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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/02/2026 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, 3rd para.) the VAA reference describes the application of asphalt at lower viscosities, which is suitable for road paving and one of ordinary skill in the art would be aware that asphalt paving mixtures include aggregate and the aggregates would clump together in a paving mixture. In response to this argument, 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). Applicants arguments lack support for the contention that using VAA teaches a lower viscosity liquid asphalt or that the liquid asphalt necesarilly contains aggregate. Furthermore, Varnadoe is cited as teaching a coating having a viscosity from about 3 cP to about 20000 cP at 60°C [0014].
Applicants argue (para. bridging pgs. 6-7] the claimed invention enhances the anti-caking properties of the fertilizer as demonstrated at para. [0040]-[0045] and Tables 5-8. Applicant’s unexpected results are not considered commensurate in scope with the claims which do not require DAP or MAP. The burden of establishing that unexpected results support a conclusion of nonobviousness rests with Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). "[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) ( emphasis in original). Additionally, the relied-upon results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003). "Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of [the CCPA] that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."' See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Applicant argues (pg. 7, 1st full para.) one of ordinary skill would not have been motivated to apply the emulsifiers used in road paving technology, which requires caking of the aggregate, in fertilizer applications to minimize caking. In response to this argument, the VAA reference is cited for its teaching of two known alternatives for providing liquid asphalt. Id. at 3--4, citing V AA. Here, the substitution of one known element for another is considered 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). Furthermore, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Varnadoe and VAA are pertinent to the particular problem with which the inventor was concerned which is the liquification of bitumen.
For these reasons Applicant's arguments filed 07/02/2026 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:
Suryakanta “BITUMEN EMULSION – WHAT, WHY & HOW?” (2016) describes adding an emulsifier (a surface active agent) with water before to bitumen. Addition of emulsifier with water facilitates breaking of bitumen into minute particles and keeps it dispersed in suspension. [pg. 1]
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 July 20, 2026
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