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.
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 1-4, 6-18 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.
The term “a vinyl-based polymer (b2) unit bonded via a covalent bond,…the vinyl-based polymer (b2) unit contains a structural unit derived from styrene” in claims 1, 16 is a relative term which renders the claim indefinite. The term ““a vinyl-based polymer (b2) unit bonded via a covalent bond,…the vinyl-based polymer (b2) unit contains a structural unit derived from styrene”” is not defined by the claim, the
specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Although one of extra-ordinary skill or expertise in expertise might understand the scope and implications of the claimed limitation, the limitation itself is not defined in the specification to a level of clarity that one of ordinary skill in the art would understand.
Therefore the limitation is indefinite because one of ordinary skill in the art would not be able to determine the what materials are or are not being claimed.
* For examination purposes; Kao et al. US 2014/0056643 appears to equate the cited limitation above to polystyrene. See [0026] citing the use of cyclic olefin that undergoes ROMP reactions when mixed with additional monomers, dimers, trimers of cyclic olefins when combined in a solvent such as styrene [0028].
Wherein a polymer composite including polyester, [0032, 52], styrene [0028, 0052] additional polyester [0041, 0044] forms a thermoplastic including polystyrene.
Therefore “composite resin (B)” claimed is equated to a composition containing polyester and polystyrene as set forth in the prior art publication.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4, 6-18 is/are rejected under 35 U.S.C. 103 as obvious over Hashimoto et al. US 2020/0149226 in view of Kao et al. US 2014/0056643.
Hashimoto et al. discloses a road paving method comprising the steps of:
Providing an asphalt composition including:
Aggregate; and
a binder comprising:
85% by weight Asphalt, 20% by weight or less polyester resin and 0.5% or more vinyl acetate copolymer. Wherein the polyester resin contains a structural unit derived from an alcohol component and a structural unit derived from a dicarboxylic acid component. [0036-0055]. Although Hashimoto et al. do not disclose the vinyl based polymer contains a structural unit derived from styrene; Kao et al. do teach that a thermoplastic polymer composite can be formed from a polyester resin and styrene which are known to be covalently bonded into polystyrene. [0068]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the thermoplastic composite disclosed by Hashimoto et al. contains polyester resin and polystyrene as reasonably suggested by Kao et al. in order to facilitate future recycling of a roadway by improving the thermoplastic properties of the asphaltic paving material.
With respect to claims 2-4 Hashimoto et al. discloses the alcohol component contains an alkylene oxide adduct of bisphenol A; and the carboxylic acid component contains an aromatic dicarboxylic acid. [004, 0053-0060, 0132].
With respect to claims 6-14 Hashimoto et al. discloses an asphalt composition including: Aggregate; and a binder comprising: 85% by weight Asphalt, 20% by weight or less polyester resin and 0.5% or more vinyl acetate copolymer. Wherein the polyester resin contains a structural unit derived from an alcohol component and a structural unit
derived from a dicarboxylic acid component. [0036-0055, 0064]. Although Hashimoto et al. do not disclose the component %’s claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to find an optimum range of component parts when the components of the composition are already known.
With respect to claims 15-18 Hashimoto et al. discloses a road paving method [0036-0055]; comprising the steps of:
Providing an asphalt composition including:
Aggregate; and a binder comprising: 85% by weight Asphalt, 20% by weight or
less polyester resin having a structural unit derived from an alcohol component and a structural unit derived from a dicarboxylic acid component;
and a vinyl based polymer, such as vinyl acetate copolymer. [0037].
Applying a layer of said paving mixture to a roadway to form a traffic surface.
Although Hashimoto et al. do not disclose the vinyl based polymer contains a structural unit derived from styrene; Kao et al. do teach that a thermoplastic polymer composite can be formed from a polyester resin and styrene which are known to be covalently bonded into polystyrene. [0068]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the thermoplastic composite disclosed by Hashimoto et al. contains polyester resin and polystyrene as reasonably suggested by Kao et al. in order to facilitate future recycling of a roadway by improving the thermoplastic properties of the asphaltic paving material.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto et al. US 2020/0149226 in view of Kao et al. US 2014/0056643 as applied to claim 1 and further in view of Moran et al. US 4,873,275.
Hashimoto et al. discloses a road paving method comprising the steps of:
Providing an asphalt composition including:
85% by weight Asphalt, 20% by weight or less polyester resin and 0.5% or vinyl acetate copolymer having a styrene based block copolymer.
Wherein the polyester resin contains a structural unit derived from an alcohol component and a structural unit derived from a dicarboxylic acid component. [0036-0055]. Although Hashimoto et al. in view of Kao et al. do not disclose the vinyl acetate and acrylic acid ester copolymer based material contains a structural unit derived from an alkyl(meth)acrylate) having an alkyl group having 4-22 carbon atoms. Moran et al. teach it is known asphalt compositions can be modified by the addition of lower alkyl esters of acrylic acid and methacrylic acid, such as Ethylene-AlkylMethacrylate(EAM) to improve stability and rheological properties of the asphalt composition. Col. 2, lns. 45-68. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the asphalt composition of Hashimoto et al. in view of Kao et al. with EAM as taught by Moran since both are art recognized equivalents.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive. Applicant’s Rep. argues the prior art does not disclose the claimed composition because the “vinyl-based polymer (b2) unit bonded via a covalent bond,…the vinyl-based polymer (b2) unit contains a structural unit derived from styrene” is not EVA. The Examiner accepts Applicant’s argument and the 35 USC 102 rejection of claims 1-4, 6-11, 15-17 has been withdrawn.
The Examiner has attempted to consider the broadest reasonable interpretation of the above cited limitation; but according to Applicant, has failed to do so.
Hence, in spite of the Examiner’s careful consideration, the above cited claim limitation is the beyond the broadest reasonable interpretation of one of ordinary skill in the art.
Although the Examiner repeatedly requested Applicant’s Rep. clarify the limitation in more generic, commercial, scientific terms that are more readily understandable; such clarification remains elusive. Therefore, as set forth in the 35 USC 112 rejection above Claims 1-18 are vague and indefinite, the specification not providing a standard of equivalence to adequately enable one of ordinary skill in the art to make or use the claimed invention.
As cited above the Examiner’s best attempts to understand the claimed invention in light of the cited limitation with respect to the composition of the vinyl based polymer (b2) has led to the consideration of prior art publication Kao et al. US 2014/0056643 appears to equate this (b2) polymer as a polystyrene comprising a vinyl component.
Hence, a new grounds of rejection has been made in light of Kao et al. US 2014/0056643 and this action is non-final.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND W ADDIE whose telephone number is (571)272-6986. The examiner can normally be reached on m-f 7:30-12:30, then 6-9pm.
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/RAYMOND W ADDIE/Primary Examiner, Art Unit 3671 3/20/2026
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