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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1 – 7, in the reply filed on 4/13/26 is acknowledged.
Claim Interpretation
The limitation “over digested crumb rubber” (low viscosity bitumen rubber or over digested binder) was interpreted as a mixture comprising powdered rubber and bitumen where the viscosity is less than 2000 mPas at 190C.
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 1 – 5 are 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. Claims 1 – 5 contain the limitation “over digested crumb rubber”. It is unclear what the claim limitation “over digested crumb rubber” means. The Examiner has documents the claim interpretation used in this action in paragraph 4 supra.
Claims 2 – 7 are rejected as being dependent on a rejected independent claim.
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.
Claim(s) 1 – 2 and 4 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over US 5990207 to Perret et al., hereinafter “Perret” and as evidenced by US 2366551 to Packie et al., hereinafter “Packie”.
Perret is directed to mixtures of bitumen, powdered rubber waste and a polymer employed as a road binder (1: 5 – 10).
Regarding claim 1, Perret teaches a composition and method at Example 15 of Table 1 (2/2) comprising 8% of PC2 a powdered rubber waste having a particle size of 0.2 – 0.8mm, 2% of polymer AX02 which is a terpolymer of ethylene, butyl acrylate and glycidyl methacrylate (stiffness inducing organic additive), the remaining 90% is bitumen from Total (4: 19 – 58) and Table 1 (2/2). Example 15 has a viscosity at 180C of 1100 mPa s, this is less than 2000 mPas and at 190C it would be reduced even further. Therefore, the powdered rubber and bitumen form an over digested crumb rubber (low viscosity bitumen rubber or over digested binder) as the viscosity is less than 2000 mPas. The terpolymer of ethylene, butyl acrylate and glycidyl methacrylate (stiffness inducing organic additive) have pendant epoxy reactive groups which are capable of reacting with organic acid groups on the bitumen or residual mercaptan groups on the rubber to form crosslinks between the bitumen and rubber particles. This crosslinking is equivalent to applicant’s re-stiffening or viscosity increase.
Perret shows that the ingredients are mixed with a screw mixer at 400 rev/min. at 180 C for 2.5 hours ( (4: 19 – 24). Perret is silent as to mixing at 185C.
With regard to Applicant’s limitations regarding the mixing temperature of the materials, it is the position of the Examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of this limitation to provide the best effective variable depending on the results desired. Because, Perret teaches mixing at 180 C, the Examiner asserts that the mixing temperature is an art recognized result-effective variable. Thus it would be obvious in the optimization process to adjust the mixing temperature to achieve a homogeneous mixture of the ingredients. It is known that bitumen can have melting points for 93.3C to 176.7 C. See Packie, column 1, line 11. In addition, merely modifying the process conditions such as temperature and concentration is not a patentable modification absent a showing of criticality, since the applicant does not show any unusual and/or unexpected results for the limitation stated (In re Aller, 220 Fo2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Note that the prior art provides the same effect desired by the Applicant, the formation of a crosslinked (re-stiffened) over digested crumb rubber modified bituminous binder.
As to claim 2, as the binder of Example 15 has a viscosity of less than 1100 mPa s, it is completely digested (low viscosity bitumen rubber or over digested binder).
Regarding claim 4, the terpolymer of ethylene, butyl acrylate and glycidyl methacrylate (stiffness inducing organic additive) have pendant epoxy reactive groups which are capable of reacting with organic acid groups on the bitumen or residual mercaptan groups on the rubber to form crosslinks between the bitumen and rubber particles. This crosslinking is equivalent to applicant’s re-stiffening or viscosity increase.
As to claim 5, Perret teaches in Table 1 (2/2) that the storage stability at 180C / 3 days is Stable.
Regarding claim 6, Perret teaches mixing the materials for 150 min. (4: 19 – 22). This is within the claimed range. Perret shows that the ingredients are mixed with a screw mixer at 400 rev/min. at 180 C for 2.5 hours ( 150 min.) (4: 19 – 24). Perret is silent as to mixing at 185C – 210C.
With regard to Applicant’s limitations regarding the mixing temperatures of the materials, it is the position of the Examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of this limitation to provide the best effective variable depending on the results desired. Because, Perret teaches mixing at 180 C, the Examiner asserts that the mixing temperature is an art recognized result-effective variable. Thus it would be obvious in the optimization process to adjust the mixing temperature to achieve a homogeneous mixture of the ingredients. It is known that bitumen can have melting points for 93.3C to 176.7 C. See Packie, column 1, line 11. In addition, merely modifying the process conditions such as temperature and concentration is not a patentable modification absent a showing of criticality, since the applicant does not show any unusual and/or unexpected results for the limitation stated (In re Aller, 220 Fo2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Note that the prior art provides the same effect desired by the Applicant, the formation of a crosslinked (re-stiffened) over digested crumb rubber modified bituminous binder.
As to claim 7, Example 15 used 2% of the claimed terpolymer. However, Perret teaches that for 0.5 to 5% by weight of the terpolymer can be used to enable the mixture to be stable (4: 1 – 5). Therefore, it would have been obvious to one of ordinary skill to use 0.5 to 1.5% by weight of the terpolymer as a larger range is directly taught by Perret.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). MPEP 2131.03
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER A. SALAMON whose telephone number is 571-270-3018. The examiner can normally be reached M-F: 9AM - 6PM.
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PAS 5/2/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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