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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/15/2025 has been entered.
Response to Amendment
In response to the amendment received on 06/12/2025:
claims 1, 3, 5-12 and 15-20 are currently pending;
claims 9-12 and 15-20 are withdrawn; and
all prior art grounds of rejection are maintained for at least the reasons as set forth herein.
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.
Claims 1, 3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Giles (US 2016/0130769 A1) (“Giles” hereinafter) in view of Barrow (WO 01/55051 A1) (“Barrow” hereinafter) and Hoedl (US 5,075,057) (“Hoedl” hereinafter).
Regarding claim 1, Giles teaches a method of repairing a damaged surface (see Giles at [0021] teaching method for improved roadway repair… particularly suited for repairing damaged portions of roadways… the term “damaged portion”… is used in reference to a roadway, see Giles at [0020] teaching the term “roadway” may refer to surfaces), comprising:
preparing the damaged surface (see Giles at [0023] teaching clearing the damaged portion of loose debris… boreholes are then formed in the interior surface of the damaged portion), clearing is taken to meet the claimed preparing; and
applying a liquid composition on the damaged surface (see Giles at [0024] teaching once the boreholes are formed, a fill material may be placed into the damaged portion… the fill material may have a consistency such that it travels to the bottom of the boreholes), wherein the fill material is taken to meet the claimed liquid composition because the fill material may have a consistency such that it travels to the bottom of the boreholes;
wherein the composition comprises resin (see Giles at [0033] teaching that in an embodiment, the binding agent is a resin, such as a polymer resin).
Giles further teaches that the fill material may comprise a resin and aggregate mixture (see Giles at [0024]).
Giles does not explicitly teach that i) the aggregate is plastic, ii) that the composition further comprises plastic fines, and iii) wherein the plastic aggregate is disc shaped.
With respect to i) and iii), like Giles, Barrow teaches aggregate material (see Barrow at page 1, lines 3-5 teaching the present disclosure relates to aggregate particles… and is particularly, but not exclusively, applicable to cementitious compositions for use in the building industry or related industries, and see Barrow at page 10, lines 4-5 teaching the material would be used as a lightweight aggregate).
Barrow further teaches the disclosure consists in an aggregate material including articles of fused or adhered granulated… substantially plastics material having a size such that the article is usable as an aggregate material (see Barrow at page 6, lines 24-26). And, Barrow teaches in the embodiment described the granulated material is derived from a plurality of types of plastics materials… in addition, post-consumer scrap plastic articles are suitable for use in the present disclosure (see Barrow at page 8, lines 23-26). The plastic lightweight aggregate as taught by Barrow is taken to meet the claimed plastic aggregate.
Furthermore, Barrow teaches figure 2, also shown below, illustrating a typical example of an aggregate material formed by this process, and see Barrow at page 8, lines 14-18 teaching in the preferred form of the disclosure the article 1 contains a quantity of recycled plastic particles such as particles 4… such particles may be in the form of granulated, flaked, chipped, or by other means comminuted plastics materials… in this specification such material is referred to as “granulated”) (see Barrow at page 9, line 24). Figure 2 and the particles in the form of flaked plastic materials as taught by Barrow is taken to meet the claimed iii) wherein the plastic aggregate is disc shaped.
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Barrow also teaches aggregate is an impermeable material: water cannot pass through it… it is also not porous, so it cannot absorb water at any time during mixing, transportation, hardening and curing history of mixes prepared with it… this material’s unique properties greatly simplify mix design procedures and facilitates reliable prediction of subsequent behavior of materials incorporating it (see Barrow at page 11, lines 1-8).
As such, one of ordinary skill in the art would appreciate that Barrow teaches plastic lightweight aggregate as shown in Fig. 2 that is impermeable and not porous, thus it cannot absorb water at any time during mixing, transportation, hardening and curing history of mixes prepared with it, which greatly simplify mix design procedures and facilitates reliable prediction of subsequent behavior of materials incorporating it, and seek those advantages replacing the aggregate in the fill material as taught by Giles with the plastic lightweight aggregate as taught by Barrow.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to replace the lightweight aggregate as shown in Fig. 2 in the fill material as taught by Giles with the plastic lightweight aggregate as taught by Barrow because plastic lightweight aggregate is impermeable and not porous, thus it cannot absorb water at any time during mixing, transportation, hardening and curing history of mixes prepared with it. Additionally, the plastic lightweight aggregate greatly simplify mix design procedures and facilitates reliable prediction of subsequent behavior of materials incorporating it.
With respect to ii), like Barrow, Hoedl teaches recycled plastics (see Hoedl at C1 L7-8 teaching process for recovery and reuse of scrap plastics materials).
Hoedl also teaches that the scrap material mixtures containing both thermoplastic and cured thermosetting resin in substantial quantities can be used as the binder (see Hoedl at C2 L63-65). Hodel further teaches provided that the scrap material mixture is first reduced to a fine particle, powder size and is homogenized to form a macro homogeneous powder mixture, before it is mixed and intimately dispersed with the filler or reinforcement (see Hoedl at C2 L68-C3 L5). In addition, Hoedl teaches that a step of shredding and milling the mixture to reduce it to a fine particle size such that substantially all the particles thereof have a maximum dimension not greater than about 1 mm (see Hoedl at C3 L18-22). The powder mixture with a maximum dimension not greater than about 1 mm is taken to meet the claimed plastic fines.
Furthermore, Hoedl teaches that the process of the disclosure allows the utilization of mixed scrap material, without the need for separation of the individual components thereof (see Hoedl at C3 L5-8).
As such, one of ordinary skill in the art would appreciate that Hoedl teaches the use of powder mixture with a maximum dimension not greater than about 1 mm (or plastic fines/pulverized plastic) so as to allow the utilization of mixed scrap material, without the need for separation of the individual components thereof, and seek those advantages by the adding plastic fines in fill material as taught by Giles.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add the plastic fines/pulverized plastic (or powder mixture with a maximum dimension not greater than about 1 mm) as taught by Hoedl in the fill material as taught by Giles so as to allow the utilization of mixed scrap material, without the need for separation of the individual components thereof.
Regarding claim 3, Giles in view of Barrow and Hoedl teaches the limitations as applied to claim 1 above, and Giles further teaches that the composition further comprises a hardener (see Giles at [0033] teaching an embodiment, wherein the resin may be a two-part resin that includes the use of a curing agent), wherein the curing agent is taken to meet the claimed hardener because a curing agent allows the resin to harden.
Regarding claim 5, Giles in view of Barrow and Hoedl teaches the limitations as applied to claim 1 above, and Barrow further teaches wherein the plastic aggregate is formed from one… of… recycled plastic (see Barrow at page 8, line 25 to page 9 line 1 teaching in addition, post-consumer scrap plastic articles are suitable for use… the plastic particles 4 of the preferred embodiment may be obtained by collecting precursor plastic materials intended for recycling).
Regarding claim 6, Giles in view of Barrow and Hoedl teaches the limitations as applied to claim 1 above, and Barrow further teaches wherein a size of the plastic aggregate is less than 5.0 mm (see Barrow at page 9, lines 7-10 teaching the shape and arrangement of the particles is not important… although of course the particles should not be too large and dimensions be between substantially 3 mm to substantially 25 mm for example (see MPEP 2144.05(I)).
Regarding claim 7, Giles in view of Barrow and Hoedl teaches the limitations as applied to claim 1 above, and Barrow further teaches wherein a size of the plastic aggregate is greater than 1.0 mm (see Barrow at page 9, lines 7-10 teaching the shape and arrangement of the particles is not important… although of course the particles should not be too large and dimensions be between substantially 3 mm to substantially 25 mm for example (see MPEP 2144.05(I)).
Regarding claim 23, Giles in view of Barrow and Hoedl teaches the limitations as applied to claim 1 above, and Hoedl further teaches wherein the plastic fines are formed from recycled plastics (see Hoedl at C2 L52 teaching novel process for the recycle and reuse of scrap materials, and see Hoedl at C2 L63-C3 L5 teaching scrap mixtures… provided that the scrap material mixture is first reduced to a fine particle, powder size and is homogenized to form a macro homogeneous powder mixture, before it is mixed and intimately dispersed with the filler or reinforcement).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Giles in view of Barrow and Hoedl as applied to applied to claim 1 above, and further in view of Sellstrom et al. (US 5,049,411) (“Sellstrom” hereinafter).
Regarding claim 8, Giles in view of Barrow and Hoedl teaches the limitations as applied to applied to claim 1 above, but Giles in view of Barrow does not explicitly teach wherein the composition further comprises fly ash.
Like Giles, Sellstrom teaches a polymer resin-aggregate composition (see Sellstrom at C1 L11 teaching epoxy resin binder-aggregate composition).
Sellstrom further teaches that because of the relative cost, it is desirable to minimize the amount of binder in any composition… to achieve this end, while maintaining a product of acceptable quality, the aggregate combination must be chosen to yield the smallest void volume (see Sellstrom at C4 L45-49). Sellstrom also teaches aggregate used in the present disclosure was… wherein fly ash is featured in the list (see Sellstrom at C4 L56-57). The fly ash as taught by Sellstrom is taken to meet the claimed wherein the composition further comprises fly ash.
Additionally, it has been held that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that fly ash is a known aggregate for a polymer resin composition.
As such, one of ordinary skill in the art would appreciate that Sellstrom teaches that fly ash is a known aggregate for polymer resin composition that is used to save cost by minimizing the amount of binder in the composition while maintaining a product of acceptable quality, and seek those advantages by adding fly ash in the fill material as taught by Giles.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add fly ash as taught by Sellstrom in the fill material as taught by Giles because fly ash is a known aggregate that is used to save cost by minimizing the amount of binder in the composition while maintaining a product of acceptable quality.
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Giles in view of Barrow and Hoedl as applied to applied to claims 1 and 8, and claim 1, respectively above, and further in view of Parrish (US 2003/0170445 A1) (“Parrish” hereinafter).
Regarding claims 21-22, Giles in view of Barrow and Hoedl teaches the limitations as applied to claims 1 and 8, and claim 1, respectively above, but Barrow and Hoedl do not explicitly teach wherein the liquid composition further comprises cenosphere.
Like Giles, Parrish teaches a composition comprising resin (see Parrish at [0010]-[0011] teaching a composite material comprising silica cenospheres and a resin… the resin may be selected from one or more of the following classes of polymeric compounds… an epoxy resin). Cenosphere is taken to meet the claimed “wherein the liquid composition further comprises cenosphere”.
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that cenospheres is suitable for its intended use.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add cenosphere as taught by Parrish in the fill material as taught by Giles because cenosphere is suitable for its intended use.
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive.
Applicant disagrees that the combination Giles, Barrow and Hoedl would have been obvious to combine as outlined in the previous office action, for at least the reasons detailed in the previous response (see Applicant’s arguments at page 5 paragraphs 2-3).
Examiner acknowledges the arguments and respectfully notes that Giles, Barrow and Hoedl have reasonably met the claimed method, as outlined above and in the previous office action dated 09/15/2025. As such, the prior art grounds of rejection are maintained.
Applicant discussed that Applicant has amended the claims to include new claims 21-23… the combination of Giles, Barrow and Hoedl do not render the claim obvious (see Applicant’s arguments at page 5 paragraph 3).
Examiner acknowledges the arguments and respectfully notes that Parrish is used to meet the claimed cenosphere as outlined above. As such, the prior art grounds of rejection are maintained.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731