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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/11/2025 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 08/11/2025 and the Amendment filed on 01/23/2026.
Claims 1, 3-13 and 16-23 are presently pending and under examination; claims 2 and 14-15 are canceled; clams 1 and 16 are amended; claims 21-23 are new.
The 35 U.S.C. 103 rejections of claims 1, 3-13 and 16-20 over JEZEQUEL in view of BERNARD and of claims 1, 3-4, 6-10, 12-13, 16-18 and 20 over BERNARD in view of BERKE are maintained; the rejections of claims 14-15 are moot as these claims have been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 22 is objected to because of the following informality:
In claim 22, “unfilled part” should read “the unfilled part” (see claim 22 at line 1).
Appropriate correction is required.
Claim Interpretation
For purposes of claim interpretation, “complex cavity” as recited in claims 1 and 21-22 (see claim 1 at line 16, claim 21 at lines 2-3 and claim 22 at lines 1-2) is treated as meaning a cavity having a complex geometry and/or having singular point(s), e.g., having variation of inner thickness, dimensions, and/or surface ruggedness of the cavity, as this would appear most in keeping with Applicant’s intent as discussed in the specification at pg. 16.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 23 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 23, it is noted that new claim 23 recites “wherein a mass ratio of cement slurry to gas forming liquid is between 1.2 and 4.5”. As such, while the specification discloses this range of mass ratios of cement slurry to gas forming agent, not gas forming liquid (see pg. 15 of the present specification), and discloses a mass ratio of cement slurry to gas forming liquid of 3.05 (see pg. 27 of the present specification), the Examiner has been unable to locate any disclosure that would support a mass ratio of cement slurry to gas forming liquid of between 1.2 and 4.5 as recited by claim 23.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-13 and 16-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 as amended recites the limitation “A method for filling a cavity filled with a low-density mineral foam” (see claim 1 at lines 1-2); it is not clear how a cavity which is already “filled” is being filled again via the recited method, rendering the metes and bounds of the claim indefinite.
For purposes of examination, Examiner treated claim 1 as though it recites “A method for filling a cavity with a low-density mineral foam”, i.e., as though the cavity is not already filled before the method begins as currently recited. Clarification is requested.
Claims 3-13 and 16-23 are included herein as each depends from a claim which is indefinite for the reasons set forth above.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-13 and 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over Jezequel et al. (WO-2019/092090-A1) (hereinafter, “JEZEQUEL”) in view of Bernard et al. (U.S. Pub. No. 2017/0349498-A1) (hereinafter, “BERNARD”).
Regarding claim 1, JEZEQUEL teaches a method filling a cavity with a low-density mineral foam (see JEZEQUEL at Abstract and pg. 4, lines 7-23, pg. 21, lines 19-22 and pg. 22, lines 15-21) comprising the following steps:
(i) preparing a cement slurry comprising:
Portland cement (see JEZEQUEL at pg. 4, lines 7-10 and 28, and pg. 7, lines 6-12; JEZEQUEL teaches preparing a cement slurry wherein the cement is a CEM I Portland cement);
ultrafine particles of which the D50 is comprised from 10 to 600 nm (see JEZEQUEL at pg. 4, line 11 and pg. 7, lines 6-9);
a water reducing agent (see JEZEQUEL at pg. 4, line 12);
a manganese salt (see JEZEQUEL at pg. 4, line 13 and pg. 26, lines 7-16; JEZEQUEL teaches an embodiment wherein the slurry mixture comprises, by weight, 0.77% manganese chloride (MnCl2) manganese salts and 75.4% a premix, wherein 73.0% of the premix is CEM I cement, for a total of 55.042% of CEM I Portland cement in the slurry, yielding a mass ratio of manganese salts/Portland cement of 0.013989);
and water (see JEZEQUEL at pg. 4, line 14);
ii) adding to the cement slurry obtained after step (i) a gas-forming liquid comprising: a gas-forming agent; and a viscosity-modifying agent which is a polymer chosen among anionic bio-based polymer, amphiphilic bio-based polymer, alkali swellable acrylic polymer and mixture thereof; to obtain a foaming slurry capable of at least partially filling a complex cavity (see JEZEQUEL at pg. 4, lines 15-21);
(iii) filling the cavity with the foaming slurry obtained at step (ii); and (iv) leaving the foaming slurry to expand within the cavity (see JEZEQUEL at pg. 4, lines 22-23, pg. 21, lines 19-22 and pg. 22, lines 15-19; JEZEQUEL teaches applying the foaming slurry on a support and leaving it to expand on the support, wherein the support may be a receptacle to fill, such as filling a hollow hole in a building block or an empty space of a building, wall, brick, etc., (i.e., a cavity) with foam).
JEZEQUEL fails to explicitly teach that the mass ratio of manganese salts/Portland cement is below 0.013; however, as set forth above, JEZEQUEL teaches a mass ratio of about 0.01399, which is very close to 0.013. As set forth in MPEP § 2144.05, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
Additionally, it is known in the art to use ratios of manganese salts/Portland cement within the claimed range. For example, BERNARD teaches a method for the production of a cavity filled with a low-density mineral foam comprising Portland cement and manganese salt (see BERNARD at Abstract and paragraphs [0022], [0039]-[0040], [0141] and [0144]; BERNARD teaches a slurry comprising CEM I Portland cement, and comprising manganese salts, such as manganese chloride or manganese sulfate, used as a catalyst precursor to facilitate the decomposition of the pore-forming agent into oxygen), wherein the mass ratio of manganese salts/Portland cement is below 0.013 (see BERNARD at paragraphs [0144] and [0159], Table 1; BERNARD teaches using manganese sulfate monohydrate as the transition metal salt, and in formulation 390-a shows an embodiment wherein the slurry comprises, by weight, 0.36% manganese salt and 71.9% Portland cement, yielding a mass ratio of manganese salt/Portland cement of 0.005).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of JEZEQUEL by using a mass ratio of manganese salts/Portland cement as low as 0.005 as taught by BERNARD (see BERNARD at paragraphs [0144] and [0159]). Based on the teachings of BERNARD, one of ordinary skill in the art could have lowered the amount of manganese salt used with a reasonable expectation of success, yielding the predictable result of forming a foaming slurry. One of ordinary skill in the art would have been motivated to minimize the concentration of manganese salt in the slurry for the benefit of saving on the cost of manganese salt while still using a sufficient amount to provide for the decomposition of the pore-forming agent into oxygen as needed to obtain desired foaming slurry characteristics as taught by BERNARD (see BERNARD at paragraphs [0039], [0144] and [0159]).
Regarding claim 3, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein the mineral foam has a density in the dry state from 50 to 180 kg/m3 (see JEZEQUEL at pg. 4, line 25).
Regarding claim 4, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein the cement of the mixture of step (i) is a CEM I cement (see JEZEQUEL at pg. 4, line 28).
Regarding claim 5, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein the gas-forming agent comprised in the gas-forming liquid added in step (ii) is in a concentration of less than 15 wt.% of the weight of the gas-forming liquid (see JEZEQUEL at pg. 4, lines 31-32).
Regarding claim 6, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein the gas-forming agent comprised in the gas-forming liquid added in step (ii) is a solution of hydrogen peroxide, a solution of peroxomonosulfuric acid, a solution of peroxodisulfuric acid, a solution of alkaline peroxides, a solution of alkaline earth peroxides, a solution of organic peroxide, a suspension of particles of aluminium or mixtures thereof (see JEZEQUEL at pg. 4, line 35 – pg. 5, line 3).
Regarding claim 7, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein the viscosity-modifying agent comprised in the gas-forming liquid added in step (ii) is an amphiphilic bio-based polymer (see JEZEQUEL at pg. 5, lines 5-6).
Regarding claim 8, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein the cement slurry of step (i) further comprises a mineral addition of which the particles have a D50 comprised from 0.1 μm to 4 mm (see JEZEQUEL at pg. 5, lines 9-10).
Regarding claim 9, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein the cement slurry of step (i) further comprises fibers (see JEZEQUEL at pg. 5, line 12).
Regarding claim 10, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein the cement slurry of step (i) is obtained by first blending a premix of cement and-ultrafine particles, and then adding manganese salt and water (see JEZEQUEL at pg. 5, lines 14-16).
Regarding claim 11, as applied to claim 10 above, JEZEQUEL in view of BERNARD teaches a method according to claim 10, wherein the water reducing agent is in powder form and added to the premix or the water reducing agent is in liquid form and added to the water (see JEZEQUEL at pg. 9, lines 23-26 and pg. 26, lines 21-22; JEZEQUEL teaches adding the liquid superplasticizer water-reducing agent to the water).
Regarding claim 12, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein the cavity of step (iii) is a cavity in an element of a building or a construction (see JEZEQUEL at pg. 21, lines 19-22 and pg. 22, lines 15-19; JEZEQUEL teaches that the cavity may be a hollow hole in a building block or an empty space of a building, wall, brick, etc.).
Regarding claim 13, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a construction whose at least one cavity is filled by a method according to claim 1 (see JEZEQUEL at pg. 21, lines 19-22 and pg. 22, lines 15-19; JEZEQUEL teaches a construction, such as a building block, brick, building, wall, etc., wherein the cavity is filled with foam by a method according to claim 1).
Regarding claim 16, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein in the cement slurry the mass ratio of manganese salts/Portland cement ranges from 0.0025 to 0.0115 (see BERNARD at paragraphs [0144] and [0159]; BERNARD teaches a mass ratio of manganese salts/Portland cement of 0.005).
Regarding claim 17, as applied to claim 3 above, JEZEQUEL in view of BERNARD teaches a method according to claim 3, wherein the mineral foam has a density in the dry state from 70 to 150 kg/m3 (see JEZEQUEL at pg. 4, lines 25-26).
Regarding claim 18, as applied to claim 4 above, JEZEQUEL in view of BERNARD teaches a method according to claim 4, wherein the cement has a Blaine specific surface area above 5000 cm2/g (see JEZEQUEL at pg. 4, lines 28-29).
Regarding claim 19, as applied to claim 5 above, JEZEQUEL in view of BERNARD teaches a method according to claim 5, wherein the gas-forming agent concentration is less than 8 wt% of the weight of the gas-forming liquid (see JEZEQUEL at pg. 4, lines 31-33).
Regarding claim 20, as applied to claim 7 above, JEZEQUEL in view of BERNARD teaches a method according to claim 7, wherein the viscosity-modifying agent is methyl cellulose, methylhydroxyethyl cellulose or hydroxypropylmethyl cellulose (see JEZEQUEL at pg. 5, lines 5-7).
Regarding claims 21-22, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein the foaming slurry is capable of at least partially filling a complex cavity such that a volume of an unfilled part in the complex cavity is less than 50% of the volume of the complex cavity, as recited by claim 21, or is less than 10% of the volume of the complex cavity, as recited by claim 22 (see JEZEQUEL at pg. 26, lines 1-5, teaching pouring the foamed slurry in a cylinder to completely fill the cylinder; it is also clear that any amount of the foaming slurry can be poured into a complex cavity therefore the foaming slurry is capable of partially filling a complex cavity to any desired volume percentage).
Regarding claim 23, as applied to claim 1 above, JEZEQUEL in view of BERNARD teaches a method according to claim 1, wherein a mass ratio of cement slurry to gas forming liquid is between 1.2 and 4.5 (see JEZEQUEL at pg. 18, lines 27-30, teaching a mass ratio of cement slurry to gas-forming liquid of between 2 and 4).
Claims 1, 3-4, 6-10, 12-13, 16-18 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over BERNARD in view of Berke et al. (U.S. Pub. No. 2010/0310846 A1) (hereinafter, “BERKE”).
Regarding claim 1, BERNARD teaches a method for filling a cavity with a low-density mineral foam (see BERNARD at Abstract and paragraphs [0009], [0081], [0101] and [0113]) comprising the following steps:
(i) preparing a cement slurry comprising:
Portland cement (see BERNARD at Abstract and paragraphs [0022] and [0141]; BERNARD teaches mixing CEM I Portland cement in water, thus forming a slurry);
ultrafine particles of which the D50 is comprised from 10 to 600 nm (see BERNARD at Abstract); a water reducing agent (see BERNARD at Abstract);
a manganese salt (see BERNARD at paragraphs [0039] and [0144]; BERNARD teaches that the slurry includes manganese sulfate monohydrate as the transition metal salt);
and water (see BERNARD at Abstract);
wherein the mass ratio of manganese salts/Portland cement ranges from 0.0015 to 0.013 (see BERNARD at paragraphs [0144] and [0159], Table 1; BERNARD teaches using manganese sulfate monohydrate as the transition metal salt, and in formulation 390-a shows an embodiment wherein the slurry comprises, by weight, 0.36% manganese salt and 71.9% Portland cement, yielding a mass ratio of manganese salt/Portland cement of 0.005);
ii) adding to the cement slurry obtained after step (i) a gas-forming liquid comprising: a gas-forming agent; to obtain a foaming slurry capable of at least partially filling a complex cavity (see BERNARD at Abstract and paragraphs [0147] and [0161]; BERNARD teaches adding liquid hydrogen peroxide to the cement slurry as a pore forming, i.e., gas forming, agent, thus forming a foaming slurry);
(iii) filling the cavity with the foaming slurry obtained at step (ii); and (iv) leaving the foaming slurry to expand within the cavity (see BERNARD at Abstract and paragraphs [0009], [0081], [0101] and [0113]; BERNARD teaches applying the foaming slurry on a support and leaving it to expand, wherein the support is a receptacle or hollow construction block, i.e., a cavity, which is filled with the mineral foam).
However, BERNARD fails to explicitly teach that the cement slurry comprises a viscosity-modifying agent which is a polymer chosen among anionic bio-based polymer, amphiphilic bio-based polymer, alkali swellable acrylic polymer and mixture thereof.
BERKE, in the same field of endeavor, teaches a method of making a low-density, lightweight cementitious foam slurry (see BERKE at Abstract and paragraph [0001]) wherein the method includes adding a viscosity-modifying agent which is a polymer chosen among anionic bio-based polymer, amphiphilic bio-based polymer, alkali swellable acrylic polymer and mixtures thereof (see BERKE at paragraphs [0077]-[0078]; BERKE teaches that the viscosity modifying agents are biopolymers or alkali swellable acrylic copolymer, specifically methyl cellulose or hydroxy methyl ethyl cellulose). BERKE teaches that the use of such viscosity modifying agents improve foam stability (see BERKE at paragraphs [0018] and [0170]) and provide benefits in terms of enhanced strength-to-density ratio (see BERKE at paragraph [0130]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of BERNARD by adding a bio-based polymer or alkali swellable acrylic polymer, such as methyl cellulose or hydroxy methyl ethyl cellulose to the slurry as a viscosity-modifying agent as taught by BERKE (see BERKE at paragraphs [0077]-[0078]). One of ordinary skill in the art would have been motivated to make such a modification for the benefit of improving foam stability and enhancing strength-to-density ratio as taught by BERKE (see BERKE at paragraphs [0018], [0170] and [0130]).
Regarding claim 3, BERNARD in view of BERKE teaches a method according to claim 1, wherein the mineral foam has a density in the dry state which overlaps with the claimed range of 50 to 180 kg/m3 (see BERNARD at paragraph [0097]; BERNARD teaches a density in the dry state from 70 to 450 kg/m3). As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)).
Regarding claim 4, as applied to claim 1 above, BERNARD in view of BERKE teaches a method according to claim 1, wherein the cement of the mixture of step (i) is a CEM I cement (see BERNARD at paragraph [0022]).
Regarding claim 6, as applied to claim 1 above, BERNARD in view of BERKE teaches a method according to claim 1, wherein the gas-forming agent comprised in the gas-forming liquid added in step (ii) is a solution of hydrogen peroxide, a solution of peroxomonosulfuric acid, a solution of peroxodisulfuric acid, a solution of alkaline peroxides, a solution of alkaline earth peroxides, a solution of organic peroxide, a suspension of particles of aluminium or mixtures thereof (see BERNARD at Abstract and paragraphs [0147], [0161] and [0071]; BERNARD teaches adding liquid hydrogen peroxide as the pore forming, i.e., gas forming, agent).
Regarding claim 7, as applied to claim 1 above, BERNARD in view of BERKE teaches a method according to claim 1, wherein the viscosity-modifying agent comprised in the gas-forming liquid added in step (ii) is an amphiphilic bio-based polymer (see BERKE at paragraphs [0077]-[0078]; BERKE teaches that the viscosity-modifying agent is methyl cellulose, which is an amphiphilic bio-based polymer).
Regarding claim 8, as applied to claim 1 above, BERNARD in view of BERKE teaches a method according to claim 1, wherein the cement slurry of step (i) further comprises a mineral addition of which the particles have a D50 comprised from 0.1 μm to 4 mm (see BERNARD at paragraphs [0051] and [0053]; BERNARD teaches a mineral addition wherein the particles have a D50 from 0.1 μm to 4 mm).
Regarding claim 9, as applied to claim 1 above, BERNARD in view of BERKE teaches a method according to claim 1. The foaming cementitious slurry taught by BERKE also includes fibers (see BERKE at paragraphs [0026] and [0091]). BERKE teaches adding microfibers to the slurry to enhance the ability of the foam/slurry to resist segregation of components and prevent micro-cracking, particularly at low densities (see BERKE at paragraph [0026]), and/or adding macrofibers to enhance mechanical properties (see BERKE at paragraph [0091]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the method of BERNARD by adding fibers to the slurry as taught by BERKE. One of ordinary skill in the art would have been motivated to make such a modification for the benefit of enhancing the ability of the low-density foam/slurry to resist segregation of components and prevent micro-cracking and to enhance mechanical properties as taught by BERKE (see BERKE at paragraphs [0026] and [0091]).
Regarding claim 10, as applied to claim 1 above, BERNARD in view of BERKE teaches a method according to claim 1, wherein herein the cement slurry of step (i) is obtained by first blending a premix of cement and ultrafine particles (see BERNARD at paragraph [0159]; BERNARD teaches mixing the cement and ultrafine particles prior to adding water to obtain the slurry).
Regarding claim 12, as applied to claim 1 above, BERNARD in view of BERKE teaches a method according to claim 1, wherein the cavity of step (iii) is a cavity in an element of a building or a construction (see BERNARD at Abstract and paragraph [0081]; BERNARD teaches applying the foaming slurry on a support and leaving it to expand, wherein the support can be a hollow construction block, i.e., a cavity).
Regarding claim 13, as applied to claim 1 above, BERNARD in view of BERKE teaches a construction whose at least one cavity is filled by a method according to claim 1 (see BERNARD at Abstract and paragraph [0081]; BERNARD teaches a construction wherein the cavity of the hollow construction block is filled by applying the foaming slurry and leaving it to expand).
Regarding claim 16, as applied to claim 1 above, BERNARD in view of BERKE teaches a method according to claim 1, wherein in the cement slurry the mass ratio of manganese salts/Portland cement ranges from 0.0025 to 0.0115 (see BERNARD at paragraphs [0144] and [0159], Table 1; BERNARD teaches a mass ratio of manganese salt/Portland cement of 0.005).
Regarding claim 17, as applied to claim 3 above, BERNARD in view of BERKE teaches a method according to claim 3, wherein the mineral foam has a density in the dry state which overlaps with the claimed range of 70 to 150 kg/m3 (see BERNARD at paragraph [0097]; BERNARD teaches a density in the dry state from 70 to 450 kg/m3). As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)).
Regarding claim 18, as applied to claim 4 above, BERNARD in view of BERKE teaches a method according to claim 4, wherein the cement has a Blaine specific surface area above 5000 cm2/g (see BERNARD at paragraph [0026]).
Regarding claim 20, as applied to claim 7 above, BERNARD in view of BERKE teaches a method according to claim 7, wherein the viscosity-modifying agent is methyl cellulose, methylhydroxyethyl cellulose or hydroxypropylmethyl cellulose (see BERKE at paragraph [0078]; BERKE teaches that the viscosity modifying agents are methyl cellulose or hydroxy methyl ethyl cellulose, which is also called methylhydroxyethyl cellulose).
Regarding claims 21-22, as applied to claim 1 above, BERNARD in view of BERKE teaches a method according to claim 1, wherein the foaming slurry is capable of at least partially filling a complex cavity such that a volume of an unfilled part in the complex cavity is less than 50% of the volume of the complex cavity, as recited by claim 21, or is less than 10% of the volume of the complex cavity, as recited by claim 22 (see BERNARD at paragraphs [0009], [0081], [0101] and [0113], teaching using the foam to fill a receptacle such as building blocks; it is also clear that any amount of the foaming slurry can be poured into a complex cavity therefore the foaming slurry is capable of partially filling a complex cavity to any desired volume percentage).
Response to Arguments
Applicant's arguments filed 08/11/2025 have been fully considered but they are not persuasive.
Applicant argues:
“when the mineral foam having the required mass ratio… within the range of 0.0015 and 0.013, the foaming slurry is capable of at least partially filling a complex cavity…. in example FT… the mineral foam does not have the ability to fill a complex cavity. The same behavior is shown in formulation FC, where the manganese chloride to cement ratio is 0.0145… only when the manganese salt is provided in an amount to satisfy the ratio such that the mass ratio ranges from 0.0015 to 0.013, as shown in compositions F1-F4, will the mineral foam have the ability to at least partially fill a complex cavity. The technical effect exemplified by the mass ratio of the manganese salt and cement is not taught or suggested by the prior art, nor would one of ordinary skill in the art have a reasonable expectation of success arriving at a foaming slurry (having such range) being capable of at least partially filling a complex cavity based on the teachings of Jezequel and Bernard… the presently claimed mass ratio range of 0.0015 to less than 0.013 is demonstrated to possess unexpectedly good results… the data demonstrates the criticality of the mass ratio… a prima facie case of obviousness based on overlapping ranges can be rebutted by showing the criticality of the claimed range” (see Remarks at pg. 6-7, 10 and 13).
“the mineral foams of Jezequel and Bernard are perfectly suitable for coating surfaces, they are silent as to the capability of the foaming slurry to expand into a cavity… both Jezequel and Bernard are focused on simply adhering the liquid foam to the support on which it is applied… there is no discussion of Bernard's formulations possessing the ability to fill a cavity simply by adding the foaming slurry to the cavity” (see Remarks at pg. 7-8 and 12).
“Jezequel's examples possess a mass ratio of manganese salts/Portland cement of ~0.014, which is outside of the instantly claimed range and may be compared to formulation FC presented in the present application… FC fails to even partially fill a complex cavity” (see Remarks at pg. 8).
“Bernard otherwise provides no teaching or suggestion as to the amount of manganese salt (or other transition metal) that should be present… there is no mention in Bernard that Bernard contains any focus on cost savings or economic benefits” (see Remarks at pg. 9 and 13).
“the foaming mechanisms between the two are distinct: Bernard utilizes a pore forming agent such as peroxide that decomposes (with activation by a transition metal) into oxygen while Berke uses a polycarboxylate surfactant” (see Remarks at pg. 11).
“Bernard teaches that the viscosifier would be included as an adjuvant in the mixture of step (i), whereas the present claims require that the viscosity-modifying agent is included as a part of the a gas-forming liquid (with the gas-forming agent) that is added to the cement slurry obtained after step (i)” (see Remarks at pg. 12).
However, for at least the following reasons the Examiner finds these arguments unpersuasive.
In response to Applicant’s arguments that the present invention is nonobvious because the claimed range is critical in that it results in a foam that can at least partially fill a cavity and obviousness based on overlapping ranges can be rebutted by showing such criticality, JEZEQUEL teaches a ratio of about 0.014 which would not be able to fill a complex cavity based on formulation FC, and BERNARD provides no teaching or suggestion as to the amount of manganese salt that should be present, the Examiner respectfully disagrees. Formulation FC uses a ratio of above 0.014; as discussed in the rejection above, JEZEQUEL teaches a ratio of just below 0.014, and Applicant’s specification states that the present invention, having a ratio of below 0.014, is particularly suitable for filling complex cavities (see, e.g., pg. 1, lines 5-7 and pg. 3, lines 10-26). The examples meant to display criticality of the claimed range also do not compare the claimed range as amended (which was a range of below 0.014 before amendment, an amount explicitly taught by JEZEQUEL) to a ratio of just below 0.014 as taught by JEZEQUEL. Further, the claimed limitation is “a foaming slurry capable of at least partially filling a complex cavity”; it seems that any foaming slurry would be capable of this, and it is not clear in what way formulation FC is not. Adding any amount of a foaming slurry to a complex cavity would “at least partially fill” the cavity as claimed; there are also no limitations on the amount of slurry that may be added, number of layers of foam, method of filling, etc., so it would seem that a complex cavity could be filled to any desired amount with the foaming slurries of the prior art. Applicant states that formulation FC is not capable of at least partially filling a complex cavity, but only a specific amount of the formulation is added to that cavity, and Fig. 4 shows that there is foam in the complex cavity, i.e., it is “at least partially filled” as claimed. Additionally, Applicant states that a case of obviousness based on overlapping ranges can be rebut by showing criticality of a range, and that BERNARD provides no teaching or suggestion regarding an amount of manganese salt that is used; the present rejections are not based on overlapping ranges, and BERNARD explicitly discloses a ratio of 0.005, which is within the claimed range. In response to Applicant’s argument that BERNARD does not mention cost savings, as discussed in the rejection above, the disclosure of BERNARD shows that the amount of manganese salt can be lowered, e.g. to a ratio of 0.005, and still be sufficient amount of manganese salt to provide for the decomposition of the pore-forming agent into oxygen as needed to obtain desired foaming slurry characteristics; one of ordinary skill recognizes that using less materials reduces material costs.
In response to Applicant’s arguments that the present invention is nonobvious because JEZEQUEL and BERNARD do not mention using the foaming slurry to fill a cavity, the Examiner respectfully disagrees, as both references explicitly disclose using the foaming slurry to fill a cavity (see JEZEQUEL at pg. 4, lines 7-23, pg. 21, lines 19-22 and pg. 22, lines 15-21; see BERNARD at paragraphs [0009], [0081], [0101] and [0113]). As set forth in MPEP § 2123, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Teaching that the foam may also be applied to a support which is not a cavity in no way negates the explicit disclosures in both references of using the foam to fill a cavity.
In response to Applicant’s argument that there is no motivation or suggestion for one of ordinary skill to modify BERNARD with BERKE because they teach different foaming mechanisms, the Examiner respectfully disagrees. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as set forth in the rejection above, BERKE explicitly teaches that including biopolymer or alkali swellable acrylic copolymer viscosity modifying agents, specifically methyl cellulose or hydroxy methyl ethyl cellulose, improves foam stability and provides benefits in terms of enhanced strength-to-density ratio (see BERKE at paragraphs [0018], [0077]-[0078], [0130] and [0170]). Additionally, BERNARD teaches including a viscosifier, and as evidenced by BERK, methyl cellulose and hydroxy methyl ethyl cellulose are known viscosifiers in the art; MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
In response to Applicant’s argument that the present invention is nonobvious because Bernard teaches adding the viscosifier at step (i) rather than after step (i), the Examiner respectfully disagrees. MPEP § 2144.04(IV)(C) states that selection of any order of mixing ingredients is prima facie obvious. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
Consequently, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Sterrer, et al. (AT-9511-U1) (hereinafter, “STERRER”; citations herein refer to the attached machine translation).
STERRER teaches a method for filling a complex cavity with a low-density (80 to 200 kg/m3) mineral foam comprising preparing a cement slurry comprising CEM I Portland cement, fine particles (fly ash, glass dust, CaCO3 marble dust), a water reducing agent (e.g., PVA), a manganese salt (potassium permanganate), and water, wherein the mass ratio of manganese salts/Portland cement ranges from 0.000125 and 0.25 and wherein the respective amounts of the manganese salt and cement are result-effective variables (see STERRER at Abstract and paragraphs 12-14, 17, 21, 25 and 27-38), adding a gas-forming agent (hydrogen peroxide) and a viscosity-modifying agent which is an amphiphilic bio-based polymer (cellulose, e.g., Tylose) to obtain a foaming slurry capable of filling a complex cavity, filling the cavity with the foaming slurry and leaving it to expand within the cavity (see STERRER at paragraphs 11, 15, 17, 25 and 27-38).
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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