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 .
Response to Amendment
This office action is in response to the Amendment filed on 03/27/2026.
Claims 1-20 are presently pending; claims 1-6, 14-15 and 19-20 are withdrawn; claims 1, 7-9 and 17-19 are amended; claims 7-13 and 16-18 are under examination.
The objections to claims 9 and 17-18 are withdrawn in light of the amendments to the claims.
A new objection to claim 8 is present herein in light of the amendments to the claims.
The rejection of claim 8 under 35 U.S.C 112(b) is withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejection of claims 7-13 and 16-18 over TAKAHASHI in view of SALOMON is maintained.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 8 is objected to because of the following informalities:
Amended claim 8 contains a grammatical error; it appears that “in a particle diameter distribution, the composite particles have a particle frequency of 500 nm or less is 5% by volume or less” should read “in a particle diameter distribution of the composite particles, a particle frequency of 500 nm or less is 5% by volume or less” or “in a particle diameter distribution, the composite particles have a particle frequency wherein 500 nm or less is 5% by volume or less”, etc. (see claim 8 at lines 1-3).
Appropriate correction is required.
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.
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 7-13 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi, et al. (U.S. Pub. No. 2019/0233647-A1) (hereinafter, “TAKAHASHI”) in view of Salomon, Delmar R., “Asphalt Emulsion Technology", Transportation Research Circular, August 2006 (hereinafter, “SALOMON”), with evidence from Burke, John, "Part 2 - The Hildebrand Solubility Parameter", Solubility Parameters: Theory and Application, The Oakland Museum of California, August 1984 (hereinafter, “BURKE”) and Hansen, Charles M., Hansen Solubility Parameters - A User's Handbook, pg. 1, CRC Press, 2000 (hereinafter, “HANSEN”) as to the rejection of claim 9.
Regarding claim 7, TAKAHASHI teaches an asphalt emulsion comprising water and composite particles (see TAKAHASHI generally at paragraphs [0104]-[0105]), wherein:
the composite particles comprise an asphalt and a polyester (see TAKAHASHI at Abstract and paragraphs [0017] and [0105]),
the polyester is dispersed in the asphalt (see TAKAHASHI at paragraphs [0105] and [0126]),
and the average polyester dispersion diameter in the asphalt overlaps with and thereby renders obvious the claimed range of 0.1 μm or more and 5 μm or less (see TAKAHASHI at paragraphs [0017], [0059]-[0060], [0126] and [0144]-[0145], teaching 0.1 to 100 μm, or 50 μm or less). As set forth in MPEP § 2144.05, 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)).
TAKAHASHI fails to explicitly mention that the composite particles have a volume median particle diameter (D50) of 1 μm or more and 40 μm or less.
However, it is known in the art that asphalt emulsions comprise particles having a D50 within this range. SALOMON teaches that standard asphalt emulsions have bitumen with a D50 of 0.1 to 20 μm (see SALOMON at pg. 3 and Fig. 2(a)). Additionally, SALOMON teaches that the particle size influences the performance of the emulsion, including emulsion viscosity, stability, coating, break rate and cure rate (see SALOMON at pg. 3 and pg. 18-19).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the asphalt emulsion of TAKAHASHI by simply substituting the unspecified D50 with a D50 of 0.1 to 20 μm as taught by SALOMON (see SALOMON at pg. 3 and Fig. 2(a)). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of forming an asphalt emulsion with a D50 in the standard range.
Additionally, SALOMON explicitly teaches that the particle diameter is a result-effective variable that may be optimized by one of ordinary skill in the art. MPEP states that “[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.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "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." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, one of ordinary skill in the art would also find it obvious to vary, through routine experimentation and optimization, the D50 of the composite particles, including D50 values of 1 μm or more and 40 μm or less as claimed, in order to achieve desired emulsion properties such as viscosity, stability, coating, break rate and cure rate as taught by SALOMON (see SALOMON at pg. 3 and pg. 18-19).
Regarding claim 8, as applied to claim 7 above, TAKAHASHI in view of SALOMON teaches an asphalt emulsion according to claim 7.
TAKAHASHI fails to explicitly mention that in a particle diameter distribution of the composite particles, a particle frequency of 500 nm or less is 5% by volume or less.
However, it is known in the art that asphalt emulsions comprise particles having a particle diameter distribution with a particle frequency of 500 nm or less of 5% by volume or less. SALOMON teaches that the typical particle size distribution in an asphalt emulsion has a particle frequency of 500 nm (i.e., 0.5 μm) or less of less than 0.5% by volume (see SALOMON at Fig. 2(a)). Additionally, SALOMON teaches that the particle size distribution influences the performance of the emulsion, including emulsion viscosity, stability, coating, break rate and cure rate (see SALOMON at pg. 3 and pg. 18-19).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the asphalt emulsion of TAKAHASHI by simply substituting the unspecified volume having a particle frequency of 500 nm or less with less than 0.5% by volume as taught by SALOMON (see SALOMON at Fig. 2(a)). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of forming an asphalt emulsion having a typical particle size distribution.
Additionally, SALOMON explicitly teaches that the particle size distribution in the emulsion is a result-effective variable that may be optimized by one of ordinary skill in the art. MPEP states that “[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.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "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." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, one of ordinary skill in the art would also find it obvious to vary, through routine experimentation and optimization, particle diameter distribution of the emulsion, including distributions having a frequency of particles of 500 nm or less of 5% by volume or less, in order to achieve desired emulsion properties such as viscosity, stability, coating, break rate and cure rate as taught by SALOMON (see SALOMON at pg. 3 and pg. 18-19).
Regarding claim 9, as applied to claim 7 above, TAKAHASHI in view of SALOMON teaches an asphalt emulsion according to claim 7.
Although TAKAHASHI does not explicitly mention that the polyester has a solubility parameter (SP value) of 12 (cal/cm3)1/2 or less, TAKAHASHI teaches that the polyester is soluble in chloroform (see TAKAHASHI at paragraph [0122]), which has a solubility parameter of 9.21 (cal/cm3)1/2 as evidenced by BURKE (see BURKE at pg. 2-3); as evidenced by HANSEN, as the polyester dissolves in chloroform, it is expected to have a solubility parameter that is the same or very close to the solubility parameter of chloroform (see HANSEN at pg. 1), i.e., TAKAHASHI teaches a polyester having a solubility parameter of close to 9.21 (cal/cm3)1/2.
Additionally, TAKAHASHI in view of SALOMON teaches an asphalt emulsion as claimed by the present claim and comprising polyesters as described in the present specification and in the present dependent claims 13 and 16-18 (see TAKAHASHI at, e.g., paragraphs [0027], [0030], [0036], [0040], [0041], [0043] and [0120] and Table 1), therefore the polyester in the asphalt emulsion of TAKAHASHI in view of SALOMON would be expected to have the same or overlapping properties as the polyester in the claimed asphalt emulsion, including solubility parameter. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 10, as applied to claim 7 above, TAKAHASHI in view of SALOMON teaches an asphalt emulsion according to claim 7, wherein the composite particles contain the asphalt in an amount of 50% by mass or more and 99% by mass or less (see TAKAHASHI at paragraphs [0026] and [0116], teaching 60% to 90% by mass).
Regarding claim 11, as applied to claim 7 above, TAKAHASHI in view of SALOMON teaches an asphalt emulsion according to claim 7, wherein the composite particles contain the polyester in an amount overlapping with and thereby rendering obvious the claimed range of 1% by mass or more and 50% by mass or less (see TAKAHASHI at paragraph [0061], teaching 0.5 to 40 parts of polyester based on 100 parts by mass of asphalt, i.e., approximately 0.005% to 29% by mass). As set forth in MPEP § 2144.05, 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)).
Regarding claim 12, as applied to claim 7 above, TAKAHASHI in view of SALOMON teaches an asphalt emulsion according to claim 7.
TAKAHASHI fails to explicitly mention that the asphalt emulsion has a solid content of 20% by mass or more and 80% by mass or less.
However, it is known in the art that asphalt emulsions comprise particles having a solid content of 20% by mass or more and 80% by mass or less. SALOMON teaches that standard asphalt emulsions contain 40% to 75% bitumen and 25% to 60% water, i.e., a solid content of 40% to 75% (see SALOMON at pg. 3). Additionally, SALOMON teaches that the solid content affects emulsion properties such as viscosity and rate of asphalt coalescence (see SALOMON at pg. 3-4).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the asphalt emulsion of TAKAHASHI by simply substituting the unspecified solid content with a solid content of 40% to 75% by mass as taught by SALOMON (see SALOMON at pg. 3). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of forming an asphalt emulsion having a typical solid content.
Additionally, SALOMON explicitly teaches that the solid content in the emulsion is a result-effective variable that may be optimized by one of ordinary skill in the art. MPEP states that “[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.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "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." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, one of ordinary skill in the art would also find it obvious to vary, through routine experimentation and optimization, the solid content of the emulsion, including contents of 20% by mass or more and 80% by mass or less, in order to achieve desired emulsion properties such as viscosity and rate of asphalt coalescence as taught by SALOMON (see SALOMON at pg. 3-4).
Regarding claim 13, as applied to claim 7 above, TAKAHASHI in view of SALOMON teaches an asphalt emulsion according to claim 7, wherein the polyester comprises:
an alcohol component-derived structural unit (see TAKAHASHI at paragraph [0027]),
the alcohol component containing an a,Ѡ-aliphatic diol having 4 or more and 16 or less carbon atoms (see TAKAHASHI at paragraphs [0030] and [0036])
in an amount of 70% by mole or more (see TAKAHASHI at paragraph [0030], teaching that the aliphatic diol may be used alone, i.e., 100% by mole),
and a carboxylic acid component-derived structural unit (see TAKAHASHI at paragraph [0027]),
the carboxylic acid component containing an aliphatic dicarboxylic acid having 4 or more and 14 or less carbon atoms (see TAKAHASHI at paragraphs [0040]-[0041])
in an amount of 70% by mole or more (see TAKAHASHI at paragraph [0040], teaching that the aliphatic dicarboxylic acid may be used alone, i.e., 100% by mole).
Regarding claim 16, as applied to claim 7 above, TAKAHASHI in view of SALOMON teaches an asphalt emulsion according to claim 7, wherein the polyester has a weight average molecular weight overlapping with and thereby rendering obvious the claimed range of 2,000 or more and 100,000 or less (see TAKAHASHI at paragraph [0053], teaching a number average molecular weight of 3,000 or more, i.e., the weight average molecular weight is also 3,000 or more).
Regarding claim 17, as applied to claim 7 above, TAKAHASHI in view of SALOMON teaches an asphalt emulsion according to claim 7, wherein the polyester has a softening point overlapping with and thereby rendering obvious the claimed range of 40 °C or higher and 90 °C or lower (see TAKAHASHI at paragraph [0051], teaching a softening point of 90 °C or higher). As set forth in MPEP § 2144.05, 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)).
Regarding claim 18, as applied to claim 7 above, TAKAHASHI in view of SALOMON teaches an asphalt emulsion according to claim 7, wherein the polyester has an endothermic maximum peak temperature, the endothermic maximum peak temperature overlapping with and thereby rendering obvious the claimed range of 50 °C or higher and 150 °C or lower (see TAKAHASHI at paragraph [0120], teaching an endothermic maximum peak temperature of 150 or less, as the endothermic maximum peak temperature is measured while raising the temperature to 150 °C; see also Applicant’s specification at paragraph [0055], describing measuring the endothermic maximum peak temperature and glass transition temperature using an identical method as is used in TAKAHASHI, where the peak having the largest peak area among the endothermic peaks observed while raising the temperature to 150 is taken as the endothermic maximum peak temperature). As set forth in MPEP § 2144.05, 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)).
Response to Arguments
Applicant's arguments filed 03/27/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Takahashi, the primary reference, is directed to an asphalt composition with good storage stability (Abstract). Contrariwise, the present inventors have discovered a method for producing an asphalt emulsion in which degradation by ultraviolet rays is suppressed, and as a result, an asphalt emulsion having increased weather resistance is produced” (see Remarks at pg. 6).
“in formulating the rejection the Office mistakenly equates Takahashi's "molten asphalt composition" with the present application's "asphalt emulsion." A molten asphalt composition and an asphalt emulsion differ substantially in terms of technical meaning, and present entirely different technical problems. In this regard, the discussion of particle size in Takahashi cannot be directly applied to any aspect of the presently claimed emulsion… Takahashi' s naked disclosure of an "emulsion" in paragraph [0104] does not change the analysis, as this disclosure is merely descriptive and non-enabling of the presently claimed emulsion and its required characteristics regarding the volume median of the composite particles” (see Remarks at pg. 6-7).
“the asphalt emulsion of present Claim 7 is characterized by a "two- stage particle structure" (via control of the composite particle size and the polyester dispersion size within it). As shown herein in Table 3, this unique structure provides unexpected weather resistance that cannot be predicted from even a combination of the cited references, as to any extent the combination of cited references suggests the presently claimed emulsion it also, equally, suggests that of Comparative Example 1” (see Remarks at pg. 7)
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's argument that the present invention is nonobvious because present inventors have discovered a method for producing an asphalt emulsion in which degradation by ultraviolet rays is suppressed, the Examiner respectfully disagrees, as the claims are not directed toward a method for producing an asphalt emulsion.
In response to Applicant’s argument that the present invention is nonobvious because TAKAHASHI’s “molten asphalt composition” is substantially different from an emulsion, the Examiner respectfully disagrees. TAKAHASHI explicitly states that the composition is an emulsion comprising water (see TAKAHASHI at paragraphs [0104]-[0105]), and SALOMON also explicitly discloses an emulsion. This limitation is explicitly disclosed. It is not clear how explicitly disclosing an emulsion is “non-enabling” of an emulsion. As set forth above, the combination of TAKAHASHI and SALOMON explicitly discloses and/or renders obvious all limitations of the claimed emulsion. Further, as set forth in MPEP § 2123, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
In response to Applicant’s argument that the present invention is nonobvious because the asphalt emulsion is characterized by a composite particle size and polyester particle diameter, the Examiner respectfully disagrees; as discussed above, TAKAHASHI and SALOMON explicitly disclose and/or render obvious these particle sizes in the asphalt emulsion.
In response to Applicant's argument that the present invention is nonobvious because the “unique structure” provides unexpected weather resistance, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As discussed above, TAKAHASHI in view of SALOMON explicitly disclose or render obvious the claimed structural limitations. TAKAHASHI explicitly discloses an asphalt emulsion wherein the polyester is uniformly dispersed in the asphalt; it appears from Table 2 that Comparative Example 1, referenced by Applicant, does not contain any polyester, so it is not clear how this example is relevant to the asphalt emulsion of TAKAHASHI. Additionally, the alleged unexpected results of weather resistance are only for the very specific compositions described in paragraphs [0062]-[0068] of the present specification, and are not commensurate in scope with the broad composition of claim 7; Applicant has also provided no evidence or explanation as to why these results would be considered unexpected. The results appear to only show that the specific asphalt emulsions comprising polyester have improved weather resistance compared to an asphalt emulsion which comprises no polyester, and the composition of TAKAHASHI comprises polyester.
Finally, in response to Applicant's arguments against the TAKAHASHI individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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