Rout 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 .
The applicant has combined to dependent claim limitations into the independent claim changing the scope of the claimed invention. While each dependent claim may be rejected by a reference, the combination of the two limitations overcomes the previous rejections (the oil previously was any synthetic oil and is not a claimed species of oil now claimed in s specified range not previously claimed in combination)
Amended/new grounds of rejection are below set forth addressing the amended/new limitations.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/26/2026 has been considered by the examiner.
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 49 recites the limitation “wherein the surface tension reducer comprises…" in this claim depends from claim 22 which does not previously recite a surface tension reducer. There is insufficient antecedent basis for this limitation in the claim.
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.
35 USC § 103- Kurth
Claim(s) 22, 24, 30-34 and 49 are is/are rejected under 35 U.S.C. 103 as being unpatentable Kurth et al (CA 3059912C) /WO 2018191501A1)published 10/18/2018 alternatively further in view of Baumgarder (US 2018/0209102)
Regarding claims 22, 24, 30-34 and 49
Kurth et al (CA 3059912C) /WO 2018191501A1)published 10/18/2018
Kurth discloses a composition for treating asphalt and rejuvenating asphalt (Abstract)
The composition may be delivered as an emulsion [0030](claims 26-27 of reference)(rendering obvious to one of ordinary skill in the art at the time of filing the invention to try a water with the oil emulsion with a reasonable expectation of success as aqueous oil emulsions are among the most well known to those of ordinary skill in the art at the time of filing the invention.)
The composition comprises polymerized oil rejuvenator such as Cargill Anova 1815 [0056]The composition may comprise plant based oils such as castor oil [0017] which may be modified such as by vulcanization and polymerization and may be functionalized [0020-0021]
The composition comprises a rejuvenator bitumen and aggregate the bitumen is 30 wt.% and at is derived from recycled asphalt (See claim 1 reference
The rejuvenator comprises polymerized oil in amounts such as 0.1 to 40 wt. % of bitumen (overlapping the range of claims 22, and 24)
The composition is for surface course pavement application [003]
and road application ( P11L25-35) (see also claim 28 of reference for road application)(meeting the limitation for applying to a surfaced of an asphalt pavement)
The composition has similar penetration grades to virgin soft bitumen [0074]
Since the reference teaches the claimed composition in the claimed method where he compositional components include the instantly claimed species of modified castor oil, it will necessarily posses the claimed penetrating capacity in ranges which meet and or overlap the instantly claimed ranges of claims 30-34. 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)
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)"
Regarding claim 49: The composition comprises additives commonly used in asphalt applications such as thermoplastic elastomeric and elastomer polymers such as styrene butadiene styrene, ethylene vinyl acetate, functionalized polyolefins, polyphosphoric acid, anti-stripping additives amine based phosphate, emulsifiers etc. [0024] (thereby meeting the limitation for a surface tension reducer where an emulsifier is a type of surfactant/surface tension reducer).
While Kurt teaches and oil composition which may be in the form of an emulsion where the examiner maintains an oil in water/water in oil emulsion is obvious to one of ordinary skill in the art at the time of filing the invention, assuming arguendo water is not an obvious component of the emulsion:
Baumgardner (US 2018/0209102) like Kurt teaches an emulsion for asphalt road paving utilizing bio based oils such as castor oil. Baumgarder (US 2018/0209102) teaches an emulsion for rejuvenating and repairing asphalt pavement with a biobased rejuvenating agent and an aqueous phase including water and emulsifying agent and one or more polymers (Abstract) (meeting the limitation for an emulsion and for water of claim 22 and a surface tension reducer of claim 49) The composition is a rejuvenating emulsion with a biobased rejuvenating agent in the asphalt phase of the emulsion and one or more polymers and is an asphalt pavement surface treatment for rejuvenating road pavement including asphalts [0021] (meeting the limitation for emulsion and for applying to asphalt pavement) The composition including a polymer modified asphalt emulsion with a stable liquid dispersion containing an asphalt phase including asphalt and at least one biobased rejuvenating agent an aqueous phase which includes water and emulsifying agents as well as polymer included in the asphalt phase is in the form of an asphalt emulsion and applied to an asphalt pavement surface (See clam 12 reference) (meeting claim 22 for water, emulsion apply to asphalt pavement surface) where the rejuvenating agent comprises a biobased oil or ester thereof (See claim 15 of the reference) the bio based oil includes ester and derivatives and modified oils from natural or biological resources including vegetable oils, seed oils, canola oil, and may include commercially available oils from Cargill and Anova [0028]
The asphalt is 30-70 % wt. of the emulsion [0023] The bio based oil includes ester and derivatives and modified oils from natural or biological resources including vegetable oils, seed oils, canola oil, and may include commercially available oils from Cargill and Anova [0028] (castor oil is a seed oil rendering obvious to one of ordinary skill in the art at the time of filing the invention to try same) The rejuvenating agents include oils and esters from natural/biological resources and derivatives and modifications thereof such as vegetable oil and esters thereof and commercial products by Cargill including Anova [0028] (this oil is taught in the instant specification and appears to be a modified castor oil) [0051] The weight percentage of the asphalt phase of the emulsion may for example represent from about 30% to about 70% of the total emulsion weight. The corresponding aqueous phase of the emulsion may for example represent from about 70% to about 30% of the total emulsion weight. The emulsifying agents or other additives may represent from about 0.01% to about 3.0% of the total emulsion weight, and preferably from about 0.5% to about 3.0% of the total emulsion weight. (based on the required amounts of the components, the prior art renders obvious the instant claimed ranges of asphalt oil and combinations thereof with overlapping ranges) The emulsion employs the biobased rejuvenating agents / recycling agents in amounts suitable to permit the penetration of the biobased rejuvenating agent into the surface of asphalt. [0029]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use water in the emulsion of Kurth as taught by Baumgardner as it is suitable for forming emulsions used in road pavement processes and is compatible with the castor modified oil of Kurth.
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, 105 USPQ 233, 235 (CCPA 1955) (as such the penetration capacity can be adjusted by one of ordinary skill in the art at the time of filing the invention by adjusting the amount of the various compositional components)
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) 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)"
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground 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. The prior art cited was previously cited as relevant art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
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