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 .
Information Disclosure Statement
The information disclosure statement filed 01/27/2025 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. Although the IDS indicates that English language translations are attached, the cited foreign references 3 (CN105001655A) and 4 (CN105255293A), which have been lined through, have not been considered because no English abstract, translation, or concise explanation of relevance has been provided.
Claim Objections
Claims 3-5 and 7-8 are objected to because of the following informalities:
Claim 3, line 2, it is suggested the term “paraffinic compounds” be amended to “paraffinic distillate compounds” in order to ensure proper antecedent basis in the claims.
Claim 4 as written requires that the adhesion promoter comprises aromatic, amine, acrylic and straight or branched chain organosilane derivatives and mixtures thereof (emphasis added). Based upon Applicant’s specification as a whole, this appears to be an error. Claim 4 has been interpreted as requiring that the adhesion promoter comprises aromatic, amine, acrylic or straight or branched chain organosilane derivatives or mixtures thereof (emphasis added) for this Office Action. Clarification and/or correction is required.
Claim 5 as written requires that the naturally occurring resin comprises tannins, terpenes and rosin (emphasis added). Based upon Applicant’s specification as a whole, this appears to be an error. Claim 5 has been interpreted as requiring that the naturally occurring resin comprises tannins, terpenes or rosin (emphasis added) for this Office Action. Clarification and/or correction is required.
Claim 7, line 2, it is suggested that the term “comprising” be amended to read “consisting of” in order to comply with the proper Markush language. Claim 7 has been interpreted as “wherein additives are selected from the group consisting of low vapor pressure fluxing agents, oxidation inhibitors, rheology modifiers, surfactant homogenizers, and mixtures thereof” for this Office Action.
Regarding claim 8, the use of parentheses in the claim language gives the appearance that the enclosed language is optional. It is suggested to delete all parentheses from claim 8.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation "the residue" in line 7. There is insufficient antecedent basis for this limitation in the claim. Clarification 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.
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.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Chen, CN 101074321 A (Chen).
The Examiner has provided a machine translation of Chen. The citation of the prior art in this rejection refers to the machine translation.
Regarding claims 1-3 and 5, Chen teaches a pavement asphalt room temperature modification additive comprising the following components by weight:
Polymers, 5-15 parts;
Filling oil, 20-40 parts;
Light fractions, 35-70 parts;
Tackifying resin, 3-12 parts;
Flame retardants, 1-3 parts;
Crosslinking agent, 0.1-0.5 parts;
and according to the use, the following additional components may be added by weight:
Anti-aging agent, 0.1-2.0%;
Anti-stripping agent, 0.1-2.0%; and
Plasticizer, 0.5-3.0% (Chen; page 2, lines 26-53).
The filling oil may be an aromatic-rich refined extraction oil (i.e., a hydrocarbon base oil comprising an aromatic compound of claims 1-3) (Chen; page 2, lines 59-60).
The light distillate may be gasoline, diesel, kerosene or solvent oil (i.e., a hydrocarbon base oil comprising the light paraffinic distillate of claims 1-3) (Chen; page 3, lines 2-3).
The tackifying resin (i.e., the adhesion promoter of claim 1) may be one or more of C5-9 petroleum resins, modified rosin, terpene resin (i.e., the naturally occurring resin of claims 1 and 5), octyl novolac and coumarone resin (emphasis added) (Chen; page 3, lines 5-6). Therefore, Chen teaches a composition which comprises an adhesion promoter, a naturally occurring resin, and mixtures thereof as claimed.
In summary, Chen teaches an asphalt additive composition which may comprise:
20-40% filling oil, including the claimed hydrocarbon base oil comprising an aromatic compound of claims 1-3; and
35-50% light distillates, including the claimed hydrocarbon base oil comprising light paraffinic distillates of claim 1-3.
Therefore, the total amount of hydrocarbon base oils equals 55-90% by weight of the total asphalt composition (20+35 = 55% and 40+50=90%), which overlaps with the claimed 60-95% w/w of hydrocarbon base oil of claim 1.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
The asphalt modifiers of Chen may comprise 3-12% by weight of a tackifying agent (i.e., adhesion promoter) or mixtures thereof, wherein tackifying agents include the naturally occurring resin terpene of claim 5. 3-12 wt% overlaps with the claimed adhesion promoter range of 1-10% w/w, and naturally occurring resin range of 10-20 w/w%, including mixtures thereof (e.g., 10% terpene resin and 1% other tackifying agent). Therefore, it is clear that the compositions of Chen encompass asphalt modifiers which comprise adhesion promoters and naturally occurring resins in the claimed amounts.
Examiner notes that Chen exemplifies using a tackifying resin in amounts up to 12 parts by weight (Example 1), as well as mixtures of tackifying resins (Example 6-7) (see the translation of Table 1 at the bottom of page 8, Examples 1 and 6-7).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
The combination of known substances for the same purpose has been held to have been prima facie obvious. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art." In re Kerhoevn, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
In Example 1 of Table 1, Chen exemplifies a composition which comprises 12.0 parts by weight of the adhesion promoter C9 petroleum resin. This composition also comprises 30 parts by weight aromatic oil and 50 parts by weight the light paraffinic distillate kerosene, for a total of 80 parts by weight hydrocarbon base oil (i.e., 80wt% hydrocarbon base oil as claimed). The “hydrocarbon base oil” comprises 37.5% aromatic compounds (30/80 * 100 = 37.5%), which falls within the claimed hydrocarbon base oil comprising 20-50% w/w aromatic compounds of claim 3.
Chen does not exemplify a composition which comprises all of the claimed components in the claimed amounts, particularly which comprises a naturally occurring resin in an amount of 10-20% w/w.
However, as discussed above, Chen teaches the equivalence between using C9 petroleum resin, terpene, and mixtures thereof as the tackifying resin (Chen; page 3, lines 5-6).
In light of the disclosure of Chen of the equivalence and interchangeability of using, for example, the C9 petroleum resin of Example 1 of Chen with the natural resin terpene as presently claimed, as well as mixtures thereof, it would therefore have been obvious to one of ordinary skill in the art to use a mixture of, e.g., C9 petroleum resin and terpene, including over the presently claimed ranges, as the tackifying resin in Chen, and thereby arrive claimed invention.
Further, because Chen both teaches and exemplifies that mixtures of tackifying resins may be used in the asphalt compositions (see Chen; page 8, Examples 6-7 of Table 1), those skilled in the art would have had a reasonable expectation of success in using such mixtures.
Regarding claims 6-7, Chen is relied upon as teaching the limitations of claim 1 as discussed above, wherein the asphalt modifiers comprise 5-15 parts by weight of polymers (Chen; page 2, lines 31-34).
5-15 parts by weight polymers overlaps with the claimed 0.1-5% w/w of a non-aggregate additive of claim 6.
The polymers include styrene-butadiene thermoplastic elastomer (SBS), styrene-butadiene rubber (SBR), hydrogenated styrene-butadiene thermoplastic elastomer (SEBS), and other polymers suitable for asphalt modification (i.e., rheology modifiers of claim 7).
Chen further exemplifies a composition which contains 5 parts by weight SBS, i.e., 5% w/w of a rheology modifying, non-aggregate additive of claims 6-7 (Chen; page 8, Table 1, Example 1).
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over He et al, CN 113429800A (He) in view of Rodrigues, US 2012/0129985 A1 (Rodrigues).
The Examiner has provided a machine translation of He. The citation of the prior art in this rejection refers to the machine translation.
Regarding claims 1-5, He teaches a pavement aging asphalt activator which can reactivate the performance of the aging asphalt, reverse the properties of the aging asphalt, and restore the aging asphalt to the original state to some extent, or even a better state (He; page 2, lines 6-8).
The paving asphalt activator is a mixture of two or more emulsions comprising 80-90% of the total mass of the asphalt activator of a dissolution type, 8-18% of the total mass of an adhesion type, and 2-8% by mass of a hydrolyzed combination type (He; page 2, lines 10-17).
The dissolving class includes paraffinic oil, motor oil (i.e., hydrocarbon base oils comprising paraffinic light, medium or heavy distillates of claims 1-3), aromatic oil or naphthenic oil (i.e., hydrocarbon base oils comprising aromatic compounds of claims 1-3), and mixtures thereof (He; page 2, lines 19-21).
80-90% of the total mass of the asphalt activator of dissolution type, wherein the dissolution type may comprise hydrocarbon base oils comprising paraffinic distillates, aromatic oils, and mixtures thereof, overlaps in scope with the claimed 60-95% w/w hydrocarbon base oil of claim 1, and further encompasses mixtures comprising paraffinic compounds in amounts of 30-50% w/w or aromatic compounds in an amount of 20-50% w/w of claim 3.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
The paving asphalt activator is a mixture of two or more emulsions comprising 80-90% of the total mass of the asphalt activator of a dissolution type, 8-18% of the total mass of an adhesion type, and 2-8% by mass of a hydrolyzed combination type (He; page 2, lines 10-17).
The hydrolytic binding class is one or a mixture of two or more of silanes, titanate coupling agents and aluminate coupling agents. The silanes include, e.g., straight chain or branched organo silane derivatives such as alkyltrimethoxy silane and amino silanes such as polyamino silane (claim 4) (He; page 2, lines 30-37).
2-8% by weight hydrolytic binding silane falls within the scope of the claimed 1-10% w/w adhesion promoter, wherein the adhesion promoter is an organosilane derivative of claims 1 and 4.
The adhesion class includes, e.g., rosin amine, modified rosin amines, and mixtures thereof (He; page 2, lines 23-25). The adhesion type improves the adhesion of the asphalt and the old aggregate (He; page 2, lines 50-51 and page 3, lines 42-45).
In Example 9, He exemplifies a pavement aging asphalt activator composition comprising paraffin oil dissolution type (a light, medium or heavy paraffinic hydrocarbon base oil of claims 1-2), alkyl phosphate adhesion type, and alkyl (8) trimethoxysilane hydrolysis combination type (a straight chain or branched organosilane adhesion promoter of claim 1 and 4) (He; page 6, lines 22-26). He teaches that the paraffin oil may be replaced with engine oil, waste engine oil, aromatic oil, naphthenic oil, etc., and mixtures thereof (He; page 6, lines 30-34).
He teaches the alkyl phosphate may be replaced with, e.g., rosin amine or modified rosin amine (He; page 6, lines 36-41).
He does not explicitly teach a naturally occurring resin component of claim 1, or wherein the naturally occurring resin comprises tannins, terpenes or rosin of claim 5.
With respect to the difference, Rodrigues teaches a binder composition used for asphalt mixtures. The binder has improved adhesion properties and uses renewable raw materials (Rodrigues; Abstract and [0005]). The binder comprises a resin of vegetable origin, an oil of vegetable origin and a polymer functionalized with silane groups, such as vinyltrimethoxysilane or vinyltriethoxysilane (Rodrigues; [0006] and [0017-0018]).
By using the functionalized polymer, the adhesion properties of the binder composition are improved (i.e., an adhesion promoter, wherein the adhesion promoter is an organosilane derivative as claimed) (Rodrigues; [0007]).
The resins of vegetable origin are a renewable resource and are typically clear, so can be used to prepare a clear binder. The term “resin of vegetable origin” includes natural resins and resins that have been modified chemically. Preferred resins include rosin esters and natural rosins, as well as copal resins, accroid and dammer (Rodrigues; [0011]).
Rodrigues is analogous art as it teaches asphalt binder additives which comprise a base oil, an organosilane derivative adhesion promoter, and a naturally occurring resin.
In light of the disclosure of Rodrigues of the equivalence and interchangeability of using “chemically modified” natural resins, which encompass the amine rosins of He, with “natural resins” as presently claimed, including the claimed rosin, it would therefore have been obvious to one of ordinary skill in the art to use naturally occurring rosin as the adhesion type additive in He, in order to provide adhesion of the asphalt and aggregate, and thereby arrive claimed invention. Further, because Rodrigues discloses that naturally occurring resins such as rosin not only work with well with silane derivatives for adhesion in asphalt compositions, but also have the advantages of being a renewable resource and clear in color, those skilled in the art would have been motivated to use such natural resins as the adhesive type in the compositions of He, and thereby arrive at the claimed asphalt additive compositions.
Regarding claims 6-7, He in view of Rodrigues are relied upon as teaching the limitations of claim 1 as discussed above.
He teaches that the adhesion class includes not only rosin amines and modified rosin amine, but also alkyl phosphates, petroleum sulfonic acid, polyphosphoric acid, long-chain alkyl benzene sulfonic acid, long chain fatty acid iron salts, long chain alkyl amines, and mixtures thereof (i.e., the non-aggregate additives of claim 6 including, for example, the surfactant homogenizers of claim 7) (He; page 2, lines 23-25). The total amount of adhesion type used is 8-18% by mass of the asphalt activator, in order to improve the adhesion of the asphalt and old aggregate (He; page 3, lines 33-34 and 42-45).
In light of the motivation provided by He in view of Rodrigues to use a mixture of adhesion type additives, wherein mixtures include both naturally occurring resins and non-aggregate additives such as surfactant homogenizers, it would have been obvious to one of ordinary skill in the art to use such mixtures, such as a mixture of a rosin and a surfactant homogenizer such as an alkyl phosphate, in order to obtain the most effective adhesion of asphalt to old aggregate.
The combination of known substances for the same purpose has been held to have been prima facie obvious. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from there having been individually taught in the prior art." In re Kerhoevn, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Using such mixtures in total amounts of 8-18mass% as taught by He overlaps with weight ranges of 0.1-5% w/w non-aggregate additives as claimed.
Further, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the mass percent of each component of the adhesive type used in the activator asphalt compositions of He in view of Rodrigues, including over the presently claimed, in order to reverse the properties of the aging asphalt while improving adhesion of the asphalt to the old aggregate.
Regarding claim 8, He in view of Rodrigues are relied upon as teaching the limitations of claim 1 as discussed above. He teaches the penetration of the aged asphalt vs. the treated asphalt, and the softening point of the of the aged asphalt vs. the treated asphalt (He; page 4, lines 6-9, 19-22, 32-35, 45-48; page 4, line 59-page 5, line 3; page 5, lines 20-24, 41-45; page 6, lines 2-7, 24-28 and 51-54; and page 7, lines 6-9). He teaches the pavement aging asphalt activator can reactivate the performance of aging asphalt, reverse the properties of aging asphalt, and restore aging asphalt to the original state to some extent, or to even a better state (He; page 2, lines 6-8).
He in view of Rodrigues does not explicitly teach wherein the asphalt additive composition (emphasis added), before aging, has a penetration grade at 25 °C between 40 and 100 (1/10 mm); viscosity at 60 °C between 1,000 and 8,000 (Poises); a softening point between 45 and 54 (°C); and, after aging, a penetration grade at 25 °C between 30 and 60 (1/10 mm); viscosity at 60 °C between 3,000 and 10,000 (Poises); a softening point between 53 and 60 (°C); an aging index between 1 and 4; a mass loss between 0.1 and 1 (%); an increase in the softening point between 1 and 8 (°C); and a penetration of the residue between 46 and 60 (%).
However, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to optimize the anti-aging properties of the asphalt compositions, and thus the asphalt activator compositions of He in view of Rodrigues, including the penetration grade, viscosity, softening point, mass loss and penetration over time (i.e., before and after aging), including over the presently claimed, in order to obtain an activator composition which can best restore the original properties of the aged asphalt, or improve the asphalt beyond its original properties, absent a showing otherwise.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kameda et al, US 2018/0201716 A1 (cited in the IDS filed 01/27/2025), teaches the equivalence between rosin derivatives, rosin ester resins, terpene resins, aliphatic hydrocarbon resins, aromatic hydrocarbon resins, hydrogenated oil resins, and phenol resins as tackifier resins (i.e. adhesion promoters) when used, for example, in adhesives, modified asphalt compositions, and pavement binders (see [0020] and [0159]).
Wu et al, CN 103788670 A (Wu) (provided in the IDS filed 01/27/2025; full translation attached), discloses an asphalt composition (100 parts petroleum asphalt) which comprises the following additive:
10-25 parts pine tar (naturally occurring resin);
15-20 parts glycerin rosin ester and 12-18 parts rosin modified phenolic resin (adhesion promoters);
40-60 parts solvent gasoline (a paraffinic distillate compound);
30-40 parts benzene and 8-10 parts xylene (aromatic hydrocarbons);
as well as the additives 1-2 parts calcium chloride; 20-30 parts pigment; 10-18 parts aluminum silver paste; 6-8 parts silica; 1-2 parts butanol and 2-3 parts ethylenediamine (see provided translation; page 2, lines 38-48).
Zhou et al, CN 112029300 A (see attached machine translation for citations), teaches an asphalt regenerating agent comprising 80-100 parts by weight light oil fraction including aromatic oils; 10-30 parts by weight high temperature coal tar fraction including anthracene oil; 5-10 parts by weight osmatic agent/penetrant including rosin; 10-20 parts by weight plasticizer; 1-5 parts by weight lubricant and 1-5 parts by weight anti-aging agent (Abstract; page 3, lines 1-6; and translation of para [0006-0009] on page 8). Example 2 comprises 90 parts aromatic hydrocarbon oil and 10 parts anthracene oil (hydrocarbon oils); 7 parts rosin (naturally occurring resin and adhesion promoter); 13 parts epoxidized soybean oil; 5 parts barium stearate and 1 part nano-montmorillonite (page 5, Example 2).
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
