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 .
Response to Amendment
This office action is in response to the Amendment filed on 07/09/2026.
Claims 1-23 and 29-32 are presently pending and under examination; claims 24-28 are canceled; claims 1 and 3-9 are amended.
The rejections of claims 1-23 and 29-32 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims; the rejection of claims 24-28 is moot as these claims have been canceled.
The 35 U.S.C. 102 rejection of claims 1-23, 29-30 and 32 over PAHLAVAN and the 35 U.S.C. 103 rejection of claim 31 over PAHLAVAN in view of WILLIAMS are withdrawn in light of the amendments to the claims and the Declaration under 37 CFR 1.130 filed 07/09/2026.
The claims have been amended such that their effective filing date is now the filing date of provisional application No. 63/479,460 of 01/11/2023 rather than the actual filing date of 01/11/2024; due to this amendment, PAHLAVAN now has a publication date which is within one year of the effective filing date of the present claims, and in view of the Declaration under 37 CFR 1.130 filed by Applicant, PAHLAVAN is disqualified as prior art.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Applicant has amended the claims such that they now have support for all limitations in the provisional Application No. No. 63/479,460 to which the present application claims domestic benefit, therefore the effective filing date of the claims is now the filing date of the provisional application, 01/11/2023.
Claim Interpretation
For purposes of claim interpretation, “about” as recited in claims 1 and 11-23 is interpreted as meaning ±1%, as this would appear most in keeping with Applicant’s intent based on the values in Table 4 of the present specification (e.g., Table 4 shows a minimum total phenolic compound amount of 8.95 wt%; “about 8 wt%” in claim 1 is interpreted as meaning 7% to 9%).
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.
Claims 1-23 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park, et al., "Biomass Waste to Produce Phenolic Compounds as Antiaging Additives for Asphalt", ACS Sustainable Chemistry & Engineering, 28 March 2022 (hereinafter, “PARK”).
Regarding claim 1, PARK teaches a bio-modified asphalt binder (see PARK generally at Abstract) comprising:
an asphalt binder (see PARK at Abstract); and
a phenol-rich oil (see PARK at Abstract)
comprising about 8 wt% to about 53 wt% phenolic compounds (see PARK at Abstract, teaching 9% to 53% phenolic compounds by weight).
Regarding claim 2, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises a bio-oil comprising phenolic compounds (see PARK at Abstract).
Regarding claims 3-8, PARK teaches a bio-modified asphalt binder according to claim 2, wherein the bio-oil is derived from pine bark, walnut shells, peanut shells, coconut husks, birch, or fir (see PARK at Abstract).
Regarding claim 9, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the bio-modified asphalt binder comprises the phenol-rich oil in a range of about 5 wt% to about 15 wt% (see PARK at pg. D, teaching 10 wt%).
Regarding claim 10, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenolic compounds comprise phenol, methylphenol, dimethylphenol, o-guaiacol, p-methylguaiacol, p-vinylguaiacol, trans-p-propenylguaiacol, p-allylguaiacol, syringol, vaniline, catechol, 3-methyl-1,2-benzenediol, 4-methyl-1,2-benzenediol, or any combination thereof (see PARK at Table 6).
Regarding claim 11, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises phenol in a range of about 1 wt% to about 9 wt% (see PARK at Table 6, teaching, e.g., 1.84 wt%).
Regarding claim 12, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises methylphenol in a range of about 0.5 wt% to about 2 wt% (see PARK at Table 6, teaching, e.g., 0.74 wt%).
Regarding claim 13, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises dimethylphenol in a range of about 0.1 wt% to about 2 wt% (see PARK at Table 6, teaching, e.g., 1.28 wt%).
Regarding claim 14, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises o-guaiacol in a range of about 0.5 wt% to about 5 wt% (see PARK at Table 6, teaching, e.g., 4.5 wt%).
Regarding claim 15, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises p-methylguaiacol in a range of about 0.1 wt% to about 5 wt% (see PARK at Table 6, teaching, e.g., 4.06 wt%).
Regarding claim 16, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises p-vinylguaiacol in a range of about 0.5 wt% to about 2 wt% (see PARK at Table 6, teaching, e.g., 0.77 wt%).
Regarding claim 17, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises trans-p-propenylguaiacol in a range of about 0.1 wt% to about 4 wt% (see PARK at Table 6, teaching, e.g., 3.52 wt%).
Regarding claim 18, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises p-allylguaiacol in a range of about 0.01 wt% to about 2 wt% (see PARK at Table 6, teaching, e.g., 1.1 wt%).
Regarding claim 19, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises less than about 2 wt% syringol (see PARK at Table 6, teaching, e.g., 1.09 wt%).
Regarding claim 20, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises less than about 4 wt% vaniline (see PARK at Table 6, teaching, e.g., 0.42 wt%).
Regarding claim 21, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises catechol in a range of about 0.1 wt% to about 7 wt% (see PARK at Table 6, teaching, e.g., 2.81 wt%).
Regarding claim 22, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises less than about 3 wt% 3-methyl-1,2-benzenediol (see PARK at Table 6, teaching, e.g., 0.33 wt%).
Regarding claim 23, PARK teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises less than about 11 wt% 4-methyl-1,2-benzenediol (see PARK at Table 6, teaching, e.g., 2.75 wt%).
Regarding claim 29, PARK teaches a bio-modified asphalt binder according to claim 1, and a building material comprising the bio-modified asphalt binder of claim 1 (see PARK at pg. A-B; asphalt is a building material, e.g., used for pavement).
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.
Claims 1-15, 17-20 and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Williams, et al. (U.S. Pub. No. 2011/0294927-A1) (hereinafter, “WILLIAMS”).
Regarding claim 1, WILLIAMS teaches a bio-modified asphalt binder (see WILLIAMS generally at Abstract and paragraph [0065]) comprising:
an asphalt binder (see WILLIAMS at Abstract and paragraphs [0062] and [0065]); and
a phenol-rich oil (see WILLIAMS at Abstract and paragraphs [0051] and [0063])
comprising phenolic compounds in amounts overlapping with and thereby rendering obvious the claimed range of about 8 wt% to about 53 wt% phenolic compounds (see WILLIAMS at paragraphs [0051] and [0063], teaching, by weight, 30% to 80% lignin oligomer/polyphenol content and 0.73% to 1.82% phenols, 0.48% to 0.7% guaiacols, and 0.55% to 1.48% syringols). As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)).
Regarding claim 2, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises a bio-oil comprising phenolic compounds (see WILLIAMS at Abstract and paragraphs [0051] and [0063]).
Regarding claims 3-8, WILLIAMS teaches a bio-modified asphalt binder according to claim 2.
WILLIAMS teaches that the bio-oil is derived from biomass including corn stovers, switchgrass, woods (e.g., oak wood), or other carbohydrate material containing cellulosic, hemi-cellulosic, or lignin material (see WILLIAMS at paragraphs [0063] and [0071]-[0073]), but does not explicitly mention that the biomass is pine bark, walnut shells, peanut shells, coconut husks, birch, or fir. However, this is considered product-by-process claim language and is not given patentable weight. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Regarding claim 9, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the bio-modified asphalt binder comprises the phenol-rich oil in a range which encompasses the claimed range of about 5 wt% to about 15 wt% (see WILLIAMS at paragraph [0065], teaching that the bio-oil formulation can be mixed with varying amounts of asphalt, for example, in amounts ranging from about 99% to about 1% bio-oil and from about 1% to about 99% asphalt). As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)). Additionally, MPEP § 2144.05 states that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138).
Regarding claim 10, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenolic compounds comprise phenol, methylphenol, dimethylphenol, o-guaiacol, p-methylguaiacol, p-vinylguaiacol, trans-p-propenylguaiacol, p-allylguaiacol, syringol, vaniline, catechol, 3-methyl-1,2-benzenediol, 4-methyl-1,2-benzenediol, or any combination thereof (see WILLIAMS at paragraphs [0051] and [0055]-[0057], teaching phenols, cresol (i.e., methylphenol), dimethylphenol, guaiacol, methylguaiacol, syringol, and vanillin (i.e., vaniline)).
Regarding claim 11, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises phenol in a range of about 1 wt% to about 9 wt% (see WILLIAMS at paragraphs [0051] and [0055], teaching 0.73% to 1.82% phenol).
Regarding claim 12, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises methylphenol in a range of about 0.5 wt% to about 2 wt% (see WILLIAMS at paragraphs [0051] and [0055], teaching 0.73% to 1.82% cresol, i.e., methylphenol).
Regarding claim 13, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises dimethylphenol in a range of about 0.1 wt% to about 2 wt% (see WILLIAMS at paragraphs [0051] and [0055], teaching 0.73% to 1.82% dimethylphenol).
Regarding claim 14, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises o-guaiacol in a range of about 0.5 wt% to about 5 wt% (see WILLIAMS at paragraphs [0051] and [0056], teaching 0.48% to 0.7% guaiacol, i.e., o-guaiacol).
Regarding claim 15, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises p-methylguaiacol in a range of about 0.1 wt% to about 5 wt% (see WILLIAMS at paragraphs [0051] and [0056], teaching 0.48% to 0.7% 4-methylguaiacol, i.e., p-methylguaiacol).
Regarding claim 17, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises trans-p-propenylguaiacol in a range of about 0.1 wt% to about 4 wt% (see WILLIAMS at paragraphs [0051] and [0056], teaching 0.48% to 0.7% 4-isoeugenol trans, i.e., trans-p-propenylguaiacol).
Regarding claim 18, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises p-allylguaiacol in a range of about 0.01 wt% to about 2 wt% (see WILLIAMS at paragraphs [0051] and [0056], teaching 0.48% to 0.7% eugenol, i.e., p-allylguaiacol).
Regarding claim 19, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises less than about 2 wt% syringol (see WILLIAMS at paragraphs [0051] and [0057], teaching 0.55% to 1.48% syringol).
Regarding claim 20, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, wherein the phenol-rich oil comprises less than about 4 wt% vaniline (see WILLIAMS at paragraphs [0051] and [0056], teaching 0.48% to 0.7% vanillin, i.e., vaniline).
Regarding claims 29-32, WILLIAMS teaches a bio-modified asphalt binder according to claim 1, and further teaches a bio-modified asphalt and a building material comprising the bio-modified asphalt binder according to claim 1 and aggregate material, wherein the aggregate comprises one or more of rock, sand, gravel, and slags (see WILLIAMS at paragraphs [0067]-[0068], teaching mixing the bio-modified asphalt with mineral aggregate, e.g., stone, sand, gravel, to make a composite material, e.g., pavement, roofing shingles).
Response to Arguments
Applicant’s arguments filed 07/09/2026 with respect to claim(s) 1-23 and 29-32 have been considered but are moot because the new grounds of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 102 for claims 1-23 and 29 over PARK and under 35 U.S.C. 103 for claims 1-15, 17-20 and 29-32 over WILLIAMS as set forth above.
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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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