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 .
Response to Amendment
This office action is in response to the Amendment filed on 01/21/2026.
Claims 1, 3-6, 8-11 and 13-23 are presently pending; claims 2, 7 and 12 are canceled; claims 14-23 are withdrawn; claims 1, 3-5, 18 and 23 are amended; claims 1, 3-6, 8-11 and 13 are under examination.
The objections to claims 1 and 3-4 are withdrawn in light of the amendments to the claims; the objections to claims 2 and 7 are moot as these claims have been canceled.
The rejections of claims 1, 3-6, 8-11 and 13 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims; the rejections of claims 2, 7 and 12 are moot as these claims have been canceled.
The 35 U.S.C. 102 rejection of claims 1, 3-6 and 8 over SATO and the 35 U.S.C. 103 rejection of claims 9-11 and 13 over SATO are withdrawn in light of the amendments to the claims; the rejection of claims 2, 7 and 12 is moot as these claims have been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
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.
Claims 1, 3-6, 8-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Sato, et al. (JP-2019064709-A) (hereinafter, “SATO”; citations herein refer to the machine translation provided with a previous office action) in view of Smith, et al. (U.S. Pat. No. 4,961,790-A) (hereinafter, “SMITH”).
Regarding claim 1, SATO teaches a packaged additive for preparing a cementitious composition (see SATO generally at paragraphs 7-8, teaching a water-soluble paper bag package which contains powder particles for concrete such as admixtures/additives; although the recitation of “for preparing a cementitious composition” is considered intended use language which does not limit the present product claim, see SATO at paragraphs 7 and 18-20, teaching that the additive is used for preparing a cementitious composition, e.g., concrete) comprising:
a water-soluble package comprising a blend of wood pulp and at least one additional package forming agent, the at least one additional package forming agent selected from the group consisting of alkylcellulose, salts of alkylcellulose, carboxyalkylcellulose, salts of carboxyalkylcellulose, hydroxyalkylcellulose, salts of hydroxyalkylcellulose, poly(acrylic acid) and its copolymers, poly(methacrylic acid) and its copolymers, poly(vinyl alcohol), partially hydrolyzed poly(vinyl acetate) and its copolymers, starch, modified starch, pectin, amylopectin, and mixtures thereof (see SATO at paragraphs 8, 10, 12 and 22, teaching a water-soluble paper package comprising wood pulp and an alkali metal salt of carboxyalkyl cellulose, e.g., sodium salt of carboxymethyl cellulose);
and at least one non-liquid performance-enhancing additive packaged within the water-soluble paper package, the at least one non-liquid performance enhancing additive comprising at least one of a set accelerator, set retarder, air-entraining agent, defoamer, alkali-reactivity reducer, bonding admixture, dispersant, coloring admixture, corrosion inhibitor, damp-proofing admixture, gas former, permeability reducer, pumping aid, shrinkage compensation admixture, fungicidal admixture, germicidal admixture, insecticidal admixture, rheology modifying agent, finely divided mineral admixture, wetting agent, strength enhancing agent, toughening aid, thickening agent, density modifier, preservative, water repellent, or mixtures thereof (see SATO at paragraphs 18-19, teaching many granular admixtures which may include air entraining agents, retarders, strength enhancing agents, thickeners, etc.); and
a colored filler packaged within the water-soluble paper (see SATO at paragraph 18, teaching also including a granular coloring agent (i.e., colored filler) as one of the granular admixtures).
SATO fails to explicitly mention that the granular coloring agent is inert.
However, the use of inert granular coloring agents is well-known in the art. For example, SMITH teaches a packaged additive for preparing a cementitious composition comprising a water-soluble package containing common performance-enhancing additives such as retarders, air entraining agents, strength enhancing agents, thickeners, etc. (see SMITH at col. 3, lines 34 - col. 6, line 63) and inert granular coloring agents, e.g., cobalt blue (see SMITH at col. 4, lines 17-18 and col. 5, lines 21-25).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to simply substitute the unspecified granular coloring agent of SATO with an inert granular coloring agent such as cobalt blue, as taught by SMITH (see SMITH at col. 5, lines 21-25). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of coloring a cementitious material. Additionally, SMITH clearly teaches that inert granular coloring agents such as cobalt blue are known coloring agents in the art, and 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)”.
Regarding claims 3-5, as applied to claim 1 above, SATO in view of SMITH teaches a packaged additive according to claim 1, wherein the at least one additional package forming agent comprises carboxyalkylcellulose (as recited by claim 3), which comprises a carboxymethyl cellulose (as recited by claim 4), which comprises the sodium salt of carboxymethyl cellulose (as recited by claim 5) (see SATO at paragraphs 10, 12 and 22, teaching sodium salt of carboxymethyl cellulose).
Regarding claim 6, as applied to claim 5 above, SATO in view of SMITH teaches a packaged additive according to claim 5, wherein the water-soluble package comprises at least one of a bag, a sack, a sachet, a box, a packet, a pouch, or a pod (see SATO at paragraphs 7-8, teaching a bag).
Regarding claim 8, as applied to claim 1 above, SATO in view of SMITH teaches a packaged additive according to claim 1. The recitation in claim 8 of “wherein the non-liquid performance enhancing additive is suitable to transform a base cementitious material into a specialty cementitious material comprising end application dictated performance characteristics that are imparted by the non-liquid additive, wherein the specialty cementitious material is selected from the group consisting of…” is directed toward an intended use of a component of the packaged additive rather than being directed toward the packaged additive itself, and therefore does not hold patentable weight in the present product claim. SATO in view of SMITH teaches the packaged additive as claimed by the present claim comprising a performance enhancing additive as claimed, therefore the performance enhancing additive of SATO in view of SMITH would be expected to be capable of performing the intended use of being used to transform a base cementitious material into one of the many specialty cementitious materials recited by claim 8 (e.g., see SATO at paragraphs 7 and 18-20, teaching concrete). MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 9, as applied to claim 1 above, SATO in view of SMITH teaches a packaged additive according to claim 1, and further teaches a separately packaged base cementitious material (see SATO at paragraphs 7 and 18-20, teaching materials such as Portland cement and aggregate, which are separate from the additive; although the recitation of “for preparing a hardenable cementitious composition” is considered intended use language which does not limit the present product claim, see SATO at paragraphs 7 and 18-20, teaching that the materials are used for preparing hardenable cementitious compositions, e.g., concrete).
Although SATO does not explicitly mention a “kit”, SATO clearly discloses that the bag may contain cementitious materials (cement, aggregate, etc.) or additive materials, and that two separate bags may be used to contain these materials before they are mixed (see SATO at paragraphs 7 and 18-20). Therefore, it is obvious from the disclosure of SATO that the packaged additive and a separately packaged base cementitious material may be used together as a set of two bags which are subsequently mixed to form concrete, i.e., as a “kit”.
Regarding claim 10, as applied to claim 9 above, SATO in view of SMITH teaches a kit according to claim 9, wherein the separately packaged base cementitious material comprises at least one of Portland cement, modified Portland cement, masonry cement, alumina cement, refractory cement, magnesium phosphate cement, magnesium potassium phosphate cement, calcium aluminate cement, calcium sulfoaluminate cement, calcium sulfate hemi-hydrate cement, oil well cement, ground granulated blast furnace slag cement, natural cement, hydraulic hydrated lime, or mixtures thereof (see SATO at paragraphs 18 and 20, teaching, e.g., Portland cement).
Regarding claim 11, as applied to claim 9 above, SATO in view of SMITH teaches a kit according to claim 9, wherein the separately packaged base cementitious material comprises an aggregate component (see SATO at paragraphs 18 and 20, teaching aggregates).
Regarding claim 13, as applied to claim 9 above, SATO in view of SMITH teaches a kit according to claim 9. The recitation in claim 8 of “wherein the packaged additive comprises admixture material components suitable to transform a base cementitious material into a specialty cementitious material comprising end application dictated performance characteristics that are imparted by the non-liquid additive, wherein the specialty cementitious material is selected from the group consisting of…” is directed toward an intended use of components of the packaged additive rather than being directed toward the kit itself, and therefore does not hold patentable weight in the present product claim. SATO in view of SMITH teaches the packaged additive as claimed by the present claim, therefore the packaged additive of SATO in view of SMITH would be expected to be capable of performing the intended use of being used to transform the base cementitious material into one of the many specialty cementitious materials recited by claim 13 (e.g., see SATO at paragraphs 7 and 18-20, teaching concrete). MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Response to Arguments
Applicant’s arguments filed 01/21/2026 with respect to claims 1, 3-6, 8-11 and 13 have been considered but are moot because the arguments do not apply to the new combination of references as set forth in the grounds of rejection above.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 103 for claims 1, 3-6, 8-11 and 13 over SATO in view of SMITH as set forth above.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731