DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant has amended the claims to avoid the restriction requirement mailed 05/22/2025. Thus, in view that the presented claims are now drawn to a singular invention, the restriction requirement is withdrawn.
Response to Amendment and Status of Claims
It is respectfully noted that 37 CFR 1.111(b) requires the Applicant to reply to every ground of objection and rejection in the prior Office Action and that reply must present arguments pointing out the specific distinctions believed to render the claims patentable. No response was provided regarding the non-statutory obviousness-type double patenting rejections. MPEP 804.01.I.1. expressly describes that “A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office Action. Such a response is required even when the nonstatutory double patenting rejection is provisional.”
In the interest of compact prosecution and in view of the guidance provided at MPEP 714.03 for amendments that are not fully responsive, it is construed that Applicant has made a bona fide attempt to advance the application to final action. As such, the amendment and response of 12/04/2025 is entered and considered.
Applicant’s amendment, filed 12/04/2025, has been entered. Claims 1, 2, 12, 13, 16, 18, and 21 are amended, claims 17 and 20 are or were previously cancelled, claims 22-25 are newly added. Accordingly, claims 1-16, 18, 19, and 21-25 are pending and considered in this Office Action.
Priority
Acknowledgment is made of this application’s status claiming itself as a DIV of 16/164,020, which is a CON of 14/348,916 and a 371 of PCT/EP2012/070248 which claims benefit of provisional application 61/546124.
Claim Interpretation
In the interest of the clarity of the record, the phrase “fresh bitumen” in independent claim 1 is noted. Paragraph 0037 (text version of as-filed specification) states “the expression ‘fresh bitumen’ means bitumen which has not already been contacted with aggregates for the preparation of asphalt mixes”.
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.
Claim 14 remains 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.
Claim 14 includes “polymers, generally used in order to improve the mechanical performance of the bitumen and the asphalt mix” which renders the scope of the claim indefinite because it is relative and subjective language. There is no accompanying definition of the intended polymers nor those that would be considered ‘generally used in order to improve the mechanical performance of the bitumen and the asphalt mix’. As such, the metes and bounds of the claim are unclear and the person of ordinary skill would not know where infringement of this claim would reasonably begin.
Additionally, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103
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.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-13 and 18-19 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reinke (U.S. 2010/0055304).
Regarding claim 1, Reinke teaches (Claim 1 of Reinke as well as Example One) mixing an ethoxylated diamine surfactant (meeting claimed ‘at least one surfactant’) and water with an asphalt binder to form a foamed composition of surfactant and asphalt and mixing the foamed composition of surfactant and asphalt with milled recycled pavement (meeting claimed at least one recycled bituminous product).
Reinke does not expressly state that the asphalt binder is virgin bitumen.
Nevertheless, and assuming that the asphalt binder is virgin bitumen, Reinke does not teach that the surfactant is placed in contact with the recycled bituminous product (i.e., the milled recycled pavement) prior to contact with virgin bitumen (i.e., the asphalt binder).
However, it has been held that the selection of any order of mixing ingredients is prima facie obvious In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Additionally, it has been held that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). In the instant case, the choice to add the surfactant to the milled recycled pavement before combination with the asphalt binder is prima facie obvious and would not be expected to provide unexpected results because it is known that the recycled asphalt binder in the milled recycled pavement is weathered and aged such that it is usually stiffer and has diminished properties. Thus, the decision to add the surfactant to the recycled asphalt material to rejuvenate it before further combination with virgin asphalt material is obvious.
Further, Reinke teaches at Paragraph 0008 that the improved process provides better coating, easier construction, improved compaction, and reduced processing temperatures as well as that the improved coating has a “richer color” in comparison to the “duller, browner coating of conventional” cold-in-place recycling foamed mix. Additionally, Paragraph 0003 teaches that the cold-in-place recycling uses milled or ground existing bituminous pavement that is combined with virgin bituminous material and repaved without removal of the materials from the existing grade.
Thus, Reinke’s process would be expected to rejuvenate the at least one recycled bituminous product such that it has improved and richer color without removal of the materials from the existing grade.
Regarding claim 2, Reinke teaches the invention as applied to claim 1 above and further teaches (Claim 1 of Reinke as well as Example One) mixing an ethoxylated diamine surfactant (meeting claimed ‘at least one surfactant’) and water with an asphalt binder to form a foamed composition of surfactant and asphalt (meeting claimed virgin bitumen) and mixing the foamed composition of surfactant and asphalt with milled recycled pavement (meeting claimed aggregate and at least one recycled bituminous product because recycled pavement includes aggregate and asphalt binder, the latter meeting one recycled bituminous product).
In the interest of the clarity of the record, it is noted that claim 2 uses various instances of ‘optionally’ as well as “mixing together items a) to e) in any order”.
Regarding claim 3, Reinke teaches the invention as applied to claim 1 above and further teaches that the at least one recycled bituminous product being chosen from among reclaimed asphalt pavement (i.e. milled recycled pavement) (Claim 1 and example one).
Regarding claim 4, Reinke teaches the process as applied to claim 1 above and further teaches that the surfactant is from “about 0.05 to about 3 wt%” (claim 6 of Reinke) which lies within the claimed range of from 0.05 wt% to 10 wt%.
Regarding claim 5, Reinke teaches the process as applied to claim 1 above and further anticipates that the fraction of recycled bituminous product represents from about 40 wt% to about 99 wt% of the total mass of the final asphalt mix because Example One states that “[a]fter mixing the milled material with the foamed asphalt, the mix was placed in a windrow behind the pugmill and a pickup machine was used to transfer the mix to a paver which then laid the mix” (Paragraph 0029 of Example One). Thus, approximately all of the existing milled recycled pavement is reused and present in the final asphalt mix (i.e. the mix being laid) which lies within the broadest reasonable interpretation of “about 99 wt%”as claimed. See also Paragraph 0003 which teaches that the CIR process proceeds “without removal of the materials from the existing grade”.
Regarding claim 6, Reinke teaches the process as applied to claim 1 above but does not teach that the fraction of recycled bituminous products represents from about 10 wt% to about 80 wt% of the total mass of the final asphalt mix.
Reinke’s Example One states that “[a]fter mixing the milled material with the foamed asphalt, the mix was placed in a windrow behind the pugmill and a pickup machine was used to transfer the mix to a paver which then laid the mix” (Paragraph 0029 of Example One). Thus, approximately all of the existing milled recycled pavement is reused and present in the final asphalt mix (i.e. the mix being laid) which lies within the broadest reasonable interpretation of “about 99 wt%”as claimed. See also Paragraph 0003 which teaches that the CIR process proceeds “without removal of the materials from the existing grade”.
However, the person of ordinary skill in the art could obviously choose to use less of the reclaimed/existing milled pavement such that about 80 wt% is used rather than about 99 wt% or all. For example, if the reclaimed pavement is too degraded or contains material that does not conform to current environmental regulations, the proportion of reused material could be lowered and replaced with virgin material.
Such a change in percentage would be a difference in degree rather than a difference in kind and there is no evidence of record to demonstrate that the fraction of recycled bituminous product being about 10 to about 80 wt% is critical.
It has been held that ‘where 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, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 9, Reinke teaches the method as applied to claim 1 above and teaches the inclusion of DT-3 ethoxylated diamine surfactant which meets Formula A1 as claimed (Claim 1 and Example One).
Regarding claims 7, 8, 10 and 11, Reinke teaches the method as applied to claim 1 above and Reinke further teaches that other surfactants may be used such as amphoteric surfactants which include imidazolines and/or imidazoline derivatives (Paragraph 0023) which meet Formula E1 as claimed. Notably, Applicant’s specification at Paragraphs 0068-0077 describe species meeting Formula E1.
It has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301. See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious). MPEP 2144.07.
Regarding claims 12 and 13, Reinke teaches the method as applied to claim 1 above and further teaches that a foam is produced from an emulsion containing asphalt binder and water along with a breaking chemical (Paragraphs 0015 and 0016) that is then combined with the milled recycled pavement which would include mineral aggregate by the nature of ‘pavement’.
Regarding claims 18 and 19, Reinke teaches the process as applied to claim 1 which would naturally result in an ‘asphalt mix’. Thus, Reinke teaches the asphalt mix as claimed. Additionally, Reinke is particularly directed to recycling pavement and thus, it would be obvious to use the asphalt mix to accomplish the in-place recycling operation of Reinke which would result in the formation of a rolling surface prepared from said asphalt mix.
Claims 14-16 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reinke as applied to claim 1 above, and further in view of Bailey (U.S. 2010/0034586).
Regarding claim 14, Reinke teaches the invention as applied to claim 1 above but is silent to the incorporation of additional additives as claimed.
Bailey teaches a rejuvenating oil (Abstract, Claim 1) that is used for in situ recycling (Paragraphs 0085-0089) where the surface to rejuvenated is planed, adding the rejuvenator to the planed material followed by thorough mixing, and immediately compacting the rejuvenated material). The person of ordinary skill would appreciate the in situ recycling of Bailey to be the same steps as those of Reinke for CIR (cold-in-place recycling).
Bailey teaches that the results of the testing with the rejuvenated oil support that used vegetable oil (meeting claimed ‘oils from vegetal sources’) can be used to rejuvenate aged asphalt mixtures (Paragraph 0101).
The person of ordinary skill in the art would be motivated to add Bailey’s rejuvenating vegetable oil to the CIR process of Reinke so as to produce an improved and rejuvenated asphalt mix ready for immediate compaction and laying of the road surface that has restored flexibility.
Regarding claim 15, Reinke teaches the invention as applied to claim 1 above but is silent to the addition of an oil.
Bailey teaches a rejuvenating oil (Abstract, Claim 1) that is used for in situ recycling (Paragraphs 0085-0089) where the surface to rejuvenated is planed, adding the rejuvenator to the planed material followed by thorough mixing, and immediately compacting the rejuvenated material). The person of ordinary skill would appreciate the in situ recycling of Bailey to be the same steps as those of Reinke for CIR (cold-in-place recycling). Bailey teaches that the results of the testing with the rejuvenated oil support that used vegetable oil (meeting claimed ‘oils from vegetal sources’) can be used to rejuvenate aged asphalt mixtures (Paragraph 0101).
The person of ordinary skill in the art would be motivated to add Bailey’s rejuvenating vegetable oil to the CIR process of Reinke so as to produce an improved and rejuvenated asphalt mix ready for immediate compaction and laying of the road surface that has restored flexibility.
Regarding claim 16, Reinke teaches the invention as applied to claim 1 above but is silent to the addition of an oil.
Bailey teaches a rejuvenating oil (Abstract, Claim 1) that is used for in situ recycling (Paragraphs 0085-0089) where the surface to rejuvenated is planed, adding the rejuvenator to the planed material followed by thorough mixing, and immediately compacting the rejuvenated material). The person of ordinary skill would appreciate the in situ recycling of Bailey to be the same steps as those of Reinke for CIR (cold-in-place recycling). Bailey teaches that the results of the testing with the rejuvenated oil support that used vegetable oil (meeting claimed ‘oils from vegetal sources’) can be used to rejuvenate aged asphalt mixtures (Paragraph 0101).
The person of ordinary skill in the art would be motivated to add Bailey’s rejuvenating vegetable oil to the CIR process of Reinke so as to produce an improved and rejuvenated asphalt mix ready for immediate compaction and laying of the road surface that has restored flexibility.
While Reinke and Bailey do not expressly teach the weight ratio of surfactant/rejuvenation oil ranges from 10/90 to 50/50, the person of ordinary skill in the art would find it routine to determine the appropriate ratio of surfactant and rejuvenating oil in view of the general conditions taught by both Reinke and Bailey. Notably, and provided as an example, if the surfactant is chosen to be 3 wt% and the rejuvenation oil is chosen to be 3 wt%, the ratio would be 50/50 which is within the claimed range.
It has been held that ‘where 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, 105 USPQ 233, 235 (CCPA 1955).
There is no evidence that demonstrates that the claimed ranges are critical and/or produce unexpected results.
With regard to the combination of the rejuvenating oil and the surfactant together as a ‘pre-mix’, it has been held that the selection of any order of mixing ingredients is prima facie obvious In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Additionally, it has been held that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). In the instant case, the choice to add the surfactant to the milled recycled pavement before combination with the asphalt binder is prima facie obvious and would not be expected to provide unexpected results because it is known that the recycled asphalt binder in the milled recycled pavement is weathered and aged such that it is usually stiffer and has diminished properties. Thus, the decision to add the rejuvenating oil and surfactant together as a pre-mix that is then added to the recycled asphalt material to rejuvenate it before further combination with virgin asphalt material is obvious.
In KSR, the Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” and reaffirmed principles based on its precedent that ‘the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results’.
On balance, the teachings of prior art references Reinke and Bailey support a prima facie determination of unpatentability for the invention as currently claimed.
Claims 21-25 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Reinke (U.S. 2010/0055304) in further view of Bailey (U.S. 2010/0034586).
Regarding claim 21, Reinke teaches (Claim 1 of Reinke as well as Example One) mixing an ethoxylated diamine surfactant (meeting claimed ‘at least one surfactant’) and water with an asphalt binder to form a foamed composition of surfactant and asphalt and mixing the foamed composition of surfactant and asphalt with milled recycled pavement (meeting claimed at least one recycled bituminous product).
Reinke does not expressly state that the asphalt binder is virgin bitumen.
Nevertheless, and assuming that the asphalt binder is virgin bitumen, Reinke does not teach that the surfactant is placed in contact with the recycled bituminous product (i.e., the milled recycled pavement) prior to contact with virgin bitumen (i.e., the asphalt binder).
However, it has been held that the selection of any order of mixing ingredients is prima facie obvious In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Additionally, it has been held that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). In the instant case, the choice to add the surfactant to the milled recycled pavement before combination with the asphalt binder is prima facie obvious and would not be expected to provide unexpected results because it is known that the recycled asphalt binder in the milled recycled pavement is weathered and aged such that it is usually stiffer and has diminished properties. Thus, the decision to add the surfactant to the recycled asphalt material to rejuvenate it before further combination with virgin asphalt material is obvious.
Further, Reinke teaches at Paragraph 0008 that the improved process provides better coating, easier construction, improved compaction, and reduced processing temperatures as well as that the improved coating has a “richer color” in comparison to the “duller, browner coating of conventional” cold-in-place recycling foamed mix. Additionally, Paragraph 0003 teaches that the cold-in-place recycling uses milled or ground existing bituminous pavement that is combined with virgin bituminous material and repaved without removal of the materials from the existing grade.
Thus, Reinke’s process would be expected to rejuvenate the at least one recycled bituminous product such that it has improved and richer color without removal of the materials from the existing grade.
Reinke is silent to the addition of a rejuvenating oil.
Bailey teaches a rejuvenating oil (Abstract, Claim 1) that is used for in situ recycling (Paragraphs 0085-0089) where the surface to rejuvenated is planed, adding the rejuvenator to the planed material followed by thorough mixing, and immediately compacting the rejuvenated material). The person of ordinary skill would appreciate the in situ recycling of Bailey to be the same steps as those of Reinke for CIR (cold-in-place recycling). Bailey teaches that the results of the testing with the rejuvenated oil support that used vegetable oil (meeting claimed ‘oils from vegetal sources’) can be used to rejuvenate aged asphalt mixtures (Paragraph 0101).
The person of ordinary skill in the art would be motivated to add Bailey’s rejuvenating vegetable oil to the CIR process of Reinke so as to produce an improved and rejuvenated asphalt mix ready for immediate compaction and laying of the road surface that has restored flexibility.
With regard to the claimed feature requiring the fraction of recycled bituminous products represents from about 35 wt% to 99.5% of the total mass of the final asphalt mix, wherein the amount of surfactant used as a rejuvenator ranges from 0.1 wt% to 10 wt% with respect to the total mass of bitumen present in the final asphalt mix, and a weight ratio of surfactant/rejuvenation oil ranges from 10/90 to 50/50, the teachings of Reinke and/or Bailey are applicable as follows:
Reinke does not teach that the fraction of recycled bituminous products represents from about 35 wt% to about 99.5 wt% of the total mass of the final asphalt mix.
Reinke’s Example One states that “[a]fter mixing the milled material with the foamed asphalt, the mix was placed in a windrow behind the pugmill and a pickup machine was used to transfer the mix to a paver which then laid the mix” (Paragraph 0029 of Example One). Thus, approximately all of the existing milled recycled pavement is reused and present in the final asphalt mix (i.e. the mix being laid) which lies within the broadest reasonable interpretation of “about 99 wt%”as claimed. See also Paragraph 0003 which teaches that the CIR process proceeds “without removal of the materials from the existing grade”.
Reinke further teaches that the surfactant is from “about 0.05 to about 3 wt%” (claim 6 of Reinke) which lies within the claimed range of from 0.1 wt% to 10 wt%.
Bailey teaches that the rejuvenating oil is generally in the range of from 2-20% (Paragraph 0018).
While Reinke and Bailey do not expressly teach the weight ratio of surfactant/rejuvenation oil ranges from 10/90 to 50/50, the person of ordinary skill in the art would find it routine to determine the appropriate ratio of surfactant and rejuvenating oil in view of the general conditions taught by both Reinke and Bailey. Notably, and provided as an example, if the surfactant is chosen to be 3 wt% and the rejuvenation oil is chosen to be 3 wt%, the ratio would be 50/50 which is within the claimed range.
It has been held that ‘where 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, 105 USPQ 233, 235 (CCPA 1955).
There is no evidence that demonstrates that the claimed ranges are critical and/or produce unexpected results.
In KSR, the Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” and reaffirmed principles based on its precedent that ‘the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results’.
On balance, the teachings of prior art references Reinke and Bailey support a prima facie determination of unpatentability for the invention as currently claimed.
Regarding claim 22, Reinke and Bailey teach the process as applied to claim 21 above and Reinke teaches the inclusion of milled recycled pavement which necessarily includes recycled bituminous material and recycled aggregate by the nature of ‘pavement’ (Paragraph 0009).
Regarding claim 23, Reinke and Bailey teach the process as applied to claim 22 above and while not expressly stating that fresh mineral aggregate is added, such a feature is conventional within the asphaltic and road-making arts. Further, the determination of the appropriate amount of virgin bitumen added to the recycled and re-laid asphalt would be prima facie obvious to a person having ordinary skill in the art.
It has been held that ‘where 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, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 24, Reinke and Bailey teach the method as applied to claim 21 above but are silent to the express ordering of the process steps such that the surfactant is added to the milled recycled bituminous pavement before contact with virgin bitumen.
However, it has been held that the selection of any order of mixing ingredients is prima facie obvious In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). Additionally, it has been held that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). In the instant case, the choice to add the surfactant to the milled recycled pavement before combination with the asphalt binder is prima facie obvious and would not be expected to provide unexpected results because it is known that the recycled asphalt binder in the milled recycled pavement is weathered and aged such that it is usually stiffer and has diminished properties. Thus, the decision to add the surfactant to the recycled asphalt material to rejuvenate it before further combination with virgin asphalt material is obvious.
Regarding claim 25, Reinke and Bailey teach the method as applied to claim 21 above and, where 3 wt% surfactant and 3 wt% rejuvenating oil is selected, the ratio would be 50/50.
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.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20, 22-29 and 32 of U.S. Patent No. 10,119,026 (formerly Application No. 14/348,916).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application fully encompass those of the issued patent. Notably, the instant claims are broader than the issued claims such that, if applicant were to receive a patent for the instant claims, it would be an unjust extension of the right to exclude because Applicant has already received a patent for that subject matter.
Claims 1-16 and 21-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,898,039 (formerly Application No. 16/164,020).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application fully encompass those of the issued patent. Notably, the instant claims are broader than the issued claims such that, if applicant were to receive a patent for the instant claims, it would be an unjust extension of the right to exclude because Applicant has already received a patent for that subject matter.
In the interest of the clarity of the record, the instantly filed ADS makes a priority claim to 16/164,020 as a DIV. However, the presented and elected claims of the instant application are not directed to the non-elected and withdrawn group of 16/164,020 such that double patenting would be precluded. Thus, even though the instant application makes a benefit claim as a DIV to 16/164,020, the presented and elected claims of the instant application are actually to the same group that was elected and, ultimately issued, in U.S. 11,898,039.
Response to Arguments
Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
With regard to Applicant’s argument that the intention of adding the surfactant for rejuvenation purposes is patentably distinguishing over Reinke because Reinke adds the surfactant for a purpose other than rejuvenating, it has been held that the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer” Atlas Powder Co. V. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed Cir. 1999). Further, it has been held that when the claim recites using an old composition or structure and the ’use’ is directed to a result or property of that composition or structure, then claim is anticipated. In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978). In the instant case, the Applicant’s discovery of a rejuvenation effect from the known surfactant composition of Reinke is not patentably distinguishing because, while Reinke does not show a specific recognition of the ‘rejuvenating’ result attributable to the surfactant, its discovery by Applicant is tantamount only to finding a property in the old composition of Reinke. Further, products of identical chemical composition cannot have mutually exclusive properties In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1990).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738