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 .
Priority
This application’s status as a DIV of application 17/025,625, now U.S. 11,773,265 is noted in the interest of the clarity of the record.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/22/2023, 06/29/2023, 02/15/2024, 05/17/2024, 12/19/2024, 04/16/2025, and 11/25/2025 have been considered by the examiner.
Claim Objections
Claim 41 is objected to because of the following informalities: “The product of the method of claim 34” would be in better form by amending the claim such that the language of claim 34 is positively presented, e.g., the asphalt binder composition produced by the method of claim 34 or other sufficient language.
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 39 and 43 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.
Specifically, claims 39 and 43 include the phrase “monomer with reactive functionality” which renders the metes and bounds of the claim indefinite. It is unclear what ‘reactive functionality’ is intended or embraced by the claim such that the identity of the monomer A as claimed is indefinite. While breadth is not indefiniteness (In re Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971); In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970)), a genus claim that can be interpreted in such a way that it is not clear which species are covered is indefinite. The genus of any and all reactivity of the monomer in any and all conditions disadvantages the public to identify where infringement of such a claim would begin. A review of the specification does not provide a definition or sufficient context such that ‘reactive functionality’ would be understood when considering the claims, i.e. there is no special definition provided by Applicant in the specification and there is no explanation in the specification such that the claims, when interpreted in the light of the specification, would be understood.
Allowable Subject Matter
Claims 34-38, 40-42, and 44-53 are allowed.
The following is an examiner’s statement of reasons for allowance: With regard to independent claim 34, the prior art fails to anticipate or reasonably render obvious the cumulative limitations of the claim with particular attention to at least the features requiring two or more units of monomer A, sulfur, and a compound of Formula (I)… wherein the compound of Formula (I) has a mass content of oxirane greater than 0.1 and less than 15%.
With regard to independent claim 35, the prior art fails to anticipate or reasonably render obvious the cumulative limitations of the claim with particular attention to at least the features requiring two or more units of monomer A, sulfur, and a compound of Formula (I)… wherein the compound of Formula (I) has a mass content of oxirane greater than 0.1 and less than 15%.
Notably, while the prior art recognizes compounds of Formula I, the combination of such a compound along with sulfur is not anticipated or reasonably rendered obvious. Furthermore, it is noted that the claimed recitation of ‘sulfur’ has not been construed by the Examiner to include compounds like ‘sulfur dioxide’ or sulfur modified compounds like sulfurized SBS because, in light of the specification, the person of ordinary skill in the art would understand that the sulfur Applicant refers to is an intentionally added to the asphalt binder composition and/or a present feature in the vacuum tower bottoms (see at least Table 1 and Paragraph 0129 of as-filed spec).
Claims 36-53 depend from or otherwise require the allowable features of either claims 34 and/or 35.
Claims 39 and 43 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
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