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
Acknowledgment is made of this application’s claim as a DIV of 16/308,408; however, the instantly claimed invention is not consonant with the restriction requirement mailed in the 16/308,408 parent application. Specifically, Applicant has presented claims to the previously elected and examined invention (see at least claims 17, 2, and 21 in claim set filed 07/07/2023 of 16/308,408 as well as the Restriction Requirement mailed 09/27/2022). Thus, a double patenting rejection is applied below despite the application’s priority claim as a DIV. It appears that the instant application is actually a CON rather than a DIV. Applicant may amend the claims so that they are directed to an invention that is independent and distinct from the examined subject matter in 16/308,408.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/29/2024, 11/24/2025, and 04/15/2026 have been considered by the examiner.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract is approximately 22 words and does not enable the reader thereof to determine quickly from a cursory inspection of the abstract the nature and gist of the technical disclosure and that which is new in the art to which the invention pertains (MPEP 608.01(b).I.A).
Preparation of the abstract is the responsibility of the applicant. Background knowledge of the art and an appreciation of the applicant’s contribution to the art are most important in the preparation of the abstract (MPEP 608.01(b).I.D.) Sample abstracts are provided at subsection E of MPEP 608.01(b). Correction is required. See MPEP § 608.01(b).
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 17 and 20-30 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.
Independent claim 17 includes the phrase “…wherein the asphalt binder comprises a virgin asphalt binder, reclaimed asphalt binder material comprising asphalt pavement (RAP), asphalt shingles (RAS), or combinations of both, and the sterol is present in an amount in the range of 0.5 to 15 wt% of the virgin asphalt binder,…”. The metes and bounds of the claims are unclear because it is not apparent if the asphalt binder requires 1) one of virgin asphalt, reclaimed asphalt binder comprising RAP, RAS or both and 0.5 to 15 wt% of the sterol or if the asphalt binder requires 2) virgin asphalt, reclaimed asphalt binder material, or a combination thereof and 0.5 to 15 wt% of the sterol, or if the asphalt binder requires 3) virgin asphalt and reclaimed asphalt binder material selected from RAP, RAS, or a combination of both and 0.5 to 15 wt% of the sterol.
In the interest of advancing prosecution, the claim has been given its broadest reasonable interpretation such that the asphalt binder requires at least one of virgin asphalt binder or reclaimed asphalt binder and 0.5 to 15 wt% of the sterol determined from either the virgin asphalt binder, reclaimed asphalt binder material, and/or combination thereof.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 20 recites the broad recitation 1 to 10 wt%, and the claim also recites 1 to 3 wt% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 22-24 recites the limitation "the source". There is insufficient antecedent basis for this limitation in the claim. It appears that there would be proper antecedent basis if these claims depended from claim 21 instead of 17.
Claim 25 recites the limitation "the crude sterol". There is insufficient antecedent basis for this limitation in the claim. It appears that there would be proper antecedent basis if these claims depended from claim 21 instead of 17.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 17, 20, 21, 26, and 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Grady (WO 2013/163463 A1; Cited in IDS of 05/29/2024).
Regarding claim 17, Grady teaches adding a crude sterol to an asphalt binder (Table 1; C20). Specifically, C20 includes 90 wt% aged asphalt binder (meeting claimed “reclaimed asphalt binder material”) and 10 wt% crude sterol. In the interest of the clarity of the record, Grady teaches that the aged binder refers to binder that is present in or recovered form reclaimed asphalt (Col. 6 lines 24-25) which includes RAP and RAS sources (Page 5 lines 19-21). Additionally, Grady teaches that combinations of virgin asphalt and reclaimed asphalt may be used (Page 17 lines 3-6 “the reclaimed asphalt, the rejuvenating agent, or a mixture thereof is combined with virgin asphalt”).
Grady further teaches that the invention includes uses for the asphalt compositions or binders of the invention such that they can be used, e.g., for paved surfaces, road surfaces, and subsurfaces, shoulders, bridges, bridge abutments, etc. (Page 17 lines 19-23) and expressly teaches that the invention relates to a paved surface comprising an asphalt or binder composition of the invention. Grady also recognizes the rejuvenating agents reduction of the temperature required for compaction (claim 23 of Grady).
To make the record clear, Grady does not expressly teach a method for applying a road pavement using an asphalt binder including compacting the asphalt; however, it would be obvious to the person of ordinary skill in the art that Grady uses the asphalt binder and rejuvenating agent to form a paving surface which would necessarily require application of the selected Grady composition(s) onto a base surface followed by compacting because it is a fundamental and basic practice of road or pavement building.
Regarding claim 20, Grady teaches the invention as applied to claim 17 above and Example C20 uses 10 wt% crude sterol which lies within the claimed range of 1 to 10 wt%. Additionally, Grady further teaches that the rejuvenating agent is included in an amount of 0.1-20 wt% (Page 3 lines 26-30 and Page 7 lines 3-6) which overlaps the narrower claimed range of 1 to 3 wt%.
Regarding claim 21, Grady teaches the method as applied to claim 17 above and Example C20 is an example utilizing “Crude Sterols” but Grady is silent to the source of the sterols such that they would be considered to have been ‘bio-derived’ or a distilled residue of a source of crude sterol that is bio-derived.
However, it is noted that sterols are well known to be derived from biological sources such that it would be obvious to use crude sterols from bio-based sources because they would be considered to be obtained by renewable means rather than non-renewable means such as fossil fuels/petroleum.
Also, without providing any distinguishing method steps that are required to process crude sterol from biological sources, the structure of the required material, i.e., the sterol, is still met by Grady’s crude sterols.
Regarding claim 26, Grady teaches the method as applied to claim 17 above but Example C20 is silent to the inclusion of a softening agent; however, Grady teaches the inclusion of “softening agents” (Page 6 line 17). It would be obvious to include a softening agent, as taught by Grady, so as to better control the properties of the reclaimed asphalt binder and ensure better blending and rejuvenation of the reclaimed asphalt.
Regarding claim 28, Grady teaches the method as applied to claim 17 above and further teaches that the asphalt can be used to describe binder plus aggregate (Page 5 line 10). Nevertheless, it would be obvious to add aggregate to the binder so that a sturdy paving surface, like a road or tarmac, is produced as is conventionally known.
Regarding claim 29, Grady teaches the method as applied to claim 17 above but Grady fails to expressly teach that the asphalt binder provides a ΔTc of greater than or equal to -5.0 C.
However, it has been held 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 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In the instant case, it is expected that the crude sterol rejuvenating agent of Grady in an amount of 10 wt% (Page 19 lines 17-19) would be sufficient to provide a less negative ΔTc. value such as being greater than or equal to -5.0C absent evidence or persuasive reasoning to the contrary.
It has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998). In the instant case, there is no reason to expect or evidence to demonstrate that Grady’s sterols would not perform the same as the ‘crude sterols’ as currently claimed.
Furthermore, it has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
Regarding claim 30, Grady teaches the method as applied to claim 17 above and further teaches that the asphalt compositions include 5 to 95 wt% RAP and 1 to 99 wt% of virgin binder (Page 13 lines 9-13) which overlaps the claimed ranges of 5-40 wt% reclaimed asphalt binder and 60-95 wt% virgin asphalt respectively.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Grady as applied to claim 17 above, and further in view of Montpeyroux et al. (U.S. 2012/0060722).
Regarding claim 22, Grady anticipates the invention as applied to claim 17 above but Grady is silent to the crude sterol comprising a tall oil pitch.
Montpeyroux et al. (hereinafter “Montpeyroux”) teaches a bituminous binder for preparing low temperature asphalt or coated materials (Title). Montpeyroux inventively uses a binder containing at least one crude Tall Oil derivative which is known to be a by-product of the paper industry (Paragraph 0026) which uses pulp from trees. Montpeyroux further describes that the tall oil derivative includes an unsaponifiable portion that includes sterols (Paragraph 0032).
Both Grady and Montpeyroux are directed to asphalts and utilize CTO (crude tall oil) (see Grady at Page 9 lines 24-30) which Montpeyroux explains is known to include sterols. As crude tall oil is derived from the papermaking process, which is well known to utilize trees, it would be obvious that Grady’s crude sterols are plant sterols because both Grady and Montpeyroux use crude tall oil sources. Compellingly, Montpeyroux teaches that ‘the addition of at least two compounds of plant and/or animal origin to a bituminous binder makes it possible to significantly reduce the manufacturing, processing and compacting temperatures of the mixes and of the asphalt formulated from said bituminous binder containing additives” the first additive being a tall oil derivative (Paragraph 00014).
Claims 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Grady as applied to claim 17 above, and further in view of Julian (U.S. 3,691,211).
Regarding claims 23 and 24, Grady teaches the method as applied to claim 17 above but fails to identify the source of the crude sterols.
Julian teaches a process for preparing sterols from tall oil pitch and states that “Sterols have been isolated from such diverse plant sources as corn oil… and soybean pitch (Col. 1 lines 16-20) and that “these plant sources of sterols are inexpensive in that they are the ‘foots’ or ‘tailings’ left from various manufacturing processes”.
It would be obvious that the crude sterols of Grady would comprise corn oil and/or soybean oil because they are crude foots or tailings and therefore would have remnants of the source material (i.e. corn or soybean oil). Furthermore, corn and soybean oil are common vegetable oils with well-known inclusion and recyclability for asphalt/bituminous materials.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Grady as applied to claim 17 above, and further in view of Mackay (GB 233430A; Cited in IDS of 05/29/2024).
Regarding claim 25, Grady teaches the invention as applied to claim 17 above but is silent to the crude sterol composition comprising cholesterol.
Mackay teaches mixing bituminous material (meeting claimed virgin asphalt binder) and a small proportion (“about or less than 5%”) of emulsifying agent comprising cholesterol (Left Column lines 24-32).
It would be obvious to the person having ordinary skill in the art before the effective filing date of the claimed invention to select the species of cholesterol, as taught by Mackay, in view of the teaching of Grady’s genus of ‘crude sterols’. Mackay and Grady are analogous art and Mackay uses cholesterol in a bituminous material in a successful manner such that the substitution or inclusion of cholesterol as a suitable sterol would be prima facie obvious absent evidence of unexpected results.
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.
Additionally, in KSR, the Supreme Court particularly 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’ KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 415, 82 USPQ2d 1395 (2007).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Grady as applied to claim 26 above, and further in view of Rubab et al. “Effects of Engine Oil Residues on Asphalt Cement Quality (2011; Cited in IDS of 05/29/2024).
Regarding claim 27, Grady teaches the method as applied to claim 26 above but fails to expressly disclose examples of softening agents.
Rubab et al. (hereinafter “Rubab”) teaches that engine oil residues (reading on petroleum-derived oils) are blended with asphalt so as to provide a low-cost method of increasing the grade span when blended with asphalt high in asphaltenes (Page 2 “Abstract”).
As such, it would be obvious to the ordinarily skilled artisan before the effective filing date to modify the teachings of Grady with the teachings of Rubab such that recycled engine oil residues are used as a softening agent to increase the grade span in a low-cost fashion.
Therefore, it would be obvious before the effective filing date of the claimed invention to select known engine oil residues (obtained during recycling of used motor oils) as a softening agent to increase the grade span of the blended asphalt composition.
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.
Claims17 and 20-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 13-16 of U.S. Patent No. 11,912,874 (U.S. 16/308,408). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims fully encompass the issued claims and are directed to the same subject matter. The amended claims presented in the instant application are not consonant with the restriction requirement made in the parent application, 16/308,408. Thus, the instant application appears to be a CON rather than a DIV and thus, double patenting is not precluded.
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.
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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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