18, 22, 28, 32, and 33 are rejected under 35 U.S.C. 102(a)(1) as anticipated by, or in the alternative, under 35 U.S.C. 103 as obvious over Hyldgaard et al. (U.S. 6,342,208; Cited in IDS of 01/10/2023).
Regarding claim 14, it is noted that the language ‘formulated to be an additive to asphalt binder’ (see preamble as well as Claim Interpretation section above) is the intended use of the claimed additive composition. An asphalt binder is not required by the 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).
Hyldgaard teaches an oil-in-water emulsion (Title; claim 1 of Hyldgaard). Specifically, Example 1 teaches an oil-in-water emulsion (Col. 28 line 24) including 0.50% citric acid (meeting claimed ‘curing agent’; and is also used in Applicant’s example in the specification at [00118] and Examples in Table 11 using citric acid) and 0.69% Lutensol TO3 (C9-11 Pareth 6) which is identified as a surfactant at Col. 11 line 63 to Col. 12 line 1) although the claimed range of ‘up to 5%’ is inclusive of zero such that surfactant is not required. The example also includes 2.24% Turkish red oil and 4.47% Meadowfoam seed triglycerides, i.e., oils, such that oily phase is within the claimed range of 1 to 80 wt%.
In the alternative, 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 such that the surfactant is optional to meet claim 14. In the interest of compact prosecution, Hyldgaard teaches at Col. 11 lines 42-44 that the surfactant/emulsifier in the emulsion is in a range of ‘about 5 to about 40% w/w’ which overlaps the claimed range of ‘up to 5%’ in view of Hyldgaard’s use of the word ‘about’.
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) which overlaps the claimed ranges.
Regarding claims 18 and 22, Hyldgaard teaches the composition as applied to claim 14 above and Example 1 teaches citric acid which is a curing agent. Alternatively, stearic acid (claim 9 of Hyldgaard) would also be a curing agent.
Regarding claim 28, Hyldgaard teaches the composition as applied to claim 14 above and further teaches that Example 1 includes C9-C11 Pareth 6 in an amount of 0.69% as well as a general teaching at Col. 11 lines 42-44 that the surfactant/emulsifier in the emulsion is in a range of ‘about 5 to about 40% w/w’ which overlaps the claimed range of ‘up to 5%’ in view of Hyldgaard’s use of the word ‘about’. There is no asserted evidence of unexpected results.
Regarding claim 32, Hyldgaard teaches the composition as applied to claim 14 above and further teaches that Example 1 includes C9-C11 Pareth 6 in an amount of 0.69% which meets the claimed range of ‘0.1 to 1% (w/w) surfactant’. There is no asserted evidence of unexpected results.
Regarding claim 32, Hyldgaard teaches the composition as applied to claim 14 above and further teaches that Example 1 includes C9-C11 Pareth 6 in an amount of 0.69% which is reasonably close to the claimed value of ‘0.5% (w/w) surfactant’. There is no asserted evidence of unexpected results.
Claims 19-21, 23, and 29-31 are rejected under 35 U.S.C. 103 as obvious over Hyldgaard et al. (U.S. 6,342,208; Cited in IDS of 01/10/2023).
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. It would be obvious to include a material such as methyl salicylate in view that Hyldgaard expressly suggests it.
Regarding claim 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 and/or both citric acid and methyl salicylate would produce a combination of ‘a curing agent’ and ‘a masked curing agent’.
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 29, Hyldgaard teaches the composition as applied to claim 14 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).
Hylgaard’s express identification of the genus of ‘polyoxyethylene sorbitan monoesters and… triesters’ with an express suggestion of “Tween series”, would make it obvious for the person of ordinary skill in the art before the effective filing date of the claimed invention to select polysorbate 20 (MPEP 2144.08).
Regarding claims 30-31, 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. Notably, Example 1 include C9-C11 Pareth 6 in an amount of 0.69% which would further lend itself to the mind of the person of ordinary skill that lower amounts of surfactant may be useful to try. There is no asserted evidence of unexpected results.
Response to Arguments
Applicant's arguments filed 01/26/2026 have been fully considered but they are not persuasive.
Applicant asserts that claim 14 is amended to clarify that the claimed composition is an additive, i.e. that it is intended to be added to asphalt binder (see Page 1 Claim Rejections – 35 USC 112 section of Remarks filed 01/26/2026) and seeks to disqualify the Hyldgaard reference because Hyldgaard is not directed to topical compositions for cleansing or conditioning the skin (see Page 3, second paragraph of Remarks filed 01/26/2026). This is unpersuasive for the reasons of record and Examiner maintains that there is no structural difference imparted by the language ‘formulated to be an additive for asphalt binder’. MPEP 2111.02.II.
Again, 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 constructure. To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim.
In the instant case, Hyldgaard’s oil-in-water emulsion is capable of being an additive for asphalt binder.
See also, ‘the claims were directed to a core member for hair curlers and a process of making a core members for hair curlers. The court held that the intended use of hair curling was of no significance to the structure and process of making’ (MPEP 2111.02.II. 2nd paragraph).
Applicant’s presented claims are to the statutory class of invention of ‘product’ and not ‘a method of using’ nor a ‘method of making’. Hyldgaard’s composition is capable of being an additive for asphalt binder even though it is directed to a composition for cleaning skin.
Applicant argues that the Office Action does not respond “at all” to the argument that Hyldgaard is disqualified because it fails the analogous art standard set forth in In re Bigio, i.e. the reference must be from the same field of endeavor as the claimed invention (even if it addresses a different problem) or the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). This is not persuasive and Examiner respectfully points back to Item 16 of the Final rejection mailed 10/27/2025.
The product claim of Applicant is not distinguished from the prior art composition of Hyldgaard because Applicant intends for it to be used for an asphalt binder and not for cleansing skin.
In the interest of compact prosecution, the positive recitation of asphalt binder or other structurally distinguishing material distinct from Hyldgaard could be amended so long as it finds sufficient support from the specification.
Conclusion
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
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