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
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.
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 29, 31-33, 35-37, 40-54, and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Metten (US 2007/0234679 A1), in view of Turpin et al. (US 2012/0097072 A1) (Turpin) and Imbabi et al. (US 2012/0032107 A1) (Imbabi), and in view of evidence by Logan (“Explained: Cement vs. concrete — their differences, and opportunities for sustainability”, 2020).
Regarding claims 29, 31-33, 35-37, 40-50, and 53-54, Metten teaches concrete blocks or concrete slabs produced by a method comprising providing a plurality of molds, charging raw concrete into said molds forming blocks, each of which has a surface layer or facing layer (i.e., concrete layer; concrete layer is a facing concrete layer), throwing or projecting at least one portion of a pigmented finishing material (i.e., granular material) on said surface layer of said formed blocks by means of at least one application device to produce diversely colored places, compacting said blocks, and curing said blocks (i.e., cured subsequent to compacting), wherein the pigmented finishing material is thrown onto the surface layer or face concrete layer by at least one applicator before compaction (i.e., granular material applied prior to compacting) (Metten; abstract; [0003]; [0005]; [0008]; claims 1-4, 7, 13, 27, and 28);
wherein the finishing material can also contain rock grains or rock mixtures (i.e., scatter component, which comprises a rock mixture) (Metten, [0004]-[0005]; claim 4),
wherein the rock grains or rock-grain mixture or granulations can be blended with an inorganic binder (Metten, [0005]), wherein the finishing material is advantageously a pigmented and/or diversely pigmented concrete mix (Metten, [0003]; [0005]; claim 2), which concrete is made from cement as evidenced by Logan (Logan, page 2, 2nd paragraph) (i.e., the finishing material includes cement; inorganic binder).
However, Metten does not explicitly disclose:
wherein the concrete forming the concrete layer that is introduced into the mold has a water/binder (w/b) ratio of 0.31 to 0.45, or 0.35 to 0.40, prior to curing; wherein the granular material comprises a scatter component in an amount of 65 to 95 wt% or 75 to 85 wt% based on the overall composition of the granular material and a binder in an amount of 5 to 35 wt%, 15 to 25 wt%, 15 to 35 wt%, or 5 to 20 wt% based on the overall composition of the granular material; wherein the cement fraction in the concrete forming the concrete layer is 15 to 25 wt%, or 17.5 to 20.5 wt%, based on the overall composition of the concrete layer; and wherein the water/binder (w/b) ratio of the granular material, prior to application to the concrete layer, is 0.24 to 0.38, 0.24 to 0.33, or 0.28 to 0.38;
a scatter component having an average particle diameter of 0.1 to 5 mm, 0.1 to 1.8 mm, 1.2 to 5 mm, or 0.1 to 1.2 mm, as presently claimed.
wherein the w/b of the granular material, prior to application to the concrete layer, is less than the w/b ratio of the concrete layer that is introduced into the mold.
With respect to the difference (a), Turpin teaches a method of preparing a concrete structure comprising the steps of using a cementitious mix to preform the concrete structure and curing the preformed cementitious mix to hardened concrete, wherein the term "concrete structure" broadly refers to any structure that is composed, in at least significant part, of a concrete which has cured and hardened and includes, but is not limited to, a bridge, a roadway, a parking lot, a sidewalk, a curb, a parking garage, a floor, a patio slab, a support column, a pier, a marine structure, a piling, a conduit and any other paved surface whether located inside or outside (i.e., includes concrete block or concrete slab) (Turpin, claims 40 and 46; abstract; [0001]; [0024]; [0036]; [0048]; [0061]; [0098]; [0100]), wherein the cementitious compositions further comprise an aggregate (i.e., a scatter), wherein the aggregate may include for example, gravel or crushed stone, wherein as non-limiting examples, stone can include limestone, granite, sandstone, brownstone, river rock, conglomerate, calcite, dolomite, serpentine, travertine, slate, bluestone, gneiss, quarzitic sandstone, quartzite, and any combination thereof (Turpin, [0027]; [0111]; [0113]; [0150]; claims 29 and 31);
and wherein in certain preferred embodiments of the invention, the cementitious mix has a water to cementitious ratio of from about 0.2 to about 0.4 (Turpin, [0035]-[0037]; [0101]; [0136]; [0147]; [0149]-[0150]; claims 28-29, 31, and 33);
wherein the cementitious mix comprises a hydraulic cement (i.e., cement; binder) having a concentration from about 10 wt % to about 30 wt% based on a total weight of cementitious compounds, and an aggregate (i.e., scatter) having a concentration from about 25 wt % to about 70 wt % based on the total weight of cementitious compounds (Turpin, [0037]; [0149]; [0150]; claims 6, 29, and 31).
As Turpin expressly teaches, a water to cementitious ratio of from about 0.2 to about 0.4, which is sufficient to impart a desired plasticity to the cementitious mix and hydrolyze the cementitious composition, and wherein a person having ordinary skill in the art would have been motivated to minimize, within certain limits, depending on other factors, the water to cementitious ratio of the cementitious mix (Turpin, [0039]; [0045] [0050]; [0136]). Turpin further teaches wherein the cementitious compositions are characterized by the property of a reduced or an attenuated water vapor emission from a cementitious mix and a concrete formed therefrom, and offers the improvement of providing a concrete that allows for the application of coatings and adhesives sooner, wherein the amount of water, a concentration of the superplasticizer, and a ratio by weight of the finely divided material to the cement are proportioned to achieve a desired level of plasticity while achieving a desired property of a hardened concrete, such as minimizing an amount of time needed to achieve a water vapor emission of the hardened concrete, minimizing an amount of time needed to achieve an internal relative humidity of the hardened concrete, a reduced shrinkage of the hardened concrete, a maximum heat of hydration, and any combination thereof (Turpin, abstract; [0024]; [0047]-[0050]).
Turpin is analogous art, as Turpin is drawn to a method of preparing a concrete structure comprising the steps of using a cementitious mix to preform the concrete structure and curing the preformed cementitious mix to hardened concrete (Turpin, claims 40 and 46; abstract; [0001]; [0024]; [0036]; [0048]; [0061]; [0098]; [0151]).
In light of the motivation of using a water to cementitious ratio of from about 0.2 to about 0.4 taught in Turpin, it therefore would have been obvious to one of ordinary skill in the art to use the water to cementitious ratio of Turpin in the raw concrete and finishing material of Metten, in order to use enough water to sufficiently impart a desired plasticity to the cementitious mix and hydrolyze the cementitious composition, while minimizing the amount of water used, and thereby arrive at the claimed invention.
Further, in light of the motivation of using a hydraulic cement (i.e., cement; binder) having a concentration from about 10 wt % to about 30 wt% and an aggregate (i.e., scatter) having a concentration from about 25 wt % to about 70 wt % based on the total weight of cementitious compounds taught in Turpin, it therefore would have been obvious to one of ordinary skill in the art to use the amounts of cement of Turpin in the raw concrete and finishing material of Metten, and use the amount of aggregate of Turpin for the amount of rock grains or rock mixtures in the finishing material of Metten, in order to use a raw concrete and finishing material with a desired level of plasticity while achieving a desired property of a hardened concrete, such as minimizing an amount of time needed to achieve a water vapor emission of the hardened concrete, minimizing an amount of time needed to achieve an internal relative humidity of the hardened concrete, a reduced shrinkage of the hardened concrete, a maximum heat of hydration, and thereby arrive at the claimed invention.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to the difference (b), Imbabi teaches a concrete mixture for forming a concrete, wherein the mixture comprises aggregate particles and a paste comprising water and cement (Imbabi, abstract; [0001]; [0009]; [0022]; claim 1), and
wherein the average diameter of the aggregate particles is in the range 1 mm to 8 mm, wherein preferably, the average diameter of the aggregate particles is in the range 1 mm to 4 mm (Imbabi, [0012]; [0024]; [0035]; claims 3 and 24).
As Imbabi expressly teaches, the average diameter of the aggregate particles is in the range 1 mm to 8 mm, wherein this range has been found to provide a concrete with particularly high strength and heat exchange properties (Imbabi, [0012]).
Imbabi is analogous art, as Imbabi is drawn to a concrete mixture for forming a concrete, wherein the mixture comprises aggregate particles, water and cement (Imbabi, abstract; [0001]; [0009]; [0022]; claim 1).
In light of the motivation of using aggregate particles with an average diameter of 1 mm to 8 mm taught in Imbabi, it therefore would have been obvious to one of ordinary skill in the art to use the average diameter for aggregates of Imbabi for the rock grains or rock mixtures in the finishing material of Metten, in order to provide a concrete with particularly high strength and heat exchange properties, and thereby arrive at the claimed invention.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With respect to the difference (c), although Metten, in view of Turpin and Imbabi, does not explicitly teach the w/b of the granular material, prior to application to the concrete layer, is less than the w/b ratio of the concrete layer that is introduced into the mold as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Metten, in view of Turpin and Imbabi, meets the requirements of the claimed product as well as overlapping ranges of the claimed water/binder ratios, Metten, in view of Turpin and Imbabi, clearly meets the requirements of the present claim.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Further regarding claims 48-49, given Metten in view of Turpin and Imbabi teaches the material of the concrete blocks or concrete slabs and the method of producing the concrete blocks or concrete slabs are substantially identical to the material of the concrete block or concrete slab and the method of producing the concrete block or concrete slab used in the present invention, it is clear that the concrete blocks or concrete slabs of Metten in view of Turpin and Imbabi would intrinsically have a density of 1.5 to 2.8 as determined according to DIN EN 13369, and a density of 2.25 to 2.45 as determined according to DIN EN 13369, as presently claimed.
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). See MPEP 2112.01 (I).
Alternatively, although Metten in view of Turpin and Imbabi does not explicitly teach the method as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Metten in view of Turpin and Imbabi meets the requirements of the claimed product, Metten in view of Turpin and Imbabi clearly meets the requirements of the present claim.
Further, regarding claim 51, Turpin further teaches wherein the cementitious composition further comprises a finely divided material, such as pozzolan, including fly ash and silica fume (i.e., silica dust) (Turpin, [0026]; [0068]; [0093]; [0115]; [0117]; [0120]; [0159]).
As Turpin expressly teaches, fly ash reduces the amount of water that must be blended with the cementitious composition, allowing for an improvement in early strength as the concrete cures, and a highly reactive pozzolan, such as, for example, silica fume and metakaolin, further increases the rate at which the concrete gains strength resulting in a higher strength concrete (Turpin, [0013]).
In light of the motivation of using pozzolan, such as fly ash and silica fume, of Turpin, it therefore would have been obvious to one of ordinary skill in the art to use the pozzolans, such as fly ash and silica fume of Turpin in the raw concrete of Metten, in order to reduce the amount of water that must be blended with the cementitious composition, allowing for an improvement in early strength as the concrete cures, and a further increase the rate at which the concrete gains strength resulting in a higher strength concrete, and thereby arrive at the claimed invention.
Regarding claims 52 and 56, Metten further teaches wherein the surface layer of which or the facing concrete layer of which has a base color (i.e., optical property; color) and the surfaces, which have regions of different colors, is puddled by means of vibration and/or compacting and subsequently hardened, whereby, before puddling, at least one portion of a pigmented and/or variously-pigmented and/or a color-containing finishing material is projected or thrown by means of at least one application device (Metter, abstract),
wherein a textured surface is supposed to arise in which oriented veins and/or streaks and/or speckles dominate, wherein this is achieved in that at least one portion of a pigmented and/or variously pigmented finishing material (i.e., granular material) or of a colored or diversely colored finishing material is thrown onto the surface layer or face concrete layer (i.e., concrete layer, which is a facing concrete layer) to generate flamed, veined or speckled surfaces, wherein the ground color of the surface layer or face concrete layer, which extends from uncolored concrete to varicolored concrete, also plays a role, wherein the finishing material is advantageously a pigmented and/or diversely pigmented concrete mix that yields the special visual appearance through application to the surface (Metten, [0003]).
While Metten does not explicitly disclose wherein the facing concrete layer has an optical property and the granular material has an optical property different therefrom, wherein the optical property of the facing concrete layer is color or gloss level, given Metten teaches the finishing layer comprises pigmented concrete whereas the facing layer comprises uncolored concrete, and further given the application of the finishing material resulted in a textured surface, it would have been obvious to one of ordinary skill in the art that the pigmented finishing material and the facing concrete of Metten would have differing optical properties, including different color, and thereby arrive at the claimed invention.
Response to Arguments
Applicant primarily argues:
“As amended, the concrete block or slab according to the claimed invention comprises a concrete layer with a w/b ratio of 0.31 to 0.45. Onto this concrete layer, a granular material comprising a scatter component and a binder is applied as a decorative material (see claims 52 and 26). The granular material has a lower water/binder (w/b) ratio than the concrete layer of 0.24 to 0.38. Further, the w/b of the granular material, prior to application to the concrete layer, is less than the w/b ratio of the concrete layer that is introduced into the mold.
First, the Applicant submits that a person of ordinary skill in the art ("POSITA") would not apply a granular material of lower w/b ratio to a concrete layer of a higher w/b ratio. A concrete block or slab comprising a concrete layer and a decorative material with such different w/b ratios is disfavored to POSITA because similar w/b ratios are easier to mix.”
Remarks, p. 7-8
The examiner respectfully traverses as follows:
While applicant argues that a person of ordinary skill in the art would not apply a granular material of lower w/b ratio to a concrete later of higher w/b ratio because similar w/b ratios are easier to mix, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding w/b ratios in granular material and concrete layer being unfavorable to a person of ordinary skill must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Applicant further argues:
“Metten does not disclose any w/b ratios. Further, Turpin discloses a w/b ratio of 0.2-0.4 (Turpin, [0035]), but for the preparation of concrete structures (Turpin, [0036], [0044], [0048], [0049]), examples of which are bridges, roadways, parking lots, a pier, a marine structure etc. (Turpin, [0061]). Turpin does not disclose a scatter component having an average particles diameter of 0.1 to 5 mm nor does Turpin suggest that the scatter component should have a lower, different w/b ratio prior to its addition to the concrete. In fact, Turpin does not disclose a granular material comprising a coating. Turpin loosely refers to the coating of a concrete structure, but does not provide a motivation to the use of a granular material and in particular not to a granular material with the properties of instant claim 29. Hence, for the granular material, the Examiner relies on Imbabi.”
Remarks, p. 8
The examiner respectfully traverses as follows:
Firstly, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Metten does not expressly teach the claimed w/b ratios. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Metten does not disclose the entire claimed invention. Rather, Turpin is relied upon to teach claimed elements missing from Metten. See item #8 above.
Further, Applicant argues that Turpin does not expressly teach the claimed particle size of the scatter component. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Metten in view of Turpin does not disclose the entire claimed invention. Rather, Imbabi is relied upon to teach claimed elements missing from Metten in view of Turpin. See item #9 above.
Secondly, Applicant argues Turpin does not teach the scatter component should have a different w/b ratio prior to its addition to the concrete. However, this is a product-by-process limitation. Although Turpin does not explicitly teach the scatter component, i.e., aggregate, having a w/b ratio lower and different from the concrete prior to the addition to concrete as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Metten in view of Turpin and Imbabi meets the requirements of the claimed product, Metten in view of Turpin and Imbabi clearly meets the requirements of the present claim.
Finally, applicant argues Turpin does not disclose a granular material comprising a coating or motivation to the use of a granular material and in particular not to a granular material with the properties of instant claim 29. However, it is noted that while Turpin does not disclose all the features of the present claimed invention, Turpin is used as a teaching reference, namely to teach the claimed water/binder ratios, the granular material comprising a scatter component and binder in the claimed amounts, the cement fraction in the concrete forming the concrete layer, and the water/binder ratio of the granular material, in order to use a raw concrete and finishing material with a desired level of plasticity while achieving a desired property of a hardened concrete, such as minimizing an amount of time needed to achieve a water vapor emission of the hardened concrete, minimizing an amount of time needed to achieve an internal relative humidity of the hardened concrete, a reduced shrinkage of the hardened concrete, and a maximum heat of hydration (Turpin, abstract; [0024]; [0039]; [0045]; [0047]-[0050]; [0136]), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“Imbabi has incoherent teachings that would fail to teach a POSITA to use a w/b ratio of
0.31 to 0.45. In paragraph [0011], Imbabi teaches a paste having a cement-to-water ratio of 0.15 to 0.4, corresponding to a water-to-binder ratio of 2.5 to 6.67 (Imbabi, [0011]).1 Imbabi refers to this resulting composition as a "paste" throughout the document (E.g., Id.). Further, Imbabi teaches lower ratios in paragraph [0056] and Table 3, where ranges 0.4 down to 0.15 are disclosed. The incoherent teachings would create uncertainty that would discourage a POSITA from following the teachings of Imbabi. According to the claimed invention (i.e., of pending claims 52 and 56), the granular material is distributed on the surface of the concrete layer to achieve an optical effect. In such a case, the POSITA would apply a high w/b ratio as suggested by Imbabi to facilitate distribution of the granular material on the concrete surface.
Further, Imbabi fails to teach a w/b ratio for the granular material prior to mixing. As disclosed, the granular material of Imbabi is directly mixed with a concrete, water, and plasticizer mixture (Imbabi, para. [0022]). Thus, Imbabi fails to teach an element of claim 29, and fails to provide a motivation that a different, lower w/b ratio should be used for the granular material prior to its addition to the concrete mixture.”
Remarks, p. 8-9
The examiner respectfully traverses as follows:
It is noted that while Imbabi does not disclose all the features of the present claimed invention, Imbabi is used as a teaching reference, namely to teach a scatter component having an average particle diameter of 0.1 to 5 mm, 0.1 to 1.8 mm, 1.2 to 5 mm, or 0.1 to 1.2 mm, in order to provide a concrete with particularly high strength and heat exchange properties (Imbabi, [0012]), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“Thus, for the granular material, the POSITA does not obtain a motivation to employ a granular material with a w/b ratio that is as low as 0.24 to 0.38. On the contrary, the POSITA according to the teachings of Imbabi would employ a granular material with a much higher w/b ratio, such as the water-to-binder ratio of 2.5 to 6.67 as taught in Imbabi (supra). The POSITA would consider a paste with such a high w/b ratio to be advantageous because it can be processed and applied more easily than a paste with a lower w/b ratio, such as 0.24 to 0.38.2 Easier processability would be advantageous since it would be easier to distribute the granular material to achieve a better decorative effect.
In addition, the POSITA would use high w/b ratios due to the POSITA's common
general knowledge according to which at a w/b ratio below 0.40, there is unhydrated cement clinker in the hardened cement, i.e., not all cement grains are supplied with water; thus, the granular material that is applied for a decorative effect is not as well fixated to the concrete surface as possible. Moreover, if the cement is not completely hydrated or hydrates subsequently, efflorescence occurs to a greater extent leading to degrading optical appearance. In addition, in the case of cement that continues to harden, hydration (volume-reducing crystal formation) leads to late shrinkage and associated crack formation. Thus, w/b values below 0.4 are also usually avoided, as they are inefficient in terms of cement resource utilization.”
Remarks, p. 9
The examiner respectfully traverses as follows:
Imbabi is only used as teaching reference in order to teach a scatter component having an average particle diameter of 0.1 to 5 mm, 0.1 to 1.8 mm, 1.2 to 5 mm, or 0.1 to 1.2 mm. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Further, while applicant argues that a POSITA would use high w/b ratios in order for the cement to be fully hydrated, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding w/b ratios must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Applicant further argues:
“Thus, the POSITA would not apply a w/b ratio of 0.24 to 0.38 for the granular material employed in claim 29. Yet, it was surprisingly found that by employing such a w/b ratio for the granular material, decorative concrete blocks or slabs are obtained in which the granular material affixed well to the concrete surface. (See, e.g., present specification at pp. 4, 10.)”
Remarks, p. 9
The examiner respectfully traverses as follows:
While applicant argues a POSITA would not apply a ratio of 0.24 to 0.38 for the granular material employed in claim 29, the fact remains Metten in view of Turpin and Imbabi teaches the final product concrete block or slab that corresponds to the claimed invention.
Although Metten in view of Turpin and Imbabi does not explicitly teach a w/b ratio of 0.24 to 0.38 for the granular material prior to application to the concrete, as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Metten in view of Turpin and Imbabi meets the requirements of the claimed product, Metten in view of Turpin and Imbabi clearly meets the requirements of the present claim.
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 Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732