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 .
Election/Restrictions
Claims 21, 26 and 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/3/2025
Applicant’s election without traverse of Group I Species first A/A1 is epoxide and A2 and A3 are groups with no oxygen such as sub epoxidized soybean oil as in elected claims 1-20 in the reply filed on11/3/2025 is acknowledged.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/25/25, 4/16/25, 3/17/25, 12/19/24, 5/17/24, 2/15/24, 12/20/23, 9/28/23 (2) have been considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: the specification is replete with the use of commercial products referred to solely by their trade name without any generic terminology. See for example at specification [0066] Hydrolene, EVERSOL, etc. which are trade names or a marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Interpretation/Introduction
Certain claims recite a compositional component by its function without naming specific chemical groups or species. In some instances the claims are directed to a compositional component where the dependent claims recite a chemical compound/species. The examiner notes that as is known by those of ordinary skill in the art at the time of filing the invention that most chemicals are multi-functional. As such where the prior art teaches the claimed chemical it will necessarily perform the claimed function absent any other teachings in the instant specification as to how that function might be impaired/inhibited.
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) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
The examiner maintains that where the prior art teaches a chemical component in the composition which is of the same type as those recited in the instant specification to perform the claimed function, it meets the claim limitations even if identified as being used for another purpose. The examiner maintains that the below prior art having disclosed a species/chemical compound as recited in a dependent claim though perhaps identifying it as used for another function, will afford the claimed function as well thereby meeting the claim limitation.
For example, Claim 1 requires a “stabilizer” and claim 10 recites a list of stabilizers as a Markush group. Where the prior art teaches a member of said Markush group of claim 10, said chemical meets the limitations for a stabilizer of claims 1 and 10.
For example, Claim 2 is directed to a rejuvenator. The instant specification indicates the sub epoxidized soybean oils are effective rejuvenators that bond with the oxidized asphaltene see instant specification at [0034] and rejuvenators includes soybean oil, linseed oil derivatives, SESO, etc. [0066] As such where the prior art teaches flax/linseed oil it meets the limitation for a rejuvenator
For example claims 11-12 are directed to colorants: since claim 12 recites a Markush group of chemicals which are colorants, where the prior art teaches a member of said Markush group even if used for another purpose, it meets the claim limitations for a colorant.
For example claims 17-18 are directed to antistripping agents: since claim 18 recites a Markush group of chemicals/compounds as antistripping agents, where the prior art teaches a member of said Markush group, it meets the claim limitations for an antistripping agent.
For example, claims 19-20 is/are directed to wetting agents where claim 20 recites a Markush group including polyols and sulfates. Where the prior art teaches a member of the Markush group, it meets the limitations for a wetting agent.
Regarding Claims 8-9: The examiner notes the values set forth in claims 8-9 correspond to the instant specification as below set forth:
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Where the prior art teaches the claimed formula of the compound of formula (I) it will necessarily possess said properties/values in the claimed range.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 3, 5-7, 10-14, and 19-20 is/are rejected under 35 U.S.C. 102(a) as being anticipated by Christopher et al (WO 2016/033605)
REGARDING INDEPENDENT CLAIM:
Regarding Claim 1:
Christopher et al (WO 2016/033605) discloses an asphalt composition and method of making same comprising a compound meeting instantly claimed formula (1) (with elected species where first A is epoxide, second and third A are groups without oxygen (i.e. alkyl/alkenyl)
FORMULA I WITH ELECTED SPECIES:
The reference teaches compound of formula I with elected species:
Specific teaching of claimed formula:
FORMULA (Ie)(Ij) and (Ik)) meets the instantly claimed formula I and elected species thereof where
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(see claims 1-2 reference) (where this is the same R group of the instant claims and the same n value of the instant claims) and (see also claim 3 of reference include epoxidized methyl soyate meeting the instantly claimed formula I )
[0011] See also [042]
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N is 1, 2 or 3 and R is H or C1-C23 alkyl etc. [0020]
(meeting the limitations of elected species of instant formula (I) and eleced species and claim 7 for subepxoided soybean oil) See also [0042-0054] epoxidized soybean oils.
Broad teaching of claimed formula:
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(P2-3)
POLYMER:
The composition may further comprise a polymer additive [0059] (meeting the limitatoin of claim 1 for a polymer) such as polyethylene [0059] (meeting the limitation for polymer of claims 1 and 6)
STABILIZER
The composition includes styrene butadiene, etc. [0060] (i.e. stabilizer of instant claims 1 and 10)
EMULSIFIED PRODUCT/ AND WATER/ AND SURFACTANT
The compostion may comprise water and a surfcatant and is formed into an emulsion. The surfactants are those known to those of skill in the art [0085]
RECLAIMED ASPHALT PAVEMENT PRODUCT
[0019] As the cost of crude petroleum and asphalt prices continue to trend upward, saving money by using WMA additives becomes increasingly important for maintaining a competitive edge in the market. As base material costs increase, WMA can help contractors save money because of the reduced fuel costs and higher percentages of recycled asphalt pavement (meeting the limitation for RAP) can be incorporated in WMA mixes. (warm mix asphalt [0006])In addition to savings, WMA has been shown to produce a quality asphalt product. In many field produced mixes, there has been no performance difference between the WMA and control pavement sections. Laboratory tests have shown concern regarding moisture susceptibility in WMA. This is likely due to incomplete drying of aggregates. Hurley et al., "Evaluation of Evotherm for Use in Warm Mix Asphalt," Rep No 06- 02. Auburn, AL. : National Center for Asphalt Technology (2006), which is hereby incorporated by reference in its entirety. Overall, WMA has shown promise and is quickly being
implemented by owner-agencies around the country.
[0034] Asphalt includes material in which the predominating constituents are bitumen, which occur in nature or are obtained in petroleum processing. Bitumen include solid, semisolid, or viscous substances, natural or manufactured, composed principally of high molecular weight hydrocarbons. The asphalt used in the present invention is not particularly limited, and various kinds of asphalts may be used in the present invention. Examples of the asphalt include straight asphalts such as petroleum asphalts for pavements, as well as polymer- modified asphalts produced by modifying asphalt with a polymer material including a thermoplastic elastomer such as styrene/butadiene block copolymers (SBS), styrene/isoprene block copolymers (SIS), and ethylene/vinyl acetate copolymers (EVA).
[0035] Suitable grades of asphalt include, but are not limited to, the following: PG52-22,
PG58-22, PG64-22, PG67-22, PG70-22, PG76-22, PG82-22, PG52-28, PG58-28, PG64-28, PG67-28, PG70-28, PG76-28, PG52-34, PG58-34, PG64-34, PG64-16, PG67-16, PG70-16, PG76-16, PG64-10, PG67-10, PG70-10, PG76-10, pen grade 40-50, pen grade 60-70, pen grade 85-100, pen grade 120-150, AR4000, AR8000, AC10 grade, AC20 grade, and AC30 grade. Roberts et al., "Hot Mix Asphalt Materials, Mixture Design, and Construction," NAPA Research and Education Foundation (2nd ed.) (1996), which is hereby incorporated by reference in its entirety.
REGARDING DEPENDENT CLAIMS:
Regarding Claim 3:
Christopher discloses the limitations above set forth. Christopher discloses the composition comprises asphalt binder [0015] [0060, 0067][0079]
The composition comprises an unmodified Montana crude source asphalt as a first binder (i.e. asphalt binder) and a polymer modified form of this was used as a second binder with styrene butadiene styrene [0091](meeting claim 3)
[0017] There are four categorized groups of WMA technologies: (i) foaming - water based; (2) foaming - water bearing additive; (3) chemical additive; and (4) organic bio -derived additives. It is hypothesized that softening could be occurring at high temperatures decreasing the resistance to rutting and stripping for the warm mix asphalt (WMA) mixtures modified with bio-derived/chemical additives as compared to a hot mix control.
Regarding Claim 5:
Christopher discloses the limitations above set forth. Christopher discloses the reference teaches the addition of fatty acid soaps which are recognized in the instant specification as emulsifying agents See instant specification at [0043-0046] at [0045] of the instant specification fatty acid soaps are recognized as anionic emulsifying agents/surfactants)
[0079] Wax modifiers that can be usefully employed in the context of the present invention include, but are not limited to, waxes of vegetable (e.g. carnauba wax), animal (e.g. beeswax) mineral (e.g. Montan™ wax from coal, Fischer Tropsch wax from coal) or petroleum (e.g. paraffin wax, polyethylene wax, Fischer-Tropsch wax from gas) origin including oxidized waxes; amide waxes (e.g. ethylene bis stearamide, stearyl amide, stearyl stearamide); fatty acids and soaps of waxy nature (e.g., aluminum stearate, calcium stearate, fatty acids); other fatty materials of waxy nature (fatty alcohols, hydrogenated fats, fatty esters etc.)
Regarding Claim 6:
Christopher discloses the limitations above set forth. Christopher discloses the composition may further comprise a polymer additive [0059] (meeting the limitatoin of claim 1 for a polymer) such as polyethylene [0059] (meeting the limitation for polymer of claims 1 and 6) and may include styrene butadiene, etc. [0060] (i.e. stabilizer of instant claims 1 and 10)
Regarding Claim 7:
Christopher discloses the limitations above set forth. See also [042]
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N is 1, 2 or 3 and R is H or C1-C23 alkyl etc. [0020] (as more fully above set forth)
(meeting the limitations of elected species of instant formula (() and claim 7 for subepxoided soybean oil) See also [0042-0054] epoxidized soybean oils.
Regarding Claim 10:
Christopher discloses the limitations above set forth. Christopher discloses the composition may further comprise a polymer additive [0059] (meeting the limitatoin of claim 1 for a polymer) such as polyethylene [0059] and may include styrene butadiene, etc. [0060] (i.e. stalizier of instant claims 1 and 10)
Regarding Claims 11-12:
Christopher discloses the limitations above set forth. Christopher discloses the compositon may comprise titanium dioxide or zinc oxide and th l8ike [0076] (meeting claims 11-12 for a colorant)
Regarding Claims 13-14:
Christopher discloses the limitations above set forth. Christopher discloses the compositon may comprise a biocide such as zinc, copper, etc. [0077] (meeting claims 13-14)
Regarding Claims 19-20
Christopher discloses the limitations above set forth. Christopher discloses the composition may comprise a glyol and sulfate [0077] (meeting the limitation for a wetting agent)
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.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 102(a) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Christopher et al (WO 2016/033605) as applied to claims 1, 3, 5-7, 10-14 and 19-20 above.
Regarding Claims 8-9:
While the reference does not calculate the values of instant claims 8-9, since it disclseos the claimed compound of formula (I) it will necessarily possess the claimed values and/or overlap said values.
The reference teaches The epoxidized methyl soyate composition has improved againg reduced mass loss and improved resistance to craking/fatigue [0095] with good viscosity no spearation etc. Table 3 lower stiffness at lower temperatures for improved viscosty and performance [0096] see also claims 6-9 of the reference. The reference is concered with problems fo againg, service life, long oxidating aging, structural functional load failuers distresses, and envifronmental factors causing aging, damage such as ozone, UV, oxygen and thermal radation where oxidative aging casue the asphalt to become harder and more brittle etc. [0003-0007][0014]
The instant application is concerned with the same properties as is the instant application (See instant applicatoin at [0057-0060])
The reference uses the compositio for paving material[0063] [0082] and in roofing shingles (see claim 25 reference0 as is the case in the instant application and therefore uses the composition in the same/similar environment.
These are performance features which correspond to the properties the claimed values are meant to identify as set forth in the instant specificatoin at [0057-0059] where the instant specification further indicagtes these values may be afforded by commercial products and which can be optimized for the envorinmetnal condistions of the applicaton, condition of pavement and roofing systems, etc. [0060]
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) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Assuming arguendo the teachings of the prior art do not teach the exact range of the instant claims, since they teach the above set forth formula, etc. the composition of the prior art will be expected to at very least overlap the claimed property ranges.
See MPEP 2144.05(I): "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)"
Claim(s) 17-18 is/are rejected under 35 U.S.C. 102(a) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Christopher et al (WO 2016/033605) as applied to claims 1, 3, 5-7, 8-9, 10-14, and 19-20 above as evidenced by Colvin (US 2003/0187105) and alternatively further in view of Zhao Wang (CN 101863637A) (2010)
Regarding Claims 17-18:
Christopher discloses the limitations above set forth.
Christopher teaches the compositon may comprise limestone to modify rheology and temperature suceptbility [0072] the composition may comprise lime dust [0073] The composition comprises adhesion promoters [0079][0062] (i.e. antistripping) the compositon comprises amide waxes, vegatable waxes, paraffin wax, [0079] (lime based antisripping agent of instant claim 18) Christopher teaches the compositon comrpising limestone, lime and amide waxes which the examiner maintains renders obvious to one of ordinary skill in the art “lime based” antistripping additives.
While Christopher does not expessly indicate the lime is an antistripping agent, one of ordinary skill in the art at the time of filing the invention would recognize it as such. See generally Colvin (US 2003/0187105) which teaches that various methods have been developed to reduce stripping tendencies. For instance amines and lime are known to act as anti stripping agents [0008]
Assuming arguendo Christopher does not render obvious the claimed species of antistripping additive of “lime based”
Christopher does not expessly disclose species of anti stripping additives of the instant claims.
Zhao Wang (CN 101863637A) discloses a road asphalt (Abstract) comprising an plasticizer of epoxy soybean oil [0010] and including an anti stripping agent in order to improve various additive water stability of the asphalt. The composition includes additives such as anti stripping agents includes slaked lime and amine anti stripping agents [0016]. In order to improve the water stability of asphalt concrete, various external admixtures mainly include slaked lime, cement, chemical anti-stripping agent, and modified asphalt.
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use an anstripping agent of slaked lime as taught by Zhao in the composition of Christopher as Christopher already contemplated a lime additive and doing so will aid in water stability of the composition of Christopher. Further it would have been obvious to one of ordinary skill in the art at the time of filing the invention to add an amine snti strippingg agent as they are commerically available.
Claim(s) 2 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Christopher et al (WO 2016/033605) as applied to claims 1, 3, 5-7, 8-9, 10-14, and 19-20 above further in view of Cochran et al (WO 2020/061030A1) published March 26, 2020 (more than one year prior to the effective filing date of the instant application of August 15, 2022)
Regarding Claims 2 and 15-16:
Christopher teaches the limitations above set forth. Christopher teaches the composition uses renewable sources of oils including flax oil (i.e. linseed oil) [0063] In an embodiment of the present invention, asphalt and the epoxidized fatty acid ester may be combined with bio oil to form a substantially homogeneous mixture. The homogenous material can be graded according to AASHTO MP3 and used as an asphalt binder in paving projects. Biological derived triglycerides include those from renewable source derived fats [0046] including oils such as linseed and vegetable oils [0041] (similar to a rejuvenator of claim 2 as The instant specification indicates that various oils and oil derivatives may serve as a rejuvenator such as linseed oil at [0066])
Christopher teaches the limitations above set forth. Christopher teaches the epoxidized esters may be cross linked [0038] and [0040]
The epoxidized fatty esters are useful as plasticizers [0050-0051]
While Christopher teaches linseed oil/flax oil it does not expressly teach a compositional component for the purpose of a rejuvenator and the compositions taught by Christopher while similar to those of the instant specification are not the same.
While Christopher teaches crosslinking it does not teach a cross linker additive..
Regarding the claimed crosslinker and rejuvenater:
Cochran et al (WO 2020/061030A1) published March 26, 2020 (more than one year prior to the effective filing date of the instant application of August 15, 2022)
Cochran like Christopher discloses a liquid asphalt cement composition comprising an epoxidized vegetable oil (Abstract)
The composition comprises a polymer (See reference claim 1 meeting a polymer of instant claim 1)
The composition comprises an asphalt polymer modifier such as styrene butadiene copolymers, (See claim 24 reference meeting claim 6 of instant claims)
The composition comprises an asphalt portion (See claim 27 of reference) such as reclaimed asphalt pavement (See claim 28 of reference meeting claim 1 reclaimed asphalt pavement product)
The composition comprises a sub epoxidized fatty acid and sub epoxidized fatty ester (See claims 9-10 of reference) such as sub epoxidized soybean oil (see claim 15 of reference meeting instant claim 1 formula and instant claim 7)
The epoxidized oil includes those set forth in reference claim 13:
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Where n is 1 2 or 3 (See claim 12 of reference) meeting the elected species of instant claim 1)
The composition may comprises a binder [0088] (meeting claim 3 for a binder)
The composition comprises a colorant such as iron oxide and titanium dioxide [0091] (meeting instant claims 11-12)
The composition may comprise an algaecide and biocide such as metal oxides metal slats and metal elements such as copper zinc silver of the like [0090] (meeting claims 13-14 for antimicrobial)
Reference Table 18:The composition comprises SESO in amounts of 6 %The composition comprises styrene butadiene 2 wt.% The composition comprises a binder Seneca jebro, Bituminous material (meeting the limitation of claim3 for an asphalt binder)
The composition comprises wax modifiers such as polyethylene wax, vegetable including carnauba wax, animal i.e. beeswax, mineral wax, petroleum wax such as paraffin and polyethylene wax, amide wax such as ethylene bis stearamide, stearyl amide, stearyl stearamide, fatty acid and soaps and other fatty materials of waxy nature such as fatty alcohol, hydrogenated fat, [0092]
The composition may comprise rejuvenators and/or softening agents to offset stiffness and low creep rate of aged recycled asphalt pavement asphalt binder thereby improving low temperature mix properties [0095-0096] (meeting instant claim 2)
Cochran (like Christopher) teaches crosslinking such as blowing to form epoxides and dimers etc. [0022] and teaches the composition can be crosslinked and hydrogenated to remove double bonds from the oil to yield asphalt modifiers[0022] and teaches the composition comprises a cross linker [093] [0102]preferably a thiol based compound, acid based compound a sulfur compound [0081] (meeting claims 15-16)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add a rejuvenator as taught by Cochran to the composition of Christopher to impart improved stiffness, creep rate of aged RAP asphalt binder and to improve the low temperature mix properties to the composition of Christopher with a reasonable expectation of success.
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add the cross linkers such as the thiol based or sulfur based compounds of Cochran to the composition of Christopher as Christopher already contemplates crosslinking the epoxidized soy ester and these are known cross linkers for use in asphalt compositions; using the cross linker of Cochran in the composition of Christopher amounts to nothing more than use of a known compound (thiol/sulfur) in a known environment (asphalt binder compositions with epoxidized soy ester) to achieve an entirely expected and desired result of crosslinking.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Christopher et al (WO 2016/033605) as applied to claims 1, 3, 5-7, 8-9, 10-14, and 19-20 above further in view of Deneuvillers et al (US 2012/0315088)
Regarding Claim 4:
Christopher discloses the limitations above set forth. Christopher discloses:
[0019] As the cost of crude petroleum and asphalt prices continue to trend upward, saving money by using WMA additives becomes increasingly important for maintaining a competitive edge in the market. As base material costs increase, WMA can help contractors save money because of the reduced fuel costs and higher percentages of recycled asphalt pavement (meeting the limitation for RAP) can be incorporated in WMA mixes. (warm mix asphalt [0006])In addition to savings, WMA has been shown to produce a quality asphalt product. In many field produced mixes, there has been no performance difference between the WMA and control pavement sections. Laboratory tests have shown concern regarding moisture susceptibility in WMA. This is likely due to incomplete drying of aggregates. Hurley et al., "Evaluation of Evotherm for Use in Warm Mix Asphalt," Rep No 06- 02. Auburn, AL. : National Center for Asphalt Technology (2006), which is hereby incorporated by reference in its entirety. Overall, WMA has shown promise and is quickly being
implemented by owner-agencies around the country.
[0034] Asphalt includes material in which the predominating constituents are bitumen, which occur in nature or are obtained in petroleum processing. Bitumen include solid, semisolid, or viscous substances, natural or manufactured, composed principally of high molecular weight hydrocarbons. The asphalt used in the present invention is not particularly limited, and various kinds of asphalts may be used in the present invention. Examples of the asphalt include straight asphalts such as petroleum asphalts for pavements, as well as polymer- modified asphalts produced by modifying asphalt with a polymer material including a thermoplastic elastomer such as styrene/butadiene block copolymers (SBS), styrene/isoprene block copolymers (SIS), and ethylene/vinyl acetate copolymers (EVA).
[0035] Suitable grades of asphalt include, but are not limited to, the following: PG52-22,
PG58-22, PG64-22, PG67-22, PG70-22, PG76-22, PG82-22, PG52-28, PG58-28, PG64-28, PG67-28, PG70-28, PG76-28, PG52-34, PG58-34, PG64-34, PG64-16, PG67-16, PG70-16, PG76-16, PG64-10, PG67-10, PG70-10, PG76-10, pen grade 40-50, pen grade 60-70, pen grade 85-100, pen grade 120-150, AR4000, AR8000, AC10 grade, AC20 grade, and AC30 grade. Roberts et al., "Hot Mix Asphalt Materials, Mixture Design, and Construction," NAPA Research and Education Foundation (2nd ed.) (1996), which is hereby incorporated by reference in its entirety.
While Christopher teaches recycled/reclaimed asphalt pavement, it does not recite the particle size thereof.
Deneuvillers et al (US 2012/0315088) like Christopher discloses asphalt emulsions [0030] [0048-0049] for paving a surface [0053] from recycled asphalt pavement [0032]
The reclaimed asphalt is milled [0012] and used to form a binder composition [0019] which may be in the form of an emulsion for use in forming pavement [0029-0030] The composition comprises fatty substances including epoxides and esters and those that have an ether, ether oxide, function [0051-0053] epoxides from natural products [0065] the asphalt is milled RAP [0067] The reclaimed asphalt has a particles size of lower than 40 mm [0096] (overlapping the claimed range of 12.7-25.4mm/0.5-1 inch)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use RAP which has been milled to a particle size of less than 40 mm as taught by Deneuvillers as the RAP for Christopher as it is suitable for forming an asphalt emulsion for paving compositions.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,297,150 Although the claims at issue are not identical, they are not patentably distinct from each other because both claim an emulsion composition comprising water, surfactant, rejuvenator, a compound having the same/overlapping formula (X) of patent and (I) of instant application, the same emulsifying surfactant agents, including binders of reclaimed asphalt, a polymer additive of the same polymers (See claim 7 patent vs claim 6 instant) also including colorant, antimicrobial, stabilizers, crosslinkers, antistripping agents, wetting agents etc.
Conclusion
See PTO 892 accompanying this office action for additional relevant prior art teaching the claimed epoxide in asphalt compositions.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732