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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/17/2025 has been entered.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b).
Claim Interpretation
The claim term “devoid of heating” (e.g. claim 3) is interpreted as wherein the claimed process occurs at ambient temperature with ambient temperature defined by Applicant in the range of 33°F to 120°F [see specification, para. 0025].
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Varnadoe et al. (US Patent Publication No. 2002/0148388 A1) in view of Virginia Asphalt Association (VAA, 2014) and Arenas-Calderon (Colloids and Surfaces, 2014).
In regard to claim 1, Varnadoe et al. disclose a method of making a fertilizer composite (e.g. coating compositions for fertilizer) [abstract] comprising:
spraying [para. 0022] a fertilizer granule with a coating (e.g. coating granulated solids) [0013], the coating comprising a diluent in an amount of from about 0.01% to about 99.9% by weight of the total weight of the coating composition [0014], the coating having a viscosity from about 3 cP to about 20000 cP at 60°C [0014], and while Varnadoe does not recite this viscosity at 100°F (e.g. 38°C), one of skill in the art would understand viscosity of liquids decreases with an increase in temperature and in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [see MPEP 2144.05], the coating comprising at least one of bitumen, cutback bitumen and combinations thereof (e.g. bituminous materials including asphalt, asphaltic tars, asphaltic pitches, coal tars, coal pitches and combinations thereof) [0019],
wherein an application rate of the coating comprises no more than 8 lbs of coating per 1 ton of fertilizer (e.g. 0.5 gal/ton which is considered less than 8 lbs coating per 1 ton fertilizer, depending on granule density) [0031-0032].
Varnadoe et al. disclose a liquid coating composition comprising a fatty acid methyl ester or paraffinic oil diluent [Paragraph 0013] but do not explicitly disclose an emulsion comprising a water and emulsifier-containing diluent.
Virginia Asphalt Association (VAA, hereafter) teaches three ways asphalt can be liquefied including 1) by heat, 2) by blending with a light petroleum solvent (e.g. paraffinic oil diluent or fatty acid diluent), and 3) by suspending in water through the emulsification process [Page 1]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform coating with a composition comprising bitumen, water and an emulsifier. One of ordinary skill in the art would have been motivated choose from the finite number (e.g. 3 ways) of identified, predictable solutions to include emulsifying with an emulsifier with regard to liquifying bitumen, with a reasonable expectation of success. Application of a coating comprising water and an emulsifier (e.g. bitumen emulsion) would allow one of skill in the art to formulate a coated fertilizer with a bituminous dust control agent that is advantageous from an energetic and environmental perspective because it allows the handling of the bitumen at low temperatures, contrary to bitumen cement (hot bitumen), and avoids the need of petroleum solvent employed in cutback bitumen [Arenas-Calderon, pg. 25, section 1]. An express teaching need not be present in the art to support the substitution of one alternative for another alternative used for the same purpose (i.e., liquefying asphalt). In re Fout, 675 F.2d 297, 301 (CCPA 1982). Further, the substitution of one known element for another is obvious when the combination yields no more than a predictable result, as here (i.e., using the aqueous bituminous emulsion of VAA in place of the Varnadoe’s solvent liquefied bituminous material). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
In regard to claims 2-3, Arena-Calderon et al. disclose preparing an emulsion of bitumen and water using high shear in a heated tank at a fixed temperature of 90°C and stirred to homogenize [pg. 26, section 2.1]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform a first heating step to a temperature of 90°C as described by Arenas-Calderon. One of ordinary skill in the art would have been motivated to perform the spraying step of modified-Varnadoe without heating because bitumen emulsions allow the handling of the bitumen at low temperatures [Arenas-Calderon, pg. 25, introduction].
In regard to claim 4, Varnadoe et al. disclose a coating having a viscosity from about 3 cP to about 20000 cP [0014], which encompasses the claimed range. One of ordinary skill in the art would have been motivated to heat the emulsion phase to soften the oil component (e.g. lower viscosity) [Paragraph 0022]. Upon heating, the emulsion viscosity would be expected to overlap the claimed range.
In regard to claim 5, Varnadoe discloses asphalt, which is synonymous with the term bitumen [Paragraph 0019] wherein bitumen makes up about 65% (w/w) of the coating and bitumen makes up 100% of the asphalt [Paragraph 0026].
In regard to claim 6, Varnadoe does not explicitly disclose emulsifying the at least one of bitumen, cutback bitumen and combinations thereof prior to the spraying. However, VAA teaches suspending bitumen in water through the emulsification process [Page 1].
In regard to claim 7, Varnadoe et al. disclose wherein the bulk solids include materials which are granulated, crushed, compacted, crystalline or prilled solids and combinations thereof [0013].
In regard to claim 8, Varnadoe et al. disclose spraying and at least partially covering the fertilizer granule with the coating (e.g. even distribution of the coating on the bulk solids) [0022].
Response to Arguments
Applicant argues (pg. 6) the prior art does not teach or suggest wherein the coating at “100F having a viscosity of no more than 100 cP”. In response to this argument, Varnadoe is cited as teaching a coating having a viscosity from about 3 cP to about 20000 cP at 60°C [0014]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [see MPEP 2144.05]. Selecting a narrow range from within a broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range and wherein the claimed ranges is completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap. Additionally the Arena-Calderon prior art describes wherein bitumen emulsion are advantageous because it allows the handling of the bitumen at low temperatures, contrary to bitumen cement (hot bitumen), and avoids the need of petroleum solvent employed in cutback bitumen [Arenas-Calderon, pg. 25, section 1]. The nature of the variable range of viscosity in the prior art is predictable within varying temperature ranges (e.g. in liquids, viscosity decreases with increasing temperature) and concentrations (viscosity of the composition comprising a bituminous material and diluent in an amount of from about 0.01% to about 99.9% by weight of the total weight of the coating composition) [0013]. Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. See: MPEP §716.02 - §716.02(g) for a discussion of criticality and unexpected results.
Applicant argues (pg. 6) the composition of Varnadoe is not an emulsion because no emulsifier is added when preparing the coating composition. While Varnadoe is directed to the combination of fatty acid methyl ester diluent with bitumen, the VAA reference is cited and demonstrates two known alternatives for providing liquid asphalt. An express teaching need not be present in the art to support the substitution of one alternative for another alternative used for the same purpose (i.e. liquefying asphalt). In re Fout, 675 F.2d 297, 301 (CCPA 1982). Further, the substitution of one known element for another is obvious when the combination yields no more than a predictable result, as here (i.e., using the aqueous bituminous emulsion of VAA in place of Varnadoe’s solvent liquefied bituminous material). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The arguments lack support for the contention that using water as part of the composition for coating fertilizer, generally, would have been counterintuitive to those skilled in the art.
Applicant argues (pg. 6) at higher temperatures, the emulsified composition prepared using the claimed method would separate into its constituent components, and be rendered unsuitable for its intended purpose and one of ordinary skill would not have been motivated to modify the viscosity of the coating composition based on the general disclosure in Varnadoe of a coating composition having a viscosity range at an elevated temperature of 140°F. This argument is not persuasive. Liquids have inherent viscosity which is their fundamental resistance to flow, though the property changes with temperature. Thus, Varnadoe is cited as teaching a viscosity value from about 3 cP to about 20000 cP at 60°C (e.g. 140°F) [0014], and while Varnadoe does not recite this viscosity value as specifically measured at 100°F (e.g. 38°C), one of skill in the art would understand viscosity of liquids decreases with an increase in temperature and in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists [see MPEP 2144.05].
Applicant argues (para. bridging pgs. 6-7) the prior art does not teach an application temperature of at least 33°F up to about 120°F or spraying without a heating step as required in claims 2-3. However, Arena-Calderon et al. discloses preparing an emulsion of bitumen and water using high shear in a heated tank at a fixed temperature of 90°C and stirred to homogenize [pg. 26, section 2.1]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform a first heating step to a temperature of at most 90°C as described by Arenas-Calderon and to perform the spraying step of modified Varnadoe without heating because bitumen emulsions allow the handling of the bitumen at low temperatures [Arenas-Calderon, pg. 25, introduction]. Furthermore, Applicant’s temperature range is within ambient temperature and because Varnadoe does not explicitly teach a temperature value of application, one of skill in the art would expect application is performed within the claimed range, at ambient temperature, absent any explicit direction otherwise.
For these reasons Applicant's arguments filed 12/17/2025have been fully considered but they are not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Qu (CN-104230564-A) describes spraying an asphalt emulsion on a granulated fertilizer product [pg. 5, para. 15].
Lechler “Spray Facts on Viscosity” describes single fluid nozzles working best with fluids having a viscosity of less than 100cP [pg. 2]. Fluids having a high viscosity can reduce the spray angle and flow rate, which can result in poor spray coverage [pg. 3.].
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731 December 30, 2025