NAIDOO, Premnathan et al.

Patent Trials and Appeals Board

Jan 9, 2020

14304963 - (D) (P.T.A.B. Jan. 9, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/304,963 06/15/2014 Premnathan NAIDOO LEHI-105-CIP3 1012
155246 7590 01/09/2020
Dority & Manning, P.A. and Lehigh Technologies,Inc
Post Office Box 1449
Greenville, SC 29602-1449
EXAMINER
HEINCER, LIAM J
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
01/09/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PREMNATHAN NAIDOO and VERNON PATRICK KEATING
____________

Appeal 2019-001181
Application 14/304,963
Technology Center 1700
____________

Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a final
rejection of claims 1–40, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Lehigh
Technologies, Inc. Appeal Br. 3.
Appeal 2019-001181
Application 14/304,963

2

The invention is principally directed to “to asphalt compositions,
asphalt modifiers, methods of making and using such compositions and
modifiers, methods of modifying asphalt, and asphalt products.” Spec. ¶ 6.
Claim 1 is illustrative of the subject matter claimed and is reproduced below
from the Claims Appendix to the Appeal Brief:
1. An asphalt comprising:

a first component comprising a petroleum asphalt; and,

a second component comprising particles formed from a
melted mixture of a resin and a binder;

wherein, the second component is dispersed within the
first component;

wherein the resin is selected from the group consisting
ethylene vinyl acetate; polystyrene; styrene butadiene block
copolymer; styrene ethylene butylene styrene; natural rubber,
synthetic rubber; styrene-butadiene rubbers; and,

wherein the binder is selected from the group consisting
of petroleum micro waxes, Trinidad Lake asphalt (TLA),
gilsonite, terpolymers, and montan waxes.

Independent claim 11 is directed to a method of treating a petroleum
asphalt to make the asphalt of claim 1. Claim 21 is directed to an asphalt
similar to the asphalt of claim 1 but including a third component.
Independent claim 31 is also directed to a method of treating a petroleum
asphalt modifying a petroleum asphalt that is similar to the method of claim
11.

Appeal 2019-001181
Application 14/304,963

3

Appellant requests review of the following rejections from the
Examiner’s Final Office Action:2
I. Claims 1, 4, 7–11, 14, and 17–20 rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Prejean (US 2008/0153945 A1, published June
26, 2008).

II. Claims 2, 3, 5, 6, 12, 13, 15, and 16 rejected under 35 U.S.C.
§ 103 as unpatentable over Prejean, Avramidis (WO 2012/049650 A1,
published April 19, 2012), and Shaghaghi (US 2008/0058470 A1, published
March 6, 2008).

III. Claims 21, 24, 27–31, 34, and 37–40 rejected under 35 U.S.C.
§ 103 as unpatentable over Prejean and Memon (US 6,444,731 B1, issued
September 3, 2002).

IV. Claims 22, 23, 25, 26, 32, 33, 35, and 36 rejected under
35 U.S.C. § 103 as unpatentable over Prejean, Memon, Avramidis, and
Shaghaghi.

Appellant presents arguments for independent claims 1 and 11
(Rejection I) as well as for independent claims 21 and 31 (Rejection III) and
do not present arguments for their respectively rejected dependent claims.
See generally Appeal Br. Appellant presents additional arguments for
dependent claims 2, 3, 5, 6, 12, 13, 15, and 16 as a group (Rejection II) as
well as for dependent claims 22, 23, 25, 26, 32, 33, 35, and 36 as a group
(Rejection IV). Id. Accordingly, we select the independent claims as
representative of the claimed subject matter for their respective rejections
and claims 2 and 22 as representative of the claimed subject matter for
Rejections II and IV and decide the appeal as to all grounds of rejection

2 For brevity, we have combined the statements of rejection that rely on the
same prior art.
Appeal 2019-001181
Application 14/304,963

4

based on the arguments presented for the representative claims.
OPINION
CLAIM INTERPRETATION
As a preliminary matter, our review of the Examiner’s analysis
requires that the claims must first be construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1457 (Fed. Cir. 1997).
Claims 1 and 21, drawn to asphalt, recite a second component
comprising particles formed from a melted mixture of a resin and a binder
that is dispersed within a first component comprising a petroleum asphalt or
dispersed in the asphalt comprising particles formed from a melted mixture
of a resin and a binder.
Claims 11 and 31, drawn essentially to a method of making the
asphalt of claim 1, respectively, recite a step of contacting the petroleum
asphalt with particles formed from a melted mixture of a resin and a binder
to form a treated asphalt or combining the petroleum asphalt with a first
component and a second component, respectively.
In essence, all independent claims require combining at least a
petroleum asphalt, a first component, and a second component to form a
treated asphalt. To give proper weight to the evidence of record and the
respective positions of Appellant and the Examiner, we must first determine
whether the asphalt is a physical mixture of the at least a petroleum asphalt,
a first component, and a second component, where all components retain
their individual structure, or the asphalt is a product resulting from these
combined components after undergoing a treatment where all the
Appeal 2019-001181
Application 14/304,963

5

components become a single composition wherein the components are
essentially indistinguishable. Thus, the review of the grounds of rejection of
the appealed claims necessarily entails the interpretation of the scope of the
appealed claims, giving the broadest reasonable interpretation to the terms
thereof consistent with the written description provided in Appellant’s
Specification as it would be interpreted by one of ordinary skill in this art.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Terms in the appealed claims must be given their broadest reasonable
interpretation including the ordinary meaning unless another meaning is
intended by Appellant as established in the written description of their
Specification. See, e.g., In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989).
When the Specification does not contain an express definition, a reasonable,
supported interpretation of the appealed claims that differs from that urged
by applicants can be used to determine the patentability of the claims.
Morris, 127 F.3d at 1055–56 (“Absent an express definition in their
specification, the fact that appellants can point to definitions or usages that
conform to their interpretation does not make the PTO’s definition
unreasonable when the PTO can point to other sources that support its
interpretation.”). Indeed, “[i]t is the applicants’ burden to precisely define
the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].”
Morris, 127 F.3d at 1055–56.
The Specification discloses that “when the particles of polyolefin
resin/binder (or in general the primary rheology modifying component) are
heated to the melt point of the binder (or in general the secondary rheology
modifying component), the binder materials quickly melt and physically
partition the resin molecules such that the resin will fall apart in the
Appeal 2019-001181
Application 14/304,963

6

hot/warm asphalt base and disperse quickly and homogenously.” Spec. ¶ 74.
This portion of the Specification discloses that dispersion of the particles in
the asphalt occurs only when the particles contact heated asphalt (hot/warm)
so as to melt or physically partition the resin molecules. In other words, the
Specification discloses that the particles (the claimed second component) are
no longer distinguishable once it contacts the petroleum asphalt and,
essentially, become one with the asphalt.
As we note above, claims 1 and 21, drawn to an asphalt product, recite
that the particles (second component) are dispersed in the petroleum asphalt
(first component). Applying the preceding legal principles, we determine
that the subject matters of independent claims 1 and 21 are directed to an
asphalt product that has been subjected to temperature treatment such that
the resin/binder particles added to the asphalt do not retain their structure.
That is, claims 1 and 21 are directed to a treated or modified asphalt product.
While claims 11 and 31, drawn to methods of treating/modifying a
petroleum asphalt, do not recite that the resin/binder particles are dispersed,
they do recite that the combination of the resin/binder particles are contacted
or combined with the petroleum asphalt to form a treated/modified asphalt.
Because the combination of the resin/binder particles and the asphalt is
described as occurring when the asphalt is hot/warm (Spec. ¶ 74), we
likewise interpret these claims as directed to a making a treated or modified
asphalt product for the reasons we give above.
REJECTIONS
After review of the respective positions Appellant provides in the
Appeal Brief and the Examiner provides in the Final Action and the Answer,
we AFFIRM the Examiner’s rejections of claims 1–40 under 35 U.S.C. §§
Appeal 2019-001181
Application 14/304,963

7

102(a)(1) and 103 for essentially the reasons the Examiner presents in the
Final Office Action and the Answer. We add the following for emphasis.
Rejection I under 35 U.S.C. § 102(a)(1)
We refer to the Examiner’s Final Office Action for a complete
statement of the ground of this rejection. Final Act. 2.
Claim 1
Appellant contends that Prejean does not teach claim 1’s second
component comprising particles formed from a melted mixture of a resin and
a binder. Appeal Br. 8. According to Appellant, Prejean’s asphalt
composition can include individual components that are similar to the binder
and resin materials of the asphalt of instant claim 1, but they are added
separately and not as particles formed of a melted mixture of the resin and
the binder. Id.
Appellant’s arguments do not persuade us of reversible error in the
Examiner’s determination of anticipation. In order to anticipate, a reference
must identify something falling within the claimed subject matter with
sufficient specificity to constitute a description thereof within the purview of
§ 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). It is also well
settled that when a claimed product reasonably appears to be substantially
the same as a product disclosed by the prior art, the burden is on the
applicant to prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed product, and that
it is of no moment whether the rejection is based on § 102 or § 103 since the
burden is on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed
Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977).

Appeal 2019-001181
Application 14/304,963

8

Like Appellant’s claimed invention, Prejean is directed to making an
asphalt comprising a plurality of components while undergoing heating.
Prejean ¶ 40 (Example 1). Appellant does not dispute that the composition
of Prejean’s treated asphalt is the same as the composition of the claimed
treated asphalt. Further, Appellant’s acknowledgement that Prejean’s
treated asphalt composition can include resin and binder materials similar to
the binder and resin materials of the particles used to obtain the claimed
treated asphalt supports the Examiner’s finding that both treated asphalt
compositions are the same. Final Act. 2. Appellant has not provided any
persuasive reasoning or credible evidence to show otherwise.
Claim 11
Claim 11 is directed to a method of treating a petroleum asphalt
comprising contacting a petroleum asphalt with particles formed from a
melted mixture of a resin component and a binder component to form a
treated asphalt.
The Examiner finds that Prejean describes a method of making a
pretreated asphalt comprising the addition of resin and binder materials in
the form of pellets. Final Act. 2–3; Prejean ¶ 35. In the Answer, the
Examiner explains that Prejean teaches the asphalt modifier comprises an
elastomer that is a blend of components that correspond to the binder and
resin of the claimed particle. Ans. 8; Prejean ¶¶ 14, 23–27. The Examiner
finds that these components are blended prior to addition to the asphalt
composition. Ans. 8; Prejean claim 12. Prejean also discloses that, among
the benefits of using an elastomer blend are faster dissolution of the
modifying polymers in asphalt and the stick temperature of the elastomer is
raised when melt blended. Prejean ¶ 29.
Appeal 2019-001181
Application 14/304,963

9

Appellant principally argues that Prejean teaches that the individual
elastomer components can be added to the composition as pellets or in any
other physical form but that Prejean’s methods do not include contacting an
asphalt with particles formed from a melted mixture of two components as
found in independent claim 11. Appeal Br. 12.
This argument also lacks persuasive merit. To anticipate, one skilled
in the art must be able to “at once envisage” the claimed subject matter in
the prior art disclosure. In re Petering, 301 F.2d 676, 681 (CCPA 1962).
Further, in determining whether a reference anticipates the subject matter
recited in a claim, “it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d
825, 826 (CCPA 1968).
Given Prejean’s disclosure that the asphalt modifier components can
be added in the form of pellets (Prejean ¶ 35), one skilled in the art would
have drawn a reasonable inference that Prejean envisages using the
elastomer melt-blend of a resin and a binder in the form of a pellet.3 Thus,
Appellant has not adequately explained how the claimed invention
distinguishes from Prejean’s method.
Accordingly, we AFFIRM the Examiner’s prior art rejection of claims
1, 4, 7–11, 14, and 17–20 under 35 U.S.C. § 102(a)(1) for the reasons the
Examiner presents and we give above.

3 We note that the Specification recognizes that pellets comprising a binder
and other components are known in the art as a technique to simplify
equipment and steps in the asphalt formation process. Spec. ¶ 19.
Appeal 2019-001181
Application 14/304,963

10

Rejection II under 35 U.S.C. § 103
Claim 2
Claim 2 recites that the resin comprises at least one of glycidyl
functionality, glycidyl acrylate functionality, or epoxide functionality.
The Examiner relies on the additional references to Avramidis and
Shaghaghi for this feature. Final Act. 3–4.
Appellant acknowledges that Avramidis’s styrene-butadiene
copolymers can be crosslinked with an epoxy functionalized monomer such
as glycidyl methacrylate. Appeal Br. 20. However, Appellant asserts that, if
the copolymer is crosslinked with the glycidyl methacrylate, the functional
groups of the crosslinker (the glycidyl methacrylate) will react with the
functionality of the copolymer according to the crosslinking reaction and the
resulting composite would merely include the crosslinked styrene-butadiene
copolymers (formed through reaction of the epoxy functionalized crosslinker
with the not-yet-crosslinked styrene-butadiene copolymer). Id.
Appellant’s arguments do not point to reversible error in the
Examiner’s determination of obviousness.
As the Examiner finds, Avramidis teaches modifying an asphalt with
a glydicyl modified styrene butadiene polymer modified with glydicyl
methacrylate having a low gel content (low degree of crosslinking). Ans.
10; Avramidis 6. The Examiner further finds that Avramidis adds the curing
system so it mixes with the asphalt and, thus, crosslinking reactions do not
occur prior to such addition. Ans. 10; Avramidis 22 (Table 3), 23 (Table 4).
Based on these disclosures, the Examiner finds that Avramidis’s glydicyl
modified styrene butadiene polymer modified with glydicyl methacrylate
Appeal 2019-001181
Application 14/304,963

11

would contain at least some glycidyl functionality when added to asphalt.
Ans. 10.
Appellant’s arguments do not address these findings by the Examiner.
Accordingly, we AFFIRM the Examiner’s prior art rejection of claims 2, 3,
5, 6, 12, 13, 15, and 16 under 35 U.S.C. § 103 for the reasons the Examiner
presents and we give above.
Rejection III under 35 U.S.C. § 103
Claim 21
Claim 21 recites that the asphalt includes an additional third
component dispersed in the asphalt selected from the group consisting of
ground tire rubber and polymers of styrene and butadiene.
The Examiner relies on the additional references to Memon for this
feature. Final Act. 4–5.
Appellant argues that Memon fails to disclose or suggest an asphalt
that includes a component dispersed in the asphalt comprising particles
formed from a melted mixture of a resin and a binder as delineated in claim
21. Appeal Br. 14. Thus, Appellant contends that the asphalt resulting from
the combined teachings of Prejean and Memon would include the separate
components of the asphalt of Prejean (i.e., the asphalt, the first elastomer, the
second elastomer, and the plastomer) and the ground crumb rubber/
dispersant particles of Memon. Id. at 15.
Appellant’s arguments do not point to reversible error in the
Examiner’s determination of obviousness essentially for the same reasons
we give with respect to the arguments presented for claim 1.
Appellant does not dispute that the Examiner’s determination that it
would have been obvious to one skilled in the art to add Memon’s crumb
Appeal 2019-001181
Application 14/304,963

12

rubber to Prejean’s asphalt composition. Final Act. 5. Instead, Appellant
argues that the combined teachings do not teach the claimed particles formed
from a melted mixture of a resin and a binder. Appeal Br. 15.
As we note above, claim 21, like claim 1, is directed to a treated
asphalt. Once the particle is in contact with the asphalt, the binder materials
quickly melt and physically partition the resin molecules such that the resin
will fall apart in the hot/warm asphalt base and disperse quickly and
homogenously and the treated asphalt does not contain particles any longer.
See Spec. ¶ 74.
Thus, Appellant’s acknowledgement that the treated asphalt from the
combined teachings of the cited art can include resin and binder materials as
well as ground tire rubber supports the Examiner’s finding that both treated
asphalt compositions are the same. Final Act. 2. Appellant has not provided
any persuasive reasoning or credible evidence to show otherwise. Spada,
911 F.2d at 708; Best, 562 F.2d at1255.
Claim 31
Claim 31 differs from the method of claim 11 in that it further recites
the addition of a third component to the asphalt selected from the group
consisting of ground tire rubber and polymers of styrene and butadiene.
We refer to the Examiner’s Final Office Action for the statement of
rejection for this claim. Final Act. 6. The rejection relies on Memon for the
noted missing feature. Id.
Appellant principally argues that the combined teachings of the cited
art do not suggest a method that includes combining an asphalt with particles
formed from a melted mixture of two components as found in independent
claim 31. Appeal Br. 17–18.
Appeal 2019-001181
Application 14/304,963

13

We have considered these arguments and find them unpersuasive of
reversible error for the reasons given in our discussion of claim 11.
Accordingly, we AFFIRM the Examiner’s prior art rejection of claims
21, 24, 27–31, 34, and 37–40 under 35 U.S.C. § 103 for the reasons the
Examiner presents and we give above.
Rejection IV under 35 U.S.C. § 103
Claim 22
Claim 22, like claim 2, recites that the resin comprises at least one of
glycidyl functionality, glycidyl acrylate functionality, or epoxide
functionality.
The Examiner again relies on the additional references to Avramidis
and Shaghaghi for this feature. Final Act. 5–6.
Appellant also relies on the same arguments presented for claim 2 to
address the rejection of claim 22. Compare Appeal Br. 21–22 with Appeal
Br. 20. We direct Appellant’s attention to our discussion above regarding
this issue.
Accordingly, we AFFIRM the Examiner’s prior art rejection of claims
22, 23, 25, 26, 32, 33, 35, and 36 under 35 U.S.C. § 103 for the reasons the
Examiner presents and we give above.

Appeal 2019-001181
Application 14/304,963

14

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4,
7–11, 14,
17–20
102(a)(1) Prejean 1, 4,
7–11, 14,
17–20

2, 3, 5, 6,
12, 13, 15,
16
103 Prejean, Avramidis,
Shaghaghi
2, 3, 5, 6,
12, 13, 15,
16

21, 24,
27–31, 34,
37–40
103 Prejean, Memon

21, 24, 27–
31, 34,
37–40

22, 23, 25,
26, 32, 33,
35, 36
103 Prejean, Memon,
Avramidis,
Shaghaghi
22, 23, 25,
26, 32, 33,
35, 36

Overall
Outcome
1–40

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED