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 claims 1–13 in the reply filed on 1 July 2025 is acknowledged. The traversal is on the grounds that the claimed invention is associated with concrete having superior physical properties that the cited reference and prior art fail to achieve. This is not found persuasive because, as the applicants note in their remarks (page 2, paragraph 1), “It is believed that these physical properties are associated especially with the claimed core-shell structure, as well as the specific relative weight loadings of the microcapsules”. As the applied reference describes a cementitious product with the claimed core-shell structure and specific relative weight loadings of the microcapsules, presumably the reference composition is capable of achieving these same physical properties, regardless of whether or not they explicitly tested for said properties. The claimed invention therefore lacks unity of invention a posteriori.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14–18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1 July 2025.
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.
Claims 1–4, 6 and 12 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Campeol et al. (US-20150125612-A1, hereinafter “Campeol”).
Regarding claim 1, Campeol teaches a cement composition (see paragraph 0067 teaching a cementitious composition as mortar blocks), comprising:
a microcapsule provided with a core-shell structure having a core containing a water-repellant organosilicon material (see paragraph 0013 teaching a water-repellant organosilicon) selected from the group consisting of an organosilane, organosilane partial condensation products, and branched siloxane resins (see paragraph 0013 teaching all three of these genera), and
a shell of silicon-based network polymer containing a silica unit (see paragraph 0059 describing the shell as being a network polymer of TEOS [tetraethyl orthosilicate] comprising silica units); and,
cement (see paragraph 0067 teaching the use of cement);
wherein the microcapsule is included at 0.01 to less than 0.5 parts by weight per 100 parts by weight of the cement (see paragraph 0048 teaching the capsules as comprising 0.05–2 wt.% of the overall composition).
Regarding claim 2, Campeol teaches the cement composition according to claim 1, and further teaches the limitation wherein the organosilane is an organosilane containing at least one silicon-bonded alkyl group having 1 to 30 carbon atoms (see paragraph 0015 teaching the use of an organosilane with at least one silicon-bonded alkyl group having 1 to 30 carbon atoms).
Regarding claim 3, Campeol teaches the limitation wherein the branched siloxane resin contains a siloxane unit of the formula RSiO3/2, where R represents an alkyl group (see paragraph 0018 teaching a siloxane unit of the formula RSiO3/2, wherein R is taught to be alkyl groups).
Regarding claim 4, Campeol teaches the limitation wherein the cement composition further comprises at least one type of aggregate (see paragraph 0067 teaching the cement composition as further comprising sand, which is a type of aggregate).
Regarding claim 6, Campeol teaches a cured product of the cement composition according to claim 1 (see paragraph 0068 teaching the production of cured mortar blocks using cement, sand, and hydrophobic microcapsules).
Regarding claim 12, Campeol teaches a molded body comprising the cured product according to claim 6 (see paragraph 0068 teaching the production of cured mortar blocks; the blocks have dimensions, indicating that they were molded).
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:
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Campeol and Kitaoka et al. (JP-2014144878-A, hereinafter “Kitaoka”).
Regarding claim 5, Campeol teaches the cement composition according to claim 1, but fails to explicitly teach the limitation wherein the amount of air included in the composition is 3 to 6 volume%, as measured in a test based on JIS A 1128. Kitaoka, however, teaches a cement composition wherein the amount of air included in the composition is taught to be 3.0–6.0% (see paragraph 0010; also see paragraph 0052 teaching this value as being measured according to JIS A 1128). Furthermore, Kitaoka explicitly teaches the air content as aiding in resistance to frost (see paragraph 0041). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the composition of Campeol by adjusting the air content of the composition to between 3–6%, as Kitaoka teaches this range as enhancing frost resistance of the concrete. The modification of Campeol by Kitaoka arrives at the claimed composition, rendering the claim obvious.
Claims 7–11 are rejected under 35 U.S.C. 103 as being unpatentable over Campeol, as applied to claim 6 above.
Regarding claims 7–11, Campeol teaches the cured product according to claim 6. Campeol fails to explicitly teach any of the standardized tests or their results, however Campeol does teach a substantially similar product to what is claimed, and absent any evidence to the contrary, it is expected that any substantially similar product will have substantially similar properties. Thus, a person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the cured product of Campeol, if it were tested according to the tests recited in claims 7–11, would perform comparably due to the similarity of the compositions.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Campeol as applied to claim 6 above, and further in view of Hunt (US-20010045070-A1, hereinafter “Hunt”).
Regarding claim 13, Campeol teaches the cured product according to claim 6, but fails to explicitly teach a civil engineering or construction structure comprising said product. Campeol does, however, teach the production of autoclaved, aerated concrete (AAC) blocks comprising the cured product (see paragraphs 0073 and 0075). While these blocks do not constitute a civil engineering or construction structure as claimed, they are necessary building materials in the production thereof. Hunt teaches the use of AAC blocks for the construction of buildings, especially walls, floors and roofs (see paragraph 0006). As Campeol teaches a method of producing hydrophobized AAC blocks, a person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that these blocks can be utilized according to the teachings of Hunt, to build a civil engineering or construction structure having superior hydrophobicity. The modification of Campeol by Hunt arrives at the claimed invention, rendering the claim obvious.
Double Patenting
Claims 1–5 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–4 of copending Application No. 17/911,744 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they recite substantially identical subject matter.
Reference claim 1 recites a precast concrete molded body which is the cured product of a concrete composition (conflicts with instant claim 12), the concrete composition comprising a microcapsule with core-shell structure having a core made of a water repellant organosilicon material and a shell made of a silicon-based network polymer containing silica units (conflicts with instant claim 1); cement (instant claim 1); and at least one type of aggregate (instant claim 4); wherein the concrete composition contains 0.01 to less than 0.5 parts by weight of the microcapsules per 100 parts by weight of cement (instant claim 1)
Reference claim 2 recites the precast concrete molded body according to claim 1 (instant claim 12), wherein the organosilane is an organosilane containing at least one silicon-bonded alkyl group having 1 to 30 carbon atoms (instant claim 2).
Reference claim 3 recites the precast concrete molded body according to claim 1 (instant claim 12), wherein the branched siloxane resin containing a siloxane unit of the formula RSiO3/2 where R represents an alkyl group (instant claim 3)
Reference claim 4 recites the precast concrete molded body according to claim 1 (instant claim 12), comprising air and wherein the amount of air included is 3 to 6 volume%, as measured in a test based on JIS A 1128 (instant claim 5).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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-F 9:30-3:30.
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/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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