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 12/15/2025.
Claims 1-2 and 4-12 are presently pending and under examination; claim 3 is canceled; claims 1 and 10 are amended; claim 12 is new.
Some of the rejections of claims 1-2 and 4-11 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims, and others are maintained as set forth below; the rejections of claim 3 are moot as this claim has been canceled.
The 35 U.S.C. 103 rejection of claims 1-2 and 4-11 over HILD in view of WEITZEL is maintained; the rejection of claim 3 is moot as this claim has been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-2 and 4-12 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.
Claims 1-2 and 4-9 recite the limitation “one or more gel-like crosslinked cellulose ethers” (see claim 1 at lines 5-6, claims 2 and 5-9 each at line 2, and claim 4 at lines 2-3). The phrase “gel-like” renders the claims indefinite because the claims include elements not actually disclosed (those encompassed by the term “like”), thereby rendering the scope of the claims unascertainable. See MPEP 2173.05(d).
Claims 10-12 are included herein as each depends from a claim which has been rejected for the reasons set forth above.
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.
Claim 12 is 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.
Claim 12 depends from claim 1, which recites the limitation “wherein the RDP comprises vinyl acetate polymers, vinyl acetate-acrylic copolymers, vinyl acetate-ethylene copolymers, or blends thereof” (see claim 1 at lines 7-9); claim 12 recites the further limitation “wherein the RDP is formed from vinyl acetate polymers, vinyl acetate-acrylic copolymers, vinyl acetate-ethylene copolymers, or blends thereof” (see claim 12 at lines 1-3). “Formed from” does not seem to mean anything different than “comprises”, as an RDP comprising these materials is formed from these materials; claim 12 does not say that the RDP, for instance, is formed only from these materials or consists of these materials, and does not narrow the scope of claim 1. Therefore, claim 12 is of improper dependent form as it fails to further limit the subject matter of the claim upon which it depends.
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 1-2 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Hild, et al. (U.S. Pub. No. 2018/0099906-A1) (hereinafter, “HILD”) in view of Weitzel, et al. (U.S. Pub. No. 2021/0253477-A1) (hereinafter, “WEITZEL”).
Regarding claim 1, HILD teaches a dry mix composition for use in making cementitious mortars (see HILD at generally at paragraphs [0001] and [0005]) comprising
from 15 to 33 wt.% of a cement (see HILD at paragraph [0005], teaching 20 to 30 wt% Portland cement),
from 65 to 83 wt.% of one or more fillers (see HILD at paragraph [0005], teaching 70 to 75% of sand or inorganic filler such as calcium carbonate) having a sieve average particle size of from 15 to 60 microns (see HILD at paragraph [0005], teaching a sieve average particle size of less than 0.8 mm, which overlaps with and thereby renders obvious the claimed range; 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)).) and chosen from dolomite, kaolinite, calcium carbonate, talc, silica sand, white silica sand, or alkali metal silicates (see HILD at paragraph [0005], teaching sand and calcium carbonate),
from 0.15 to 0.75 wt.% of one or more gel-like crosslinked cellulose ethers containing polyether groups (see HILD at paragraph [0005], teaching 0.15 to 0.6 wt% of one or more crosslinked cellulose ether containing polyether groups),
and one or more polymer redispersible powders (RDP), wherein the RDP comprises vinyl acetate polymers, vinyl acetate-acrylic copolymers, vinyl acetate-ethylene copolymers, or blends thereof (see HILD at paragraph [0044]), all amounts being wt.% of total solids in the dry mix composition and all proportions adding up to 100%.
HILD fails to explicitly teach that a 1.0 wt.% aqueous solution of at least one of the one or more the gel-like crosslinked cellulose ethers has a crossover point (COV) as measured by oscillation rheometry, at which storage modulus (G') and loss modulus (G") intersect and are identical, of 1.0 Ѡ or less, the G' and G" being measured in Pascal at 20 ⷪ C using an oscillating rheometer equipped with a plate having a 50 mm diameter and a cone having a 1ⷪ cone angle and a 0.05 mm flattening of the cone point, and varying the angular frequency (Ѡ) in radians/s in a range of (Ѡ) from 0.1 to 100 with a deformation of 0.5%. However, HILD teaches a crossover point of 1.3 obtained under the recited measurement conditions (see HILD at paragraphs [0058]-[0060] and Table 1), and further teaches that the lower the crossover point is, the greater the gel strength of the cellulose ether (see HILD at paragraph [0059]). HILD therefore explicitly teaches that the crossover point is a result-effective variable that may be optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). One of ordinary skill in the art would have found it obvious, through routine experimentation and optimization, to vary the crossover point, and especially to lower the crossover point, including crossover points of 1.0 Ѡ or less, in order to achieve the desired gel strength of the cellulose ether (see HILD at paragraph [0059] and Table 1)
However, HILD fails to explicitly teach that (i) the cement is a white cement, and (ii) the RDP is present in an amount of 0.5 to 5 wt%.
WEITZEL teaches a dry mix composition for use in making cementitious mortars such as tile adhesive mortar or skim coat mortar (see WEITZEL at paragraphs [0028] and [0032]) comprising cellulose ethers and fillers (see WEITZEL at paragraphs [0021] and [0038]-[0039]) and comprising white cement (see WEITZEL at paragraph [0051], teaching that the cement used is white cement CEM I, i.e., ordinary Portland cement) and from 1 to 20% by weight of redispersible polymer powder comprising vinyl acetate copolymers, vinyl acetate-acrylic copolymers, vinyl acetate-ethylene copolymers, or blends thereof (see WEITZEL at paragraphs [0028], [0032] and [0035]-[0036]). WEITZEL teaches that using a redispersible polymer powder comprising these polymers in amounts within this range results in a mortar composition having improved mechanical strength, excellent hydrophobic properties and strong adhesion, which is particularly advantageous for use in adhesive mortar compositions, such as tile adhesive, and in skim coat mortar compositions (see WEITZEL at paragraphs [0007], [0009], [0028]-[0029] and [0031]-[0032]).
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 dry mix composition of HILD by simply substituting the ordinary Portland cement with white ordinary Portland cement, and by using the RDP comprising vinyl acetate polymers, vinyl acetate-acrylic copolymers and/or vinyl acetate-ethylene copolymers in an amount of 1 to 20% by weight, as taught by WEITZEL (see WEITZEL at paragraphs [0028], [0032], [0035]-[0036] and [0051]). One of ordinary skill in the art could have substituted the Portland cement with white Portland cement with a reasonable expectation of success, yielding the predictable result of providing a cement for the cementitious mortar composition. One of ordinary skill also could have used the RDP in an amount from 1 to 20% (which overlaps with and thereby renders obvious the claimed range of 0.5 to 5%) with a reasonable expectation of success, yielding the predictable result of providing an effective amount of RDP to form a mortar composition which can be advantageously used as a tile adhesive or as a skim coat, and would have been motivated to do so for the benefit of forming a mortar composition improved mechanical strength, excellent hydrophobic properties and strong adhesion (see WEITZEL at paragraphs [0007], [0009], [0028]-[0029] and [0031]-[0032]). 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)).
HILD does not explicitly mention that the cementitious mortar is specifically for use as a skim coat mortar; however, this limitation is directed to an intended use of the dry mix composition rather than being directed toward the composition itself, and is therefore not treated as further limiting the present product claim. As the dry mix of HILD in view of WEITZEL is of substantially similar or identical composition as the claimed invention, it would be expected to be able to perform the intended use of forming a cementitious skim coat mortar. 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.
Further, although not required to meet the limitations of the present claim, WEITZEL explicitly teaches that such compositions may be used to make either tile adhesive mortars or skim coat mortars (see WEITZEL at paragraphs [0028] and [0031]).
Regarding claim 2, as applied to claim 1 above, HILD in view of WEITZEL teaches a dry mix composition according to claim 1, wherein at least one of the one or more gel-like crosslinked cellulose ethers is a crosslinked cellulose ether which, absent crosslinking, would have a viscosity of from 10,000 to 70,000 mPa-s measured as a 2 wt. % solution in water using a rotational rheometer at 20 ⷪC and a shear rate 2.55 s-1 (see HILD at paragraph [0023], teaching that the cellulose ether absent crosslinking would have a viscosity of 10,000-40,000 mPas when measured via the recited method).
Regarding claim 4, as applied to claim 1 above, HILD in view of WEITZEL teaches a dry mix composition according to claim 1, wherein at least one of the polyether groups in at least one of the one or more gel-like crosslinked cellulose ethers is a polyoxyalkylene chosen from a polyoxyethylene, a polyoxypropylene and combinations thereof (see HILD at paragraphs [0007]-[0008]).
Regarding claim 5, as applied to claim 1 above, HILD in view of WEITZEL teaches a dry mix composition according to claim 1, wherein at least one of the one or more gel-like crosslinked cellulose ethers is a mixed cellulose ether that contains hydroxyalkyl groups and alkyl ether groups (see HILD at paragraph [0006]).
Regarding claim 6, as applied to claim 5 above, HILD in view of WEITZEL teaches a dry mix composition according to claim 5, wherein at least one of the one or more gel-like crosslinked cellulose ethers is a non-mixed cellulose ether that contains alkyl ether groups (see HILD at paragraphs [0006], teaching that the crosslinked cellulose ethers may contain alkyl ether groups, and that at least one or more may be a mixed cellulose ether, i.e., others may be non-mixed cellulose ethers; see HILD at paragraph [0029], teaching using a hydroxyalkyl cellulose or alkyl cellulose ether, or a mixture, i.e., alkyl ether may be used alone and the cellulose ether may be non-mixed).
Regarding claim 7, as applied to claim 1 above, HILD in view of WEITZEL teaches a dry mix composition according to claim 1, wherein at least one of the one or more the gel-like crosslinked cellulose ethers is a polyoxypropylene group containing hydroxyethyl methylcellulose (see HILD at paragraph [0006]).
Regarding claim 8, as applied to claim 1 above, HILD in view of WEITZEL teaches a dry mix composition according to claim 1, wherein at least one of the one or more the gel-like crosslinked cellulose ethers is a mixed cellulose ether having polyoxypropylene dioxyethylene ether crosslinks (see HILD at paragraphs [0006], [0008] and [0011], teaching mixed cellulose ethers which may have combinations of polyoxypropylenes and polyoxyethylenes; see HILD at paragraphs [0006], [0029], [0033], [0049] and [0054], teaching using hydroxyethyl methyl cellulose and polypropylene glycol glycidylether crosslinker to make the crosslinked polyether group containing cellulose ethers, which yield crosslinked cellulose ethers containing polyoxypropylene dioxyethylene ether crosslinks as discussed in Applicant’s specification on pg. 3, lines 14-17).
Regarding claim 9, as applied to claim 1 above, HILD in view of WEITZEL teaches a dry mix composition according to claim 1, wherein at least one of the one or more the gel-like crosslinked cellulose ethers is the reaction product of hydroxyethyl methyl cellulose with polypropylene glycol (PPG) glycidylether (see HILD at paragraphs [0006], [0029], [0033], [0049] and [0054], teaching using hydroxyethyl methyl cellulose and polypropylene glycol glycidylether crosslinker to make the crosslinked polyether group containing cellulose ethers).
Regarding claim 10, as applied to claim 1 above, HILD in view of WEITZEL teaches a dry mix composition according to claim 1, and further teaches a method of using the dry mix composition according to claim 1, comprising combining the dry mix composition with water or aqueous liquid to make a mortar (see HILD at paragraph [0009]) and applying the mortar to a substrate to form a coat (see HILD at paragraphs [0001] and [0009], teaching applying the mortar to a substrate to act as a tile adhesive).
However, HILD fails to explicitly teach that the coat is a skim coat.
WEITZEL teaches a dry mix composition for use in making cementitious mortars, such as tile adhesive mortar or skim coat mortar, comprising cellulose ethers, fillers, cement and RDP (see WEITZEL at paragraphs [0021], [0028], [0032], [0035]-[0036] and [0038]-[0039]). WEITZEL teaches that such dry mix compositions are particularly advantageous for use in forming tile adhesive mortars or skim coat mortars having improved mechanical strength, excellent hydrophobic properties and strong adhesion (see WEITZEL at paragraphs [0007], [0009], [0028]-[0029] and [0031]-[0032]).
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 used the dry mix composition of HILD to form a cementitious mortar used as a skim coat rather than as a tile adhesive, as WEITZEL teaches that such dry mix compositions can be used to form cementitious mortars used for either application interchangeably (see WEITZEL at paragraphs [0028] and [0031]). One of ordinary skill in the art could have used the mortar as a skim coat with a reasonable expectation of success, yielding the predictable result of coating a substrate with a mortar and forming a skim coat having improved mechanical strength, excellent hydrophobic properties and strong adhesion (see WEITZEL at paragraphs [0007], [0009], [0028]-[0029] and [0031]-[0032]).
Regarding claim 11, as applied to claim 1 above, HILD in view of WEITZEL teaches a dry mix composition according to claim 1, wherein the one or more fillers comprises dolomite, calcium carbonate, or blends thereof (see HILD at paragraph [0005], teaching calcium carbonate).
Regarding claim 12, as applied to claim 1 above, HILD in view of WEITZEL teaches a dry mix composition according to claim 1, wherein the RDP is formed from vinyl acetate polymers, vinyl acetate-acrylic copolymers, vinyl acetate-ethylene copolymers, or blends thereof (see HILD at paragraph [0044]).
Response to Arguments
Applicant's arguments filed 12/15/2025 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) and 112(d) for claim 12 and under 35 U.S.C. 103 for claim 12 over HILD in view of WEITZEL as set forth above.
Applicant argues:
“Applicant has provided a description of what is meant by the term “gel-like” such that a person of ordinary skill in the art would understand what is meant by the term… as noted in the MPEP:… applicants are their own lexicographers. They can define in the claims what the inventor or joint inventor regards as the invention essentially in whatever terms they choose so long as any special meaning assigned to a term is clearly set forth in the specification… Applicant’s specification states: In accordance with the present invention gel-like crosslinked cellulose ethers enable the provision of dry mixes and mortars for use in making skim coats that have 20 the same or improved workability and open time even with reduced cellulose ether dosage. The gel-like cellulose ethers are irreversibly crosslinked and exhibit a gel-like behavior marked by an increase in storage modulus at a low angular frequency in response to oscillation rheomotry… In amended claim 1, Applicant has provided further details regarding the meaning of gel-like by incorporating claim 3” (see Remarks at pg. 5-6).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the term “gel-like” is not indefinite, the Examiner respectfully disagrees. The Examiner acknowledges that Applicant may act as their own lexicographers; however, as acknowledged by Applicant, it is a requirement that the meaning assigned to the term “gel-like” must be clearly set forth in the specification. The Examiner disagrees that this term is clearly defined in the specification; the examples provided by Applicant do not provide a clear definition of “gel-like”. Amending claim 1 to include a behavior exhibited by the claimed gel-like crosslinked cellulose ether is not a definition for the term “gel-like”; the specification also indicates that there are “gel-like” crosslinked cellulose ethers which do not exhibit this claimed behavior, but are still “gel-like” (see the present specification at pg. 6, lines 1-6). It is not clear from the specification or claims what is required for a crosslinked cellulose ether to be considered “gel-like” as claimed, therefore the metes and bounds of the claim are unclear and the claim is indefinite.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“Hild “relates to dry mix compositions… for use in making cementitious tile adhesives…”… In contrast, the dry mix compositions in the present application are for use in making cementitious skim coat mortars” (see Remarks at pg. 7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the dry mix of HILD is different from the claimed dry mix because it is used to make tile adhesives and not cementitious skim coat mortars, the Examiner respectfully disagrees. As set forth in the rejection above, the recitation of “for use in making cementitious skim coat mortars” is directed to an intended use of the dry mix composition rather than being directed toward the composition itself, and is therefore not treated as further limiting the present product claim. As the dry mix of HILD in view of WEITZEL is of substantially similar or identical composition as the claimed invention, it would be expected to be able to perform the intended use of forming a cementitious skim coat mortar. 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. Further, although not required to meet the limitations of the claim 1, WEITZEL explicitly teaches that such compositions may be used to make either tile adhesive mortars or skim coat mortars (see WEITZEL at paragraphs [0028] and [0031]).
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“Critical to the water-redispersible polymer powders of Weitzel is the incorporation of more than 60 weight percent of vinyl laurate monomer units… the main polymer used in the water-redispersible polymer powder composition of Weitzel is described as… a2) 5 to 30 parts by weight of vinyl acetate monomer units, a3) 5 to 30 parts by weight of ethylene monomer units… Weitzel does not teach or suggest using “from 0.5 to 5 wt.% of one or more polymer redispersible powders, wherein the RDP comprises vinyl acetate polymers, vinyl acetate-acrylic copolymers, vinyl acetate-ethylene copolymers, or blends thereof… a polymer comprising more than 60 parts by weight of a vinyl laurate monomer is vastly different from vinyl acetate polymers, vinyl acetate-acrylic copolymers and vinyl acetate-ethylene copolymers… the reference to 1 to 20 percent by weight of the hydrophobic, water-redispersible polymer powder composition is referring to the water-redispersible polymer powder composition… made from a main polymer that comprises more than 60 parts by weight of a vinyl laurate monomer… Applicant acknowledges that Weitzel indicates that its dry mortar can include one or more non-hydrophobic dispersion powders and that such powders can include vinyl acetate-ethylene copolymers (See id. at [0035]-[0036]). However, for those embodiments, Weitzel does not provide any indication as to how much of such non-hydrophobic dispersion powders should be included in its dry mortar, nor any direction on how much to include so as not to negate the desired benefit of its hydrophobic water-redispersible polymer powder composition” (see Remarks at pg. 7-9).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the claimed invention is nonobvious because WEITZEL does not teach or suggest from 0.5 to 5 wt.% of one or more polymer redispersible powders, wherein the RDP comprises vinyl acetate polymers, vinyl acetate-acrylic copolymers, vinyl acetate-ethylene copolymers, or blends thereof, the Examiner respectfully disagrees. As set forth in the rejection above, HILD teaches RDP comprising vinyl acetate polymers, vinyl acetate-acrylic copolymers, vinyl acetate-ethylene copolymers, or blends thereof, but is silent as to the amount used, and WEITZEL teaches using RDPs in an amount of 1 to 20% by weight, and it is the combination of these references which renders the claimed invention obvious. WEITZEL explicitly teaches that “dry mortars generally comprise 1 to 20% by weight of one or more dispersion powders” (see WEITZEL at paragraph [0032]), and does not indicate that “one or more dispersion powders” here only means hydrophobic RDPs containing vinyl laurate. It is obvious from this teaching that the unknown amount of the RDP of HILD could be simply substituted for an amount of 1 to 20% by weight, yielding the predictable result of forming a typical dry mortar composition which will form hardened materials having improved mechanical strength and adhesion (see WEITZEL at paragraphs [0003]-[0004] and [0032]), as WEITZEL explicitly states that it is known in the art to use this amount of dispersion powder in dry mortars. WEITZEL also teaches RDPs based on, e.g., vinyl acetate polymers or vinyl acetate-ethylene copolymers (see WEITZEL at paragraph [0036]) as examples of dispersion powders which, as discussed above, WEITZEL explicitly teaches are generally used in an amount of 1 to 20% by weight.
Additionally, it is noted that the present claim uses the open language of “0.5 to 5 wt.% of one or more polymer redispersible powders (RDP), wherein the RDP comprises vinyl acetate polymers, vinyl acetate-acrylic copolymers, vinyl acetate-ethylene copolymers, or blends thereof” (see claim 1 at lines 6-8), which does not exclude unrecited polymers from the RDP; therefore the inventive, hydrophobic RDP of WEITZEL including vinyl laurate also meets the limitations a water-redispersible polymer powder comprising vinyl acetate polymer/ vinyl acetate-ethylene copolymers as claimed (see WEITZEL at paragraphs [0009]-[0012]). Therefore, it would also have been obvious to one of ordinary skill in the art to simply substitute the RDP comprising vinyl acetate polymers and/or vinyl acetate-acrylic copolymers of HILD with the inventive, hydrophobic RDP comprising vinyl acetate polymers and/or vinyl acetate-acrylic copolymers of WEITZEL in an amount of 1 to 20% by weight, and one of ordinary skill would have been motivated to do so for the benefit of forming a mortar composition improved mechanical strength, excellent hydrophobic properties and strong adhesion (see WEITZEL at paragraphs [0007], [0009], [0028]-[0029] and [0031]-[0032]). However, as discussed above, this would not be necessary based on HILD’s explicit teaching of the claimed dispersion powders and WEITZEL’s explicit teaching that it is known in the art that dry mortars generally comprise 1 to 20% by weight of one or more dispersion powders.
Further, as discussed above, HILD teaches the claimed RDP but is silent as to the amount used. WEITZEL teaches that water-redispersible polymer powders act as binders which affect the mechanical strength and adhesion of hardened compositions formed from the dry mix (see WEITZEL at paragraphs [0003]-[0004], [0007] and [0030]), i.e., WEITZEL explicitly teaches that the content of the RDP is a result-effective variable which can be optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“any modifications of Hild with Weitzel would have to include the hydrophobic, water-redispersible polymer powder… to arrive at Applicant’s claimed dry mix composition based on that combination… is relying on the impermissible use of hindsight in picking and choosing components and relative amounts from both references” (see Remarks at pg. 9).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731