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 .
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.
Claims 1-2, 4-6, 9-12, 14-16, and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Cochran (US 2021/0079224 A1) in view of Jeganathan (US 2014/0170306 A1), Bumbu (US 2016/0075818 A1), and Hachikian (US 7,547,373 B2).
Regarding claim 1, Cochran teaches an asphalt binder composition (Abstract), comprising:
Two epoxidized fatty acid ester compounds ([0047], [0056], and [0134]) wherein the fatty acid ester compounds contain at least one oxirane (epoxide) group ([0050])
An asphalt binder ([0067]), which reads on the claimed “asphalt component”
Cochran differs from claim 1 because it is silent with regard to the claimed “crosslinker, wherein the crosslinker does not comprise a polymer.”
In the same field of endeavor, Jeganathan teaches a method for applying a fast curing epoxy traffic marking composition (Abstract), which includes an epoxy formulation and a curing formulation separated as a two-part system ([0005]). Jeganathan further teaches that suitable crosslinking/curing agents include amines such as, inter alia, ethylenediamine ([0027]-[0028]), which reads on the claimed “crosslinker, wherein the crosslinker does not comprise a polymer” because the instant Specification states that ethylenediamine is a suitable polyamine crosslinker (see instant Specification at [50]) and because ethylenediamine is not and does not contain a polymer.
Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate ethylenediamine as a crosslinker within the formulation of Cochran for the purpose of forming a fast-curing epoxy composition.
Cochran further differs from claim 1 because it is silent with regard to the incorporation of a diglycidyl ether.
In the same field of endeavor, Bumbu teaches a fast-curing two-component epoxy resin (abstract) containing epoxy resin formulations which include diluents such as neopentyl glycol diglycidyl ether ([0047]). It is prima facie obvious to select a known material based on its art-recognized suitability for its intended use (SEE MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the aforementioned diglycidyl ether(s) into the formulation of Cochran, as taught by Bumbu, as Bumbu recognizes them as suitable reactive diluents in epoxy formulations.
Jeganathan further teaches that the polyamine hardener reacts with the epoxide ([0005]). The expoxy-containing diluent within the combined formulation would therefore react with the polyamine hardener likewise to the other epoxy resin components, which reads on the claimed limitation requiring a “reaction product between the diglycidyl ether and the crosslinker.”
Cochran further differs from claim 1 because it is silent with regard to the claimed limitation wherein the components are mixed in “sufficient amounts” so as to form a crosslinkable composition. However, Cochran teaches the mixing of components under effective conditions to produce an asphalt binder composition ([0183]) and teaches that the two epoxidized fatty acid ester compounds are included in amounts ranging from 5.0 to 99 wt% ([0159]). Furthermore, Jeganathan teaches the incorporation of the amine hardener in amounts sufficient to cure epoxy resin ([0021]). Furthermore, since the instant Specification explicitly states that “suitable amounts” of each component comprises 10-90 wt% of the formulation of each component (see instant Specification at [117] and [119]), the teachings of Cochran in view of Jeganathan read on (for the polymer and epoxidized fatty acid components, respectively) the claimed limitation of mixing “sufficient amounts” within the formulation.
Cochran further differs from claim 1 because it is silent with regard to the provision of the above-described materials in a kit with each component being held in a separate container.
In the same field of endeavor, Hachikian teaches a two-part epoxy adhesive (col. 1, line 11), comprising an epoxy resin component and a hardener component (col. 4, lines 9-11), which may be dispensed from separate containers and mixed when needed (col. 4, lines 16-19). It therefore would have been obvious to one of ordinary skill in the art at the time of filing to provide the inventive composition of Cochran as a two-part system (a “kit”) wherein the epoxy components and crosslinker (hardener) are kept in separate containers before mixing, which reads on the claimed “kit,” “first container,” and “second container.”
Cochran also differs from claim 1 because it is silent with regard to the cured product forming a “three-dimensional crosslinked polymer network” and with regard to the asphalt component being within the aforementioned network. However, Cochran teaches the formation of an applied paving material and compacting the material to form a pavement ([0244]), teaches examples of production which take place outdoors (e.g., Minnesota State Highway 6 [0277]), and teaches that the composition is UV active ([0240]). This method is substantially similar to the claimed production method, which teaches the use of the composition for pavement repair (see instant Specification at [44]) and the subsequent crosslinking which may be due to ultraviolet light exposure in ambient conditions (see instant Specification at [0139]). Therefore, Cochran teaches a composition which contains all of the same components as the claimed formulation, teaches the application of the composition for substantially similar purposes, in similar conditions, and with exposure to substantially similar crosslinking conditions. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed “three-dimensional crosslinked polymer network” and asphaltic component therein will therefore necessarily be present in Cochran as applied above.
Regarding claim 2, Jeganathan teaches the use of polyamine compounds as described above.
Regarding claim 4, Cochran teaches that the inventive asphalt binder may include recycled asphalt pavement and recycled asphalt shingles ([0160]).
Regarding claims 5 and 6, Cochran teaches the use of recycled asphalt shingles ([0160]), which reads on the claimed “asphalt shingle waste” because the instant Specification clearly states that recycled asphalt materials, including recycled asphalt shingles, are included within the purportedly inventive composition (see instant Specification at [44]). Cochran differs from claims 5 and 6 because it is silent with regard to the particular components within the waste shingle and their compositional amounts, however, Cochran teaches the use of a waste product that is substantially identical to included products listed within the instant Specification as falling within the definition of the claimed “asphalt shingle waste.” Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed components and compositional amounts within the claimed “asphalt shingle waste” will therefore necessarily be present in Cochran as applied to claim 1, above.
Regarding claim 9, Cochran teaches the incorporation of between 5.0 and 99 wt% ([0159]) of the two epoxidized fatty acid ester compounds, and teaches the incorporation of up to 20 wt% of recycled asphalt pavement within the overall composition ([0004]). Furthermore, Bumbu teaches the incorporation of the diglycidyl ether diluent in amounts ranging from 10 – 30 wt% based on the combined amounts of diglycidyl ether and epoxy resin ([0047]). It therefore would have been obvious to include the diglycidyl ether of Bumbu within the formulation of Chochran in amounts ranging from about 0.5 to about 42.3 wt% (Corresponding to compositions of 5 wt% epoxidized fatty acid ester components and a 10 % loading of diluent and 99 wt% epoxidized fatty acid ester components and a 30 % loading of diluent, respectively).
With respect to one-another (because the claimed “second formulation” only contains the two aforementioned components), the diglycidyl ether component comprises from about 2.4% to 100% of the mixture (corresponding to a 20% recycled asphalt / 0.5% epoxy component mixture and a ~0% recycled asphalt / 42.3% epoxy component mixture, respectively), and the recycled asphalt may comprise from ~0% to about 97.6% of the mixture. In each case, these ranges overlap the claimed ranges, establishing prima facie cases of obviousness.
Regarding claim 10, Cochran teaches the incorporation of a mineral filler ([0167]) with the inventive product, but is silent with regard to the amount of said filler. However, Hachikian teaches the incorporation of 15-25 % of limestone filler within the epoxy component of the two-part system (col. 3, line 30). Therefore, it would have been obvious to one of ordinary skill in the art before the time of filing to incorporate between 15 and 25% limestone mineral filler into the epoxy/asphalt mixture of Cochran, which overlaps the claimed range of “20% to 70%,” establishing a prima facie case of obviousness.
Regarding claim 11, as described above, Cochran as modified above results in a two-part epoxy system wherein the two parts read on the claimed “first formulation” and “second formulation.” Cochran further teaches a method of forming a pavement involving mixing the components to form a mixture, and applying the composition to a surface (0244]). While Cochran does not specify the step of curing the composition, Cochran teaches the application of the inventive composition to a road, which is exposed to outdoor conditions such as temperature and UV-light exposure which reads on the claimed “curing the asphalt composition” as is described in the rejection of claim 1, above. Therefore, the method taught by Cochran reads on the claimed method. Finally, as described above, Jeganathan teaches the reaction of the polyamine hardener with the epoxy resin ([0005]), and therefore Cochran as modified reads on the claimed limitation requiring a reaction product formed from these two components.
Furthermore, as described above, Cochran as modified by Lupien contains butyl glycidyl ether, which reads on the claimed “alkyl glycidyl ether.”
Regarding claim 12, Jeganathan teaches the use of polyamine compounds as described above.
Regarding claim 14, Cochran teaches that the inventive asphalt binder may include recycled asphalt pavement and recycled asphalt shingles ([0160]).
Regarding claims 15 and 16, Cochran teaches the use of recycled asphalt shingles ([0160]), which reads on the claimed “asphalt shingle waste” because the instant Specification clearly states that recycled asphalt materials, including recycled asphalt shingles, are included within the purportedly inventive composition (see instant Specification at [44]). Cochran differs from claims 5 and 6 because it is silent with regard to the particular components within the waste shingle and their compositional amounts, however, Cochran teaches the use of a waste product that is substantially identical to included products listed within the instant Specification as falling within the definition of the claimed “asphalt shingle waste.” . Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed components and compositional amounts within the claimed “asphalt shingle waste” will therefore necessarily be present in Cochran as applied to claim 1, above.
Regarding claim 19, as described above, Cochran teaches the incorporation of between 5.0 and 99 wt% ([0159]) of the two epoxidized fatty acid ester compounds, and teaches the incorporation of up to 20 wt% of recycled asphalt pavement within the overall composition ([0004]). Furthermore, Bumbu teaches the incorporation of the diglycidyl ether diluent in amounts ranging from 10 – 30 wt% based on the combined amounts of diglycidyl ether and epoxy resin ([0047]). It therefore would have been obvious to include the diglycidyl ether of Bumbu within the formulation of Chochran in amounts ranging from about 0.5 to about 42.3 wt% (Corresponding to compositions of 5 wt% epoxidized fatty acid ester components and a 10 % loading of diluent and 99 wt% epoxidized fatty acid ester components and a 30 % loading of diluent, respectively).
With respect to one-another (because the claimed “second formulation” only contains the two aforementioned components), the diglycidyl ether component comprises from about 2.4% to 100% of the mixture (corresponding to a 20% recycled asphalt / 0.5% epoxy component mixture and a ~0% recycled asphalt / 42.3% epoxy component mixture, respectively), and the recycled asphalt may comprise from ~0% to about 97.6% of the mixture. In each case, these ranges overlap the claimed ranges, establishing prima facie cases of obviousness.
Regarding claim 20, Cochran as modified meets all of the claimed compositional limitations as described above, and teaches the application of the inventive coating to a surface ([0082]), which reads on the claimed “substrate.” Furthermore, as described in the rejection of claim 1 above, the formulation of Cochran as applied above will necessarily result in a crosslinked polymer network including the asphalt component, as claimed. Finally, the formulation of Cochran as modified by Jeganathan includes a polyamine hardener which is not a polymer.
Furthermore, as described above, Cochran as modified by Lupien contains butyl glycidyl ether, which reads on the claimed “alkyl glycidyl ether.”
Regarding claims 21-23, as described above, Cochran as modified teaches the incorporation of about 0.5-42.3 wt% of the diglycidyl ether diluent, which overlaps the claimed range of “0.1% to 20% by weight,” establishing a prima facie case of obviousness.
Furthermore, Jegenathan exemplifies the incorporation of hardeners in an amount of 15g per 30 g of epoxy resin ([0046]). It is prima facie obvious to substitute equivalents based on their art-recognized suitability for their intended use (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the hardeners of Jegenathan into the formulation of Cochran at the same rate because Jegenathan denotes this ratio as suitable for crosslinking epoxy resins. This rate is equivalent to 50 wt% with respect to the epoxy resin. Since Cochran teaches the epoxy resin (the epoxidized fatty acid esters) as comprising between 5.0 and 99 wt% of the ceomposition ([0159]), it would have been obvious to one having ordinary skill in the art to incorporate the crosslinker in amounts ranging from about 2.5 to about 49.5 wt%. This range overlaps the claimed range of “1% to 20% by weight,” establishing a prima facie case of obviousness.
Claims 7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Cochran (US 2021/0079224 A1) in view of Jeganathan (US 2014/0170306 A1), Bumbu (US 2016/0075818 A1), and Hachikian (US 7,547,373 B2), and further in view of Warner (US 2023/0278925 A1).
Regarding claim 7, Cochran as modified teaches all of the limitations of claim 1, as described above. Cochran teaches the incorporation of waste asphalt pavement ([0160]), but is silent with regard to the incorporation of the claimed components within the waste asphalt pavement.
In the same field of endeavor, Warner teaches compounds and methods for improving or enhancing the paving or re-paving of asphalt (Abstract), teaches the use of reclaimed or recycled asphalt pavement ([0004]), read on the claimed “asphalt pavement waste” because the instant Specification clarifies that recycled asphalt pavement is usable in the instant formulation (see instant Specification at [44]). Warner further teaches that recycled asphalt pavement comprises asphalt binder and aggregates ([0056]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same use (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate recycled asphalt pavement comprising asphalt binder and aggregates for methods relating to the re-paving of road surfaces as taught by Warner, within the formulation of Cochran, as Warner teaches that recycled asphalt pavement containing asphalt binder and aggregates are useful for this application.
Regarding claim 17, Cochran as modified teaches all of the limitations of claim 11 as described above. Cochran teaches the incorporation of waste asphalt pavement ([0160]), but is silent with regard to the incorporation of the claimed components within the waste asphalt pavement.
In the same field of endeavor, Warner teaches compounds and methods for improving or enhancing the paving or re-paving of asphalt (Abstract), teaches the use of reclaimed or recycled asphalt pavement ([0004]), read on the claimed “asphalt pavement waste” because the instant Specification clarifies that recycled asphalt pavement is usable in the instant formulation (see instant Specification at [44]). Warner further teaches that recycled asphalt pavement comprises asphalt binder and aggregates ([0056]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same use (see MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate recycled asphalt pavement comprising asphalt binder and aggregates for methods relating to the re-paving of road surfaces as taught by Warner, within the formulation of Cochran, as Warner teaches that recycled asphalt pavement containing asphalt binder and aggregates are useful for this application.
Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Cochran (US 2021/0079224 A1) in view of Jeganathan (US 2014/0170306 A1), Bumbu (US 2016/0075818 A1), and Hachikian (US 7,547,373 B2), and further in view of USDOT (United States Department of Transportation Publication No. FHWA-HRT-11-021 Reclaimed Asphalt Pavement in Asphalt Mixtures: State of the Practice 2011)
Regarding claim 8, Cochran as modified teaches all of the limitations of claim 1 as described above. Cochran differs from claim 8 because it is silent with regard to the amount of waste asphalt included in the composition with regard to the total amount of asphalt.
In the same field of endeavor, USDOT has provides analytics on the amount of reclaimed asphalt pavement being used in the United States, and provides information concerning the state of practice for recycled asphalt pavement usage in the United States (Foreword). USDOT teaches that State transportation department specifications allow for the use of up to 30 percent of recycled asphalt pavement in hot-mix asphalts used in the intermediate and surface layers of pavement (p. 13-14). Therefore, it would have been obvious to one of ordinary skill in the art before the time of filing to incorporate up to 30% of recycled asphalt based on the total amount of asphalt, which overlaps the claimed range of “1% to 40%,” establishing a prima facie case of obviousness.
Regarding claim 18, Cochran as modified teaches all of the limitations of claim 11 as described above. Cochran differs from claim 8 because it is silent with regard to the amount of waste asphalt included in the composition with regard to the total amount of asphalt.
In the same field of endeavor, USDOT has provides analytics on the amount of reclaimed asphalt pavement being used in the United States, and provides information concerning the state of practice for recycled asphalt pavement usage in the United States (Foreword). USDOT teaches that State transportation department specifications allow for the use of up to 30 percent of recycled asphalt pavement in hot-mix asphalts used in the intermediate and surface layers of pavement (p. 13-14). Therefore, it would have been obvious to one of ordinary skill in the art before the time of filing to incorporate up to 30% of recycled asphalt based on the total amount of asphalt, which overlaps the claimed range of “1% to 40%,” establishing a prima facie case of obviousness.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed May 18, 2026, with respect to the rejections of the claims under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Cochran (US 2021/0079224 A1) in view of Jeganathan (US 2014/0170306 A1), Bumbu (US 2016/0075818 A1), and Hachikian (US 7,547,373 B2), as described above.
Applicant contends that the combination of references “does not show that the asserted combination would cure to form a reaction product specifically between a diglycidyl ether and the claimed crosslinker.” However, a diglycidyl ether was not required in the previous set of claims on which the rejection was based. The combination of references above, which now reject modified claims requiring a diglycidyl ether, now contain all of the claimed components in all of their claimed amounts within a single two-part epoxy kit. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed reactivity will therefore, prima facie, necessarily be present in Cochran as modified, and as applied above. Importantly, the Applicant has provided no articulation or evidence to support the notion that the prior art combination would not form the desired reaction products. The prior art contains the same combination of functional groups which meets all of the claimed limitations. Furthermore, all of the claimed chemistries are present therein and will therefore undergo chemical reactions likewise to the claimed formulation, prima facie.
Conclusion
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
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