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 .
In their response dated 12/8/2025 applicants amended independent claim to recite a cold ramming composition to one consisting off:
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Consequently, the only components that are utilized in the instant composition are calcined anthracite coal and diglycidyl ether of bisphenol F and nothing else.
Such amendment overcomes prior art of record. Updated search resulted in new reference applicable against instant claims as will be shown below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 3-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
CLAIMS
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SPECIFICATION:
With respect to the epoxy resin in claim 1 relevant portions of the specification are:
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With respect to dependent claims and their properties in view of term “consisting essentially of” the relevant portions of the specification are:
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ANALYSIS
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determing whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
It should be noted that while all Wands factors have to be considered, not all Wands factors need to be addressed in every case (MPEP 2164). The analysis is fact-dependent, and the decision to reject a claim based on scope of the claim relative to the scope of enablement must identify the claimed subject matter for which the specification is not enabling.
Applying these factors to claims 1 and 3, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)) for claimed epoxy resin.
First diglycidyl ether of bisphenol F of claim 1 is a monomer having following structure:
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Instant specification [21] and [23] state that the composition comprises at least one epoxy resin, wherein epoxy resin is selected from a group of polymers consisting of diglycidyl ether of bisphenol F which signify that the epoxy resin is actually mixture of epoxy polymers not just one. In [24] applicants further state that the epoxy resin is devoid of free monomer and solvent. Applicants currently claim monomer.
It should be noted that the actual nature of the epoxy resin as disclosed only in the term of one monomer that it contains can include other monomers in addition to diglycidyl ether of bisphenol F (such as bisphenol A equivalents), and still be referred to as epoxy resin being bisphenol F diglycidyl ether. The actual make up of the epoxy resin will affect its physical properties such as curing temperature and viscosity, wherein viscosity is claimed in instant claim 3
Lastly the epoxy resin in the working example is heated with other components to a temperature of 60oC for 15-20 minutes. At the same time the curing temperature of diglycidyl ether of bisphenol A resin is in a range of 30-60oC and crystallization temperature of -10 to -20oC. Consequently, if the claimed epoxy resin cures at temperature lower than applicant’s mixing temperature, the specification did not enable formation of the paste since cured claimed epoxy of instant claim 1 is typical solid.
Furthermore, in view of the breadth of claim 1 (cf. factor (a)) which encompasses specific monomer in specific amount the quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment would be great forming a paste when mixed only with calcined anthracie coal. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed.
Claims 5-10 are directed to properties which are properties of a mixture of claim 1. As presented above the mixture comprises epoxy resin and calcined anthracite coal. These properties are addressed in the specification (paragraphs depicted above), however, the specification fails to enable one of ordinary skill in the art to obtain these properties based only on claimed epoxy resin and calcined anthracite coal.
The only working example has properties outlined in the table above. According to [32] of instant specification electrically calcined anthracite utilized had claimed mesh range (not a specific particle size). Particle size is crucial because it affects the porosity of the this aggregate wherein the porosity of the coal can increase exponentially with the particle size. Claimed particle size of the anthracite component is in a range of -3 to 200 mesh.
Applying these factors to claims 1 and 3-10, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)), which would guide one of ordinary skill in the art to selecting particle size that would result in mixture having claimed porosity. The specification fails to enable one of ordinary skill in the art without undue experimentation as to what particle size can be utilized in order to obtain claimed porosity and still be within specifications disclosed in Table 2. The quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed. The same conclusion was reached with all other properties were considered since particle size and porosity either directly or indirectly affect all claimed properties.
Furthermore, the only working example and the only discloses composition comprising electrically calcined anthracite coal, epoxy resin, coal tar pitch and anthracene oil. The properties in Table 2 [33] are properties for the claimed composition. Consequently, the properties in dependent claims 5-10 are a result of a mixture that is outside of the scope of the invention as claimed. Specifically, independent claim 1 is directed to a cold ramming mixture comprising 88-84 wt% of calcined anthracite coal and 12-16 wt% of epoxy resin which is diglycidyl ether of bisphenol F.
Applying these factors to claims 1 and 3-10, it is noted that the specification provides no direction or working examples (cf. factors (f) and (g)), which would guide one of ordinary skill in the art on how to obtain claimed properties utilizing only claimed epoxy resin and calcined anthracite coal, especially when claimed epoxy compound cures at mixing temperature of 60oC or less.
The quantity of experimentation (cf. factor (h)) involved in order to reach a usable embodiment would be great. In light of the above factors, it is concluded that undue experimentation would be involved to make and use the invention as presently claimed. The same conclusion was reached with all other properties were considered since particle size and porosity either directly or indirectly affect all claimed properties.
Note:
The invention is chemical in nature, dealing with epoxy resin cold ramming paste with calcined anthracite coal as the aggregate. One of ordinary skill in the art has a bachelor’s or master’s degree and 5 years or less of work experience (NC State Science and Research – Polymer Chemist, 2021, p. 1-6). This allows one of ordinary skill to conduct routine experimentation under the guidance and direction of individuals with significantly higher levels of education and/or experience exceeding the level of ordinary skill in the art (D – level of one of ordinary skill). As discussed in MPEP 2164.03, chemistry is recognized as an unpredictable art (E – level of predictability in the art).
Claim s 1, 3-10 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without use of coal tar pitch and anthracite oil, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
Specifically, detailed analysis of the claims under enablement rejections revealed that in order to obtain properties of the instant claims 3-10 the composition has to comprise coal tar pitch and anthracite oil, which are excluded from the scope of the instant invention in claim 1 by virtue of term “consisting of”.
Claim Objections
Claims 3 and 4 are objected to because of the following informalities:
Claim 3 recites ASTM Boxall 196-05. There is no such ASTM standard. There is ASTM B 196-05 wherein B refers to beryllium and the ASTM standards itself is directed to the requirement for copper-beryllium alloy rod and bar in straight lengths and its mechanical properties. This method is irrelevant to the instant invention.
Claim 4 is directed to the particle size of the anthracite coal. The particle size in itself is not a negative value. The negative mesh values are used in circuit analysis. In such case the mesh currents can be both in the same direction or different directions through the same device. Negative values are associated with negative current running through a diode as such the negative mesh value does not directly provide the particle size but the direction of the current flow in the circuit. To further advance the prosecution of this application and since claim is directed to a mixture rather than article, the mesh value with be treated as particle size or the size of the aggregate that pass through claimed mesh. Appropriate correction is required.
Claim Interpretation
With respect to the properties of the composition which include porosity, baked density, compressive strength, electrical resistivity, coefficient of thermal expansion and thermal conductivity: these properties require a product formed from the composition and cured. As such these properties are viewed as those attributed to the cured product and not mixture of anthracite and epoxy resin as claimed.
Consequently if the prior art meets the limitation of epoxy resin and anthracite as claimed, which includes the same particle size and the content, these properties will be viewed as met if subject to the same test procedures or standards. This is because compounds and their properties are mutually exclusive to the anthracite having the same particle size (passing through claimed mesh) utilized in the same amount along with the same epoxy compound (utilized in the same amount as well) will have properties that are mutually exclusive because of the chemical structures of both.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Xie (CN 102010202) in view of Boxall (US 4,466,995).
With respect to claim 1, Xie discloses a cold ramming paste (Claim 1), which comprises at least one aggregate and at least one binder.
Aggregate is one or more and includes calcined anthracite and electrically calcined anthracite [0007-0008].
Binder is selected from one or more phenolic resin, furfural resin, epoxy resin, coal tar and anthracite oil [0008].
Ratio of aggregate to resin is 5:1 to 20:1. For lower ratio of 5:1 the content of the epoxy resin would be 20 wt%. For higher ratio the content of the binder will be 5 wt%, consequently, the content of the resin in the composition will be 5-20 wt%, fully encompassing claimed range.
While Xie discloses the binder as epoxy resin, Xie does not provide any direction as to which epoxy resin can be utilized in cold ramming pastes.
Boxall discloses composition which is used as cold ramming paste. The paste comprises anthracite and an adhesive resin.
Boxall teaches the same types of resin as Xie, but provides better description on specific types of resins. Boxall teaches use of diglycidyl ethers of bisphenol A, as well as a resin that is a reaction product of dihydric phenol with epichlorohydrin which are also starting materials for diglycidyl ether of bisphenol F, as such the two compounds are considered as functional equivalents (col. 14, l. 5-13).
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As such it would have been obvious to one having ordinary skill in the art at the time of the instant inventio to utilize Bisphenol F in lieu of Bisphenol A and thereby obtain the claimed invention. The two compounds have the same functional group and will bind anthracite in the same manner when utilized in its glycidyl ether form.
With respect to claim 3, the epoxy compound as claimed and as disclosed in the teachings of Boxall has the same chemical structure. Since viscosity of the compound is its physical property that depends on the exact structure of the compound, the viscosity of the epoxy component will inherently meet the claimed viscosity.
The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. 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.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With respect to claim 4, the aggregate of Xie is ground to a particle size in a range of 50-300 microns, wherein 200 mesh is equivalent to 74 microns.
With respect to claim 5, It should be noted that the porosity is a value of cured product, whereas applicants claim a mixture of two components. Having said that, Xie discloses electrically calcined anthracite that has the particle size within the claimed range and epoxy as supplemented by Boxall that has the same chemical structure. As such if the same components are mixed in the same amount their physical properties will be within the same range.
With respect to claim 6, applicants claimed baked density of the cold ramming paste, which requires baking the composition, calculating mass and calculating of loss on baking. As such the property is not that of a mixture but cured product which would chemically alter the epoxy resin.
Having said that as it was established above Xie as modified by Boxall discloses composition having the same aggregate and epoxy resin, in the same amounts as the composition of the instant claim 1. Consequently, when subject to the same conditions the composition of Xie will result in the same baked density as that of the instant invention. As it was further stated above, compounds having the same chemical structure utilized in the same amounts, and in this case subject to the same baking process will have the same density because compounds and their properties are mutually exclusive.
With respect to claim 7, the compressive strength of the composition of Xie will also be expected meet the instant claims for following reason. Considering that 180 kgf/cm2 is equal to 17.652 MPa, Xie shows that the compressive force of the cold ramming paste does depend on the aggregate. The compressive force of the ramming paste comprising anthracite at 5:1 ratio with the binder has compressive strength of 25MPa. While the examples utilize different resin, Xie enables one of ordinary skill in the art to utilize epoxy only and 25 MPa is the lowest value obtained. Additionally as it was also mentioned above, Xie discloses the same amount of electrically calcined anthracite having the same particle size, and epoxy resin within the same amount as supplemented by Boxall. Since compounds and their properties are mutually exclusive, therefore without providing any additional guidance as to how such properties are influenced compounds the compressive strength is also met. Consequently the same aggregate having the particle size within the same mesh will have the same packing efficiency.
With respect to claim 8, the electrical resistivity of the cold ramming paste comprising anthracite and epoxy is influenced by the cross-sectional size of the conductor and the length of the conductor, which in turn affect the amount of current that will flow in a circuit. While epoxy can enhance the electrical resistivity, the property is that of a cured product which is chemically distinct from the claimed mixture of claim 1.
Xie discloses the same amount of electrically calcined anthracite having the same particle size, and epoxy resin within the same amount as supplemented by Boxall. Since compounds and their properties are mutually exclusive, therefore without providing any additional guidance as to how such properties are influenced compounds the electrical resistivity will also be met in a conductor having the same cross-section and length is utilized.
With respect to claim 9, this property also reflects a property of the cured product which is chemically distinct from the claimed paste mixture. In fact curing is a crucial step, because material that is not fully cured can contribute to chemical shrinkage invalidating the measurement itself. As such the property is not that of the claimed mixture.
Xie discloses the same amount of electrically calcined anthracite having the same particle size, and epoxy resin within the same amount as supplemented by Boxall. Since compounds and their properties are mutually exclusive, therefore without providing any additional guidance as to how such properties are influenced compounds the thermal expansion coefficient will also be met when subject to the same test conditions.
With respect to claim 10, in case of thermal conductivity the ramming paste also has to be cured in order to 1) remove any volatiles, 2) curing will result in required carbonaceous product in lieu of “soft” composition, 3) Sample has to be solid enough to be machined into a precise uniform shape required for testing. Consequently, this test is also test of the cured product in lieu of mixture of instant claim 1.
Xie discloses the same amount of electrically calcined anthracite having the same particle size, and epoxy resin within the same amount as supplemented by Boxall. Since compounds and their properties are mutually exclusive, therefore without providing any additional guidance as to how such properties are influenced the thermal conductivity will also be met when subject to the same test conditions.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed, to utilize calcined anthracite and epoxy resin as sole components of the cold ramming paste and thereby obtain instant invention. Utilizing composition comprising epoxy resin in the amount disclosed in Xie, with type of epoxy suitable for use with calcined anthracite as supplemented by Boxall
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 February 17, 2025