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 .
Response to Amendment
This office action is in response to the Amendment filed on 08/13/2026.
Claims 7-24 are presently pending and under examination; claims 1-6 are canceled; claims 10 is amended.
The rejection of claim 10 under 35 U.S.C 112(b) is withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejection of claims 7-24 over Lucarelli in view of Fisher is maintained.
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 7-24 are rejected under 35 U.S.C. 103 as being unpatentable over Luccarelli et al. (U.S. 2014/0373754 A1) in view of Fisher et al. (U.S. 6,323,268).
Regarding claim 7, Luccarelli et al. (hereinafter “Luccarelli”) teaches an asphalt composition containing little to no VOCs (Paragraphs 0020-0022 and 0027) that includes an asphalt material and solvents (Paragraphs 0030-0032; meeting claimed organic VOC solvents, see “low- or no-VOC”) as well as surfactants, clay, fibers, technical and/or functional fillers (Paragraph 0028) as well as a wet surface adhesion additive (Paragraph 0038). Notably, Luccarelli lists amino-methyoxysilane (Paragraph 0038), which is an alkoxysilane, as a suitable additive.
Compellingly, the wet surface adhesion additive increases adhesion of the composition to wet surfaces and was found to displace water (Paragraph 0038).
Luccarelli fails to teach that the wet surface adhesion additive is a volatile methylated siloxane. However, the ordinarily skilled artisan would find it obvious to select other wet surface adhesion additives that displace, repel, and/or resist water.
Fisher et al. (hereinafter “Fisher”) teaches an organosilicon water repellent composition that includes alkoxysilanes and volatile methyl siloxanes (Abstract, Col. 3 lines 20-39, and Col. 4 lines 13-62). Specifically, Fisher teaches various volatile methyl siloxanes including linear volatile methyl siloxane, cyclic volatile methyl siloxanes, and branched methyl siloxanes that wherein octamethylcyclotetrasiloxane is expressly listed (Col. 4 line 47 and Col. 5 lines 31-33). Also, Fisher teaches that the materials are commercially available (Col. 4 lines 61-62). Importantly, Fisher teaches at Col. 1 lines 64 to Col. 2 line 19, that the invention is directed to low VOC penetrating water repellent compositions for use on inorganic building materials.
Additionally, Fisher teaches the inclusion of a solvent such as a Stoddard solvent (Col. 5 line 29). Moreover, Fisher teaches that the solvent can also consist of one or more of the various methyl siloxanes especially octamethylcyclotetrasiloxane (Col. 5 lines 31-33).
In the interest of compact prosecution, Luccarelli and Fisher are analogous art as they are both in the same field of endeavor and seek to solve the problem of water repellency/resistance for materials in the construction industries (Luccarelli Paragraphs 0001-0004 and Fisher Col 1 lines 18-25) while having reduced or low VOCs.
It would be obvious to the ordinarily skilled artisan before the effective filing date of the claimed invention to substitute Fisher’s volatile methyl siloxane in place of Luccarelli’s amino-methoxysilane wet surface adhesion additive so as to allow the asphalt composition to displace, repel, and/or resist water while remaining environmentally safe and having enhanced performance as desired by Luccarelli (Paragraphs 0012 and 0013). The substituted components of Fisher’s volatile methyl siloxane and Luccarelli’s amino-methoxysilane were available and known in the art to dispel or resist water. Moreover, the ordinarily skilled artisan could and would substitute Fisher’s volatile methyl siloxane for Luccarelli’s amino-methoxysilane to predictably achieved water resistance/repellency while remaining environmentally safe by having reduced or low VOCs.
As to the claimed method steps, the composition is formed by combining the ingredients which meets the claimed steps of ‘adding’ and ‘mixing’ (see at least Paragraph 0022 of Lucarelli which teaches mixing asphalt and a low or no VOC solvent to form a blend, adding a gelling surfactant, adding clay and then, if desired, adding fibers and a functional filler with further mixing as well as including the addition of a wet surface adhesion additive).
With regard to the limitation requiring the composition to have a VOC of 150 g/l and lower, Luccarelli’s disclosure of ‘low or no’ would meet the feature for at least the reason that ‘no VOCs’ is embraced by the claim language and, thus, shared with Luccarelli directly.
Regarding claim 8, Luccarelli and Fisher teach the method as applied to claim 7 above and Luccarelli further teaches that the adhesion promoter may be AD-HERE 240 (Paragraph 0032). AD-HERE 240 is an amidoamine. Notably, Applicant’s specification identifies AD-HERE 260 as an example of the amidoamine promoter.
Regarding claim 9, Luccarelli and Fisher teach the method as applied to claim 7 above and Luccarelli expressly identifies clay (Paragraph 0022).
Regarding claim 10, Luccarelli and Fisher teach the method as applied to claim 7 above and Luccarelli expressly identifies alkyloxyalkylamine salts (Paragraph 0034).
Regarding claim 11, Luccarelli and Fisher teach the method as applied to claim 7 above but Luccarelli and Fisher fail to teach that the asphalt material has a penetration grade of about 0.5 to 30.
However, Applicant’s specification utilizes a PG 64-22 asphalt (Paragraph 0018 of the instant specification). Notably, Luccarelli utilizes a PG 64-22 performance grade asphalt (Paragraphs 0029 and 0047).
In view of the substantial similarity of the performance graded asphalts, it is prima facie taken that Luccarelli’s PG 64-22 asphalt would possess a penetration grade of 05.-30 absent evidence or persuasive reasoning to the contrary.
It has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 12 and 15, Luccarelli and Fisher teach the method as applied to claim 7 above and Fisher further teaches the inclusion of octamethylcyclotetrasiloxane (Col. 4 line 47 and Col. 5 lines 31-33).
Regarding claim 13, Luccarelli and Fisher teach the method as applied to claim 7 above but Luccarelli and Fisher fail to teach that the asphalt material has a penetration grade of about 0.5 to 60.
However, Applicant’s specification utilizes a PG 64-22 asphalt (Paragraph 0018 of the instant specification). Notably, Luccarelli utilizes a PG 64-22 performance grade asphalt (Paragraphs 0029 and 0047).
In view of the substantial similarity of the performance graded asphalts, it is prima facie taken that Luccarelli’s PG 64-22 asphalt would possess a penetration grade of 05.-60 absent evidence or persuasive reasoning to the contrary.
It has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 14, Luccarelli and Fisher teach the method as applied to claim 7 above and Luccarelli only teaches the inclusion of 0.5% of the wet surface adhesion additive (Paragraph 0049). However, Luccarelli teaches that the preferred ranges of the various materials in the composition can be adjusted alongside of the other components (Paragraph 0043).
Fisher teaches that the volatile methyl siloxane and solvent (note: Stoddard VOC solvent) should be included in 0-70 percent by weight, preferably 0.1 to 50 percent (Col. 7 lines 7-8).
Luccarelli does not teach or suggest any detrimental effects of increasing the amount of the wet surface adhesion additive. As such, it would be obvious to the ordinarily skilled artisan before the effective filing date of the claimed invention to optimize the amounts of the wet surface adhesion additive (i.e. Fisher’s volatile methyl siloxane as well as Fisher’s solvent) so as to achieve the desired blend necessary for the final construction product.
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In the instant case, Applicant’s claimed range of 5-20% volatile methylated siloxane lies within Fisher’s disclosed range. Further, it has been held that ‘where 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.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant case, the claimed range has not been shown to be critical or product unexpected results.
Regarding claims 16, 19, and 22, Luccarelli and Fisher teach the method as applied to claim 7 above but are silent to adding additional asphalt cut back composition in a second (dependent claim 16), third (dependent claim 19), and/or fourth (dependent claim 22) batch/round. However, the incorporation of additional asphalt cutback composition in a batch-wise manner is prima facie obvious because it has been held that any order of mixing and/or combining ingredients that does not produce an unexpected result is obvious In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
As to the batch like additions of filler materials and/or other additives, the teaching of Luccarelli and Fisher clearly appreciate the addition of additional material such that these features do not distinguish the claimed invention from the prior art.
Regarding claims 17, 20, and 24, Luccarelli and Fisher teach the method as applied to claim 7 above but are silent to adding precisely ‘about 230 g’ (dependent claim 17) and/or ‘about 150 g’ (dependent claim 20) additional asphalt cutback.
However, the incorporation of additional asphalt cutback composition in a batch-wise manner is prima facie obvious as well as the determination of how much material should be in each batch.
This is routine within the art and would not be expected to yield anything more than predictable results.
Regarding claim 18, Luccarelli and Fisher teach the method as applied to claim 16 above and Luccarelli further teaches that perlite may be included (Paragraph 0039).
Regarding claim 21, Luccarelli and Fisher teach the method as applied to claim 19 above and Luccarelli further teaches that cellulosic fibers may be included (Paragraph 0039).
Regarding claim 23, Luccarelli and Fisher teach the method as applied to claim 16 above and Luccarelli further teaches that ground limestone may be included (Paragraph 0039).
Response to Arguments
Applicant's arguments filed 08/13/2026 have been fully considered but they are not persuasive.
Applicant argues:
“The volatile methylated siloxane and the adhesion promoter are two separate elements of the claim. They are not the same thing. The office has failed to find both a volatile methylated siloxane and the adhesion promoter in the cited art” (see Remarks at pg. 5-6).
“the Office has not made a logical reason to modify Luccarelli with the compounds disclosed in Fisher” (see Remarks at pg. 6).
“The Office has failed to show the step-wise method of preparing an asphalt cut back composition, then subsequently add an adhesion promoter to that asphalt cut back composition” (see Remarks at pg. 6).
“unexpected superior results establish that the claims are unobvious over the cited art. Tables 2 and 4 of the application show that the claimed method produces a composition that maintains the desired physical properties yet has a significantly lower VOC” (see Remarks at pg. 6).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the office failed to find both a volatile methylated siloxane and an adhesion promoter, the Examiner respectfully disagrees. As set forth in the rejections above, Lucarelli explicitly discloses the use of both a wet surface adhesion additive (substituted for the volatile methylated siloxane of Fisher) and an adhesion agent which is included in the solvent composition, e.g., Ad-Here 240, i.e., an adhesion promoter (Paragraphs 0032 and 0038).
In response to Applicant’s argument that the Office has not provided a reason to modify Luccarelli with the compounds of Fisher, the Examiner respectfully disagrees. As discussed in the rejection above, it would be obvious to the ordinarily skilled artisan to substitute Fisher’s volatile methyl siloxane in place of Luccarelli’s amino-methoxysilane wet surface adhesion additive so as to allow the asphalt composition to displace, repel, and/or resist water while remaining environmentally safe and having enhanced performance as desired by Luccarelli (Paragraphs 0012 and 0013). The substituted components of Fisher’s volatile methyl siloxane and Luccarelli’s amino-methoxysilane were available and known in the art to dispel or resist water. Moreover, the ordinarily skilled artisan could and would substitute Fisher’s volatile methyl siloxane for Luccarelli’s amino-methoxysilane to predictably achieved water resistance/repellency while remaining environmentally safe by having reduced or low VOCs. Further, MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
In response to Applicant’s argument that the present claims are nonobvious because the Office has failed to show the step-wise method of preparing an asphalt cut back composition then subsequent addition of an adhesion promoter, the Examiner respectfully disagrees. As discussed in the rejection above, the prior art teaches a method of mixing the claimed ingredients. MPEP § 2144.04(IV)(C) states that selection of any order of mixing ingredients is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
In response to Applicant’s argument that the present claims are nonobvious because they provide unexpected results of lower VOC, the Examiner respectfully disagrees; it is obvious and expected that using a lower amount of organic VOC solvents will form a composition having lower VOC. It is not clear what aspect of using a lower amount of VOCs resulting in there being a lower amount of VOCs would be considered an “unexpected result”. Additionally, as discussed in the rejection above, the prior art explicitly discloses a method of forming a low or no VOC composition. A method of preparing a low VOC composition resulting in a low VOC composition is not unexpected and is disclosed in the prior art.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
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 extension fee 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.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
