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 amendment to the claims overcome the previous rejections under section 102. However, the prior art remains applicable to support a rejection under section 103 for obviousness. Amended grounds of rejection under section 103 are below set forth.
Claim rejections/objections not below set forth have been overcome by the claim amendments.
The amended claims give rise to amended grounds of rejection below set forth.
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) 1-6, 8, 9-10, 12-16 and 18-20 rejected under 35 U.S.C. 103 as being unpatentable over Ultraviolet aging Study on Bitumen Modified by a Composite of clay and fumed silica nanoparticles by Goshtasp Cheraghian and Michael P Wistuba Scientific Reports Nature Research (2020) 10:112216 (the effective filing date of the instant application is 10/21/2022 – this cited reference pre-dates the effective filing date by more than a year and therefore is not subject to any exception).
THE previous rejection under section 102 mailed 11/19/2025 is incorporated herein as though fully set forth herein but now presented under section 103.
Regarding Independent Claim 1:
Ultraviolet teaches a nano composite of clay and fumed silica in binder (See Abstract) (meeting claim 1)
Regarding Claim 2:
Ultraviolet teaches the limitations above set forth. Ultraviolet also teaches CS-NPs enable rich binder contents in asphalt mixtures. Their large surface (20–500 m2 /g) is a unique character which promotes interaction of particles having a significant effect on the rheological and anti-aging properties of the modified binders18,19, also increasing bond strength. Meeting the limitation for the composition comprising a modified binder of asphalt.
Further Regarding Bitumen and Further Regarding Asphalt:
When CS-NPs are blended with bitumen, the CS-NPs partially cover the bitumen surface, and when exceeding a specific threshold value the CS-NPs begin to aggregate and create a structure of multiple layers (Fig. 2a). This particle aggregation changes the homogeneity of the blend and may also change its rheological properties (P2 last par)
Further Regarding Bitumen and Further Regarding Asphalt: The results representing a temperature range from 30 to 80 °C are shown in Fig. 5. The level of complex shear modulus was found to be significantly higher for bitumen samples modified with CS-NPs than for unmodified control bitumen samples. Hence, the addition of 0.2 wt.% of CS-NPs increases stiffness (and thus deformation resistance of the corresponding asphalt mixture). (P7 reference)
Regarding Claim 3
Ultraviolet teaches the limitations above set forth.
Ultraviolet teaches… this technique of producing hydrothermal CS-NPs is suitable for modified homogenous bitumen blending. (P6 4th par) (meeting the limitation of claim 3 for hydrothermal synthesis)
Regarding Claim 4:
Ultraviolet teaches the limitations above set forth.
Ultraviolet at P 11 average particle sizes of clay NPs and silica NPs are about 12 and 33 nm respectively (within the range of claim 4 for clay 10-50 – 12 and silica 20-100
See Fig 3 a) where clay has size of 22.14 nm or 32.02 nm within the range of claim 4 10-50 nm and silica has size of 41.23 nm or 44.21 nm (within the range of 20 to100 nm)
additive that was composed of clay and fumed silica nanoparticles (CS-NPs; of size in the range of 10–30 nm). Due to their increased ratio of surface area to volume compared to conventional filler particles, CS-NPs enable rich binder contents in asphalt mixtures. (P1 second to last par) (meeting the limitation of claims 1-2 overlapping claim 4 for 20-100nm)
Regarding Claims 5 and 12-14:
Ultraviolet teaches the limitations above set forth. Ultraviolet teaches …bitumen, which was modified by a composite of clay and fumed silica nanoparticles, and exposed to ultraviolet (UV) aging in laboratory. The volume fraction of the nanoparticles within the binder ranged from 1 to 3%(Abstract) (meeting the limitation for a composition of bitumen binder of claim 5 and 12-14)
Adding clay and fumed silica nanoparticles to bitumen reduced stiffness distinctly, and improved resistance to permanent deformation. The results indicate that the mechanical stability of the modified bitumen is very much driven by the specific concentration of clay and fumed silica nanoparticles (Conclusion section)(meeting the limitation for the binder to be a bitumen containing binder)
Ultraviolet teaches… this technique of producing hydrothermal CS-NPs is suitable for modified homogenous bitumen blending. (P6 4th par) (meeting the limitation of claim 3 for hydrothermal synthesis)
When CS-NPs are blended with bitumen, the CS-NPs partially cover the bitumen surface, and when exceeding a specific threshold value the CS-NPs begin to aggregate and create a structure of multiple layers (Fig. 2a). This particle aggregation changes the homogeneity of the blend and may also change its rheological properties (P2 last par)
Further Regarding Bitumen and Further Regarding Asphalt: The results representing a temperature range from 30 to 80 °C are shown in Fig. 5. The level of complex shear modulus was found to be significantly higher for bitumen samples modified with CS-NPs than for unmodified control bitumen samples. Hence, the addition of 0.2 wt.% of CS-NPs increases stiffness (and thus deformation resistance of the corresponding asphalt mixture). (P7 reference)
Claims 12-14 are product by process claims. Since the reference teaches the claimed product, it anticipates claim 12-14. "[E]ven 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) (citations omitted)
Regarding Claim 6:
Ultraviolet teaches the limitations above set forth. See Table 2 for clay silicon dioxide nanoparticle content in binder in amount of 0.1, 0.2 and 0.3 (meeting the claimed range of claim 6)
Regarding Claim 15:
Ultraviolet teaches the limitations above set forth. The composition improves UV resistance and is incorporated into asphalt
, CS-NPs enable rich binder contents in asphalt mixtures.(P1 second to last par)
Regarding Claims 9-10, 12-16 and 19-20
Ultraviolet teaches the limitations above set forth.
Adding clay and fumed silica nanoparticles to bitumen reduced stiffness distinctly, and improved resistance to permanent deformation. The results indicate that the mechanical stability of the modified bitumen is very much driven by the specific concentration of clay and fumed silica nanoparticles (Conclusion section)
When CS-NPs are blended with bitumen, the CS-NPs partially cover the bitumen surface, and when exceeding a specific threshold value the CS-NPs begin to aggregate and create a structure of multiple layers (Fig. 2a). This particle aggregation changes the homogeneity of the blend and may also change its rheological properties (P2 last par)
Materials and synthesis. In the present research, sodium bentonite (Sigma Aldrich Ltd., Germany), nano fumed silica (Aerosil A300, Degussa Co., Germany), and 50/70 penetration grade bitumen (Total Co., France) were used.
The montmorillonite chemical composition (i.e. clay) is reported as follows: 61.03% SiO2, 14.59% Al2O3, 2.22% MgO, 0.22% TiO2, 2.09% Fe2O3, 2.04% Na2O, 0.76% K2O and 0.77% CaO. Clay/silica was prepared with hydrothermal syntheses method (hydrothermal synthesis) using a procedure adapted from Yang et al.51 and Cheraghian et al.30,52. The size distribution of materials and X-ray diffraction (XRD) pattern were evaluated with dynamic light scattering (DLS) (Malvern ZEN 3600, UK) and X-ray powder diffraction (Philips PW 1730, Netherlands) analyses, as shown in Fig. 12. After purification of montmorillonite, it was milled to exchange 98 mmol/100 g cation capability. Then, 4 g of montmorillonite and 0.48 g of NaOH were dissolved for 3 h within 200 ml deionized water (clay suspension) at a temperature of 25 °C, and thereupon, they were dispersed by ultrasonic mixer. Then, 2 ml of polyethyleneglycol (PEG) and 4 g of cetyltrimethylammoniumbromid (CTAB) were dispersed in 40 ml of distilled water (a clay suspension with surfactants aqueous medium) . PEG/CTAB solution was blended to the mixture for 3 h, and at the same time 10 ml of tetraethylorthosilicate (TEOS) was injected to the suspension. (adding silicate to clay suspension with surfactants to form a mixture) The mixed materials (forming a mixture) in a stainless-steel autoclave were heated to a temperature of 180 °C for 16 h, and then that the materials were cooled down to 25 °C.
t. Figure 13 indicates the schematic synthesis process of clay and fumed silica.
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Section: Experimental Plan:
First, surface morphology of clay/fumed silica nanoparticles (CS-NPs) dispersed in the bitumen sample was studied using observations from field emission scanning electron microscopy (FESEM). Then, modified bitumen samples were prepared with different volume fractions of CS-NPs, to study the impact of CS-NPs concentration on resulting binder properties (P2) (meeting the limitation for particles and binder of claim 11.
The aggregation of clay NPs were found to be uniformly dispersed in the bitumen sample, which indicates that they were uniformly dispersed during the blending process already (P3 last par)
Claims 12-14 and 18 are a product by process claim. Since the reference teaches the claimed process and produces the claimed product, it anticipates claim 12. "[E]ven 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) (citations omitted)
Further Regarding New and amended limitations for Claimed Clay : Fumed Silica ratios:
Ultraviolet teaches the limitations above set forth. Ultraviolet teaches: Due to their increased ratio of surface area to volume compared to conventional filler particles, CS-NPs enable rich binder contents in asphalt mixtures. Their large surface (20–500 m2 /g) is a unique character which promotes interaction of particles having a significant effect on the rheological and anti-aging properties of the modified binders18,19, also increasing bond strength at the aggregate-bitumen interface 20 (P1 2nd to last par)(surface area within the range of claim 8 of 10 to 1000 m2/g)
Fumed silica NPs coated clay layers uniformly (P6 middle) (this renders obvious a ratio of clay to silica of the instant ranges where this is more silica than clay in order to coat same).
The distinct surface of clay nanolayers and the high UV reflectivity of fumed silica NPs caused a change in bitumen performance. The index of carbonyl and oxidation degree decreased, and the clay and fumed silica nanoparticles improved aging resistance to ultraviolet (UV) radiation considerably, as shown by FTIR results. It is concluded that clay and fumed silica nanoparticles may potentially be used as efficient UV-shielding coatings in asphalt pavements. Adding clay and fumed silica nanoparticles to bitumen reduced stiffness distinctly, and improved resistance to permanent deformation. The results indicate that the mechanical stability of the modified bitumen is very much driven by the specific concentration of clay and fumed silica nanoparticle (P12 Conclusion)
As such one of ordinary skill in the art at the time of filing the invention can ascertain the amount of fumed silica and clay to optimize the stiffness, resistance to deformation and mechanical stability of the asphalt binder and would encompass the claimed ratios with a reasonable expectation of success (wherein the motivation is to improve resistance to deformation, mechanical stability, etc.)
Since the reference makes the claimed fumed silica clay nano composite using the same materials in the same amounts under the same conditions, it will necessarily have silica:clay ratio within the range of claims. (See instant specification at page 7 Preparation of Nano composite where the same materials amounts and conditions are used to form the nano composites of clay and fumed silica)
For example:
4 g clay
10 ml tetraethyl silicate –density 0.933 so 9.33 grams silicate 1 mole silica to 1 mole tetraethyl silicate molar weight 208 molecular weight silica
1 mole silica to 1 mole TEOS
9.33g x 60 mw silica / 208 mw TEOS = 2.69 grams silica
4g clay : 2.69 g silica = 1.49 within the claimed range.
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)"
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)
Regarding Claim 8:
Ultraviolet teaches the limitations above set forth. Ultraviolet teaches: Due to their increased ratio of surface area to volume compared to conventional filler particles, CS-NPs enable rich binder contents in asphalt mixtures. Their large surface (20–500 m2 /g) is a unique character which promotes interaction of particles having a significant effect on the rheological and anti-aging properties of the modified binders18,19, also increasing bond strength at the aggregate-bitumen interface 20 (P1 2nd to last par)(surface area within the range of claim 8 of 10 to 1000 m2/g)
Fumed silica NPs coated clay layers uniformly (P6 middle) (this renders obvious a ratio of clay to silica of the instant ranges where this is more silica than clay in order to coat same.
The distinct surface of clay nanolayers and the high UV reflectivity of fumed silica NPs caused a change in bitumen performance. The index of carbonyl and oxidation degree decreased, and the clay and fumed silica nanoparticles improved aging resistance to ultraviolet (UV) radiation considerably, as shown by FTIR results. It is concluded that clay and fumed silica nanoparticles may potentially be used as efficient UV-shielding coatings in asphalt pavements. Adding clay and fumed silica nanoparticles to bitumen reduced stiffness distinctly, and improved resistance to permanent deformation. The results indicate that the mechanical stability of the modified bitumen is very much driven by the specific concentration of clay and fumed silica nanoparticle (P12 Conclusion)
Regarding Claim 18
Claim 18 depends from claim 8 which is rejected under 103 as obvious. Due to claim dependency claim 18 is rejected as obvious; however, the reference teaches the exact same range as is recited in claim 18) Ultraviolet teaches the limitations above set forth. Ultraviolet teaches…Due to their increased ratio of surface area to volume compared to conventional filler particles, CS-NPs enable rich binder contents in asphalt mixtures. Their large surface (20–500 m2 /g) is a unique character which promotes interaction of particles having a significant effect on the rheological and anti-aging properties of the modified binders18,19, also increasing bond strength at the aggregate-bitumen interface20(P1 2nd to last par)(meeting claim 18)
Claim(s) 11 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ultraviolet aging Study on Bitumen Modified by a Composite of clay and fumed silica nanoparticles by Goshtasp Cheraghian and Michael P Wistuba Scientific Reports Nature Research (2020) 10:112216 (the effective filing date of the instant application is 10/21/2022 – this cited reference pre-dates the effective filing date by more than a year and therefore is not subject to any exception) as applied to claims 1-6, 8, 9-10, and 12-16 and 18-20 above alternatively further in view of Effect of Blending Temperature and Blending Time on Physical Properties of NRL Modified Bitumen Mohd Amin Shafii Calvin Lai Yew Veng Nuryantizpura Mohamad Rais Amminudin Ab Latif International Journal of Applied Engineering Research ISSN 0973-4562 Vol 12 Number 13 (2017) pp 3844-3849
Regarding Claims 11 and 17:
Ultraviolet teaches the limitations above set forth
Section: Experimental Plan:
First, surface morphology of clay/fumed silica nanoparticles (CS-NPs) dispersed in the bitumen sample was studied using observations from field emission scanning electron microscopy (FESEM). Then, modified bitumen samples were prepared with different volume fractions of CS-NPs, to study the impact of CS-NPs concentration on resulting binder properties (P2)
The aggregation of clay NPs were found to be uniformly dispersed in the bitumen sample, which indicates that they were uniformly dispersed during the blending process already (P3 last par)
Bitumen is exposed to 163 C (P2 last section)
Ultraviolet teaches the composition comprising binder (bitumen / asphalt) and the nanoscale particles; however, it does not recite the temperature or length of mixing of the nanoparticles into the binder material followed by cooling.
When CS-NPs are blended with bitumen, the CS-NPs partially cover the bitumen surface, and when exceeding a specific threshold value the CS-NPs begin to aggregate and create a structure of multiple layers (Fig. 2a). This particle aggregation changes the homogeneity of the blend.
However, the examiner maintains it is within the ken of one of ordinary skill in the art at the time of filing the invention to ascertain a temperature at which the binder bitumen/asphalt will be soft enough to mix and to determine the amount of time depending on the mixing method to create a well-mixed homogenous product for optimized particle aggregation.
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)
In the alternative, assuming the time and temperature of blending the nanoparticles/composite with the binder (bitumen/asphalt) is not obvious:
“Effect of Blending Temperature” teaches bitumen is sued as a binder for aggregate in construction of pavement. The bitumen may be modified such as with natural rubber latex. The optimum blending time at 150 C for 9 % is 10 minutes (Abstract) In order to mix in the additive to the bitumen, the bitumen is heated to 160C for 30 minutes to ensure it melts enough to be mixed. Then the additive is added to the bitumen in various amounts (P3855 C2) “Effect” teaches the optimum blending temperature can be identified (P 3847 C1) and the mixing time can also be identified (P3848 C1) to create a homogenous mix (P3848 C2)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to heat the bitumen to 150 C for 30 minutes to melt it so that the nanoparticulate can be added and mixed in followed by cooling as taught by “Effect” in the process of Ultraviolet to create a homogenous mixture in Ultraviolet.
Response to Arguments
Applicant's arguments filed 5/18/2026 have been fully considered but they are not persuasive.
The amendment to the claims overcome the previous rejections under section 102. However, the prior art remains applicable to support a rejection under section 103 for obviousness. Amended grounds of rejection under section 103 are above set forth.
As above set forth the prior art teaches that the properties of the binder are modified by the addition of the fumed silica and clay nanocomposite and teaches coating the clay with the fumed silica. As such the examiner maintains that in the absence of evidence of the criticality of the range, one of ordinary skill in the art would optimize the various properties of the proportion of fumed silica and clay in the nanocomposite to adjust the coating of the clay and to impart improved properties such as mechanical stability such that the instantly claimed ratios are obvious.
See above:
Fumed silica NPs coated clay layers uniformly (P6 middle) (this renders obvious a ratio of clay to silica of the instant ranges where this is more silica than clay in order to coat same).
Adding clay and fumed silica nanoparticles to bitumen reduced stiffness distinctly, and improved resistance to permanent deformation. The results indicate that the mechanical stability of the modified bitumen is very much driven by the specific concentration of clay and fumed silica nanoparticle (P12 Conclusion)
As such one of ordinary skill in the art at the time of filing the invention can ascertain the amount of fumed silica and clay to optimize the stiffness, resistance to deformation and mechanical stability of the asphalt binder and would encompass the claimed ratios with a reasonable expectation of success (wherein the motivation is to improve resistance to deformation, mechanical stability, etc.)
For the above reasons the rejection is made final.
The examiner welcomes a discussion (preferably with identification of evidence) of the effect of the various ratios as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892.
Shiao et al (US 2011/0159240) discloses composite nanoparticles and binder compositions for asphalt shingles (abstract) [0003] for roofing granules with binder [009] for coating and adhering [0023] (i.e. binding) [0035] [0065] (claim 37 reference)
Effect of Fumed Silica Nanoparticles on ultraviolet Aging resistance of Bitumen Goshtasph Cheraghian and Michael Wistuba Nanomaterials 2021, 11 454 (2/11/2021) (over one year prior to the instant effective filing date) teaches asphalt aging includes thermo oxidative short term thermal long term and ultraviolet aging (1. Introduction) Fumed silica nanoparticles improve mechanical and rheological properties as well as UV resistance as fumed silica is non-porous and has a large surface area effecting rheological properties. (P2) and teaches clay at 1- 3 wt.% improves UV aging resistance (Table 1) The change in complex modulus also depends on the amount of fumed silica NPs added to the bitumen. After short-term aging and UV aging, the ranking of the complex modulus and the phase angle were found as: 0.1 wt.-% NPs < 0.2 wt.-% NPs < without NPs < 0.3 wt.-% NPs, and 0.1 wt.-% NPs < 0.2 wt.-% NPs < 0.3 wt.-% NPs < without NPs
THIS ACTION IS MADE FINAL. 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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/PAMELA H WEISS/ Primary Patent Examiner, Art Unit 1732
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