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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-35 and the species sodium metasilicate and metakaolin in the reply filed on 6/23/2025 is acknowledged. The traversal is on the ground(s) that there is no serious burden. This is not found persuasive because the different groups and species require separate searches.
The requirement is still deemed proper and is therefore made FINAL.
Claims 36-49 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/23/2025.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, e.g., “The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics.” Exemplification of a species could be illustrative of members of the class. For processes, the type of reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
The abstract of the disclosure is objected to because the abstract does not disclose the general nature of the claimed compounds. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claims
The status identifiers of claims 48-49 must be changed to Withdrawn.
Claim Objections
Claim 15 is objected to because of the following informalities: A period must be added to the end of the claim. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: “wherein the aluminosilicate comprises is derived” is grammatically incorrect. Deleting the word “comprises” would resolve the objection. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 4 is 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. Zinc is not a group 3 or 4 transition metal, or a group 13 element.
Claims 5-6, 10, 18, 23, 24, 28 and 34 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 5-6, 10, 18, 23, 24, 28 and 34 recite the broad recitation comprises, and the claim also recites consists which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 7-9 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. The variables M and n are not defined in claim 7, variable n is not defined in claim 8, and variable M is not defined in claim 9.
Claim 12 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation less than 150°C, and the claim also recites less than 150°C which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 13 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation at least -40°C, and the claim also recites at least -20°C which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 17 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation aluminosilicate, and the claim also recites species of aluminosilicates which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 19 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 19 recites several broad ranges, and the claim also recites narrower ranges which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 25-27 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. The variables M and n are not defined in claim 25, variable n is not defined in claim 26, and variable M is not defined in claim 27.
Claims 30-31 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 30-31 recite broad ranges, and the claims also recites narrower ranges which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 33 is 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.
Regarding claim 33, the word "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the word. are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 33 recites several broad ranges, and the claims also recites narrower species in parentheses which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 35 is 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 35 recites several broad ranges, and the claim also recites narrower ranges which are the narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 7-9, 11-14 and 16-18 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hesselbarth et al. (2019/0202737).
Regarding claims 1, 7-9, 12-14 and 18: Hellesbarth et al. teach a reactive coating composition [0103, 0118] comprising sodium polyacrylate, metakaolin (Metaver R; aluminosilicate), water (solvent), and potassium silicate (WG-1 to WG-4), sodium silicate (WG-5), or sodium metasilicate (NaMS) [0040; Examples; Tables].
Regarding claim 11: Claim 11 contains product by process limitations that do not provide a structural difference from Hellesbarth et al. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 16: Hellesbarth et al. teach fillers [Examples]. Any of the aluminosilicates can be considered a filler.
Regarding claim 17: Hellesbarth et al. teach blast furnace slag [Examples].
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.
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.
Claim(s) 2-4 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hesselbarth et al. (2019/0202737) as applied to claim 1 above further in view of Briand et al. (8,536,250).
Regarding claims 2-4: Hesselbarth et al. fail to teach an amphoteric metal oxide.
However, Briand et al. teach adding zinc oxide as a pigment (column 10, lines 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add zinc oxide as taught by Briand et al. to the composition of Hesselbarth et al. as a pigment to obtain the desired color for the composition.
Regarding claim 19: Hesselbarth et al. teach the claimed amounts [Examples; Tables].
Hesselbarth et al. fail to teach an amphoteric metal oxide.
However, Briand et al. teach adding zinc oxide as a pigment (column 10, lines 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add zinc oxide as taught by Briand et al. to the composition of Hesselbarth et al. as a pigment. It would have been obvious to optimize the amount of zinc oxide added to obtain the desired color for the composition. It is a result effective variable.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hesselbarth et al. (2019/0202737) as applied to claims 1 and 14 above further in view of Seo et al. (2013/0055924).
Hesselbarth et al. fail to teach the claimed co-solvent.
However, Seo et al. teach that ethylene glycol is a co-solvent for dissolving geopolymer precursors to create phase separation [0006, 0052] to yield a geopolymer with open pores [0003].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add ethylene glycol as taught by Seo et al. to the composition of Hesselbarth et al. to create phase separation and to yield a geopolymer with open pores.
Claim(s) 20, 21, 25-31 and 33-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hesselbarth et al. (2019/0202737) in view of Singh et al. (Materials Science and Engineering A 396 (2005) 392-402).
Regarding claims 20, 25-31 and 33-34: Hellesbarth et al. teach a reactive coating composition [0103, 0118] comprising sodium polyacrylate, metakaolin (Metaver R; aluminosilicate), water (solvent), and potassium silicate (WG-1 to WG-4), sodium silicate (WG-5), or sodium metasilicate (NaMS) [0040; Examples; Tables].
Hellesbarth et al. fail to teach colloidal silica.
However, Singh et al. teach that adding sodium hydroxide and colloidal silica, Ludox HS-40, to metakaolin geopolymer compositions comprising sodium silicate provides a more complete geopolymerization process (Results; Conclusions).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add sodium hydroxide and Lusox HS-40 as taught by Singh et al. to the composition of Hellesbarth et al. to promote completion of the geopolymerization process.
Regarding claim 21: Hellesbarth et al. teach fillers [Examples]. Any of the aluminosilicates can be considered a filler.
Claim(s) 21-22 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hesselbarth et al. (2019/0202737) and Singh et al. (Materials Science and Engineering A 396 (2005) 392-402) as applied to claim 20 above further in view of Briand et al. (8,536,250).
Regarding claims 21-22: Hesselbarth et al. fail to teach an amphoteric metal oxide.
However, Briand et al. teach adding zinc oxide as a pigment (column 10, lines 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add zinc oxide as taught by Briand et al. to the composition of Hesselbarth et al. as a pigment to obtain the desired color for the composition.
Regarding claim 35: Hesselbarth et al. teach the claimed amounts [Examples; Tables].
Hesselbarth et al. fail to teach an amphoteric metal oxide.
However, Briand et al. teach adding zinc oxide as a pigment (column 10, lines 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add zinc oxide as taught by Briand et al. to the composition of Hesselbarth et al. as a pigment. It would have been obvious to optimize the amount of zinc oxide added to obtain the desired color for the composition. It is a result effective variable.
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, 7-18, 20, and 25-34 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/860039. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2-4, 19, 21, 22 and 35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/860039 in view of Briand et al. (8,536,250).
The copending application claims the composition with the exception of the amphoteric metal oxide.
However, Briand et al. teach adding zinc oxide as a pigment (column 10, lines 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add zinc oxide as taught by Briand et al. to the composition of the copending application as a pigment. It would have been obvious to optimize the amount of zinc oxide added to obtain the desired color for the composition. It is a result effective variable.
This is a provisional nonstatutory double patenting rejection.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763