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 .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 17-23, 26-28, 30-31, and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over Gaedt et al. (WO2017/212045) in view of Bürge et al. (US 2019/0071368) in view of Lim (KR 101668955 B1). The Examiner notes that US 10,723,656 is the English language equivalent of WO2017/212045 and all citations will refer to US 10,723,656.
Regarding claims 17-18, 23, 28, and 33, Gaedt discloses a process of producing a construction material 3D structure comprising an additive kit comprising a component A and a component B, wherein component A comprises at least one hardening retarder with the materials as claimed (col. 2, lines 38-67), component B comprises at least one hardening accelerator with the materials as claimed (col. 14, lines 16-37 and col. 15, lines 1-9), wherein component B is added to a mixture of component A, water, and construction material (col. 17-18). Although Gaedt discloses polyhydroxy compound (col. 14, lines 1-11), Gaedt fails to explicitly disclose a polyhydroxy compound, or polyhydroxy compound in the form of salt or C1-C20 carboxylic acid ester, wherein the polyhydroxy compound has a carbon to oxygen ratio of C/O ≥ 1.
Bürge discloses a hardening accelerator for a mineral binder, in particular for cementitious binder composition (Abstract), which therefore is an analogous art to that of Gaedt. Bürge further discloses that glycerol, which is a sugar alcohol, can be further added to the hardening accelerator [0042].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Gaedt’s hardening accelerator to additionally comprise of glycerol, which therefore satisfy the claimed C/O ≥ 1, since Bürge discloses that it is advantageous to further harden-accelerate substances [0042-0043].
Alternatively, Gaedt discloses the claimed invention except that hydroxycarboxylic acid (col. 14, lines 1-11) instead of glycerol. Bürge shows that glycerol is an equivalent structure known in the art [0042]. Therefore, because these two materials were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute hydroxycarboxylic acid for glycerol in the invention of Gaedt. Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950). Because Gaedt discloses that the hardening accelerator can further comprise of other materials such as hydroxycarboxyulic acid, and both Gaedt and Bürge teaches that the additives aids with the hardening accelerator, preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to have substituted glycerol for Gaedt’s additive in hardening accelerator for with a reasonable expectation of success. Therefore, it would further have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Gaedt contain glycerol, as demonstrated by Bürge, to further harden-accelerate substances [0042-0043].
Although Gaedt discloses a process of making a construction material 3D structure, wherein component B is added to the mixture of component A during the application of the mixture, Gaedt fails to explicitly disclose it is with a 3D printing system as presently claimed.
KR ‘955 discloses a construction material 3D structure that is produced from a cementitious composition using 3D printing system.
It would have been obvious to one of ordinary skill in the art to modify Gaedt’s process to be performed in 3D printing, since KR ‘955 discloses that it is known in the construction cement art to be made via 3D printing and that by using 3D printing will lead to capable of simplifying a manufacturing process and shortening a process time as well as it can accurately form the density, arrangement, direction, shape and the like of the construction material without distortion.
Regarding claim 19-20 and 31, Gaedt discloses at least one inorganic carbonate source with the materials as claimed (col. 4, lines 28-32).
Regarding claim 21-22, Gaedt discloses hydroxylic acid with the materials as claimed (col. 14, lines 1-11).
Regarding claims 26-27, Gaedt discloses an inorganic binder, wherein the inorganic binder is a hydraulic binder (col. 4, lines 37-38)
Regarding claim 30, Gaedt discloses a construction material 3D structure (all examples).
Regarding claims 34-35, Gaedt discloses the inorganic binder material as claimed (col. 3, lines 25-41).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Gaedt et al. (WO2017/212045), in view of Bürge et al. (US 2019/0071368), in view of KR 101668955 B1, and further in view of Brook et al. (US 5,536,310). The Examiner notes that US 10,723,656 is the English language equivalent of WO2017/212045 and all citations will refer to US 10,723,656.
Gaedt discloses a construction material composition comprising an hydroxylic acid, specifically citric acid (col. 14, lines 3-4), however, fails to specifically disclose that the hydroxylic acid is trisodium citrate as presently claimed.
Brook discloses a cementitious composition comprising hydroxylic acid, wherein the hydroxylic acid is citric acid that can be used in tri-alkali metal salt form such as trisodium citrate (col. 2, lines 5-12 and 29-31).
It would have been obvious to one of ordinary skill in the art to modify Gaedt’s citric acid to be of trisodium citrate, as suggested by Brooke, in order to achieve early strength and set time (col. 2, lines 15-17).
Response to Arguments
Applicant's arguments filed 7/22/25 have been fully considered but they are not persuasive.
Applicant argues that Gaedt fails to disclose adding component B in step (ii) to the mixture of step (i). This is because applicant stated that Gaedt discloses calcium-silicate-hydrate “is preferably used as a powder as part of the dry mortar composition”. Applicant’s arguments has been found unpersuasive. Although Gaedt discloses that the CHS is in a powder form, Gaedt discloses that there is a clearly a mixture of component A and component B with water (Example 1). Furthermore, although Gaedt discloses “preferably dry mortar composition”, Gaedt does not impose any generalized limit of that the composition is strictly dry, especially since Gaedt discloses a process that has water content (examples, col. 17-18). Gaedt discloses an additive is added to an inorganic binder and retarder, wherein there is a water content (Example 1). Therefore, Gaedt discloses that CHS additive, in a powder form, is added to the mixture of component A (retarder) and water. Gaedt does not create an issue of "teaching away from" with respect to have a completely dry composition.
Applicant argues that Lim’s cementitious composition is completely different from the instant claims, and there would have been no reasonable expectation of success in applying the teachings of Lim. This has been found unpersuasive. However, note that while Lim do not disclose all the features of the present claimed invention, Lim is used as teaching reference, 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, namely a cementitious composition can be used in a 3D printer process, and in combination with the primary reference, discloses the presently claimed invention. It would have been obvious to one of ordinary skill in the art to modify Gaedt’s process to be performed in 3D printing, since Lim discloses that it is known in the construction cement art to be made via 3D printing and that by using 3D printing will lead to capable of simplifying a manufacturing process and shortening a process time as well as it can accurately form the density, arrangement, direction, shape and the like of the construction material without distortion.
In response to applicant’s arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Lim discloses that the main components of cementitious composites containing concrete, which are widely used as materials for construction, are sand, gravel, cement, and water, and at least one coarse or fine aggregate, wherein it specifically lists various type of cement material can be used (There are various types of cement matrix depending on the material to be mixed, strength, etc., alumina cement, blast furnace slag cement. Pozzolan cement, and other additives. Generally, cementitious matrix used for concrete as building material is usually Portland cement, and cementitious matrix having a compressive strength of 28 days is widely used). Thereby, Lim is an analogous art to that of Gaedt. Lim explicitly disclose that cementitious composition can be use in 3D printing to produce a 3D object. Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to modify Gaedt’s process to be performed in 3D printing in view of Kim with a reasonable expectation of success in obtaining a 3D construction material.
Applicant argues Gaedt mentions hydroxycarboxylic acids as an optional additive, but are structurally distinct compounds that do not meet the claimed C/O ≥ 1. It is noted that the examiner is not taking the position that Gaedt discloses the structurally features of C/O ≥ 1. Rather, Bürge was used to disclose glycerol as a hardening accelerator.
Applicant argues that there is no guidance or motivation to replace the hydrocarboxylic acids disclosed in Gaedt with the additives disclosed as optional in Bürge. The examiner respectfully disagrees. Gaedt discloses the claimed invention except that hydroxycarboxylic acid (col. 14, lines 1-11) instead of glycerol. Bürge shows that glycerol is an equivalent structure known in the art [0042]. Therefore, because these two materials were art-recognized equivalents before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to substitute hydroxycarboxylic acid for glycerol in the invention of Gaedt. Substitution of equivalents requires no express motivation as long as the prior art recognizes the equivalency. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Grover Tank & Mfg. Co. Inc V. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
Because Gaedt discloses that the hardening accelerator can further comprise of other materials such as hydroxycarboxylic acid, and both Gaedt and Bürge teaches that the additives aids with the hardening accelerator, preponderance of the evidence supports the Examiner’s conclusion that it would have been obvious to have substituted glycerol for Gaedt’s additive in hardening accelerator for with a reasonable expectation of success. Therefore, it would further have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Gaedt contain glycerol, as demonstrated by Bürge, to further harden-accelerate substances [0042-0043].
Further, the examiner not only took in the position that it would be obvious to one of ordinary skill in the art to replace or substitute hydroxycarboxylic acid with glycerol, but also took in the position that it would have been obvious to also additionally add glycerol to the composition.
Bürge discloses a hardening accelerator for a mineral binder, in particular for cementitious binder composition (Abstract), which therefore is an analogous art to that of Gaedt. Bürge further discloses that glycerol, which is a sugar alcohol, can be further added to the hardening accelerator [0042].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Gaedt’s hardening accelerator to additionally comprise of glycerol, which therefore satisfy the claimed C/O ≥ 1, since Bürge discloses that it is advantageous to further harden-accelerate substances [0042-0043].
Applicant stated that Gaedt discloses the combination of bisulfite adduct of glyoxylic acid (component A of the present invention) with hydrocarboxylic acids (tartaric acid, citric acid, and sodium gluconate) in the examples (Table 2-3). Applicant goes on to say that the specific materials of the hydrocarboxylic acid in Gaedt demonstrates no sufficient solidification and/or low compressive strength after 24 hours (Table 3). Applicant thereby argues that the present invention shows that the addition of citric acid leads to a significant delay in the hardening of the construction composition. Applicant’s arguments have been found unpersuasive.
Although Gaedt discloses citric acid as a specific example of hydrocarboxylic acid (Table 2), it is noted that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Gaedt broadly discloses an additive that requires a structure of hydrocarboxylic acid (col. 14, lines 1-10), and not strictly the use of citric acid.
Additionally, while the evidence suggests that the usage of citric acid leads to a significant delay in the hardening of the construction composition as applicant has argued, the provided evidence does not support unexpected results for all the possible combinations of Component A and B encompassed by the claims. Applicant has fails to disclose the criticality of the claimed polyhydroxy compound with C/O ≥ 1. The evidence pointed to in the specification is not commensurate in scope with the claims. In particular, the evidence does not support that the entire polyhydroxy compound with C/O ≥ 1 is unexpected. Additionally, the evidence does not support that the polyhydroxy compound with C/O ≥ 1 provide unexpected results for the broad claimed components of component A and component B. Table 1, Ex. 1-2 data only uses specific component A (53 wt.% sodium carbonate, 43 wt.% bisulfite adduct of glyoxylic acid, 4% trisodium citrate dihydrate) and specific component B (Ca(OH2) and/or CSH, and glycerol). It is not clear that every component A and B as claimed, including polyhydroxy compound with C/O ≥ 1, would behave the same as the ones employed by Applicant in the instant Examples.
Furthermore, applicant(s) are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D'Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
In addition, 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 applicant(s) regarding the alleged unexpected results should 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".
As to applicant’s arguments directed to dependent claims as being patentable due to their dependency to claim 28, the rejection of claim 32 is being maintained. Applicants have not separately argued the patentability of the dependent claims. Thus, claim 32 is also being rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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 LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached on (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/ Examiner, Art Unit 1785
/Holly Rickman/ Primary Examiner, Art Unit 1785