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
Applicant's election with traverse of claims 1–8 and 10 in the reply filed on 31 January 2026 is acknowledged. The traversal is on the ground(s) that the inventive groups and species identified in the restriction requirement mailed 29 December 2025 are all based on the same inventive concept, and that claims 9, 10, and 11–14 all depend from claim 1. This is not found persuasive because, as described in the restriction requirement, claims 11–14 are drawn to a method of making the product of claim 1, wherein the product can be made by materially different processes, making the inventions distinct. The non-elected guss-asphalt mixture of claim 9 is materially different from the elected high-modulus asphalt mixture of claim 10 because they require different amounts of aggregate in the mixture, making them distinct species. The dependence of these claims on claim 1 is noted, but it does not affect the distinctness of the inventive groups and species identified in the restriction requirement.
The requirement is still deemed proper and is therefore made FINAL.
Claims 9 and 11–14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 31 January 2026.
Drawings
The drawings filed 21 August 2023 are accepted.
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
Claim 1, typographical error, lines 3–4: the limitation “a trichloroethylene-insoluble-substances” uses singular “a” with plural “substances”. The limitation should read, “a volume percentage of trichloroethylene-insoluble substances”;
Claim 1, typographical error, line 3: “base on” should read “based on”; and,
Claim 3, typographical error, line 2: “base on” should read “based on”.
Appropriate correction is required.
Claim Interpretation
Claim 1 recites a limitation wherein “a volume percentage of a trichloroethylene-insoluble-substances with a particle size of 6 microns or more in the modified asphalt binder is less than 10%”, and Claim 3 further limits this content to less than 5%. This limitation is considered only to limit the TCE-insoluble substances with a particle size of 6 microns or more; if prior art teaches a content of TCE-insoluble substances as being 15%, but the size of those substances is less than 6 microns, the prior art is still considered to meet this limitation because the content of substances with a size greater than 6 microns would be considered to be 0 vol.%.
Claim 6 recites a penetration degree of the modified asphalt binder. The penetration degree is temperature dependent; the viscosity of asphalt changes with temperature, so a measurement taken at 15 °C might fall within the claimed range while a measurement taken at 25 °C might not. Table 1 of Applicants’ specification indicates the penetration degree as being measured at 25 °C, so the Examiner will only consider prior art teaching a penetration degree measured at 25 °C.
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 7 is 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.
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 7 recites the broad recitation “2–6 µm”, and the claim also recites “preferably 3–4 µm”, which is the narrower statement of the range/limitation. The claim is 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.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 1, 2, 4–6, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yin et al. (“Research on Application Technology of Trinidad Lake Asphalt Modified Asphalt”, Science and Technology of Overseas Building Materials, 2007, 28(2), hereinafter “Yin”). Evidentiary support for trichloroethylene-insoluble components is provided by Charles et al. (“Trinidad Lake Asphalt in Road Pavements”, Road Construction Rehabilitation and Maintenance Session of the 1997 XIIIth IRF World Meeting, hereinafter “Charles”), and is applied to claim 1, and to claims 2, 4–6, 8 and 10 by virtue of their dependence thereon.
Regarding claim 1, Yin teaches a modified asphalt binder (see generally abstract), comprising a natural asphalt and a petroleum asphalt with a weight ratio of (30–70):(70–30) (see section 1.1 [English translation beginning on page 5 of the document], describing the mixture of No. 70 base asphalt [a petroleum asphalt] and Trinidad Lake Asphalt [TLA, a natural asphalt]; also see Table 3 showing dosings of 20–70% TLA, corresponding to a ratio range of (20–70):(80–30); also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Yin further teaches the limitation wherein the ash content in the natural asphalt is up to 60% based on a weight of the natural asphalt (see Table 2 teaching the ash content of TLA as being 35.4%, which satisfies the “up to 60%” limitation).
Regarding the limitation wherein a volume percentage of trichloroethylene-insoluble substances (hereinafter “TCE-insoluble substances”) with a particle size of 6 microns or more in the binder is less than 10%, Yin provides an ash content in the modified binder of 9.3%, which can be extrapolated to determine the total content of TCE-insoluble substances (see Table 3, specifically the sample using 33% TLA, wherein the total ash content in the binder is 9.3%; “ash” refers to residual minerals in the asphalt, and represent the primary TCE-insoluble substances in modified asphalt, with other carbonaceous materials constituting a much smaller fraction of TCE-insoluble substances; see Charles, pg. 4, Table 1, wherein mineral ash comprises 38.5% of the TLA and the total content of TCE-insoluble substances is ~45%, meaning ash is approximately 86% of the total content of TCE-insoluble substances; considering the typical components of TLA, a residual ash content of 9.3% corresponds to a content of 10.81% [9.3% ÷ 0.86]). While the size of the ash is not disclosed by Yin, even if it were all above 6 µm, the content of TCE-insoluble substances is still sufficiently close to the 10% upper limit claimed in claim 1, especially absent any evidence of criticality (a presumed TCE-insoluble content of up to 10.81% versus the claimed upper limit of 10%; see MPEP 2144.05(I) regarding values that don’t overlap, but are merely close). Yin therefore meets the limitation with the 33:67-ratio modified asphalt embodiment.
Regarding claim 2, Yin teaches the modified asphalt binder of claim 1, and further teaches the limitation wherein the binder comprises the natural asphalt and the petroleum asphalt with a weight ratio of (35–60):(65–40) (see Yin, Table 3, wherein the sample using a weight ratio of 33:67 is sufficiently close to the claimed ratio to render the claim obvious [33:67 vs. 35:65 is not expected to have a significant effect on the resulting product, especially absent any evidence of criticality]; also see MPEP 2144.05(I) regarding the obviousness of ranges that do not overlap, but are merely close).
Regarding claims 4 and 5, Yin further teaches the limitation wherein the natural asphalt is selected from a group that includes Trinidad Lake Asphalt (see section 1.1 describing the use of TLA), and wherein the petroleum asphalt is selected from a group that includes #70 petroleum asphalt (see section 1.1 describing the use of No. 70 asphalt).
Regarding claim 6, Yin further teaches the limitation wherein a penetration degree of the modified asphalt binder is 10–25 dmm (see Table 3, wherein the penetration degree of the 33:67 sample is 25.2 dmm, measured at 25 °C after a thin-film oven test [i.e., after aging]; a penetration degree of 25.2 dmm is considered sufficiently close to the claimed value of 25 dmm [a difference in penetration depth of only 0.2 tenths of a millimeter], especially absent any evidence of criticality; also see MPEP 2144.05(I) regarding the obviousness of ranges that do not overlap, but are merely close). The Examiner notes that it is not clear if Applicants claim a penetration degree before or after aging, so for the purposes of the present rejection, the value will be assumed to be after aging, and a separate rejection of claim 6 will address the possibility that the value is measured before aging.
Regarding claim 8, Yin further teaches the limitation wherein the modified asphalt binder consists of the natural asphalt and the petroleum asphalt (see Table 3 and section 1.2, which indicate only TLA and petroleum asphalt are present in the modified asphalt; the presence of ash and any other impurities are considered to be a part of the TLA or petroleum asphalt, and are thus not excluded by the transitional phrase “consists of”; since no additives are described, Yin is assumed to teach a modified asphalt consisting of the TLA and petroleum asphalts).
Regarding claim 10, Yin teaches a high-modulus asphalt mixture comprising the modified asphalt binder of claim 1 and aggregate (see section 2.2, describing the mixture of the 33:67 ratio modified asphalt with aggregate), wherein an aggregate-asphalt ratio of the high-modulus asphalt mixture is 5%–8% (see section 2.2, wherein the 33% TLA mixture is taught to have an optimal aggregate-asphalt ratio of 4.8%; this is considered sufficiently close to the claimed value of 5% to render the limitation obvious, especially absent any evidence of criticality; also see MPEP 2144.05(I) regarding the obviousness of ranges that do not overlap, but are merely close).
Claims 3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yin as applied to claim 1 above, and further in view of Zeng et al. (CN 107118578 A, hereinafter “Zeng”). Evidentiary support applied to claim 1 is provided by Charles, and is applied to claims 3 and 7 by virtue of their dependence on claim 1.
Regarding claim 3, Yin teaches the modified asphalt binder of claim 1, wherein the ash content of the natural asphalt is up to 50% based on the weight of the natural asphalt (see Yin, Table 2, wherein the ash content of TLA is taught to be 35.4%). Yin fails to explicitly teach the limitation wherein the volume percentage of the trichloroethylene-insoluble substances with a particle size of 6 microns or more in the modified asphalt binder is less than 5%. Yin teaches a total ash content of 9.3% for a modified asphalt made using 33% TLA, and 11.9% for a modified asphalt made using 40% TLA, but the size of the ash is not known, and so it is not possible to determine if the content of 6-micron or larger ash is below the claimed threshold.
Zeng teaches a modified asphalt binder (see generally abstract) comprising natural and petroleum asphalts (see paragraph 0012 teaching natural and “soft” asphalts; see paragraph 0014 teaching soft asphalts as including petroleum asphalts), which are combined in a ratio of (30–70):(70–30) (see paragraph 0012). Zeng explicitly teaches the trichloroethylene-insoluble matter as being ground to a particle size equal to 5000–10000 mesh (approximately 1.3–2.6 µm) because it increases the surface effects of the particles and allows them to disperse more uniformly through the modified asphalt (see paragraph 0023). This represents a clear improvement to the composition disclosed by Yin; by grinding the TCE-insoluble ash of Yin’s composition down to 5000–10000 mesh, the specific surface area of the ash is increased, allowing for more interactions between the ash and the bitumen, increasing stiffness and resistance to rutting, and improving the distribution of the ash throughout the binder.
The motivation to modify Yin according to Zeng stems from the fact that they both teach modified asphalt binders in comparable ratios, wherein Zeng discloses grinding the ash down to 1.3–2.6 µm in order to achieve explicitly recited benefits in the resulting composition. KSR Rationale C states that it is prima facie obvious to use a known technique (grinding the TCE-insoluble ash) in order to improve similar products (Yin’s composition) in the same way. A person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Yin’s composition can be further ground down to the size disclosed by Zeng in order to achieve the benefits disclosed by Zeng. By doing so, the size of TCE-insoluble substances would be reduced to less than 6 microns, which means the volume percentage of the trichloroethylene-insoluble substances with a particle size of 6 microns or more in the modified asphalt binder is 0%, which meets the limitation (see the above Claim Interpretation section). Claim 3 is therefore obvious over Yin, as modified by Zeng.
Regarding claim 7, Yin teaches the modified asphalt binder of claim 1, but fails to explicitly teach the limitation wherein the trichloroethylene-insoluble substances in the modified asphalt binder have an average particle size of 2–6 µm (see the above 112(b) rejection of claim 7; the broadest reasonable interpretation of this claim is the broadest of the claimed ranges, i.e., 2–6 µm).
As discussed in the above rejection of claim 3, there is motivation to modify Yin according to Zeng. The resulting composition would still have TCE-insoluble substances (predominantly ash), but they would all be ground to a particle size corresponding to 5000–10000 mesh (approximately 1.3–2.6 µm; see Zeng, paragraph 0023; also see the above rejection of claim 3 regarding the motivation to modify Yin according to Zeng). The resulting composition would meet the limitation wherein the TCE-insoluble substances have an average particle size of 2–6 µm, because 5000 mesh is equivalent to 2.6 µm, which falls within the claimed range (see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Claim 7 is therefore obvious over Yin, as modified by Zeng.
Claims 1 and 6 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Yin and Zeng. Evidentiary support for the TCE-insoluble components is provided by Charles, and is applied to claim 1, and to claim 6 by virtue of its dependence thereon.
Regarding claim 1, Yin teaches a modified asphalt binder comprising a natural asphalt and a petroleum asphalt with a weight ratio of (30–70):(70–30), wherein an ash content in the natural asphalt is up to 60% based on a weight of the natural asphalt (see the above rejection of claim 1 over Yin). Yin only teaches one embodiment that falls within the claimed weight ratio range and has a volume percentage of trichloroethylene-insoluble substances with a particle size of 6 microns or more of less than 10% (see Yin, Table 3, sample labeled “33%”, corresponding to a weight ratio of 33:67). The other disclosed embodiments all have a higher ash content than 10 vol.% (ash being the predominant TCE-insoluble substance, as taught by Charles [pg. 4, Table 1] and explained further in the above rejection of claim 1), and since the size of these particles is not known, it is not possible to determine if the other embodiments satisfy the limitation of claim 1.
Zeng teaches a comparable modified asphalt comprising natural and petroleum asphalts in the prescribed weight ratio range (see Zeng, paragraph 0012), wherein the TCE-insoluble substances are ground to 5000–10000 mesh (approximately 1.3–2.6 µm; see paragraph 0023). As discussed in the above rejection of claim 3, there is sufficient motivation to modify Yin according to Zeng. By grinding the TCE-insoluble ash down to such a fine size, the strength and homogeneity of the asphalt are improved. This aligns with KSR Rationale C. A person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Yin can be modified to include a grinding step as taught by Zeng, because the resulting composition would have higher resistance to rutting than Yin’s unmodified composition would. Furthermore, by grinding all the TCE-insoluble substances down to 1.3–2.6 µm, the volume percentage of 6+ micron particles would be 0%, which meets the limitations of claim 1. Accordingly, by modifying Yin according to Zeng, Yin’s disclosed embodiments of 33%, 40%, 45%, 50%, and 70% can each render claim 1 obvious.
Regarding claim 6, Yin, as modified by Zeng, teaches the modified asphalt binder of claim 1. Yin teaches a penetration degree of 25.2 dmm after a thin-film oven test (see the above rejection of claim 6 over Yin), and a penetration degree of 31.5 dmm for the 33:67 ratio sample before the thin-film oven test, which does not overlap with the claimed range of 10–25 dmm. However, by modifying Yin according to Zeng, as described above, the 33%, 40%, 45%, 50%, and 70% samples can each render claim 1 obvious, and can each be considered for the limitations introduced by claim 6. Of these samples, the 45%, 50%, and 70% samples each have a penetration degree that falls within the claimed range before a thin-film oven test (see Table 3, wherein the 25 °C penetration is 22.8, 20.0, and 10.8 dmm, respectively). Thus, Yin, as modified by Zeng, arrives at the claimed invention, and claim 6 is therefore rendered prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, T, Th, F 6:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.P.L./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731