DETAILED ACTION
Examiner’s Note
The Examiner notes that, after further consideration, non-elected claims 45-47 have been rejoined and examined as set forth below.
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 of Group I and Species (I)(A), directed to claims 30-43 and 48, in the reply filed on 1/29/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 44 and 49-58 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/29/2026.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 30-32, 35 and 39-41 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamazaki et al. (US 2003/0191212 A1).
Regarding claim 30, Yamazaki teaches a modified asphalt species (composition) comprising 100 parts by weight asphalt, 1 to 20 parts by weight of an elastomer (elastomeric polymer) and 0.01 to 15 parts by weight of a (meth)acrylic resin (para 0089); which said (meth)acrylic resin comprises one or more monomers (acrylic copolymer) such as, inter alia, 2-ethylhexyl acrylate and vinylpyridine, and monomers containing carboxyl groups such as, inter alia, itaconic acid towards improved adhesion to aggregates and toughness (para 0032-0033).
Regarding claims 31-32, Yamazaki teaches that the elastomer is a thermoplastic elastomer such as, inter alia, styrene-butadiene rubbers (para 0027).
Regarding claims 35 and 39-41, as noted above, Yamazaki teaches that the (meth)acrylic resin comprises 2-ethylhexyl acrylate (monomer A, current claim 39), vinylpyridine (monomer C, current claim 41) and itaconic acid (monomer B, current claim 40).
Claim(s) 45-47 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Subotic et al. (US 2015/0144250 A1).
Regarding claim 45, Subotic teaches a roofing underlayment comprising an asphalt-membrane system (100), which said asphalt-membrane system (100) comprises membrane (102) (substrate) and asphalt-emulsion adhesive (104) (para 0054-0056; figures 1A-1B). The asphalt-emulsion adhesive comprises asphalt (binder) and filler (para 0015), the latter of which is selected from, inter alia, pure acrylic/vinyl acrylic/styrene acrylic latex (acrylic copolymer) (para 0034).
Regarding claim 46, Subotic teaches that the asphalt-membrane system (100) comprises a release liner (para 0058).
Regarding claim 47, Subotic teaches that the asphalt-membrane system (100) comprises a membrane comprises a membrane comprising a non-woven polypropylene (para 00045-0047).
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.
Claim(s) 33-34 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (US 2003/0191212 A1).
Regarding claim 33, while Yamazaki does not disclose the presently recited methodology for determining the penetration, Yamazaki does teach that the asphalt comprises penetration values of 60 to 80 (para 0062), which is identical to that presently claimed.
Regarding claim 34, as noted above, Yamazaki teaches that the modified asphalt species comprises 100 parts by weight of the asphalt;
1 to 20 parts by weight of the elastomer (e.g., SBS) towards a balance of toughness and viscosity/workability;
and 0.01 to 15 parts by weight of the (meth)acrylic resin towards a balance of SBS/asphalt compatibility and adequate asphalt properties (para 0089-0092).
The Examiner notes that the % by weight of the asphalt, elastomer and (meth)acrylic resin ranges from 74 to 99 % by weight, 0.9 to 17 % by weight, and 0.01 to 13 % by weight, all of which overlaps that presently claimed.
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).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the asphalt, elastomer and (meth)acrylic resin in proportions identical to that presently claimed toward the modified asphalt composition demonstrating a balance of toughness, viscosity/workability, SBS/asphalt compatibility and adequate asphalt properties based on the prior art’s intended application as in the present invention.
Regarding claim 36, Yamazaki teaches that the (meth)acrylic resin has a weight-average molecular weight (Mw) of 5,000 to 200,000, which overlaps that presently claimed, towards a balance of toughness and solubility in the asphalt (para 0035).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the (meth)acrylic resin with the presently claimed Mw towards the composition of Yamazaki demonstrating a balance of toughness and asphalt solubility as in the present invention.
Claim(s) 37-38, 42-43 and 48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (US 2003/0191212 A1) in view of Yang et al. (WO 93/04097 A1), and in light of the evidence provided by Satake et al. (US 5814685) and the Aldrich Data Sheet, the latter of which is provided with the current action.
Regarding claims 37-38, as noted above, Yamazaki teaches that the (meth)acrylic resin has a Mw of 5,000 to 200,000, but is silent to the number-average molecular weight of 20,000 to 50,000 and the dispersity (Mw/Mn) of 5 to 11.
However, Yang teaches adhesive acrylic copolymers having Mw/Mn ratio above 6 (title, abstract), and that a broad Mw/Mn towards a balance of shear adhesion and peel adhesion properties (page 7, line 26 to page 8, line 13).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the (meth)acrylic resin with the presently claimed Mn (20,000 to 50,000) and dispersity (Mw/Mn = 5 to 11) towards the composition of Yamazaki demonstrating a balance of shear and peel adhesion properties required of the prior art’s intended application as in the present invention.
Regarding claims 42-43, as noted above, Yamazaki teaches that the (meth)acrylic resin comprises 2-ethylhexyl acrylate (monomer A), which has a Tg of -50 ℃ (see the Aldrich Data Sheet), and itaconic acid (monomer B), wherein the 2-ethylhexyl acrylate present in a proportion not less than 90% by weight (para 0034), which overlaps that presently claimed (50 to 99.99 % by weight).
The Examiner also notes that it is established in the art that the Tg of a polymer is determined via the Tg of the individual monomeric components comprising said polymer, and their respective proportions, as evidenced via Satake (see column 4, lines 5-19 therein).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the (meth)acrylic resin with the presently claimed proportions for the 2-ethylhexyl acrylate and itaconic acid based on the Tg of the (meth)acrylic resin of Yamazaki required of the prior art’s intended application as in the present invention.
Regarding claim 48, as noted above, Yang teaches adhesive acrylic copolymers Mw/Mn ratio above 6 is considered in regards to adjusting the peel adhesion properties.
Thus, while Yamazaki/Yang do not specify a peel strength to stainless steel under the presently recited conditions,
However, it would have been obvious to one of ordinary skill in the art at the time of the invention.
it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the dispersity of the adhesives of Yamazaki/Yang for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards the composition of Yamazaki/Yang the presently peel strength required of the prior art’s intended application as in the present invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 30-32 and 34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of copending Application No. 16/064574.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending teach all the limitations of the presently claimed invention except that the claims of the copending do not require BOTH an acrylic copolymer and an elastomeric polymer.
However, claim 5 of the copending does teach that the listed latexes can be employed in combination such as styrene-butadiene copolymers (i.e., an elastomeric polymer) and acrylic copolymers. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ both latex polymers, and thereby arrive at the presently claimed invention from the claims of the copending.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/19/2026