DETAILED ACTION
An Office Action was mailed 09/16/2025. Applicant filed a Response on 11/17/2025.
Claims 1-12 are pending. Claims 1-6 are rejected. Claims 7-12 are withdrawn from consideration.
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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-6, in the reply filed on 11/17/2025 is acknowledged. The traversal is on the ground(s) that:
“The Examiner first states that under 37 CFR 1.475(b) a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn to one of a series of a combinations of categories. Item (2) on the list is a product and a process of use of said product. This is further in agreement with the Administrative Instructions under WIPO for following PCT Rule 13 regarding Unity of Invention (see Appendix B, attached herewith …) … Again, one of the permitted combinations is a claim for a product and a claim for the use of said product. … Applicant respectfully submits that the analysis regarding special technical feature is only needed in cases in which the permitted combination of claims is not present.”
Remarks, pages 1-2.
This is not found persuasive because, as stated in MPEP 1850.I, “The Requirement for ‘Unity of Invention’”:
“The categories of invention in former PCT Rule 13.2 have been replaced with a statement describing the method for determining whether the requirement of unity of invention is satisfied. Unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more special technical features. The term ‘special technical features’ is defined as meaning those technical features that define a contribution which each of the inventions considered as a whole, makes over the prior art.”
Further, MPEP 1850.II, “Determination for Unity of Invention,” states:
“If, however, an independent claim does not avoid the prior art, then the question whether there is still an inventive link between all the claims dependent on that claim needs to be carefully considered. If there is no link remaining, an objection of lack of unity a posteriori (that is, arising only after assessment of the prior art) may be raised.”
Because the special technical feature of the claims is obvious over the prior art of record, unity is lacking a posteriori because there is not a special technical feature common to all the claims.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/17/2025.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3, line 2, it is suggested the term “the emulsifier” be amended to “the cationic emulsifier” in order to ensure proper antecedent basis in the claims.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Butz et al, EP 3249017A1 (Butz) in view of Qin et al, CN 1396213A (Qin).
Butz and Qin were provided with the PTO-892 mailed 09/16/2025, in addition to the machine English translation of Qin. The citation of Qin in this rejection refers to the machine translation.
Regarding claims 1 and 5-6, Butz teaches a bitumen additive comprising:
20 wt% to 80 wt% of petroleum slack wax and 20 wt% to 80 wt% of Fischer-Tropsch wax, each relative to a total mass of the wax mixture (Butz; [0032]);
wherein the Fischer-Tropsch wax has the following properties: a congealing point according to ASTM D938 of 70oC or higher; a MEK-oil content according to ASTM D7211-06 below 5 wt%, preferably below 2%; a kinematic viscosity at 100oC according to ASTM D7042-11 between 5 mm2/s to 10 mm2s; a needle penetration at 25oC according to ASTM D1321 below 10 1/10mm; and a n-alkane content above 80 wt% (Butz; [0046]); and
wherein the petroleum slack wax has the following properties: a congealing point according to ASTM D938 below 65oC; a MEK-oil content according to ASTM D7211-06 above 15 wt%; a kinematic viscosity at 100oC according to ASTM D7042-11 between 5 and 10 mm2/s; a needle penetration at 25oC according to ASTM D1321 above 50 1/10 mm; and a n-alkane content below 60 wt% (Butz; [0044]).
These parameters fall within the scope of the Fischer-Tropsch wax and petroleum slack wax parameters of claims 1 and 5, and overlap in scope with the petroleum slack wax parameters of claim 6.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Butz teaches that the wax mixture overcomes the disadvantages of the prior art in that it improves the processing parameters of bitumen during asphalt production without negatively altering the physical properties of the bitumen in the final product. In particular, there is almost no increase in the stiffness and low temperature brittleness of the bitumen and asphalt (Butz; [0030-0031]).
The compositions are used to make asphalt compositions and pavements (Butz; [0054-0056]). The wax mixture improves the processability of bitumen, and obtains improved compaction resistance and/or aging resistance of asphalt compositions (Butz; [0033-0034]). While known improvements of Fischer-Tropsch waxes such as lower viscosity are present, low temperature brittleness and increased stiffness of the bitumen and asphalt produced therefrom is minimized. Moreover, the bitumen composition allows for a further reduction of the asphalt compaction temperature as compared to using a Fischer-Tropsch wax alone, as the onset of the crystallization of the wax mixture in the bitumen composition and asphalt made therefrom was found to be 30oC lower (Butz; [0037-0039]).
Surprisingly, the bitumen compositions allow the processing of increased amounts of recycled asphalts in asphalt compositions using the cold addition technique. The better processability of the bitumen compositions allows the applying and/or compaction of asphalt compositions at temperatures below 150oC (Butz; [0039]).
In Example 1, Butz exemplifies how using the wax mixture as a bitumen additive is an improvement over using the commercially available Fischer-Tropsch wax Sasobit. The wax mixture has a much lower impact on the needle penetration, the softening point, the complex modulus, and the phase angle of the bitumen as compared to Sasobit. These results display the reduced impact on the stiffness of bitumen when the wax mixture is used as compared to the Fischer-Tropsch wax Sasobit. (Butz; Example 1, [0059-0062] and Tables 1-2). The wax mixture further has nearly the same viscosity reducing impact on bitumen as Sasobit, while having a much lower impact of the stiffness of soft bitumen grades (Butz; Table 3 and [0063-0064]).
Butz teaches that bitumen composition may comprise one or more polymers selected from the group of elastomers, e.g. SBS and similar block-co-polymers and plastomers, e.g. EVA or polyolefins, up to 7 wt.% (Butz; [0052]).
The bitumen composition may contain further additives including surfactants and/or adhesion promoters, such as amines and amides, in an amount up to 2 wt.% (Butz; [0052-0053]).
Further hydrocarbons (different from the claimed wax mixtures) may also be added (Butz; [0053]).
Butz does not explicitly teach a bitumen additive comprising water and a cationic emulsifier, wherein the bitumen additive comprises from 30 wt% to 70 wt% of the wax, based on the total mass of the bitumen additive.
With respect to the difference, Qin teaches a polymer emulsified heavy-duty asphalt mixed colloid which comprises: a modified polymer, a dispersing agent, a stabilizer, heavy duty asphalt, emulsifier and water (Qin; page 2, line 56-page 3, line 27).
The emulsifier is a cationic emulsifier such as an amide, an imidazoline, and an alkylamide-based polyamine. These slow-cracking, fast-setting emulsifiers have strong emulsifying ability. The modified asphalt emulsion does not agglomerate, does not precipitate, and the emulsion is smooth (Qin; page 3, lines 29-41).
The stabilizers are polyolefin compounds such as Sasobit, which are used in preferred amounts of 1.0 to 2.0 parts by weight (Qin; page 3, lines 43-48).
The modifying polymer may comprise EVA, SBR, SBS and their latexes, with SBS latex and SBR latex being preferred. The modifier is used in an amount of 1.5 to 4.5 parts by weight, preferably 2.0 to 4.0 parts by weight (Qin; page 3, line 57-page 4, line 3).
The water, emulsifier, modifier polymer, dispersant and stabilizer are uniformly mixed at preferred temperatures of 55-60oC (i.e., to form an “additive”) (Qin; page 4, lines 15-20). The asphalt is heated together with the uniform hot liquid (i.e., “additive”) at 140-150oC, and the polymer-emulsified asphalt mixed colloid is obtained in minutes (Qin; page 4, lines 22-25).
Since the modifier is directly added to the aqueous solution of the emulsifier, the production operation is simple and convenient, performance is reliable, pollution is low, and production cost is low. High temperature and energy consumption, multi-equipment use, and high-cost processes can be avoided (Qin; page 4, lines 40-43).
The mixed colloid additive has excellent low temperature performance including crack resistance, and excellent anti-aging and high temperature properties (e.g., effects on the softening point) (Qin; page 4, lines 27-38; page 5, lines 7-8 and 17-19). The mixed colloid can improve high temperature stability and low temperature anti-shrinkage of the road surface, enhance peeling resistance and adhesion strength, and improve the early strength of the road surface and prolong service life (Qin; page 5, lines 1-3).
Qin is analogous art as it teaches asphalt additives comprising cationic surfactants, waxes, elastomers and water.
In light of the motivation provided by Qin to use the aqueous emulsified polymer “additive” in asphalt compositions, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the aqueous polymer emulsion additive, which comprises water and a cationic emulsifier as claimed, to the bitumen compositions of Butz, in order to obtain an asphalt production process that is simple, convenient, and reliable, wherein pollution and production costs are low, and wherein high temperature and energy consumption, multi-equipment use, and high-cost processes can be avoided. Further, because Butz teaches that additives such as elastomer polymers (e.g. SBS), surfactants and additional hydrocarbons may be added to the bitumen compositions, and because the aqueous polymer emulsions of Qin comprise these components (i.e., a modifier polymer such SBS, a cationic surfactant, and the hydrocarbon wax Sasobit), those skilled in art would expect such an addition to the bitumen additives of Butz would result in predictable and successful results, including reduced agglomeration and precipitation, and strong and smooth emulsification performance from the cationic emulsifier additive.
Further, both Butz and Qin are trying to solve same problems in asphalt products, e.g., improved low temperature performance including crack resistance, and excellent anti-aging. Butz teaches that the wax mixtures as presently claimed are an improvement over the Sasobit wax used in the compositions of Qin. Qin also teaches that asphalt is heated together with the liquid emulsion at 140-150oC, while Butz’s wax additives allow for processing asphalt at temperatures below 150oC. For all these reasons, those skilled in the art would expect successful and predictable results when combining the aqueous polymer emulsions of Qin with the wax mixture of Butz as a bitumen additive.
Although Butz in view of Qin do not explicitly teach wherein the bitumen additive comprises from 30 wt% to 70 wt% of the wax, based on the total mass of the bitumen additive, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the mass percent of the wax mixture, including over the presently claimed, in order to obtain a bitumen additive that results in improved processing parameters during asphalt production, such as viscosity and compaction temperature, without negatively altering the physical properties of the final asphalt product, such as low temperature brittleness and anti-aging, and thereby arrive at the claimed invention.
Regarding claim 2, Butz in view of Qin are relied upon as teaching the limitations of claim 1 as discussed above.
Butz teaches that the bitumen composition may contain further additives including surfactants in an amount up to 2 wt.% (Butz; [0052-0053]).
Butz does not teach the addition of fatty alcohols as claimed.
With respect to the difference, Qin teaches that the emulsifier used in the polymer emulsified composition can be a cationic emulsifier, an anionic emulsifier, and combinations thereof. Preferred anionic emulsifiers include fatty alcohol polyoxyethylene ethers (i.e., a fatty alcohol).
Given that Qin discloses emulsifiers that overlaps the presently claimed emulsifiers, including cationic emulsifiers, fatty alcohols and mixtures thereof, it therefore would have been obvious to one of ordinary skill in the art to use a mixture of a cationic emulsifier and a fatty alcohol emulsifier in the bitumen additives of Butz, which is both disclosed by Qin and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 3, Butz in view of Qin are relied upon as teaching the limitations of claim 1 as discussed above. Butz teaches that surfactant additives may be added in an amount up to 2 wt.%, based on the weight of the bitumen composition (Butz; [0052-0053]). The bitumen composition comprises the wax mixture in an amount of 0.5 to 2.5 wt.% (Butz; [0040]). Therefore, the “bitumen additive” may comprise up to 44.4 wt% emulsifier, based on the total amount of the bitumen additive (2.5% wax + 2% surfactant = 4.5% total; 2% emulsifier/4.5% total * 100 = 44.4 wt%).
Because the components of Qin are mixed prior to addition to asphalt, the “additive” comprises: 1.5-4.5 parts by weight modifier polymer + 0.5-1.5 parts by weight dispersing agent + 0.5-2.0 parts by weight stabilizer + 1.0-2.5 parts by weight emulsifier + 19.5-41.5 parts by weight water = 23.0-52.0 parts by weight total. Therefore, Qin teaches the addition of an emulsifier in an amount of 1.92-10.97 parts by weight, based on the total weight of the “additive” (1/52*100=1.92 and 2.5/23*100=10.87) (Qin; page 2, line 59-page 3, line 12; and page 4, lines 18-25).
Therefore, it would have been obvious to adjust the amount of emulsifier in the additive compositions of Butz in view of Qin to an amount of 1.92-10.97 parts by weight, based on the total weight of the “additive,” based on the combined teachings of Butz and Qin regarding the emulsifier amounts. 1.92-10.97 parts by weight emulsifier, based on the total weight of the additive, overlaps in scope with the claimed 0.2-10 wt%, based on the total mass of the bitumen additive.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, Butz in view of Qin are relied upon as teaching the limitations of claim 1 as discussed above. Butz teaches that bitumen composition may comprise one or more polymers selected from the group of elastomers, e.g. SBS and similar block-co-polymers and plastomers, e.g. EVA or polyolefins, in an amount up to 7 wt.% (Butz; [0052]).
The bitumen composition comprises the wax mixture in an amount of 0.5 to 2.5 wt.% (Butz; [0040]). Therefore, the “bitumen additive” may comprise up to 73.7 wt% elastomer, based on the total amount of the bitumen additive (2.5% wax + 7% elastomer = 9.5% total; 7% elastomer/9.5% total * 100 = 73.7 wt%).
Because the components of Qin are mixed prior to addition to asphalt, the “additive” comprises: 1.5-4.5 parts by weight modifier polymer + 0.5-1.5 parts by weight dispersing agent + 0.5-2.0 parts by weight stabilizer + 1.0-2.5 parts by weight emulsifier + 19.5-41.5 parts by weight water = 23.0-52.0 parts by weight total. Therefore, Qin teaches the addition of a “modifier polymer” (i.e., elastomer) in an amount of 2.88-19.57 parts by weight, based on the total weight of the “additive” (1.5/52*100=2.88 and 4.5/23*100=19.57) (Qin; page 2, line 59-page 3, line 12; and page 4, lines 18-25).
Therefore, it would have been obvious to adjust the amount of elastomer polymer in the additive compositions of Butz in view of Qin to an amount of 2.88-19.57 parts by weight, based on the total weight of the “additive,” based on the combined teachings of Butz and Qin regarding the elastomer amounts. 2.88-19.57 parts by weight elastomer, based on the total weight of the additive, falls within the scope of the claimed 1-70 wt% elastomer, based on the total mass of the bitumen additive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wu, CN 1793234A, teaches an SBS modified bitumen, the modifier comprising SBS modifier, Sasobit stabilizer, cationic emulsifier, water, calcium chloride and polyvinyl alcohol.
Sun et al, CN 100410328C, teaches an emulsified modified asphalt comprising base asphalt, a cationic emulsifier (INDULIN DF62 OR DF42), and Sasobit modifier.
Qin, CN 101475748A, teaches a high strength, cold-state, bitumen joint waterproofing adhesive comprising modifier polymer, cationic emulsifiers, Sasobit stabilizer and water.
Sasol, “Sasobit Redux, Product information” and “Sasobit Redux, Working principle of Sasobit Redux in comparison to Sasobit,” both teach the advantages of using Sasobit Redux wax mixture over Sasobit as a bitumen additive.
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732