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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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).
Claim Rejections - 35 USC § 112
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “high speed” in step (3) of claim 10 is a relative term which renders the claim indefinite. The term “high speed” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
A rejection of claim 11 is precluded as claim 10 defines “high speed” as 4500-6000 r/m.
Claim Rejections - 35 USC § 103
Claim(s) 1 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huh (WO 2006/107179 A2) in view of Yan (Journal of Cleaner Production, 2024, 448, 141592).
Regarding Claim 1, Huh teaches asphalt/bitumen modifiers produced via compounding/granulating a mixture comprising 1-300 pbw waste thermoplastic, 1-33 pbw of waste rubber/elastomer, 1-300 pbw of plasticizer, and 1-1500 filler (Abstract). The thermoplastic can be polypropylene or polyethylene (¶ 23) and the rubber can be hydrocarbon rubbers such as BR, NR, EPDM, and butyl rubbers (¶ 25). The plasticizers are various oils that serve to lower melting points of components and increase affinity with bitumen (¶ 11, 19, 27), and are thus broadly construed as compatibilizers. Huh teaches various fillers inclusive of bentonite (¶ 32), which is a montmorillonite clay. The disclosed ranges overlap those claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Huh suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Huh. See MPEP 2123.
Huh differs from the subject matter claimed in that particle sizes of rubber, thermoplastic, and clay is not described and the particular masterbatch protocol claimed is not described.
With respect to the masterbatch protocol, case law holds that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the present case, Huh teaches the blends are processed to form homogenous mixtures (¶ 12) whereby preferably a double process is used whereby the mixture is formed into a homogenous blend in a shear mixer under high temperature/pressure and then further forming a homogenous substance into particles in an extruder (¶ 48). For instance, the mixtures are first compounded in a compression kneader/banbury at 90-200 degrees C to form a homogenous substance, subsequently melt blended/compounded within an extruder at 90-200 degrees C for a second time, extruded, and granulated (¶ 47). The product of Huh is seen to be no different in structure than what is implied by the present claims despite being made by alternative means. The limitations concerning mesh size of thermoplastic is seen to be met since the thermoplastic is ultimately melted during the blending/extrusion process (¶ 40-41). Thus, whatever particle size that was originally exhibited by the thermoplastic particles is lost over the course of the creation of the asphalt modifier.
With respect to rubber mesh size, Yan summarizes general knowledge known regarding the creation of polymer-containing asphalt modifiers produced via extrusion (Abstract). Yan teaches rubber mesh size is optimizable with respect to dispersion efficiency within asphalt, which may be for example 120 mesh (Page 8, Left Column). Accordingly, Yan indicates the mesh size of waste rubber is a known result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal rubber mesh sizes within the scope of the present claims so as to produce desired end results.
With respect to clay size, Yan summarizes general knowledge known regarding the creation of polymer-containing asphalt modifiers produced via extrusion (Abstract). Yan teaches it was known in the art nanoclays such as nano-organic montmorillonite are commonly used for improved properties, such as inhibiting oxidation owing to large surface area (Section 5, Pages 8-9). It would have been obvious to one of ordinary skill in the art to utilize nanoclays such as nano-organic montmorillonite because doing so would provide favorable properties such as oxidation inhibition as taught by Yan.
Regarding Claim 9, Huh teaches modified asphalt can be produced via combining 5-30 pbw modifier with 100 pbw asphalt (¶ 50), equivalent to 4.7-23:77-95.3 modifier:matrix asphalt.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huh (WO 2006/107179 A2) in view of Yan (Journal of Cleaner Production, 2024, 448, 141592) and Yan-2 (Sustainability 2023, 15, 14079).
The discussion regarding Huh and Yan within ¶ 9-14 is incorporated herein by reference.
Regarding Claim 2, Huh teaches the use of aromatic oil (¶ 27), but differs from the subject matter claimed in that a preferred aromatic content is not specified. Yan-2 teaches the use of aromatic oil is known to promote dispersion of waste rubber within asphalt systems, owing to the force between rubber and aromatics (Abstract). Accordingly, Yan-2 indicates the aromatic content is a known result effective variable since changing it would alter the dispersibility characteristics of waste rubber within asphalt systems. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal aromatic contents within the scope of the present claims so as to produce desirable end results.
Huh teaches the extrudates are granulated to 0.01-2 mm (equivalent to roughly at least 10 mesh) (¶ 47). Accordingly, Huh is suggestive of overlapping particle sizes. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Huh suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Huh. See MPEP 2123.
The remaining limitations of claim 2 pertains to the process steps of creating the modifiers. The product of Huh is seen to be no different in structure than what is implied by the present product-by-process claims despite being made by alternative means.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Huh (WO 2006/107179 A2) in view of Yan (Journal of Cleaner Production, 2024, 448, 141592) and Dalhat (Journal of Traffic and Transportation Engineering, 2023, 10(2), 159-184).
The discussion regarding Huh and Yan within ¶ 9-14 is incorporated herein by reference.
Regarding Claim 10, Huh differs from the subject matter claimed in that particular details regarding the preparation of modified asphalt are not described. Dalhat teaches known general conventional process steps toward the creation of polymer modified asphalt (Abstract). Given the absence of particular details regarding how one blends modifier / asphalt binder and the disclosure of what was conventionally known by Dalhat, it would have been obvious to one of ordinary skill in the art to utilize the conventional known process steps of blending modifiers / asphalt binders taught by Dalhat to thereby afford the predictable result of modified asphalt mixtures.
Dalhat teaches heating the matrix asphalt until melting, adding modifier with stirring/heating, high speed/shear mixing and heating, low-shear agitation/dispersion and heating, and heat preservation / post-soaking / non-agitative hot storage are conventional known process steps toward the incorporation of modifier into asphalt mixtures (Figure 1; Section 3). Dalhat teaches the temperature and shear speed used within the process steps influences the time needed for obtaining homogeneity (Section 3.1; Figure 2). Further, Dalhat indicates post-soaking at certain temperatures is required to allow for swelling and ensure compatibility and sufficient dispersion (Page 161, Left Column). Accordingly, Dalhat indicates the time/temperature/shear speed used within the modifer incorporation process are known result effective variables subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal times/temperatures/shear speeds within the scope of the present claims so as to produce desirable end results.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 8/11/2025 have been fully considered but they are not persuasive.
Applicant urges the asphalt modifiers are low cost, green, low carbon, high viscosity, and high toughness modifiers. Applicant urges the modifiers utilize layered nano-clay material. This is not found persuasive. The use of nano-clay filler would have been obvious for reasons set forth above. Applicant has not identified any structural features claimed that distinguish the modifiers over the applied prior art.
Applicant urges the two-step extrusion method claimed solves the problem that nano-clay materials are difficult to disperse. This is not found persuasive. Huh expressly teaches a two-step extrusion process. The prior art need not recognize the criticality of a limitation, but rather the prior art needs to only teach that limitation. The rejections of record have shown that the claimed limitation is present in the prior art. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant. See MPEP 2144(IV).
At present, the modifiers suggested by the combination of references is seen to be no different in structure than those suggested by the product claims despite being made by alternative means. Applicant has failed to come forward with factual evidence showing a perceivable difference in structure between the modifiers claimed and those of the prior art. "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. See MPEP 2113(II).
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.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759