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 .
DETAILED ACTION
Claims 1-23 pending
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 12-14 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.
Claim 12 recites the limitation “second layer of a compressible aggregate” in page 36. There is insufficient antecedent basis for this limitation in the claim. However, claim 1 already state “forming a layer of a compressible aggregate”.
Claim 12 recites the limitation "applying a binder on top of the second layer of the compressible aggregate" in page 36. There is insufficient antecedent basis for this limitation in the claim. However, claim 1 state already “applying a binder on top of the layer of the compressible aggregate”.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-2, 11-12 and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kenig (WO 2021/229573 A1).
Consider Claim 1, Kenig teaches the process of repairing a gap/pothole (abstract), teaches step (a): the process of filling the gap/pothole with a layer of aggregate (claim 1, page 23) where the aggregate size is 5-25 mm (page 4, fifth paragraph), encompassing 5-10 mm (8 mesh have window of 2.4 mm), therefore, 5-10 mm would not pass through the 2.4 mm mesh window, and with 25-100 mm2 area (where the 0.5 in x 0.5 in =0.25 in2 for an opening, 0.25 in2=161 mm2), therefore, aggregates with 25-100 mm2 area would passing through the 0.5 in by 0.5 in opening. Kenig teaches step (b):applying a polymer binder to fill the volume between the aggregates (claim 1, page 23).
Consider Claim 2, Kenig teaches the use of polymer base binder (non-asphalt based binder) (abstract, Claim 1), such as biopolymer type polyurethane (page 16, 5th paragraph).
Consider Claim 11, Kenig teaches the process of laying multiple layers where the lower layer include a polymer binder, different/similar to the polymer binder (non-expanding polymer) in the top layer (4th paragraph, page 12) as base layer.
Consider Claim 12, Kenig teaches the process of laying multiple layers (4th paragraph, page 12) with same aggregates size in the first layer and the second layer, and the same binder in both layer, and where the aggregates composite in each layer is the same or different (5th paragraph, page 12).
Consider Claim 15-16, Kenig teaches the process of repairing pothole as taught in claim 1 above.
Kenig does not explicitly teach the binder being applied in step (b) in an amount which flows downwardly into, which results in binding only an upper portion of the layer of the compressible aggregate and leaves a lower portion of the layer of the compressible aggregate below the upper portion unbound, and result in an upper portion of the layer of the compressible aggregate having a depth which is less than a depth of the lower portion of the layer of the compressible aggregate.
However, the prior art of Kenig teaches each and every process step and limitation of the applicant’s claims, including the “the processing steps in claim 1”. Since the “the binder being applied in step (b) in an amount which flows downwardly into, which results in binding only an upper portion of the layer of the compressible aggregate and leaves a lower portion of the layer of the compressible aggregate below the upper portion unbound, and result in an upper portion of the layer of the compressible aggregate having a depth which is less than a depth of the lower portion of the layer of the compressible aggregate” by the applicant’s claimed process is simply a function of the “the processing steps in claim 1”, and the prior art of Kenig teaches the claimed process steps. The process of the prior art of Kenig would have naturally flow or inherently produced “the binder being applied in step (b) in an amount which flows downwardly into, which results in binding only an upper portion of the layer of the compressible aggregate and leaves a lower portion of the layer of the compressible aggregate below the upper portion unbound, and result in an upper portion of the layer of the compressible aggregate having a depth which is less than a depth of the lower portion of the layer of the compressible aggregate” unless essential process steps and/or limitations are missing from the applicant’s claims.
Consider Claim 21, Kenig teaches the process repairing a gap/pothole (abstract), teaches step (a): the process of filling the gap/pothole with a layer of aggregate (claim 1, page 23) where the aggregate size is 5-25 mm (page 4, fifth paragraph), encompassing 5-10 mm (8 mesh have window of 2.4 mm), therefore, 5-10 mm would not pass through the 2.4 mm mesh window. and with 25-100 mm2 area (where the 0.5 in x 0.5 in =0.25 in2 for an opening, 0.25 in2=161 mm2), therefore, aggregates with 25-100 mm2 area would passing through the 0.5 in by 0.5 in opening. Kenig teaches step (b): applying a polymer binder to fill the volume between the aggregates (claim 1, page 23). Kenig teaches the process of laying multiple layers as sequential steps of making (for example) three layers (4th paragraph, page 12).
Consider Claim 22, Kenig teaches the process of laying multiple layers as sequential steps of making (for example) three layers, where the lower most layer include a polymer binder, different/similar to the polymer binder (non-expanding polymer) in the two top layers (4th paragraph, page 12) as base layer.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-2, 11-12 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Kenig (WO 2021/229573 A1).
Consider Claim 1, Kenig teaches the process repairing a gap/pothole (abstract), teaches step (a): the process of filling the gap/pothole with a layer of aggregate (claim 1, page 23) where the aggregate size is 5-25 mm (page 4, fifth paragraph), encompassing 5-10 mm (8 mesh have window of 2.4 mm), therefore, 5-10 mm would not pass through the 2.4 mm mesh window. and with 25-100 mm2 area (where the 0.5 in x 0.5 in =0.25 in2 for an opening, 0.25 in2=161 mm2), therefore, aggregates with 25-100 mm2 area would passing through the 0.5 in by 0.5 in opening. Kenig teaches step (b):applying a polymer binder to fill the volume between the aggregates (claim 1, page 23). 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). (MPEP 2144.05).
Consider Claim 2, Kenig teaches the use of polymer base binder (non-asphalt based binder) (abstract, Claim 1), such as biopolymer type polyurethane (page 16, 5th paragraph).
Consider Claim 11, Kenig teaches the process of laying multiple layers where the lower layer include a polymer binder, different/similar to the polymer binder (non-expanding polymer) in the top layer (4th paragraph, page 12) as base layer.
Consider Claim 12, Kenig teaches the process of laying multiple layers (4th paragraph, page 12) with same aggregates size in the first layer and the second layer, and the same binder in both layer, and where the aggregates composite in each layer is the same or different (5th paragraph, page 12).
Consider Claim 15-16, Kenig teaches the process of repairing pothole as taught in claim 1 above.
Kenig does not explicitly teach the binder being applied in step (b) in an amount which flows downwardly into, which results in binding only an upper portion of the layer of the compressible aggregate and leaves a lower portion of the layer of the compressible aggregate below the upper portion unbound, and result in an upper portion of the layer of the compressible aggregate having a depth which is less than a depth of the lower portion of the layer of the compressible aggregate.
However, the prior art of Kenig teaches each and every process step and limitation of the applicant’s claims, including the “the processing steps in claim 1”. Since the “the binder being applied in step (b) in an amount which flows downwardly into, which results in binding only an upper portion of the layer of the compressible aggregate and leaves a lower portion of the layer of the compressible aggregate below the upper portion unbound, and result in an upper portion of the layer of the compressible aggregate having a depth which is less than a depth of the lower portion of the layer of the compressible aggregate” by the applicant’s claimed process is simply a function of the “the processing steps in claim 1”, and the prior art of Kenig teaches the claimed process steps. The process of the prior art of Kenig would have naturally flow or inherently produced “the binder being applied in step (b) in an amount which flows downwardly into, which results in binding only an upper portion of the layer of the compressible aggregate and leaves a lower portion of the layer of the compressible aggregate below the upper portion unbound, and result in an upper portion of the layer of the compressible aggregate having a depth which is less than a depth of the lower portion of the layer of the compressible aggregate” unless essential process steps and/or limitations are missing from the applicant’s claims.
Consider Claim 21, Kenig teaches the process repairing a gap/pothole (abstract), teaches step (a): the process of filling the gap/pothole with a layer of aggregate (claim 1, page 23) where the aggregate size is 5-25 mm (page 4, fifth paragraph), encompassing 5-10 mm (8 mesh have window of 2.4 mm), therefore, 5-10 mm would not pass through the 2.4 mm mesh window. and with 25-100 mm2 area (where the 0.5 in x 0.5 in =0.25 in2 for an opening, 0.25 in2=161 mm2), therefore, aggregates with 25-100 mm2 area would passing through the 0.5 in by 0.5 in opening. Kenig teaches step (b): applying a polymer binder to fill the volume between the aggregates (claim 1, page 23). Kenig teaches the process of laying multiple layers as sequential steps of making (for example) three layers (4th paragraph, page 12). 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). (MPEP 2144.05).
Consider Claim 22, Kenig teaches the process of laying multiple layers as sequential steps of making (for example) three layers, where the lower most layer include a polymer binder, different/similar to the polymer binder (non-expanding polymer) in the two top layers (4th paragraph, page 12) as base layer.
Claim(s) 3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kenig (WO 2021/229573 A1), in view of Kameda (PG Pub 2018/0201716 A1).
Consider Claims 3 and 7, Kenig teaches the process of repairing a pothole using binder (abstract).
Kenig does not teach the type of binders used.
However, Kameda is in the prior art of modifying asphalt using paving binder [0019], teaches the process of modifying the asphalt [0250] by adding to the asphalt: (a) tackifier resin [0254] such as rosin ester resin (non-asphaltic binder) [0159], (b) hydrocarbon process oil [0252], (c) plasticizer (used to modify asphalt composition) [0270].
A person having ordinary skill in the art before the effective date of the claimed invention would combine Kenig with Kameda to add the above material to modify paving binder, to provide with a paving compositions having a high softening point, a high low-temperature ductility, a low melt viscosity, a high rutting resistance, excellent low-temperature bending properties [0019].
Claim(s) 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Kenig (WO 2021/229573 A1), in view of Rodrigues (PG Pub 2012/0129985 A1).
Consider Claims 4 and 8, Kenig teaches the process of repairing a pothole using binder (abstract).
Kenig does not teach the type of binder used.
However, Rodrigues is in the prior art of forming a mixing for road using binder composition with asphalt mixture [0008], teach the process of using a binder composition made from resin of vegetable origin (abstract, [0006]), such as pentaerythritol ester resin [0037].
A person having ordinary skill in the art before the effective date of the claimed invention would combine Kenig with Rodrigues to use pentaerythritol ester resin as a of vegetable origin as binder to be combined with asphalt, to provide with waterproofing or sealing applications [0009]
Although Rodrigues does not explicitly state that the vegetable origin is pine, however, it would be obvious for ordinary skilled person in the art to use any vegetable source including pine source, for forming the pentaerythritol ester resin, with reasonable and predictable expectation of success.
Claim(s) 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kenig (WO 2021/229573 A1), in view of Palmer (PG Pub 2014/0348776 A1).
Consider Claims 5-6, Kenig teaches the process of repairing a pothole using binder (abstract).
Kenig does not teach the type of binder.
However, Palmer is in the prior art of adding resin for repairing material, materials such as asphalt [0080], teaches the process of adding resin such as polyurethane (abstract, [0018]), where the polyurethane resin is formed by combining polyisocyanate with polyol [0070].
A person having ordinary skill in the art before the effective date of the claimed invention would combine Kenig with Palmer to add polyurethane resin components of polyisocyanate with polyol to the paving mixture (before or during step (b)), to provide with higher flexibility [0070].
Although, the curing step of the combined polyisocyanate with polyol used to form the polyurethane resin is not taught, however, Kenig teaches the process curing the binder (in claim 17), after the process of step (b) (of claim 1), with reasonable expectation and predictable of success.
Claim(s) 9-10, 20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kenig (WO 2021/229573 A1), in view of Okuyama (US Pat. 5,403,117).
Consider Claims 9-10, 20 and 23, Kenig teaches the process of repairing a pothole using binder with aggregates (abstract), where the aggregate having size of 5-10 mm (page 4, fifth paragraph).
Kenig does not teach the type of aggregates.
However Okuyama is in the prior art of forming pavement and paving materials (abstract), teaches the process of using aggregates made of recycle/waste tire rubber chips with size of 0.05-30 mm (Col. 6, lines 48-53).
A person having ordinary skill in the art before the effective date of the claimed invention would combine Kenig with Okuyama to use recycled tire rubber, to provide with a desired elasticity of the resulting pavement (Col. 6, lines 54-58).
Claim(s) 13-14, 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kenig (WO 2021/229573 A1), in view of Blaha (US Pat. 5,333,969).
Consider Claims 13-14, 17-19, Kenig teaches the process of repairing a pothole using binder with aggregates (abstract).
Kenig does not teach the parameters of the pothole.
However, Blaha is in the prior art of pavement repair (abstract), teaches the process of covering cavity/pothole by building up the pavement level for each 4 inches of cavity/pothole depth and 1 inch above the surface (Col. 3, lines 5-8), encompassing up to 8 inches, and with about ¼ inch above the surface (Col. 3, lines 20-23). Leading to having a range of 0.25-1 inch above the surface. Additionally, for a two-coating layers applied to a 4 inch depth, it would be obvious for ordinary skilled person in the art that first 2 inch would be for the first layer, and the second 2 inches would be for the second layer. 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). (MPEP 2144.05).
A person having ordinary skill in the art before the effective date of the claimed invention would combine Kenig with Blaha to repair pothole having various size, with reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 8:00AM-5:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718