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, 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,174,637 in view of Heikal et al. (Physico-mechanical, microstructure characteristics and fire resistance of cement pastes containing Al2O3 nano-particles).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims substantially encompasses the claims of US Patent No. 11,174,637 and/or obvious variant of one another with slight optimization of ranges.
With regard to the amount of expansive material, one of person having ordinary skill in the art have arrived the claimed expansive material amount, without exercising undue experimentation. One would have been motivated to optimize the amount dependent on what the end use prestressed concrete was used for in order to obtain suitable decrease in shrinkage of a concrete.
With regards to the aluminum oxide content in an expansive material for a concrete, Heikal discloses ettringite hydrated products comprising Al2O3 as an additive with a concentration of up to 6 mass%. It would have been obvious to one of ordinary skill in the art to modify US Pat. 11,174,637’s an ettringite-based, ettringite-lime based, or lime-based expansive material expansive agent to comprise of an aluminum oxide content within the claimed range, since Heikal discloses that this would lead to concrete having an improve compressive strength, physio-mechanical, and durability (Abstract, Introduction).
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ahagon et al. (US 11,174,637) in view of Heikal et al. (Physico-mechanical, microstructure characteristics and fire resistance of cement pastes containing Al2O3 nano-particles).
Regarding claims 1 and 3, Ahagon discloses a prestressed concrete, being a concrete into which a prestress is introduced, comprising a tensional material of a continuous fiber reinforcing wire (Abstract, claims 1-3) and an expansive material for a concrete is contained in an amount of 20 kg/m3 (col. 10, line 14) wherein the expansive material is an ettringite-based, ettringite-lime based, or lime-based (claim 1) as well as other materials as claimed (col. 4, lines 26-36). Ahagon fails to explicitly disclose the concrete comprises an aluminum oxide of 0.4-2% by weight to the expansive material as presently claimed.
Heikal discloses a concrete comprising 0-2 mass% of Al2O3 as additives, wherein the addition of Al2O3 in concrete will lead to increase in compressive strength and improve physio-mechanical and durability (Abstract, Introduction).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ahagon’s concrete to additionally comprise of an aluminum oxide within the claimed content range, since Heikal discloses that this would lead to concrete having an improve compressive strength, physio-mechanical, and durability (Abstract, Introduction).
Regarding the limitation “wherein a mechanical stress induced by a tensional material and a chemical stress induced by an expansive material for a concrete are introduced simultaneously into the concrete”, 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.”, (In re Thorpe, 227 USPQ 964,966). 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 unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). Nevertheless, Ahagon discloses these methods (Abstract, claim 1).
Regarding claim 2, Ahagon discloses the material as claimed (claim 3).
Regarding claim 4, Ahagon discloses a wire diameter as claimed (claim 1).
Regarding claim 5, Ahagon discloses a tensile load as claimed (claim 1).
Regarding claim 6, Ahagon discloses a thickness as claimed (claim 1).
Regarding claims 7-8, Ahagon discloses a discontinuous fiber with the materials as claimed (claims 7-8).
Regarding claim 9, Ahagon discloses pigment (claim 9).
Regarding claim 10, Ahagon discloses irregularities as claimed (claim 10).
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ahagon et al. (WO 2018/003190) in view of Heikal et al. (Physico-mechanical, microstructure characteristics and fire resistance of cement pastes containing Al2O3 nano-particles).
Regarding claim 1, Ahagon discloses a prestressed concrete, being a concrete into which a prestress is introduced, comprising a tensional material of a continuous fiber reinforcing wire [0043] and an expansive material for a concrete is contained in an amount of 20 kg/m3 [0084], wherein the expansive material is a magnesium-based expansion material [0047]. Ahagon fails to explicitly disclose the concrete contains an aluminum oxide of 0.4-2% by weight to the expansive material as presently claimed.
Heikal discloses a concrete comprising 0-2 mass% of Al2O3 as additives, wherein the addition of Al2O3 in concrete will lead to increase in compressive strength and improve physio-mechanical and durability (Abstract, Introduction).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ahagon’s concrete to additionally comprise of an aluminum oxide within the claimed content range, since Heikal discloses that this would lead to concrete having an improve compressive strength, physio-mechanical, and durability (Abstract, Introduction).
Regarding the limitation “wherein a mechanical stress induced by a tensional material and a chemical stress induced by an expansive material for a concrete are introduced simultaneously into the concrete”, 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.”, (In re Thorpe, 227 USPQ 964,966). 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 unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). Nevertheless, Ahagon discloses these methods [0030-0033].
Regarding claim 2, Ahagon discloses the material as claimed [0043].
Regarding claim 4, Ahagon discloses the wire diameter as claimed [0058].
Regarding claim 5, Ahagon discloses the tensile load as claimed [0092]
Regarding claim 6, Ahagon discloses the thickness as claimed [0090]
Regarding claim 7, Ahagon discloses a discontinuous fiber reinforcing material [0057].
Regarding claim 8, Ahagon discloses the material as claimed (claim 11).
Regarding claim 9, Ahagon discloses pigments [0037] [0041]. These materials would contribute the coloring of the concrete.
Regarding the limitation “is mixed”, 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.”, (In re Thorpe, 227 USPQ 964,966). 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 unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Regarding claim 10, Ahagon discloses that the surface of the prestressed concrete is irregular (All Figs). Further, creating irregularities on a surface of the prestressed concrete using a soft form, the term using “soft form” which is an apparatus tool does not give patentable weight to a product. Determination of patentability is based on the product itself.
Response to Arguments
Applicant's arguments filed 11/20/25 have been fully considered but they are not persuasive.
Applicant argues that the present invention provides unexpected results. Applicant argues that simultaneously introducing a mechanical stress and a chemical stress, a synergistic effect due to both stresses is effectively exerted.
Applicant argues that the synergistic effect is associated with the combination of
mechanical strength induced by the tensional material (continuous fiber reinforcing wire)
expansive material for a concrete,
aluminum oxide in amount of 0.4 to 2.0 wt.% based upon the expansive material.
Applicant points to Examples in the specification that discloses synergistic effect, specifically samples G1, G2, G3, and G4. The examiner noted that sample G1 is the only sample that is reflective to the present invention (emphasis added).
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 aluminum oxide content (0.4-2.0 wt.%) is unexpected. As noted above, the only sample G1 discloses an aluminum oxide content is 1.2 wt.% to the expansive material, and the comparative examples (G3 and G4), comprises an aluminum oxide content of 15-25 wt.%.
The examiner contends that the data points in the instant specification example is not sufficiently close to the claimed aluminum oxide content, thus are not in commensurate in scope with the claims. The closest values outside the claimed upper and lower limit of 0.4 and 2.0 wt% is 15 wt.% (G3 and G4) (emphasis added). 15% is 650% higher than 2% (emphasis added). A 650% increase is considered a substantial difference to determine the criticality of the claimed range. These data points does not, by itself, establish that values of less than 0.4 wt.% and greater than 2.0 wt.% fail to satisfy the synergistic effect. Without additional data points, especially data points closer to the endpoints of 0.4 and 2.0, the criticality of the range cannot be adequately evaluated. These data points are not close enough to the endpoint to be persuasive in establishing an unexpected result. Therefore, there is no showing that the claimed range of 0.4-2.0 wt.% is unexpectedly superior in achieving synergistic effect by the applicant.
Examiner acknowledges the arguments and respectfully notes that MPEP states that “to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range” (see MPEP § 716.02(d).II.). In this instance, it is not clear in the Specification, the criticality of the claimed aluminum oxide range.
With respect to the data point of G2, wherein G2 discloses aluminum content of 1.2 wt.% with no expansive material, it is the examiner’s contention that a single data point within the broadly claimed range is not sufficient to establish the presence of an unexpected result across the breadth of the claimed range (0.4-2.0 wt.%).
Additionally, applicants are reminded that any evidence of unexpected results must be reasonably commensurate in scope with the claimed limitations. In the instant case, claim 1 is immensely broad:
Basically ANY KNOWN CONCRETE formulation
Basically ANY KNOWN TENSIONAL MATERIAL of continuous fiber
Basically ANY KNOWN EXPANSIVE MATERIAL
This immense breath is not supported fully by the examples, noting that the examples appear to use specific concrete formulation, only use a single type of tensional material (CFRP) (PGPUB of instant invention: [0112-0124]), and specific classes of expansive material (claim 3)). Applicants may have additional data (or can present additional data) to broaden the scope or provide evidence that certain classes of active materials would behave similarly in the concrete composition, but presently no such evidence exists of record.
Although applicant appears to argue an unexpected result of synergistic effect of mechanical and chemical stress, the issues with the data as highlighted above illustrate that such unexpected results have not been persuasively demonstrated.
Applicant argues that Heikal discloses that the aluminum oxide contents is for the content relative to the weight of the total concrete, not relative to the weight of an expansive material in the concrete. However, note that while Heikal do not disclose all the features of the present claimed invention, Heikal 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 the addition of aluminum oxide in concrete, and in combination with the primary reference, discloses the presently claimed invention. Ahagon explicitly disclose an expansive material for a concrete is contained in an amount of 20 kg/m3 and in combination of Heikal’s aluminum oxide of 0-2 mass% in a concrete would overlap the claimed range. Nevertheless, Heikal discloses that that free lime is present in the concrete composition, as well as Al2O3, Fe2O3, CaO, and MgO (Table 1; 2. Materials and experimental techniques). These materials would correspond to the broadly claimed expansive material. Thus, Heikal discloses a concrete comprises an expansive material for a concrete. Therefore, the examiner has deemed that the combination of Ahagon and Heikal has been deemed proper.
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).
Further, for similar reasons set forth above, the double patenting rejection is also being maintained.
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 at (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