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 .
This communication responds to the application and amended claim set filed April 12,2024. Claims 1-8 are currently pending.
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.
Claims 1-2 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Le et al., hereinafter Le (WO 2017/088892 A1 as listed on the IDS dated 4/12/2024).
The examiner will refer to the US equivalent of Le et al., US 2018/0346658 A1.
Regarding claim 1, Le teaches an asphalt composition comprising bitumen and lignin, (which correspond to the binder), aggregates and active components (claims 1, 26, 36), wherein the asphalt composition is obtained by a process comprising:
subjecting lignocelluolosic biomass to a treatment including hydrothermal pretreatment, acid catalyzed hydrolysis to provide a lignin material having a dry matter content (solid content) of 20 wt.% to 95 wt.% or 30 wt.% to 85 wt.% of lignin, wherein a solids content of at least 90 wt.% is exemplified at example 1 ([0361]-[0362])( (claims 1-2, 38-39), [0431]-[[0436], example 1 [0442]);
wherein the lignin is subjected to a comminuting step including milling and sieving to obtain a desired average grain size (i.e. 120-150 µm) ([0245], [0364], [0379], example 1 [0442]);
mixing the lignin having a dry matter content of 20-95 wt.% or 30-85 wt.% ([0239], [0361]-[0362] with bitumen, plasticizing modifying agents, aggregates, fillers to obtain an asphalt composition, ([0437],[0442], claims 1, 20, 26, 36, 38, [0300]-[0315]).
Regarding claim 2, Le teaches the lignin is subjected to a comminuting step that includes milling and sieving the lignin component to an expected average particle size of around 0.5 mm ([0245], [0364], [0379], example 1 [0442]), as required by the instant claim.
Regarding claim 6, note that the discussion supra for claims 1 presently applies, wherein the bitumen and lignin read on the binder for an asphalt composition, ([0437],[0442], claims 1, 20, 26, 36, 38, [0300]-[0315]).
Regarding claim 7-8, Le teaches an asphalt composition suitable for roads, pavements, wherein the composition comprises bitumen, lignin, aggregates and active components ( ([0047], claims 1, 20, 26, 34, 36), thereby reading on the asphalt composition wherein lignin is mixed with an asphalt blend ( bitumen and aggregates, see discussion of claim 1) and a binder wherein the lignin is mixed with the bitumen which functions as a binder for the aggregates (see paragraph 6).
Claim Rejections - 35 USC § 103
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.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Le et al., hereinafter Le (WO 2017/088892 A1 as listed on the IDS dated 4/12/2024).
Le teaches the process of claim 1 as set forth above and it is incorporated herein by reference.
Regarding claims 3-4, Le teaches an asphalt composition comprising bitumen and lignin having a solid concentration of 35-80 wt.% ([0239], [0361]-[0362]).
Le and the claims differ in that Le does not teach the exact claimed ranges for the solid content of lignin material as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Le overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 5, Le teaches the lining is obtained by a process for treatment of a lignocellulosic biomass comprising a) hydrothermal pretreatment at pH within the range of 3.5 -9 ([0162], [0169]), b) acid catalyzed hydrolysis conducted at a pH in the range of 4.2-5.4 [0177] that results in a liquid fraction comprising soluble carbohydrates, and a fiber fraction comprising a lignin component, and d) isolating the lignin from the fiber fraction obtained in step (b) [0047], ([0060], claim 1)
Lu is silent on the aqueous content of the lignin material used has a pH in a range of from 1-7.
However, Lu teaches that the lignin is isolated from the hydrolysis step. Therefore, it would have been obvious to one of ordinary skill in the art to infer that the aqueous content of the lignin material is expected to overlap with the claimed range of from 1 to 7, thereby a prima facie case of obviousness being established. MPEP 2144.05.
Double Patenting
19. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
20. Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18/701,012.
21. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets teach a process for preparing an asphalt composition or a process for preparing a binder for an asphalt composition, wherein claims 1- 2 of copending application ’ 012 teach a process comprising a) providing lignin having a moisture content of 1- 45 wt.% (55-99 wt.% of solid content) that overlaps with the claimed solid content of lignin material of instant claims 1-4, b) subjecting the lignin from step a) to a milling step; followed by c) a sieving step as disclosed by instant claims 1 and 2, wherein both set of claims teach mixing disintegrated lignin particles with a bitumen blend to obtain a binder for an asphalt composition or mixing the disintegrated lignin particles with an asphalt blend to obtain an asphalt composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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