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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1-4, 6 and 10, in the reply filed on 12/09/2025 is acknowledged. The traversal is on the ground(s) that Applicant asserts that (i) Examiner has not met the burden under MPEP § 803 and search of all claims would not impose a serious burden, (ii) Examiner has not met the burden under MPEP § 1893.03(d) because Examiner has burden of explaining why the groups lack unity with each other which must specifically describe special technical features in each group, (iii) Examiner has misinterpreted the phrase “contribution which each of the inventions, considered as a whole, makes over the prior art” as relating to patentable claims and the claims have not been examined so Applicant has not had a chance to respond to any rejection or amend their claims, (iv) Examiner has not provided any indication that the contents of the claims were interpreted in light of the description, (v) Examiner has not considered the relationship of Groups I and III with respect to 37 CFR § 1.475(b)(2), and (vi) Examiner has not considered the relationship of Groups I-IV with respect to MPEP § 806.03. This is not found persuasive because:
(i) and (vi) MPEP chapter 800 discusses restrictions of applications filed under 35 U.S.C. 111(a) and is not relevant to unity of invention restriction requirements (see MPEP § 801);
(ii) Applicant has not indicated in what way this burden has not been met; as set forth in the requirement for unity of invention, the groups do not share a special technical feature as the technical features shared across the groups do not make a contribution over the prior art, therefore special technical features shared between groups cannot be described as there are none;
(iii) It is clear in the requirement for unity of invention that the claims have not been examined or rejected. To determine unity of invention or lack thereof, it must be determined whether or not the inventions considered as a whole make a contribution over the prior art, i.e., whether technical features which are shared between the inventions make a contribution over the prior art. The requirement for unity of invention in no way stated that the claims have been examined or that the claims have been found patentable or unpatentable. No determination on patentability has been made during the assessment of unity of invention, and nothing has been misinterpreted as meaning that the claims must be patentable to have unity of invention;
(iv) As set forth in the requirement for unity of invention, the technical feature shared by the groups is a compound having 8 or more carbon atoms and having a hydroxy or amino group. 8 or more carbon atoms has been interpreted in light of the description as meaning 8 or more carbon atoms; hydroxy group has been interpreted in light of the description as meaning hydroxy group; amino group has been interpreted in light of the description as meaning amino group. The description does not give any definition of these terms that differs from their normal definitions. It is not clear in what way the specification provides a different interpretation for these features, and Applicant has provided no explanation as to how these limitations should be interpreted as meaning anything other than their typical meaning in light of the description.
(v) Where a group of inventions is claimed in a national stage application, the requirement for unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding technical features, and as set forth in the requirement for unity of invention, the inventions do not share a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12 and 15-16 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 12/09/2025.
Claim Objections
Claim 10 is objected to because of the following informality:
In claim10, there should be a space between numbers and units; “90°C” should read “90 °C” (see claim 10 at line 2).
Appropriate correction is required.
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 1-4, 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka, et al. (U.S. Pat. No. 5,990,206-A) (hereinafter, “TANAKA”) in view of Kim, et al. (U.S. Pub. No. 2017/0253528-A1) (hereinafter, “KIM”).
Regarding claim 1, TANAKA teaches an asphalt mixture (see TANAKA generally at Abstract), comprising:
a polyester resin (A) (see TANAKA at col. 4, line 65 - col. 5, line 4 and col. 22, lines 31-48),
a compound (B), and the compound (B) is a compound having 8 or more carbon atoms and having a hydroxy group or an amino group (see TANAKA at col. 6, lines 13-53, teaching such compounds, e.g., decyl alcohol),
and an aggregate (see TANAKA at col. 11, lines 39-43).
However, TANAKA fails to explicitly teach that the aggregate contains an asphalt recycled aggregate.
KIM teaches an asphalt paving mixture comprising 1 to 20% by weight of an asphalt binder composition and a 80 to 99% by weight of a mixed aggregate which contains 30 to 99.9% by weight of a natural aggregate and 0.1 to 70% by weight of a waste aggregate such as reclaimed asphalt pavement aggregate (see KIM at Abstract and paragraphs [0065]-[0066]). KIM teaches that using a mixture of a natural mineral aggregate and reclaimed asphalt pavement aggregate in these amounts significantly improves the mixability, compactibility and water resistance of the asphalt/aggregate mixture (see KIM at paragraphs [0065]-[0066]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the asphalt mixture of TANAKA by using a mixed aggregate comprising natural aggregate and 0.1 to 70% by weight asphalt recycled aggregate in an amount of 80 to 99% by weight as taught by KIM (see KIM at paragraphs [0065]-[0066]) as the aggregate in the asphalt paving mixture of TANAKA (see TANAKA at col. 11, lines 39-43). One of ordinary skill in the art would have been motivated to make this modification for the benefit of significantly improving the mixability, compactibility and water resistance of the asphalt/aggregate mixture as taught by KIM (see KIM at paragraphs [0065]-[0066]).
Regarding claim 2, as applied to claim 1 above, TANAKA in view of KIM teaches an asphalt mixture according to claim 1, wherein the compound (B) has 30 or less carbon atoms (see TANAKA at col. 6, lines 13-53, teaching, e.g., decyl alcohol).
Regarding claim 3, as applied to claim 1 above, TANAKA in view of KIM teaches an asphalt mixture according to claim 1, wherein the compound (B) is one or more compounds selected from the group consisting of an alkylamine, an alkyl alcohol, a sugar alcohol, and an alkylamide compound (see TANAKA at col. 6, lines 13-53, teaching, e.g., decyl alcohol).
Regarding claim 4, as applied to claim 1 above, TANAKA in view of KIM teaches an asphalt mixture according to claim 1, which has a mass ratio of the polyester resin (A) to the compound (B) overlapping with and thereby rendering obvious the claimed range of 4 or more and 39 or less (see TANAKA at col. 7 line 41 - col. 8, line 65, teaching that the modifier composition comprises, by weight, 0.1 to 30% of the compound having the hydroxyl group (i.e., compound B) and 0.1 to 10% of the phosphorous compound, with the remaining 70 to 98.9% being the modifier (polyester resin); this results in ratios of A to B within with the claimed range, e.g., for a composition comprising 85% polyester resin and 10% compound B, the mass ratio is 8.5). As set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 6, as applied to claim 1 above, TANAKA in view of KIM teaches an asphalt mixture according to claim 1, wherein the asphalt mixture contains the asphalt recycled aggregate in an amount overlapping with and thereby rendering obvious the claimed range of 10% by mass or more and 80% by mass or less (see KIM at paragraphs [0065]-[0066], teaching, by weight, 80 to 99% of a mixed aggregate of which 0.1 to 70% is asphalt recycled aggregate, i.e., 0.1% to 69.3% by weight of the asphalt recycled aggregate in the asphalt mixture). As set forth in MPEP § 2144.05, 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 10, as applied to claim 1 above, TANAKA in view of KIM teaches an asphalt mixture according to claim 1, wherein the polyester resin (A) has a softening point or a melting point of 90 °C or higher (see TANAKA at col. 22, lines 31-48, teaching making the reaction mixture to form polyester with a melting point of 150 °C).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/AMBER R ORLANDO/ Supervisory Patent Examiner, Art Unit 1731