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 .
Status of the Claims
By amendment filed November 28, 2025, claims 1 through 5, 8, 9, 11 through 14, 16 and 17 have been amended and claim 20 is new. Claims 1 through 20 are currently pending.
Response to Arguments
Applicant's arguments filed November 28, 2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that Dongre (U.S. Patent # 10,308,839) is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Dongre is directed to a rubber-modified asphalt emulsion composition and is therefore analogous.
In response to applicant's argument that Dongre teaches having used solid rubber particles in the asphalt emulsion composition, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant’s arguments regarding the combination of Dongre with the references of Skelton and Woodruff are not persuasive because they mischaracterize the combination of the references. As was discussed in the previous Office Action, Woodruff already provides a teaching for adding a rubber in liquid/emulsion form to the asphalt emulsion of Skelton. Dongre is only being cited to show that it would have been obvious in the art to crosslink a rubber modified asphalt emulsion composition. The solid rubber particles of Dongre are not being added to the asphalt composition of Skelton as argued by applicant.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8 and 13-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 8 and 13 requires that the rubber-modified asphalt emulsion does not comprise any solid rubber particles. This limitation fails to comply with the written description requirement because nowhere within the specification as originally filed is there a disclosure excluding the presence of solid rubber particles within the asphalt emulsion.
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.
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, 5 and 8-19 are rejected under 35 U.S.C. 103 as being unpatentable over Skelton et al (U.S. Patent # 3,224,890) in view of Woodruff (U.S. Patent # 3,651,000) and Dongre (U.S. Patent # 10,308,839).
In the case of claim 1, Skelton teaches a method of applying a fire resistant bituminous/asphalt emulsion to a to at least a portion of a wooden structure which included utility poles (Column 1 Lines 9-16 and 29-52). Skelton further teaches that the asphalt emulsion was an aqueous emulsion (Column 1 Lines 29-34). Furthermore, Skelton teaches that the emulsion was permitted to dry/cure on the wooden pole/substrate (Column 3 Lines 60-67). Skelton does not however teach that the asphalt emulsion had been modified with rubber.
Woodruff teaches stable asphalt emulsions which had been modified with rubber in order to improve the weathering properties of the asphalt emulsions (Abstract and Column 2 Lines 18-22). Woodruff teaches that the rubber was added as a liquid/emulsion of rubber to a liquid/emulsion of asphalt (Column 2 Lines 34-44). Woodruff further teaches that suitable rubbers included halogenated elastomers and diene elastomers in the form of polychloroprene and a copolymer of butadiene styrene (Column 3 Line 74 through Column 4 Line 14). Furthermore, Woodruff teaches that the rubber modified emulsions were applied to wood surfaces (Column 5 Lines 39-43).
Based on the teachings of Woodruff, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have modified the asphalt emulsion of Skelton with the rubber emulsions of Woodruff in order to improve the weathering properties of the asphalt emulsion.
Neither Skelton nor Woodruff teaches having permitted the emulsion to crosslink on the wooden utility pole or that the emulsion further comprised a crosslinker. However, as was discussed previous it would have been obvious to have included rubber/elastomers in the asphalt emulsion of Skelton.
Dongre teaches an asphalt emulsion comprising an elastomer (Abstract). Dongre teaches that when a rubber/elastomer is added to an asphalt composition it was beneficial to allow the composition to cross-link by including a cross-linking agent/crosslinker and catalyst in order to reduce rutting and cracking (Column 12 Lines 19-32 and Column 12 Line 46 through Column 13 Line 20).
Based on the teachings of Dongre, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have added a crosslinker and catalyst to the rubber-modified asphalt emulsion of Skelton in view of Woodruff applied to the wooden utility pole and allowed to crosslink in order to reduce rutting and cracking.
As for claim 2, as was discussed previously, it would have been obvious to have added a catalyst to the emulsion to speed up the crosslinking.
As for claim 3, Skelton teaches that the emulsion formed a non-tacky, fire-resistant coating (Column 1 Lines 9-16).
As for claim 5, Skelton teaches that the emulsion was applied by either spraying or brushing (Column 1 Lines 37-44).
As for claim 8, as was discussed previously, the rubber of Woodruff was added to the asphalt emulsion of Skelton as a liquid/emulsion and therefore no solid rubber particles were added.
As for claims 9-12, as was discussed previously, a catalyst was added to the aqueous emulsion of Skelton and the rubber of Woodruff added to the emulsion included polychloroprene and a copolymer of butadiene styrene.
In the case of claim 13-17, it is rejected for the same reasons discussed previously in the rejection of claims 1, 2 and 8-12.
As for claim 18, Skelton teaches that the emulsion after curing was self-extinguishing in a flame test (Column 4 Lines 35-46).
As for claim 19, as was discussed previously in the rejection of claim 5, Skelton teaches having applied the emulsion by spraying or brushing.
Claims 4 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Skelton et al in view of Woodruff and Dongre as applied to claim 1 and 13 above, and further in view of Thompson (U.S. Patent # 1,861,826).
The teachings of Skelton in view of Woodruff and Dongre as they apply to claims 1 and 13 have been discussed previously and are incorporated herein.
In the case of claims 4 and 20, as was discussed previously in the rejection of claim 5, Skelton teaches having applied the aqueous asphalt emulsion by spraying. However, none of the references teach that the spraying was cold spraying.
Thompson taches that it was known in the art to paint/coat a surface with an aqueous asphalt/bitumen emulsion by cold spraying (Column 1 Lines 1-7).
Based on the teachings of Thompson, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have applied the aqueous asphalt emulsion of Skelton in view of Woodruff and Dongre by cold spraying because this was a known spraying process in the art for aqueous asphalt emulsions.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Skelton et al in view of Woodruff and Dongre as applied to claim 1 above, and further in view of Shah et al (U.S. Patent Publication No. 2022/0372328).
The teachings of Skelton in view of Woodruff and Dongre as they apply to claim 1 have been discussed previously and are incorporated herein.
In the case of claims 6 and 7, through Skelton teaches having applied the emulsion by spraying or brushing none of the references teaches having applied the emulsion by either dipping or blade coating.
Shah taches an aqueous bituminous coating composition (Abstract and Page 1 Paragraph 0001) wherein it was known in the art to apply such coating by either spraying, dipping, doctor blades or dipping (Page 3 Paragraph 0043).
Based on the teachings of Shah, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have applied the emulsion of Skelton in view of Woodruff and Dongre by either dipping or blade coating because these were known method in the art for applying a bituminous/asphalt emulsion.
Conclusion
Claims 1 through 20 have been rejected. No claims were allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712