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 without traverse of Group III claims 22-35 synthetic oil and asphalt in the reply filed on 1/9/2026 is acknowledged.
Claims 1-21 and 36-48 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention there being no allowable generic or linking claim.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 1/9/2026
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).
Applicant should correct the claim status of claim 47 to (withdrawn).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/6/2023 has been considered by the examiner.
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.
35 USC § 102- Warner
Claim(s) 22, 26 and 35 is/are rejected under 35 U.S.C. 102 (a)(1)(2) as being anticipated by Warner et al (US 2019/0152850)
Regarding Claims 22, 26 and 35:
Warner et al (US 2019/0152850) discloses paving and re paving asphalt road surfaces with the addition of the composition to the asphalt (Abstract) (meeting the limitation for providing the emulsion and applying onto a surface of an asphalt pavement of claim 22)
The composition comprises a carrier matrix of an oil in water emulsion [0029] having 1-80% oil or 5-50 % oil or 10-25% oil [0031] (meeting the limitation for an emulsion and for water of claim 22)
The carrier matrix includes oil such as organic oil, paraffinic oil aromatic oil, inorganic oil of mineral oil silicone oils mixtures thereof including canola oil, linseed oil, etc. [0030] (further meeting the limitation for a synthetic oil of clam 22 esp. where silicone oils are synthetic)
The composition comprises surfactants such as various PEG hydrogenated castor oils [0047] The surfactants are added in an amount of 0.1 to 5wt.% [0050] this meets the limitation for a synthetic oil of claim 22 and for a modified castor oil as the synthetic base oil of claim 35.
The carrier matrix is as added to asphalt along with a curing agent and masked curing agent [0012] The asphalt binder comprises an asphalt mixture [0013] (meeting the limitation of claim 26 for asphalt)
The curing agents are agents that contribute to the rejuvenation or a warm mix properties of the invention [0034] and the curing agent is 1-50% or 1- 25% or 1-5 % w/w of the composition [0035]
The masked curing agent is capable of transforming into curing agents [0038] and are in an amount of 0.1-50 %, 0.1 to 25% or 0.1 to 5 w/2 % [0039]
An additive composition is prepared using castor oil as the carrier [0136]
35 USC § 102-Baumgarder
Claim(s) 22 and 26 is/are rejected under 35 U.S.C. 102 (a)(1)(2) as being anticipated by Baumgarder (US 2018/0209102)
Regarding Claims 22 and 26
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 for applying to asphalt pavement i.e. repairing of claim 22)
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] (meeting the limitation for a synthetic oil of instant claim 22)
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- Warner
Claim(s) 23-25 and 27-34 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Warner et al (US 2019/0152850) as applied to claims 22, 26 and 35 above.
Regarding claims 23-25 and 27-34
Warner et al (US 2019/0152850) discloses the limitations above set forth. Warner discloses paving and re paving asphalt road surfaces with the addition of the composition to the asphalt (Abstract)
The composition comprises a carrier matrix of an oil in water emulsion [0029] having 1-80% oil or 5-50 % oil or 10-25% oil [0031] overlapping the claimed ranges of oil and oil and asphalt together)
The composition comprises surfactants such as various PEG hydrogenated castor oils [0047] The surfactants are added in an amount of 0.1 to 5wt.% [0050] (further overlapping the range of oil and oil and asphalt combined)
The carrier matrix is as added to asphalt along with a curing agent and masked curing agent [0012] (meeting the limitation of the claims for asphalt esp. claims 26-29)
The asphalt binder comprises an asphalt mixture [0013]
The curing agents are agents that contribute to the rejuvenation or warm mix properties of the invention [0034] and the curing agent is 1-50% or 1- 25% or 1-5 % w/w of the composition [0035]
The masked curing agent is capable of transforming into curing agents [0038] and are in an amount of 0.1-50 %, 0.1 to 25% or 0.1 to 5 w/2 % [0039]
An additive composition is prepared using castor oil as the carrier [0136]
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Disclosing examples of a range of asphalt such as 48.27 % (meeting/overlapping/within the ranges of claims 27-29 and based on the broad amounts of the base oil above set forth will overlap the claimed range of claim 29)
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 Claims 30-34:
Warner discloses the limitations as above set forth.
Since the prior art teaches the claimed composition in the claimed method it will necessarily exhibit the claimed function of penetrating capacity and pass through the mesh of instant claim 30.
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)"
35 USC § 103- Baumgarder
Claim(s) 23-25 and 27-35 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Baumgarder (US 2018/0209102) as applied to claims 22 and 26 above.
Regarding claims 23-25 and 27-34
Baumgarder discloses the limitations above set forth.
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] 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)
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The examples show the oil and asphalt at 55.97 %
And overlapping the sieve of the instant claims.
The prior art teaching the claimed method with the claimed compositional components will necessarily possess the claimed properties including but not limited to penetrating capacity and sieve size in ranges which meet and/or overlap the instantly claimed ranges. 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)"
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action. For example:
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]
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
The composition is for surface course pavement application [003]
WO 2007/051549 discloses an emulsion comprising asphalt or bitumen, emulsifiers and solvents (P2 L 1-10 )
The emulsifiers include hydrogenated castor oil, ethylene oxide hydrogenated castor oil etc. (P3) (meeting the limitation for synthetic oil of claim 22 and for modified castor oil of claim 35)
Solvents such as various oils mineral oil hydrocarbon oil fatty acid lower alkyl esters vegetable triglycerides from various oils such as palm kernel and the like (P 5)(again meeting the limitation of claim 22 for a synthetic oil)
The composition comprises 10-70 % asphalt
5-20 % combined emulsifiers and co emulsifiers
(the emulsifier including the modified castor thereby overlapping the range of oil and asphalt as combined in claims27-39)
0-40 % solvents (P5 last 15 lines and P6 first line) with water (meeting the limitations for water of claim 22) and may comprise additional auxiliaries and additives (P6 L2-4) (the solvents including modified castor oil further overlaps the claimed ranges of claims 23-25 and 27-30)
The emulsion is a phase inversion temperature emulsion with good storage stability (P2 L10-40)
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WO 2009 092523A1 Bigorra et al Bigorra discloses a composition for road construction comprising asphalt emulsifiers and nonionic cationic co emulsifier and solvents (Abstract) with improved storage stability and reduced breaking (P2 last par)
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The solvent includes oils such as mineral oil, hydrocarbons, FAME (fatty acid lower alkyl esters) of various acids as well as vegetable triglycerides such as coconut pal palm kernel sunflower oil and the liked (P8 L10-22)
The composition is for road construction and road application ( P11L25-35)
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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