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
Claims 1–20 are pending. No claim amendments have been introduced.
The Specification has been amended to overcome an objection identified in the Non-Final Office Action dated 35 March 2025. The objection to the Specification is herein withdrawn.
Applicants were granted a Suspension of Action on 16 September 2025, for a period of 6 months. The good and sufficient cause for suspension was that Applicants were still conducting additional experiments and obtaining data to support arguments of unexpected results. However, as of the end of the six-month suspension period, no declaration or affidavit has been submitted. Action on this application is no longer suspended, and the Examiner will now respond to the arguments submitted in response to the Non-Final Office Action.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1–11 and 14–15 are rejected under 35 U.S.C. 103 as being unpatentable over Vaquero et al. (Cement and Concrete Composites 74 (2016) 109–119, hereinafter “Vaquero”) in view of Schneider (US 2020/0029561, hereinafter “Schneider”).
Regarding claim 1, Vaquero teaches an antimicrobial masonry-based material (see page 110, col. 1, paragraph 4 teaching “cement-based materials with biocide activity” which would also provide odor-reduction to at least some degree). Vaquero teaches a plurality of biocidal agents in a base material (see Vaquero at page 111, Table 2, teaching fungicides, bactericides, and algaecides), but fails to teach a halo active aromatic sulfonamide as claimed.
Schneider teaches the exact halo active aromatic sulfonamide as claimed (Paragraph 0055), and discloses benefits of its use over traditional disinfectants like bleach and peroxide (Paragraph 0053). Furthermore, Schneider teaches this halo active aromatic sulfonamide not only as a coating, but also as being impregnated into drywall and building materials (Paragraph 0096). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the biocidal concrete taught by Vaquero by replacing the biocides disclosed therein with the halo active aromatic sulfonamide taught by Schneider, because the sulfonamide offers long-lasting benefits over other matrix-bound biocides and is taught to be incorporable into building materials like drywall and concrete. This combination arrives at the claimed invention, and thus the claim is rendered prima facie obvious.
Regarding claims 2 and 3, Vaquero, as modified by Schneider, teaches the masonry-based material wherein at least one of R1–R5 of the halo active aromatic sulfonamide is not hydrogen (see Schneider, Paragraph 0074, teaching at least one of R1–R5 is not hydrogen). Claim 3 further limits the halo active aromatic sulfonamide to be embodied by Chloramine-T or N-chloro-4-carboxybenzenesulfonamide (see Schneider, Paragraph 0077, teaching chloramine-T and N-chloro-4-carboxybenzenesulfonamide as preferred embodiments).
Regarding claims 4 and 5, Vaquero, as modified by Schneider, teaches the masonry-based material wherein the composition comprises about 0.01–20 wt.% of the halo active aromatic sulfonamide compound (see Vaquero, Table 4, teaching a biocide dosage ranging from 0.002–3.5% over-dry-weight (odw), i.e., irrespective of water content in the concrete). This overlaps with the claimed range, and thus constitutes a prima facie case of obviousness (See MPEP 2144.05(I)). Claim 5 recites the limitation wherein the composition comprises from about 80–99.9 wt.% of the base material; this balances with the amount of sulfonamide to make 100 wt.%. Vaquero, therefore, teaches the composition as comprising 96.5–99.998% odw base material, which constitutes a prima facie case of obviousness for claim 5 as well.
It is noted that these percentages don’t account for water content. In the applicants’ specification, they say that the composition can be without water or with water (Paragraph 0065). Vaquero teaches water as comprising ~10 wt.% of the overall cement, so the 0.002–3.5% odw would equate to ~0.0018–3.15 wt.%, which still renders claim 4 prima facie obvious; the remainder of the composition must still balance to 100 wt.%, which means the base material comprises 96.85–99.9982 wt.%, which still renders claim 5 prima facie obvious.
Regarding claims 6–8, 11, and 14–15, claim 6 recites the limitation wherein the base material comprises a mixture of cement, aggregates, and water (see Vaquero, Table 1, teaching the base material as comprising a mixture of cement, aggregates, and water). Claim 7 recites the limitation wherein the base material comprises about 5–50 wt.% cement, about 5–90 wt.% aggregates, and the balance consisting essentially of water. Vaquero lists these proportions as kg/m3, but these values can be converted to weight percentages by assuming 1 m3 of volume and adding the individual masses of each component together:
Component
Dosage (kg/m3)
Mass in 1 m3 (kg)
Weight percentage
Cement
350
350
350÷2395.5 = 14.6%
Fine aggregate
1074
1074
1074÷2395.5 = 44.8%
Coarse aggregate
724
724
724÷2395.5 = 30.2%
Plasticizer
3.5
3.5
3.5÷2395.5 = 0.2%
Water
244
244
244÷2395.5 = 10.2%
Total
2395.5
100%
From this table, it can be seen that the weight percentages of cement, aggregates (75.0 wt.% combined), and water all fall within the ranges of claim 7, and thus constitute a prima facie case of obviousness. Furthermore, claim 8 recites the limitation wherein the base material further comprises from about 0.01–20 wt.% additional additives; the plasticizer additive (0.02 wt.%) falls within this range, rendering claim 8 prima facie obvious as well.
Claim 11 recites the limitation wherein the aggregates comprise a combination of fine and coarse aggregates (Vaquero, Table 1). Claim 14 recites the fine aggregate as having an average particle size of 5 mm or less (see Vaquero, Table 1, teaching fine aggregate between 0–5 mm in size). Claim 15 recites the coarse aggregate as having an average particle size of greater than 5 mm (see Vaquero, Table 1, teaching coarse aggregate between 5–12 mm in size).
Regarding claim 9, Vaquero, as modified by Schneider, teaches the masonry-based material composition wherein the additional additives include at least one of a pigment, a latex polymer additive, and a water-retentive additive (see Vaquero, page 110, col. 2, paragraph 2, teaching the use of the additive OPTIGEL CR®, an activated bentonite product). Bentonite is an absorbent clay commonly used in concretes to boost water retention, which makes it a water-retentive additive.
Regarding claim 10, Vaquero, as modified by Schneider, teaches the masonry-based material composition wherein the aggregates include silicas and silicates (see Vaquero, page 110, col. 2, line 1, disclosing that all aggregates were siliceous, i.e., silicas and silicates).
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Vaquero and Schneider as applied to claims 1, 6 and 11 above, and further in view of Obla et al. (Final Report to the RMC Research & Education Foundation, 2015, hereinafter “Obla”).
Regarding claims 12 and 13, Vaquero, as modified by Schneider, fails to explicitly teach the masonry-based material composition having the amounts of fine aggregate and coarse aggregate as claimed.
Specifically, the composition taught by Vaquero (Table 1) discloses 1074 kg/m3 fine aggregates and 724 kg/m3 coarse aggregates. Assuming a volume of 1 m3, these have a combined mass of 1798 kg. The fine aggregates therefore comprise 59.7 wt.% based on the total weight of the aggregates (i.e., 1074/1798 = 0.597), while the coarse aggregates comprise 40.3 wt.% based on the total weight of the aggregates (i.e., 724/1798 = 0.403).
However, concrete formulations heavily influence the resulting mechanical properties of the concrete, and so the balance of coarse-to-fine aggregates is often optimized to suit the desired application of the concrete (see Obla, page 16, “Proposed Mixture Proportioning Based on Paste-to-Void Ratio”, teaching the optimization of concrete strength, workability and durability by controlling the ratio of coarse-to-fine aggregates). Obla teaches a plurality of different coarse-to-fine aggregate ratios (see, for example, Page 20, Table 1, Material Designation 0.55SL33, which has a coarse-to-fine ratio of approximately 60:40; 1929 coarse:1245 fine) along with the mechanical properties of each formulation (see the continuation of Table 1 on Page 21, teaching various mechanical properties of the different formulations). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the coarse-to-fine aggregate ratio of Vaquero’s composition through routine optimization, as Obla teaches different mechanical properties correlating to different ratios, including 60 wt.% coarse to 40 wt.% fine, which overlaps with the ranges recited in claims 12 and 13 and thus are rendered prima facie obvious (see MPEP 2144.05(II)).
Claims 1 and 16–20 are rejected under 35 U.S.C. 103 as being unpatentable over Weir et al. (US 2006/0171976 A1, hereinafter “Weir”) in view of Schneider.
Regarding claim 1, Weir teaches a base material comprising gypsum wallboard (Abstract) and a biocidal agent, but fails to teach a halo active aromatic sulfonamide compound as claimed. Schneider teaches the halo active aromatic sulfonamide as claimed, and discloses its use not only as a coating, but also as being impregnated into drywall and building materials (Paragraph 0096); Schneider further discloses benefits of its use over traditional disinfectants like bleach and peroxide (Paragraph 0053). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the biocidal concrete taught by Weir by replacing the biocide disclosed therein with the halo active aromatic sulfonamide taught by Schneider, because the sulfonamide offers long-lasting benefits over other matrix-bound biocides and is taught to be incorporable into building materials like drywall and concrete. This combination arrives at the claimed invention, and thus the claim is rendered prima facie obvious.
Regarding claim 16, Weir teaches the limitation wherein the base material comprises a mixture of gypsum and water (see Paragraph 0007, teaching the manufacture of wallboard as comprising an aqueous slurry of gypsum).
Claim 17 further recites the limitation wherein the gypsum is present in the base material in an amount of about 70–90 wt.%, based on the total weight of the base material, and the balance of the base material consists essentially of water. Weir fails to explicitly teach a base material comprising 70–90 wt.% gypsum; he teaches about 75 weight parts water per 100 weight parts stucco, i.e., 25 wt.% gypsum (Paragraph 0035). He specifies that this excess of water provides satisfactory flowability, such that the gypsum can be molded into the shape of a wallboard. However, Weir discloses that the core composition is allowed to set, and then dried “to remove any excess water not consumed in the reaction forming the calcium sulfate dihydrate [gypsum]” (Paragraph 0027). Dried gypsum inherently meets the claimed limitations; the gypsum slurry is formulated with an excess of water to keep it workable, and then dries into solid gypsum cement. The final water content is always around 21 wt.%, because that’s the stoichiometric amount of water that will be retained as CaSO-4·2H2O:
Molar mass of 2
H
2
O
Molar mass of
CaS
O
4
∙2
H
2
O
=
36.032 g/mol
172.172 g/mol
×100% = 20.94%
A dried gypsum board comprising 21 wt.% water would have a gypsum content of 79 wt.%, and so the dried gypsum wallboard described by Weir inherently meets the limitation as claimed, thus rendering claim 17 prima facie obvious.
Regarding claims 18–20, claim 18 recites a structure formed from the masonry-based material of claim 1. Wallboard (Weir, Paragraph 0004) is a type of structure formed from the claimed masonry-based material. Claim 19 recites the limitation wherein the structure is at least a portion of a wall or drywall (see Weir, Paragraph 0004, teaching wallboard/drywall). Claim 20 recites the limitation wherein the structure maintains at least a 98% antimicrobial killing performance after 168 hours (see Schneider, Paragraph 0101, teaching the halo active aromatic sulfonamide as having a killing performance of at least 98% after 168 hours).
Response to Arguments
Applicant's arguments filed 25 March 2025 have been fully considered but they are not persuasive.
Applicants argue that Vaquero does not teach a sulfonamide among the tested biocides, and that none of the monocomponent formulations tested by Vaquero were able to pass the three-day evaluation process, and therefore a person having ordinary skill in the art would not have been motivated to use the sulfonamides of Schneider in the biocidal drywall of Vaquero. This argument is not persuasive. The Examiner acknowledges that Vaquero does not teach sulfonamides, and stated that explicitly in the rejection of claim 1. Schneider is cited as teaching biocidal sulfonamides, and provides explicit motivation supporting their use in drywall (see the above rejection of Claim 1). Vaquero tested a total of ten monocomponent biocides. Even though all ten failed, that would not suggest to a person having ordinary skill in the art that all monocomponent biocides are incompatible with drywall, especially since Schneider explicitly teaches sulfonamides impregnated in drywall. Vaquero teaches that biocides can be impregnated in drywall, while Schneider teaches biocidal sulfonamides as being compatible with drywall. A person having ordinary skill in the art would have been sufficiently motivated to try using Schneider’s sulfonamides in the biocidal drywall of Vaquero with a reasonable expectation of success.
Applicants further argue that alkaline concrete and drywall degrades and inactivates antimicrobials over time, leading to short-lived efficacy or environmental leaching. However, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicants go on to discuss why their proposed invention does not face the same challenges that Vaquero faces. These paragraphs do not seem to contain any arguments, so the Examiner cannot respond to them. However, they conclude by stating that Applicants are conducting experiments to show unexpected results. As no affidavit or declaration was submitted by the end of the Suspension Period, there is no additional data presented to support arguments of unexpected results, and therefore the Examiner maintains the above rejections.
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 Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, T, Th, F 6:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.P.L./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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