DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/28/2026 has been entered.
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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.
Claims 1-2, 4, 23-29, 31-32, 36 and 39-40 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by US 20220267602 (Cooley et al.) in view of US 20180265704 to Puchalski et al.
Re claims 1-2, 4, 31-32, and 36, see [33], [48], [51-58], [64-69], Tables 1-2, Cooley discloses an anti-aging asphalt as claimed, other materials mentioned not claimed or precluded are optional and not required. That the product is a reaction product derived from or hot applied is a product by process limitation in a product claim. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
Further Re claims 1, and claims 39-40, Cooley doesn’t teach the fiberglass mat or fatty acid partial esters.
Puchalski teaches [107-108] fiberglass mat as the substrate for asphalt shingles [14] with benefits of recycling and claimed fatty acid partial esters [53, 62, 87, 103] for bio-oil rejuvenated asphalt binders in the asphalt.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to have modified the substrate with the fiberglass substrate for recycling and fatty acid esters for binders in asphalt.
Re claims 23-28, see [53-55], Cooley while doesn’t teach exact ranges, are overlapping. Re claim 29, see [66] to overlapping ranges. 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Claims 8 are rejected under 35 U.S.C. 103 as being unpatentable over US 20220267602 (Cooley et al.) in view of US 20180265704 to Puchalski et al.
and further in view of US 3329636 A (Henschel).
Cooley is relied upon above.
Re claim 8, see 2:15-30, Henschel teaches fiber substrates for reinforcement.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to have modified the substrate and include a fibrous one as claimed for reinforcement.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
Claims 1-4, 9-22, 31-32, and 36-40 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by US 20200277497 A1 (REINKE et al.) in view of WO 2019/100058 A1 (Christy et al.) and further in view of US 20180265704 to Puchalski et al.
Re claims 1-4, 9-22, 31-32, and 37, REINKE (see FIGURE 1C and associated text) teaches an asphalt (para [0037-0041] “virgin” binder asphalt shingles) material (para [0050] "sterol-containing asphalt paving materials") comprising: an asphalt binder composition (para [0094] "sterol-containing asphalt binder is...part of a complex composition") comprising: an asphalt binder comprising at least one of a virgin asphalt binder, an air-blown virgin asphalt binder, a reclaimed asphalt binder material comprising asphalt pavement (RAP), or a reclaimed asphalt binder material comprising asphalt shingles (RAS) (para [0081] "the binder includes a blend of binders...blend includes virgin binder and binder extracted from reclaimed asphalt...binder extracted from RAS material"); and an anti-aging agent (para [0005] " The disclosed sterol-containing asphalt binder can retard, reduce or otherwise overcome the effects of aging in asphalt"; para [0027] "sterols can retard, reduce or otherwise overcome some of the effects of asphalt aging...sterol was particularly effective when the binders contained reclaimed or recycled materials such as RAP, RAS"), a fiber mat (para [67-68] per claim 4), but does not teach that is a reaction product of ingredients including (i) a first material comprising a compound containing one or more carbonyl groups and (ii) a second material that reacts with the one or more carbonyl groups of the first material and adds hydroxyl groups to the reaction product, wherein the anti-aging agent has a hydroxyl value of greater than about 25 mg KOH/g. Re claim 9, (para [0048]). Re claim 15, para [0071]). Re claims 16-17, para [0075]. Re claim 38, (para [65, 69]).
RENKE doesn’t disclose all of the exact starting materials as claimed. In a similar invention, Christy teaches an asphalt binder composition (Abstract, page 21 line 20 “invention relates to an asphalt binder composition") comprising a hydroxy-functional material derived from a reaction between a glycol and fatty acid (page 10 line 4-17 "hydroxy-functional materials derived from epoxidized, ozonized, or hydroformylation vegetable oils, fatty acid esters or fatty acids, also commonly known as bio-polyols (and isoprene per claims 17-18, see page 20 ) are...suitable hydrophobes. These products can be made from fatty esters (including natural oils sunflower per claim 12 and C6-C36 fatty acids and C18 dicarboxylic acid per claim 13 or tall oil per claim 14 (pg 7, lines 10-20)) or fatty acids...bio-polyol can also be generated in situ from a reaction between the glycol and an epoxidized fatty ester or epoxidized fatty acid"; hydroxy-functional material is the product of the reaction between a glycol and fatty acid, the glycol reacts with carbonyl group of the fatty acid or fatty ester to add a hydroxyl group resulting in a hydroxy-functional material; polyester and diols (page 16). Thus, sterol, as an anti-agent, may be substituted as the reaction product from the above reaction instead of compound B as the anti-aging agent), and the hydroxy-functional material includes a polyester polyol (page 12 line 7-8 "the polyether polyol is a reactive polyol having primary hydroxyl end groups from ethylene oxide”) with a hydroxy value greater than 25 mg KOH/g (page 18 line 1-2 “polyols have hydroxyl numbers...from 28 to 45 mg KOH/g") and (propylene glycol – see well known 2. Diols, pg. 6 and pp. 22-23, per claims 19- 21 and mixture thereof polybutadiene diol – see patented claims 25-26).
Therefore, it would have been obvious to one skilled in the art through routine experimentation to use the material taught by REINKE wherein the anti-aging material includes a polyester polyol generated by reacting a first material being a fatty ester and a second material being a diol or glycol and this reaction adds a hydroxyl group resulting in a hydroxy-functional material taught by Christy because both inventions relate to asphalt binder compositions.
Further re claim 1 and claims 36-40, REINKE fails to disclose a mat as claimed and the fatty acid partial esters.
Puchalski teaches [107-108] fiberglass mat as the substrate for asphalt shingles [14] with benefits of recycling and claimed fatty acid partial esters [53, 62, 87, 103] for bio-oil rejuvenated asphalt binders in the asphalt.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date to have modified the substrate with the fiberglass substrate for recycling and fatty acid esters for binders in asphalt.
Further re claim 2, REINKE in view of Christy teaches the asphalt-containing material of claim 1. REINKE further teaches wherein the asphalt binder composition is a hot applied asphalt membrane (para[0055] “chip seals can be constructed using...hot applied asphalt binder") that provides a moisture barrier (para[0051] “by retarding asphalt aging in the topmost layer or layers, moisture uptake in the topcoat layer and moisture transmission through that layer or through cracks in that layer can be reduced").
Further re claim 3, the asphalt-containing material of claim 1 or 2. REINKE further teaches wherein the asphalt-containing material is a moisture barrier (para [0050-0051]) or waterproof film, an underlayment, an asphalt-based adhesive or sealant, a roofing material, or asphalt pavement comprising the asphalt binder composition (para [0076] "binder is combined and mixed with sterol and aggregate to form an asphalt pavement material").
Further re claim 4, the asphalt-containing material of claim 1, wherein the article is a roofing material (para[0039] "reclaimed asphalt and recycled asphalt refer to RAP, RAS, and reclaimed binder from old pavements, shingle manufacturing scrap, post-consumer shingle waste, roofing felt"; see instant specification para[0030] “roofing materials...include roofing shingles...waste shingles, shingle manufacturing scrap, roofing felt") comprising a roofing substrate coated or saturated with the asphalt binder composition (para[0031]) “asphalt refers to a binder and aggregate"; para[0077] “aggregate particles are coated with the binder").
Further reclaims 31-32, the composition is set forth above; however, the temperature requirements are process limitations in a product claim. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Patentability of an article depends on the article itself and not the method used to produce it (see MPEP 2113). Furthermore, the invention defined by a product-by-process invention is a product NOT a process. In re Bridgeford, 357 F. 2d 679. It is the patentability of the product claimed and NOT of the recited process steps which must be established. In re Brown, 459 F. 29 531. Both Applicant’s and prior art reference’s product are the same.
Claims 8 are rejected under 35 U.S.C. 103 as being unpatentable over US 20200277497 A1 (REINKE et al.) in view of WO 2019/100058 A1 (Christy et al.) in view of US 20180265704 to Puchalski et al. and further in view of US 3329636 A (Henschel).
REINKE is relied upon above.
Re claim 8, see 2:15-30, Henschel teaches fiber substrates for reinforcement.
It would have been obvious to one of ordinary skill in the art at the effective filing time the invention to have modified the substrate and include a fibrous one as claimed for reinforcement.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection mitigates the amendment. See the Office Action above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20200199024 A1 (Kim et al.) discloses a similar asphalt composition.
US 20190186144 (LaTorre et al). teaches fibermats for substrates for aesthetics and protection.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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