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 .
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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
Claims 5 and 18 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 5 recites “wherein the at least one thickener comprises a wax”. There is no disclosure in the specification of what a thickener is or comprises; no disclosure of what material the thickener could be. This recitation is simply echoed in paragraph [0065]. Correction is required.
Claim 18 recites “applying a penetrating asphalt emulsion over at least a portion of the substrate and the compacted hot mix asphalt”. There is no support found for applying a penetrating asphalt emulsion over at least a portion of the substrate. Applicant’s specification discloses application of a penetrating asphalt emulsion over the newly paved joint ([0033]-[0034]), but the newly paved joint is not the substrate since the substrate is the existing pavement. Applicant discloses application of an emulsion tack coat over the milling cut ([0028]), the area of the milling cut could be considered the substrate, but that is not a penetrating asphalt emulsion. Further as evidence that the penetrating asphalt emulsion is not applied to the substrate is Applicant’s disclosure in paragraph [0036] that “The combination of a void reducing asphalt membrane at the bottom of the milling slot with HMA [hot mix asphalt] placed and compacted in the slot and then followed by an application of a penetrating asphalt emulsion may create a longitudinal joint repair that will last as long as the rest of the pavement”, which means the penetrating asphalt emulsion is only applied on top of the hot mix asphalt/newly-paved joint. The claim recitation is simply echoed in paragraph [0065], but there is no disclosure of applying a penetrating asphalt emulsion over at least a portion of the substrate. Since it is unclear what Applicant is trying to claim, claim 18 will not be further treated on the merits until correction is provided. It is noted that Wissel et al., US 2020/0002538 A1 teaches treating an asphalt pavement and discloses applying a penetrating asphalt emulsion to fill voids.
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.
Claims 5, 8-14, and 18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 5 recites “wherein the at least one thickener comprises a wax”. As stated above in the 112(a) rejection, there is no disclosure of what the thickener is or comprises. The specification discloses “Void reducing asphalt membrane compositions of the present invention generally comprise a mixture of an asphalt binder, elastomeric polymers, a thickener and a wax modifier” in paragraph [0045], but the claim limitation does not align with what is disclosed. Since it is unclear at all what Applicant is trying to claim, claim 5 will not be further treated on the merits until correction is provided.
Claims 8-11 each recite “the pavement surface”. There is insufficient antecedent basis for this limitation in the claim. Since claim 1 introduced milling out a section of “the substrate”, it will be assumed that Applicant intended “the substrate”.
Claims 12-13 recite “the void filling asphalt membrane”. There is insufficient antecedent basis for this limitation in the claim. Since claim 1 introduced a void reducing asphalt membrane, for purposes of examination, it will be assumed that Applicant intended “the void reducing asphalt membrane”.
Claim 14 recites “the void filling”. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether this is a typographical error and Applicant intended “the void reducing asphalt membrane”; for purposes of examination, this is what will be assumed.
Claim 18 recites “The method of any of claim 3, further comprising…”. It is unclear what is meant by this. For purposes of examination, it will be assumed that Applicant intended “The method of claim 3, further comprising…”
Correction is required for each rejection.
Claim Interpretation
Claim 1 recites “milling out a section of the substrate…to create a milling slot having a surface”. A “milling slot” implies that it is a slot for milling or a slot that performs milling, but neither is the case as evidenced by Applicant’s limitation (and disclosure in the specification) that milling creates the slot. Since it appears that Applicant intended “to create a milled slot”, or simply “to create a slot”, that is how this recitation will be interpreted.
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 1-2, 4, and 6-17 are rejected under 35 U.S.C. 103 as being unpatentable over Collette, US 7,384,181 B1 in view of Kriech et al., US 9,739,018 B2.
Regarding claim 1, Collette teaches a method of replacing a longitudinal joint, comprising:
identifying a substrate having a longitudinal joint formed by two adjacent pavement passes (road with a joint seam; column 1 lines 37-40); and
milling out a section of the substrate that comprises the longitudinal joint (“milling is also beneficial in removing joint seams”; column 1 lines 37-40) to create a milling slot having a surface since milling out a section of pavement would naturally create a slot having a surface.
While Collette fails to disclose milling to a depth of at least 1 inch and a width of at least 6 inches, this is a matter of mere change in size. It has been held that where the only difference between the prior art and claims was a recitation of relative dimensions, the claims would not be patentably distinct from the prior art. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the milled section to have a depth of at least 1 inch and a width of at least 6 inches if that was sufficient to completely remove the joint seam as disclosed by Collette.
While the resulting combination fails to disclose applying a void reducing asphalt membrane to the surface of the milling slot, Kriech teaches applying a void reducing asphalt membrane to the surface (vertical face of longitudinal asphalt pavement construction joints; column 1 lines 20-26) of a pavement longitudinal joint. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to apply a void reducing asphalt membrane to the surface of the milling slot in view of Kriech’s disclosure that such can reduce cracking in the pavement (column 2 through column 3 line 31).
Regarding claim 2, since Kriech further discloses that the void reducing asphalt membrane is provided between the substrate (which is the slot in the resulting combination) a hot mix asphalt application portion (claim 1 and column 4 line 37), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to fill the slot with a hot mix asphalt material, wherein the hot mix asphalt material contains a volume of air voids (since the purpose of the void reducing asphalt membrane is to migrate upwards into the hot mix asphalt in the area of the longitudinal joint to reduce air voids (Abstract) in view of Kriech’s further disclosure.
Regarding claim 4, the resulting combination includes the limitation, since Kriech discloses that the void reducing asphalt membrane comprises at least one asphaltic binder, at least one elastomeric polymer, at least one thickener, and at least one additive to reduce tackiness (column 3 lines 58-61).
Regarding claim 6, the resulting combination includes the limitation, since Kriech discloses that the at least one additive comprises fumed silica or fumed alumina (column 6 lines 4-8).
Regarding claim 7, the resulting combination includes the limitation, since Kriech discloses that the at least one elastomeric polymer comprises a styrene-butadiene-styrene polymer (column 5 lines 39-51).
Regarding claims 8-11, while the resulting combination fails to disclose milling to the depths and widths claimed, it has been held that where the only difference between the prior art and claims was a recitation of relative dimensions, the claims would not be patentably distinct from the prior art. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of the resulting combination to mill the substrate to a depth of about 1.5 inches to about 30 inches and a width of about 8 inches to about 40 inches if that was sufficient to completely remove the joint seam and any type of surface damage as disclosed by Collette (column 1 lines 37-40).
Regarding claims 12-13, while the resulting combination fails to disclose how much of the void reducing asphalt member is applied over a square yard, it has been held that "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to apply the void reducing asphalt membrane at a rate of about 0.1-1 gal/yd² based on the type of asphalt which would have varying amounts of voids to use an appropriate quantity of void reducing asphalt membrane per square yard to be effective.
Regarding claim 14, the resulting combination makes obvious the limitation since Kriech discloses that the void reducing asphalt membrane is applied by spraying (column 7 lines 22-24).
Regarding claim 15, Collette teaches a method of replacing a longitudinal joint comprising:
identifying a section of a substrate having a longitudinal joint formed by two adjacent paving passes (which is what is required for a seam to form in pavement), wherein at least a portion of the longitudinal joint comprises a milling slot having a surface (milling and removing the joint seam would naturally create a slot, a slot would naturally have a surface). See Collette’s column 1 lines 37-40.
While Collette While Collette fails to disclose milling to a depth of at least 1 inch and a width of at least 6 inches, this is a matter of mere change in size. It has been held that where the only difference between the prior art and claims was a recitation of relative dimensions, the claims would not be patentably distinct from the prior art. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the milled section to have a depth of at least 1 inch and a width of at least 6 inches if that was sufficient to completely remove the joint seam as disclosed by Collette.
While the resulting combination fails to disclose applying a void reducing asphalt membrane to the surface of the milling slot, Kriech teaches applying a void reducing asphalt membrane to the surface (vertical face of longitudinal asphalt pavement construction joints; column 1 lines 20-26) of a pavement longitudinal joint. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination to apply a void reducing asphalt membrane to the surface of the milling slot in view of Kriech’s disclosure that such can reduce cracking in the pavement (column 2 through column 3 line 31).
Regarding claim 16, since Collette discusses road surfaces (column 1 line 12), the resulting combination makes obvious that the substrate comprises a roadway.
Regarding claim 17, Collette discloses that it is generally known that the majority of existing roadways, both concrete and asphalt, undergo constant repair (column 1 lines 20-21). The examiner takes Official Notice that asphalt concrete and cement concrete are old and well-known. The resulting combination makes obvious that one could identify a section of substrate comprising an asphalt concrete or a cement concrete since it is likely a roadway could be built with either asphalt concrete or cement concrete (which is the most commonly used concrete). It is noted that this “method” step does not require performing an actual step; the substrate is an existing condition.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Collette in view of Kriech as applied to claim 2 above, further in view of Wissel et al., US 2020/0002538 A1.
Regarding claim 3, the resulting combination includes the void reducing asphalt membrane migrating upward to reduce the volume of air voids (Kreich’s Abstract) since the void reducing asphalt membrane is applied between the substrate and the hot asphalt mix (claim 1 and column 4 line 37) which means the hot asphalt mix is applied above the void reducing asphalt membrane.
While the resulting combination fails to disclose compacting the hot asphalt mix, Kriech discloses reducing voids throughout the specification. Wissel teaches treating an asphalt pavement and discloses that inadequate compaction can cause a higher amount of air voids ([0018]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the resulting combination include the method step of compacting the hot mix asphalt in an effort to reduce the amount of air voids in the joint in view of Wissel’s disclosure as discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited sheet. RU 2148122 C1 is cited for the teaching of a method for repair of asphaltic concrete road pavements and the method steps of cutting a slot into the pavement, removing the cut material, placing a repair mix into the slot, and then compacting.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE J CHU whose telephone number is 571-272-7819. The examiner can normally be reached M-F generally 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Sebesta can be reached at 571-272-0547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE J CHU/Examiner, Art Unit 3671
/CHRISTOPHER J SEBESTA/Supervisory Patent Examiner, Art Unit 3671
