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 12/24/2025.
Claims 30-31, 33-37, 39-51 are presently pending; claims 1-29, 32 and 38 are canceled; claims 47-48 are withdrawn; claims 30-31, 33-37, 39-46 and 48 are amended; claims 49-51 are new; claims 30-31, 33-37, 39-46 and 49-51 are under examination.
The objections to the abstract and specification are withdrawn in light of the amendments to the abstract and specification.
The objections to claims 31, 33-34, 36-37, 40-42 and 44 are withdrawn in light of the amendments to the claims; the objections to claims 35 and 43 are maintained; the objections to claims 32 and 38 are moot as these claims have been canceled.
New objections to claims 39-40 and 45 are present herein in light of the amendments to the claims.
The rejections of claims 35-36, 41 and 44-46 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims; the rejection of claim 40 under 35 U.S.C 112(b) is maintained.
The 35 U.S.C. 102 rejections of claims 30-31, 37, 39, 41-42 and 44 over DOZA and claims 30-31, 35-37, 39 and 41-45 over BEN-NISSAN are withdrawn in light of the amendments to the claim; the 35 U.S.C. 103 rejections of claims 33-36 and 45 over DOZA and claim 46 over BEN-NISSAN are withdrawn in light of the amendments to the claims; the 35 U.S.C. 103 rejection of claim 40 over DOZA in view of BEN-NISSAN is maintained; the rejections of claims 32 and 38 are moot as these claims have been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Claim Objections
Claims 35, 39-40, 43 and 45 are objected to because of the following informalities:
Claims 35 and 43 contain a grammatical error; the word “whereby” should read “wherein” (see claims 35 and 43 each at line 2), as the recited limitations are directed to properties or components in the additive rather than to actions which occur.
Claim 39 recites the limitation “The additive according to claim 30, wherein b) the coagulating agent is selected from the group consisting of magnesium oxide, calcium oxide and combinations thereof” (see claim 39 at lines 1-6); as “a)” has been removed by amendment, it is not clear why there would be a “b)”, and it appears that “b)” should be deleted.
Claim 40 contains a grammatical error; “the coagulating agent comprising” should read “the coagulating agent comprises” (see claim 40 at line 11).
Claim 45 contains a punctuation error; the comma after “weight” should be deleted (see claim 45 at line 2).
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.
12. Claims 31, 33-36, 40 and 51 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.
13. Claim 31 recites the limitation “wherein the dispersing agent comprises a polymetaphosphate, an alkali metal silicate, NaAlO2, Na2Al2O4 and/or Al2O3” (see claim 31 at lines 1-3); however, claim 31 depends from claim 30, which requires a polymetaphosphate. Therefore, the language of claim 31 is indefinite, as it indicates that the polymetaphosphate is optional, and as it is not clear from this language whether or not any of the other recited components are actually required, or if a dispersing agent comprising only a polymetaphosphate would meet the limitations of claim 31.
For purposes of examination, Examiner treated claim 31 as meaning that the dispersing agent comprises an alkali metal silicate, NaAlO2, Na2Al2O4 and/or Al2O3. Clarification is requested.
14. Claims 33 and 34 each recite the limitation “the phosphate" (see claims 33-34 each at line 2). There is insufficient antecedent basis for this limitation in the claim.
For purposes of examination, Examiner treated “the phosphate” as recited in claims 33-34 as referring to the polymetaphosphate recited in claim 30. Clarification is requested.
15. Claim 35 recites the limitation “the phosphates" (see claim 35 at line 3). There is insufficient antecedent basis for this limitation in the claim. Further, claim 30, from which claim 35 depends, recites a singular “polymetaphosphate”, so it is not clear whether the recitation of the plural “phosphates” in claim 35 is meant to indicate that more than one phosphate is required, or whether only one or more phosphate is required. Further, claim 35 recites “the aluminates, aluminate precursors, phosphates, silicates and/or polyacrylates” (see claim 35 at lines 3-4), which indicates that “phosphates” are optional; therefore, it is not clear whether or not the recited weight ratio is required to include phosphates (i.e., the polymetaphosphate of claim 30).
For purposes of examination, Examiner treated claim 35 as meaning that a weight ratio of the pozzolanic compound to the total weight of the polymetaphosphate and the further dispersant is in the claimed range. Clarification is requested.
16. Claim 40 recites the limitation “optionally a pozzolanic substance, wherein, if a pozzolanic compound is present, a weight ratio of the pozzolanic compound…” (see claim 40 at lines 13-15), and claim 51 recites the limitation “the coagulating agent includes the pozzolanic compound” (see claim 51 at line 2). It is not clear whether “the pozzolanic compound” as recited in part b) of claim 40 (see claim 40 at lines 14-15) and in claim 51 is meant to refer to the same substance as “a pozzolanic substance” which is also recited in part b) (see claim 40 at line 13), or whether it is meant to refer to the same substance as “a pozzolanic compound” which has already been positively recited in part a) of claim 40 (see claim 40 at lines 6-8).
For purposes of examination, Examiner treated “the pozzolanic compound” recited in part b) of claim 40 and in claim 51 as referring to “a pozzolanic substance” as recited in part b), rather than to “a pozzolanic compound” as recited in part a). Clarification is requested.
17. Claim 36 is included herein as it depends from a claim which is indefinite for reasons set forth above.
18. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
19. Claims 31 and 35 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
20. Claim 31 is dependent on claim 30, which recites the limitation “wherein the dispersing agent comprises a polymetaphosphate” (see claim 30 at line 5). Claim 31 recites the further limitation “wherein the dispersing agent comprises a polymetaphosphate, an alkali metal silicate, NaAlO2, Na2Al2O4 and/or Al2O3” (see claim 31 at lines 1-3), which indicates that the polymetaphosphate is optional and is not required. Therefore, claim 31 is of improper dependent form as it fails to include all the limitations of claim 30 on which it depends.
21. Claim 35 is dependent on claim 30, which recites the limitation “wherein the dispersing agent comprises a polymetaphosphate” (see claim 30 at line 5). Claim 35 recites the further limitation “whereby a weight ratio of the pozzolanic compound to the aluminates, aluminate precursors, phosphates, silicates and/or polyacrylates of the dispersing agent is in the range of 1-15” (see claim 31 at lines 1-3), which indicates that “phosphates”, i.e., the polymetaphosphate of claim 30, is optional and is not required. Therefore, claim 35 is of improper dependent form as it fails to include all the limitations of claim 30 on which it depends.
22. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 30-31, 33-37, 39-46 and 49-51 are rejected under 35 U.S.C. 103 as being unpatentable over Doza, et al. (WO-2018/085700-A2) (hereinafter, “DOZA”) in view of Ben-Nissan (WO-2016/191798-A1) (hereinafter, “BEN-NISSAN”).
Regarding claim 30, DOZA teaches an additive for producing a hardenable building material (see DOZA at paragraphs [0001], [0011], [0014]-[0015] and [0033], teaching a dry mix admixture (i.e., additive) which is added to a binder-containing solution to initiate setting and form a curable refractory composition, i.e., a hardenable building material) comprising:
a) a dispersing agent, which is capable of dispersing clay particles in an aqueous slurry, wherein the dispersing agent comprises a polymetaphosphate and a further dispersant selected from the group consisting of aluminates, aluminate precursors, silicates and/or polyacrylates (see DOZA at paragraphs [0034]-[0035] and [0038], teaching one or more dispersants are included to facilitate mixing of the dry mix with water, wherein the dispersants include, e.g., sodium hexametaphosphate, and teaching one or more set accelerators including, e.g., sodium aluminate and sodium hexametaphosphate, which can both act as dispersants),
b) a coagulating agent, selected from magnesium, calcium and/or iron halides, oxides, carbonates, and/or sulphates,, which is capable of causing clay particles to agglomerate in an aqueous slurry (see DOZA at paragraphs [0020]-[0021], teaching that magnesium oxide (MgO) or another alkaline earth metal oxide is included in the dry mix as a setting agent, i.e., coagulating agent; MgO meets the limitation of a salt of a divalent metal cation as discussed in Applicant’s specification at pg. 9, line 27 - pg. 10, line 15).
However, DOZA fails to explicitly teach that a weight ratio of the dispersing agent to the coagulating agent is 0.1 - 10 (DOZA is silent as to the amount of MgO used in the dry mix).
BEN-NISSAN teaches an additive comprising magnesium oxide (i.e., coagulating agent), sodium phosphate and sodium silicate inorganic binder (i.e., dispersing agents) and fly ash (see BEN-NISSAN at paragraphs [009], [012], [016] and [019]), wherein magnesium oxide may be used as the ceramic oxide in an amount of 5 to 90% by weight, e.g., 5% by weight (see BEN-NISSAN at paragraphs [010], [012] and [0031]), and wherein a weight ratio of the dispersing agent to the coagulating agent overlaps with the claimed range of 0.1 - 10 (see BEN-NISSAN at paragraphs [009]-[010], teaching that the ceramic oxide (MgO) may be used in an amount of 1 to 75% by weight, e.g., 5%, and the inorganic binder (phosphate and/or silicate) may be used in an amount of 1 to 30% by weight, e.g., 30%, which includes weight ratios as claimed; e.g., using 30% binder and 5% MgO would be a ratio of 6, using 1% of inorganic binder and 5% of MgO would also be a weight ratio of 6, using 1% of each or 5% of each would be a ratio of 1, etc.).
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 additive of DOZA by including the magnesium oxide in an amount of 1% to 75% by weight, e.g., 1%, 5%, etc., and/or using a ratio of the phosphate/silicate to the MgO of, e.g., 1 or 6, as taught by BEN-NISSAN (see BEN-NISSAN at paragraphs [009]-[010], [012] and [031]). One of ordinary skill in the art could have simply substituted the unspecified amount of MgO in the composition for an amount of 5% by weight and/or used a weight ratio of 1 or 6 with a reasonable expectation of success, yielding the predictable result of forming a dry mix comprising MgO, a sodium phosphate, sodium aluminate and fly ash which may be added to water and/or clay to form slurry which may harden into a building material.
Using an amount of MgO of, e.g., 1% or 5% by weight as taught by BEN-NISSAN in the composition of DOZA would also result in weight ratios of the dispersing agent to the coagulating agent within the claimed range; DOZA teaches up to 5% by weight of an admixture comprising, e.g., sodium hexametaphosphate and sodium aluminate in the overall dry mix composition (see DOZA at paragraphs [0033]-[0034]), and using, e.g., 5% sodium hexametaphosphate/sodium aluminate admixture and 5% MgO would be a ratio of 1, or using 5% sodium hexametaphosphate/sodium aluminate admixture and 1% MgO would be a ratio of 5, etc.
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 31, as applied to claim 30 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 30, wherein the dispersing agent comprises a polymetaphosphate, an alkali metal silicate, NaAIO2, Na2Al2O4 and/or Al2O3 (see DOZA at paragraphs [0034]-[0035], teaching sodium aluminate (NaAlO2) and sodium hexametaphosphate).
Regarding claims 33-34, as applied to claim 31 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 31, wherein a weight ratio of the phosphate to the further dispersant overlaps with the claimed range of 0.5 - 10, as required by claim 33, and wherein a weight proportion of the phosphate may be higher than a weight proportion of the further dispersant, as required by claim 34 (see DOZA at paragraphs [0033]-[0034], teaching that the admixture can comprise up to 1% by weight of a dispersant, e.g., sodium hexametaphosphate, and that the admixture can further comprise a set accelerator, e.g., sodium aluminate (which is also a dispersing agent), wherein the total admixtures comprises up to 5% by weight in the overall dry mix composition; this yields embodiments wherein the ratio of phosphate to aluminate dispersant falls within the claimed ranges, e.g., if these are the only two components in the admixture, the sodium hexametaphosphate could be included in an amount of 1% by weight, and the sodium aluminate could be included in an amount of 0.5% by weight, yielding a total admixture percentage of 1.5% by weight, and yielding a weight ratio of phosphate dispersant to aluminate dispersant of 2, which falls within the range of claim 33 and includes a higher weight proportion of phosphate than aluminate dispersant, meeting the limitations of claim 34), thereby rendering the claimed ranges obvious.
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 35, as applied to claim 30 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 30, wherein the dispersing agent is mixed with a pozzolanic compound (see DOZA at paragraphs [0022] and [0031]-[0032], teaching that pozzolans such as fly ash may be included in the dry mix), wherein a weight ratio of the pozzolanic compound to the aluminates, aluminate precursors, phosphates, silicates and/or polyacrylates of the dispersing agent overlaps with the claimed range of 1 - 15 (see DOZA at paragraphs [0031]-[0032], teaching that fly ash may be included as a matrix component, and that the matrix components (e.g., fly ash) may be included in the composition in an amount of 15-60% by weight; see DOZA at paragraphs [0033]-[0034], teaching that the multiple dispersing compounds (e.g., both sodium hexametaphosphate and sodium aluminate, which is referred to as a setting agent but can also acts as a dispersant) can be included as an admixture in a total amount of up to 5% by weight; this yields embodiments wherein the weight ratio of fly ash to the dispersant(s) falls within the claimed range, e.g., if fly ash is included in an amount of 15% and dispersant is included in an amount of 1%, the ratio is 15; if fly ash is included in an amount of 15% and an admixture of dispersants is included in an amount of 5%, the ratio is 3, etc.), thereby rendering the claimed range obvious.
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 36, as applied to claim 35 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 35, wherein the pozzolanic compound is fly ash (see DOZA at paragraphs [0022] and [0031]-[0032], teaching fly ash).
Regarding claim 37, as applied to claim 30 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 30, wherein the coagulating agent comprises magnesium oxide and/or calcium oxide (see DOZA at paragraphs [0020]-[0021], teaching MgO).
Regarding claim 39, as applied to claim 30 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 30, wherein the coagulating agent is selected from the group consisting of magnesium oxide, calcium oxide and combinations thereof (see DOZA at paragraphs [0020]-[0021], teaching MgO).
Regarding claim 40, as applied to claim 30 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 30, wherein
a) the dispersing agent comprises sodium hexametaphosphate and sodium aluminate (see DOZA at paragraphs [0034]-[0035], teaching sodium aluminate and sodium hexametaphosphate),
wherein a weight ratio of the sodium hexametaphosphate to the sodium aluminate is in a range overlapping with the claimed range of 2 - 4 (see DOZA at paragraphs [0033]-[0034], teaching that the admixture can comprise up to 1% by weight of a dispersant, e.g., sodium hexametaphosphate, and that the admixture can further comprise a set accelerator, e.g., sodium aluminate (which is also a dispersing agent), wherein the total admixtures comprises up to 5% by weight in the overall dry mix composition; this yields embodiments wherein the ratio of sodium hexametaphosphate to sodium aluminate falls within the claimed ranges, e.g., if these are the only two components in the admixture, the sodium hexametaphosphate could be included in an amount of 1% by weight, and the sodium aluminate could be included in an amount of 0.5% by weight, yielding a total admixture percentage of 1.5% by weight, and yielding a weight ratio of sodium hexametaphosphate to sodium aluminate of 2), thereby rendering the claimed range obvious),
and optionally a pozzolanic compound (see DOZA at paragraphs [0022] and [0031]-[0032], teaching fly ash);
wherein a weight ratio of the pozzolanic compound to the sodium hexametaphosphate and sodium aluminate overlaps with the claimed range of 3 - 7 (see DOZA at paragraphs [0031]-[0032], teaching that fly ash may be included as a matrix component, and that the matrix components (e.g., fly ash) may be included in the composition in an amount of 15-60% by weight; see DOZA at paragraphs [0033]-[0034], teaching that sodium hexametaphosphate and sodium aluminate may be included in an amount of up to 5% by weight as the admixture; this yields embodiments wherein the weight ratio of fly ash to the dispersing agent falls within the claimed range, e.g., if fly ash is included in an amount of 15% and sodium hexametaphosphate/sodium aluminate admixture is included in an amount of 5%, the ratio is 3, etc.), thereby rendering the claimed range obvious),
b) the coagulating agent comprises magnesium oxide (see DOZA at paragraphs [0020]-[0021], teaching MgO),
and optionally a pozzolanic substance (see DOZA at paragraphs [0022] and [0031]-[0032], teaching fly ash),
wherein a weight ratio of the pozzolanic substance to the magnesium oxide overlaps with the claimed range of 3-12 (see BEN-NISSAN at paragraphs [010], [012] and [0031], teaching 5% by weight MgO; see DOZA at paragraphs [0031]-[0032], teaching 15-60% by weight of fly ash; this results in ratios of pozzolanic substance to MgO within the claimed range, e.g., 15% fly ash / 5% MgO would be a ratio of 3); and
wherein a weight ratio of the dispersing agent to the coagulating agent overlaps with the claimed range of 0.7 - 1.5 (see BEN-NISSAN at paragraphs [009]-[010], [012] and [031], teaching 5% by weight MgO, and teaching weight ratios of the phosphate/silicate to the MgO of, e.g., 1; see DOZA at paragraphs [0033]-[0034], teaching that sodium hexametaphosphate and sodium aluminate may be included in an amount of up to 5% by weight as the admixture; this yields embodiments wherein the weight ratio of dispersing agent to coagulating agent is within the claimed range, e.g., using 5% MgO and 5% sodium hexametaphosphate/sodium aluminate would be a ratio of 1).
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 41, as applied to claim 30 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 30, wherein the additive is in the form of a multi-component composition comprising a first component which comprises the dispersing agent and a second component which comprises the coagulating agent (see DOZA at paragraphs [0020]-[0021) and [0034]-[0035], teaching sodium aluminate and sodium hexametaphosphate (dispersing agents) and MgO (a coagulating agent)).
Regarding claim 42, as applied to claim 30 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 30, wherein the additive is essentially free of hydraulic binders and/or clays (see DOZA at paragraphs [0014], [0018], [0031] and claim 100, teaching that the composition may be cement-free and contain non-hydraulic binders, and that clay is an optional matrix component, i.e., the composition can be free of clay).
Regarding claim 43, as applied to claim 30 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 30. However, DOZA does not explicitly mention that a particle size of the dispersing agent is ≤ 1,100 μm and a particle size of the coagulating agent is ≤ 1,100 μm.
BEN-NISSAN teaches an additive having a particle size of the dispersing agent is ≤ 1,100 μm, and wherein a particle size of the coagulating agent is ≤ 1,100 μm (see BEN-NISSAN at paragraphs [011] and [015], teaching that the ceramic oxides and the inorganic binding components (e.g., MgO, sodium aluminate, phosphate, alkali metal silicate, etc.) have a particle size of less than 350 μm).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use sodium hexametaphosphate, sodium aluminate and/or alkali metal silicate, and MgO particles having a size of less than 350 μm as taught by BEN-NISSAN (see BEN-NISSAN at paragraphs [011] and [015]). One of ordinary skill in the art could have simply substituted the unspecified particle sizes with particle sizes of less than 350 μm with a reasonable expectation of success, yielding the predictable result of forming a dry mix comprising MgO, a sodium phosphate, sodium aluminate and fly ash which may be added to water and/or clay to form slurry which may harden into a building material. Further, BEN-NISSAN teaches that these materials having the claimed particle size are known 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 claim 44, as applied to claim 30 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 30, and further teaches an aqueous slurry comprising the additive, mineral particles comprising clays, and water (see DOZA at paragraphs [0001], [0014], [0018] and [0031], teaching combining the dry mix admixture with water or an aqueous liquid solution (containing water), which forms a slurry, and teaching that the dry mix can include matrix components including clay fines), wherein the aqueous slurry is essentially free of cement (see DOZA at paragraphs [0014] and [0018] and claim 100, teaching that the composition may be cement-free and contain non-hydraulic binders).
Regarding claim 45, as applied to claim 44 above, DOZA in view of BEN-NISSAN teaches an aqueous slurry according to claim 44. DOZA further teaches that the slurry may contain 5 - 80% by weight of water, with respect to the overall weight of the slurry (see DOZA at paragraph [0054], providing an example using 6.5% by weight of water). However, DOZA only explicitly teaches 6.5% by weight of water in examples in which the formulation is not essentially free of cement (see DOZA at paragraph [0054] and Table 1), and does not explicitly discuss the amount of water used in an example that is cement-free.
However, as the only water content mentioned in the disclosure of DOZA is 6.5% by weight, and every example included uses this amount of water (see Examples 2-4, which each follow the procedure of Example 2, i.e., each uses 6.5% by weight of water), and DOZA additionally teaches that the composition may be cement-free rather than containing cement (see DOZA at paragraphs [0014] and [0018] and claim 100), it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used a similar amount of water in the cement-free embodiments disclosed by DOZA, as no other explicit guidance is provided regarding the amount of water.
Regarding claim 46, as applied to claim 44 above, DOZA in view of BEN-NISSAN teaches an aqueous slurry according to claim 44, comprising an amount overlapping with the claimed range of 0.01 - 2% by weight of the dispersing agent, based on a total dry weight of mineral particles comprising clays which have a particle size below 100 μm in the slurry (see DOZA at paragraphs [0031]-[0034], teaching 15% to 60% of clay fines with a particle size of less than 100 μm in the dry mix and up to 5% by weight of the admixture including e.g. sodium hexametaphosphate and sodium aluminate (i.e., the dispersing agent as claimed), which results in amounts of the dispersing agent falling within the claimed range; e.g., 1% of the dispersing agent and 60% of the clay fines would be approximately 1.7% of the dispersing agent as claimed),
and comprising an amount overlapping with the claimed range of 0.01 - 2% by weight of the coagulating agent, based on a total dry weight of mineral particles comprising clays which have a particle size below 100 μm in the slurry (see DOZA at paragraphs [0031]-[0032], teaching 15% to 60% of clay fines with a particle size of less than 100 μm in the dry mix; see BEN-NISSAN at paragraphs [010] and [012], teaching using MgO in amounts as low as 1%; this results in amounts of the coagulating agent falling within the claimed range, e.g., using 1% MgO and 60% of the clay fines would be approximately 1.7% of the coagulating agent as claimed).
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 claims 49-50, as applied to claim 45 above, DOZA in view of BEN-NISSAN teaches an aqueous slurry according to claim 45. DOZA does not explicitly mention that the slurry contains 10-70% by weight of water, as recited by claim 49, or 25-60% by weight of water, as recited by claim 50, with respect to the overall weight of the slurry.
However, BEN-NISSAN teaches an aqueous slurry containing 50% water by weight with respect to the total solid content, i.e., 33% by weight with respect to the overall weight of the slurry, including the water (see BEN-NISSAN at paragraph [044]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use 33% by weight of water in the aqueous slurry as taught by BEN-NISSAN (see BEN-NISSAN at paragraph [044]). One of ordinary skill in the art could have simply substituted the unspecified amount of water with an amount of 33% by weight with a reasonable expectation of success, yielding the predictable result of providing an adequate amount of water form a slurry which will harden to form a building material.
Regarding claim 51, as applied to claim 40 above, DOZA in view of BEN-NISSAN teaches an additive according to claim 40, wherein the dispersing agent includes the pozzolanic compound and the coagulating agent includes the pozzolanic compound (see DOZA at paragraphs [0022] and [0031]-[0032], teaching fly ash; see BEN-NISSAN at paragraph [019], also teaching fly ash).
Response to Arguments
Applicant's arguments filed 12/24/2025 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(b) for claims 31, 33-36 and 51, under 35 U.S.C. 112(d) for claims 31 and 35, and under 35 U.S.C. 103 for claims 30-31, 33-37, 39, 41-46 and 49-51 over DOZA in view of BEN-NISSAN as set forth above.
Applicant argues:
“DOZA does not disclose or suggest… a weight ratio of the dispersing agent to the coagulating agent in the range of 0.1-10” (see Remarks at pg. 11, 13 and 20).
“The BEN-NISSAN reference is silent about polymetaphosphates” (see Remarks at pg. 12 and 20).
“the DOZA reference does not disclose or suggest a pozzolanic compound” (see Remarks at pg. 11 and 13).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that DOZA does not disclose or suggest a pozzolanic compound, the Examiner respectfully disagrees, as DOZA explicitly discloses a pozzolanic compound, fly ash (see DOZA at paragraphs [0022] and [0031]-[0032]).
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As set forth in the rejection above, DOZA teaches polymetaphosphate, and BEN-NISSAN teaches a concentration of MgO and weight ratio of the dispersing agent to the coagulating agent, and it is the combination of the references which renders the claimed invention obvious.
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“the DOZA reference does not teach the very specific combination of a polymetaphosphate with a further dispersant selected from the group consisting of aluminates, aluminate precursors, silicates and/or polyacrylates. The DOZA reference does include a laundry list of possible dispersants in paragraph [0035] and says that one or more dispersants can be used in [0034]. Based on this teaching, one of skill in the art might well use only one of the many dispersants in paragraph [0035]. Even if one of skill chose more than one dispersant, it is unlikely that the presently claimed combination would be achieved. Only through hindsight reconstruction is the Examiner able to find the specific claimed combination of a polymetaphosphate with the further dispersant selected from the group consisting of aluminates, aluminate precursors, silicates and/or polyacrylates either anticipated or obvious in view of the DOZA reference” (see Remarks at pg. 11, 13 and 20).
“The DOZA reference does disclose in paragraph [0034] the use of sodium hexametaphosphate as a dispersant and in paragraph [0038] it discusses the use of sodium silicate as a set accelerator… DOZA does describe the use of MgO as a setting agent in paragraph [0020]… Without improper hindsight reconstruction of the present invention, it is not possible to arrive at the subject matter in an obvious manner” (see Remarks at pg. 15).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that DOZA does not teach a combination of polymetaphosphate with a dispersant selected from aluminates, aluminate precursors, silicates and/or polyacrylates because DOZA also mentions other options for dispersants, the Examiner respectfully disagrees. As set forth in the rejection above, DOZA explicitly teaches using one or more dispersant, e.g., sodium aluminate or sodium silicate and sodium hexametaphosphate. The inclusion of other options does not negate the explicit teaching of polymetaphosphate and an aluminate/silicate. As discussed in MPEP 2131.02(II), a reference that clearly names the claimed species anticipates the claim no matter how many other species are named.
In response to Applicant's argument that a combination of polymetaphosphate with a dispersant selected from aluminates, aluminate precursors, silicates and/or polyacrylates is based upon improper hindsight reasoning, the Examiner respectfully disagrees. As acknowledged by Applicant, DOZA explicitly teaches the claimed dispersants and coagulant. No reconstruction is used to achieve this combination, the use of these components together is explicitly taught by DOZA.
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“from the total amount of dispersants, it is not possible to obtain a weight ratio of two individual dispersants… the proportions given in paragraph [0034] are based on the total amount of dispersants, not on individual dispersants… the DOZA reference is completely silent about the features of present claims 33 and 34” (see Remarks at pg. 14).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
Regarding Applicant’s argument that DOZA is completely silent as to the proportions of the dispersants used, the Examiner respectfully disagrees. As set forth in the rejection above, DOZA teaches that the admixture which comprises up to 5% by weight of the dry mix composition, wherein the admixture can comprise up to 1% by weight of a dispersant, e.g., sodium hexametaphosphate, and can further comprise a set accelerator, e.g., sodium aluminate (see DOZA at paragraphs [0033]-[0034]). DOZA clearly teaches that polymetaphosphate can be used in an amount of up to 1% by weight, and the admixture can include another component such as sodium aluminate in an amount such that the total of the polymetaphosphate and the sodium aluminate is an amount of 5% by weight; e.g., if the polymetaphosphate is used in an amount of 1%, the sodium aluminate could be used in an amount of up to 4%. This yields embodiments wherein the ratio of phosphate to aluminate dispersant falls within the claimed ranges, e.g., if these are the only two components in the admixture, the sodium hexametaphosphate could be included in an amount of 1% by weight, and the sodium aluminate could be included in an amount of 0.5% by weight, yielding a total admixture percentage of 1.5% by weight (which is less than the 5% maximum), and yielding a weight ratio of phosphate dispersant to aluminate dispersant of 2, which falls within range of claim 33 and includes a higher weight proportion of phosphate than aluminate dispersant. Sodium aluminate, here called a “set accelerator”, is also a dispersant, and clearly meets the limitations of the further dispersant. 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)).
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“In the invention of the present claims, a surprising synergistic interplay is achieved between the two different dispersants and the coagulant, resulting in a hardening building material that can be processed for a reasonable period and thereafter hardened into a solid building material. This result could not have been expected by the teaching of one of skill in the art viewing the DOZA reference… there is a non-linear relationship between the proportion of the coagulant… and the yield stress… indicative of a surprising synergistic functional interplay between coagulant and dispersants… Therefore, the inventive combination is… an unexpected result” (see Remarks at pg. 14).
“dispersing agent “D5” comprising a combination of a phosphate (sodium hexametaphosphate) with a further dispersing agent (sodium silicate) clearly and surprisingly is more effective in reducing the yield stress over time when compared with dispersing agent “D4” comprising only the phosphate… The DOZA reference does disclose… the use of sodium hexametaphosphate as a dispersant and… the use of sodium silicate as a set accelerator. However, one of skill in the art would know that a setting accelerator usually is added to speed up hydration reactions, promote early stiffening and strength gain and shorten setting time. Therefore, one of skill in the art would not use a set accelerator for reducing the yield strength because it would be expected to instead likely increase the yield strength. Therefore, DOZA rather teaches away from using sodium silicate as a second dispersant” (see Remarks at pg. 15).
“the use of an oxide based coagulating agent (MgO) is most effective for obtaining low yield stress… Although… DOZA does describe the use of MgO as a setting agent in paragraph [0020] one of skill in the art would expect the MgO of DOZA which is used as a set accelerator to likely increase the yield strength” (see Remarks at pg. 15).
“When only a dispersant is added, a homogeneous and fluid mixture is obtained but such a mixture would remain fluid for weeks to months and no hardening could be achieved. In contrast, when the dispersant is combined with a coagulant in the claimed weight ratio a processable mixture surprisingly is obtained that remains workable like a mortar for about 1-2 hours and then hardens” (see Remarks at pg. 15).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's argument that the claimed invention is not obvious because combining sodium hexametaphosphate with a further dispersant as claimed and an oxide coagulating agent provides a synergistic effect and achieves decreased yield strength, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As discussed above and as acknowledged by Applicant, DOZA explicitly teaches the claimed combination. The purpose for which one might use the components of polymetaphosphate, an aluminate or silicate such as sodium silicate or sodium aluminate, and a coagulating agent such as MgO is not relevant; DOZA teaches using these exact components together.
In response to Applicant’s argument that DOZA teaches away from using sodium silicate, the Examiner respectfully disagrees; as acknowledged by Applicant, DOZA explicitly teaches using sodium silicate. It is also noted that the claimed invention does not even require sodium silicate; the further dispersant may be selected from aluminates, aluminate precursors, silicates and/or polyacrylates. As discussed above, DOZA also teaches the use of, e.g., sodium aluminate.
In response to Applicant’s argument that the present invention is not obvious because combining the dispersant with a coagulant in the claimed weight ratio achieves a “surprising” result of speeding up setting time as compared to a mixture which includes only a dispersant and no coagulant, the Examiner respectfully disagrees. It is not clear how it would be unexpected or surprising that adding a coagulant such as MgO would help with the setting of the mixture as compared to a mixture with no coagulant; it would appear that the mixture setting would be the obvious result expected from including a setting agent such as MgO.
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“The BEN-NISSAN reference relates to a thermally insulating material and its uses… In contrast, the DOZA reference aims at providing monolithic refractory composition to produce a mixture similar in consistency to concrete… As these different fields of application and technical requirements are very different, it is submitted that these references are not properly combinable” (see Remarks at pg. 20).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's argument that the references cannot be combined because BEN-NISSAN is nonanalogous art to DOZA, prior art references must be analogous art to the claimed invention, not to each other. It has been held that a prior art reference must either be in the field of the inventor' s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
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