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 .
Claims 1-20 are pending.
Claims 1-13, 18 and 20 are under examination on the merits.
Claims 1, 2, 9 and 20 are amended.
No claims are canceled.
No claims are newly added.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection in the previous action of claims 1-3, 6-10 and 13 under 35 U.S.C. 103 as being unpatentable over US 20110233105 by Bailey in view of JP 6531022 by Hiura et al is repeated and amended to reflect applicant’s amendment. Claims 18 and 20, newly amended to be included in the elected group, are rejected under the same premise.
Bailey describes asphalt pellets.
Regarding claims 1 and 8, Bailey describes asphalt pellets with a core comprising an asphalt binder and a shell (paragraph 10), wherein the shell may comprise plaster (paragraph 33), which is a generic term that includes gypsum. Bailey states that he is creating storage-stable asphalt paving pellets (paragraph 12), and describes a batch of pellets (paragraph 48). Bailey describes asphalt shingle waste in the core (paragraph 10).
Hiura is described above.
Hiura also describes storage-stable asphalt pellets for paving (paragraph 1-2, 5). Hiura describes a surface layer on the pellets of calcined gypsum (“hydration reaction” reading on calcined) (paragraph 20). Hiura states that the gypsum keeps the asphalt pellets from reacting with each other during storage and, when water is added during pavement construction, serves to improve initial strength and long term strength after construction (paragraph 20). Thus it would be obvious to one of ordinary skill to choose calcined gypsum as a shell where Bailey more broadly describes plaster in order to prevent asphalt pellets from reacting with each other and improve initial strength and long term strength after construction.
Regarding the newly claimed crush strength, while Bailey and Hiura are necessarily silent as to the crush strength that results from their combination, crush strength is a property and some value must result. The instant examples demonstrate that the crush strength of the combination would be in the claimed range. According to instant Table 1, instant comparative examples have shell which is 75 wt% calcined gypsum and 25 wt% hydrated lime whereas inventive examples have 100 wt% calcined gypsum shell. The comparative examples, with hydrated lime, have crush strength below the claimed range. But Hiura does not mention or encourage the presence of hydrated lime. Hiura motivates one of ordinary skill to add a shell of “hydration reaction” – i.e. calcined- gypsum (paragraph 20). Thus since Bailey in view of Hiura meets the structure of a calcined gypsum shell around the claimed pellet core, the crush strength would flow naturally from the combination, according to instant examples.
Prima facie case for obviousness of chemical composition is established if there is structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, and if prior art gives reason or motivation to make claimed composition; burden and opportunity then falls on applicant to rebut prima facie case through showing that claimed composition possesses unexpectedly improved properties or properties lacking in prior art, that prior art is so deficient that there is no motivation to make changes that otherwise appear obvious, or by any other pertinent argument or presentation of evidence. (In re Dillon 16 USPQ2d 1897). Bailey provides the claimed core and Hiura provides the claimed shell and the crush strength results from this combination, according to the instant specification (Table 1).
Regarding claims 2 and 9, Hiura’s motivation is singular to gypsum. There is specific advantage to choosing calcined gypsum as the shell over Bailey’s other options; Hiura paragraph 20 states it improves strength of the eventual pavement.
The instant specification demonstrates that pellet crush strength is affected when lime is present in the shell- in instant specification Table 1, CS1 and CS2 have 25 wt% lime whereas inventive examples S1 and S2 only have gypsum. Instant Table 2 shows the average crush strength is much higher for the inventive examples vs. CS1 and CS2.
Since Bailey in view of Hiura contains only gypsum in the shell -in accordance with instant examples- the combination is expected to demonstrate the claimed crush strength. Prima facie case for obviousness of chemical composition is established if there is structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, and if prior art gives reason or motivation to make claimed composition; burden and opportunity then falls on applicant to rebut prima facie case through showing that claimed composition possesses unexpectedly improved properties or properties lacking in prior art, that prior art is so deficient that there is no motivation to make changes that otherwise appear obvious, or by any other pertinent argument or presentation of evidence. (In re Dillon 16 USPQ2d 1897).
Furthermore, the minimum claimed crush strength is close to that of the comparative examples, making it a lower threshold to meet.
Regarding claims 3 and 10, Bailey describes additional materials (additives) in the pellet core (paragraph 43-45).
Regarding claims 6 and 13, Bailey describes tear-off roofing (post-consumer) or recovered factory (post-industrial) waste (paragraph 28).
Regarding claim 7, Bailey describes adding wax (paragraph 45) as well as soy oil, tall oil pitch (paragraph 44), all of which may be considered softening agents. Soy oil and tall oil pitch are specifically described in the instant specification as softening agents. Bailey further describes plasticizers in paragraph 120 which are also softening agents.
Regarding claims 18 and 20, the claimed crush strength of at least 35N is substantially exceeded by each inventive example (Table 2), which reflects the calcined gypsum shell of Hiura on the core described by Bailey. The comparative examples do not read on the suggested combination. See rejection of claim 1 above.
The rejection in the previous action of claims 4, 5, 11 and 12 under 35 U.S.C. 103 as being unpatentable over US 20110233105 by Bailey in view of JP 6531022 by Hiura et al in further view of “What is PG system?” by California Department of Transportation (CDOT) is repeated and maintained herein. Specifically,
Bailey is described above.
Regarding claims 4, 5, 11 and 12, Bailey describes using the pellets to create asphalt pavement (paragraph 10), but is silent as to choosing asphalt binder for the pellet which meets certain temperature performance standards, although the asphalt binder must meet some performance standard.
CDOT describes new methods for selecting asphalt binder.
CDOT states that the performance grade system allows to select the appropriate asphalt pavement binder in terms of rutting, fatigue cracking, and low temperature cracking (p.1 item 1).
CDOT states that a common grade used in California is PG 58-22, PG 64-10, PG 64-28 and PG 70-10 (p.2 item 9). This notation means, e.g. for PG 58-28, a high temperature performance grade of 58C and a low temperature performance grade of -28C. The values of common grade listed by CDOT overlap with the claimed ranges of 0-50C.
It would be obvious to one of ordinary skill to choose any of the common performance-grade asphalt binders used in California in Bailey’s asphalt binder for paving because they are appropriate in terms of rutting, fatigue cracking, and low temperature cracking.
Response to Arguments
Applicant’s argument p.5 paragraph 2 of Remarks submitted 2/24/26 has been considered but is not persuasive. Applicant states that pellets are observed to have greater strength with calcined gypsum as compared to fresh or hydrated gypsum. This is not found convincing because the instant inventive examples have a shell of 100% calcined gypsum while the comparative examples have a shell of 75% calcined gypsum and 25% hydrated lime, where hydrated lime is not equivalent to "fresh or hydrated gypsum"- it is a different chemical entirely. As such the inventive examples demonstrate that greater crush strength is observed for a shell that is 100% calcined gypsum as opposed to 75/25 calcined gypsum/lime. Since Hiura teaches an outer shell of 100% calcined gypsum and motivation to adopt this outer shell only, Hiura's shell on Bailey's pellets reads on the instant inventive examples, not the instant comparative examples.
Applicant further describes aspects of Hiura which are not applied in rejection. Applicant cites Hiura’s use in cold/room-temperature asphalt aggregate mixtures; this is not found convincing because Hiura describes and depicts pellets (Fig.1) and Hiura gives motivation to merely use the outer surface coating (paragraph 20), hydration-reaction gypsum. While Hiura does not mention crush strength, crush strength is a property and must have some value even in Hiura’s invention and in application of Hiura’s gypsum coating to Bailey’s pellet. That Hiura mentions other kinds of strength does not take away from the analysis that Hiura’s coating on Bailey’s pellet would have the claimed crush strength. See rejection above for analysis.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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