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 has changed the statutory class in the middle of prosecution by amending all claims to a method for grinding a hydraulic binder in a mill. As noted in the Office Action 4/24/2025, a restriction requirement between product and process claims were not made because the method claims do not include any substantive method steps distinguishing from the product claims. However, Applicant is reminded that if further substantive method limitations are added at a later date, restriction by original presentation will become necessary.
Response to Amendment
Examiner acknowledges amended Claims 1-5, 9, 10, 12, 13, and 18-21, canceled Claims 6-8, 11, and 14-17, and new Claim 22 in the response filed on 7/24/2025. .
Response to Arguments
Applicant's arguments filed 7/24/2025 have been fully considered but they are not persuasive.
Applicant argues that Marazzani fails to teach a method wherein the flowability of a hydraulic binder in the mill is reduced. Marazzani is totally silent about the flowability of a hydraulic binder during grinding. Marazzani does not suggest that using a mixture of salified form of an alkanolamine/non-salifed form of an alkanolamine chosen from TIPA and DIPA, allows a reduction of the flowability of a hydraulic binder.
However, Applicant’s arguments are unpersuasive. 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). In the instant case, Marazzani teaches an improved additive for the grinding of cementitious binders [0013]. The additive comprises a secondary or tertiary alkanolamine in the form of salt and non-salified alkanolamine ([0055]-[0061]). Absence of evidence to the contrary, the Examiner deems that it is intrinsic that grinding the cementitious binder with the additive will reduce the flowability.
Applicant argues that all the alkanolamine mixtures exemplified in Marazzani comprise an aminoalcohol A of formula (I), i.e. MDiPa. Marazzani does not provide any basis to use equal parts of secondary or tertiary alkanolamine in the form of a salt, and of non-salified alkanolamine, wherein the alkanolamine is selected from the group consisting of TIPA and DIPA, because TIPA and DIPA, as used in the presently claimed method, do not match formula (I) as defined in Marazzani.
However, Applicant’s arguments are unpersuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed....” In re Fulton, 391 F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004). While some examples disclose using MDiPa, Marazzani discloses many additives without MDiPa (e.g. A2 in Table 1).
Marazzani discloses one or more additional amino alcohols and/or salts thereof, for example, those which differ from amino alcohol A and/or the salt thereof are additional added to the grinding additive. Exemplary additional amino alcohols are, for example, TIPA and DIPA ([0055]-[0061]).
Marazzani recognizes that amino alcohols TIPA and DIPA are functionally equivalent to each other and are substances known to the person skilled in the art as grinding aids, and are included with amino alcohol A to provide additional grinding aids and/or aids for improving the material properties of a solid ([0055]-[0059]). As shown in Table 1, additive A5 discloses 1:1 mixture of TiPa and MDiPa, and additive A2 is only TIPA. Therefore, the Examiner maintains that it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have of equal parts of the secondary or tertiary alkanolamine salt and the non-salified alkanolamine in order to achieve a composition that increase grinding efficiency and improve material properties for hydraulic binders [0013]. Examiner further notes that the present claims are cast in open language, and are therefore open to unrecited materials, including MDiPa.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 9, 10, 12, 13, and 18-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over all claims in U.S. Patent No. 12286383 (Application No. 17284261) in view of US Pub. No. 20140150694 (“Marazzani et al.”).
U.S. Patent No. 12286383 discloses, inter alia, a secondary or tertiary alkanolamine in the form of a salt, wherein the alkanolamine salt is a hydrochloric acid salt.
U.S. Patent No. 12286383 does not teach its composition additionally comprising a non-salified alkanolamine and the concentrations as claimed.
However, Marazzani et al. teaches a composition comprising a secondary or tertiary alkanolamine in the form of salt and non-salified alkanolamine (Abstract, [0014] [0056], and [0058]-[0061]). While Marazzani et al. does not explicitly teach an example of the concentrations of the secondary or tertiary alkanolamine salt and the non-salified alkanolamine, Marazzani et al. does teach examples of a mixture of two alkanolamines having a weight ratio of 1:1 (Please see A5 in Table 1 disclosing 50 wt% of TIPA), and an example of only TIPA (Please see A2 in Table 1). Marazzani et al. further recognizes that TIPA and DIPA are functional equivalent in that they are known substances in the art that act as grinding aids and/or aids for improving the material properties of a solid ([0055]-[0060]).
Therefore, the Examiner deems that it would have been obvious to one of ordinary skill in the art to have of equal parts of the secondary or tertiary alkanolamine salt and the non-salified alkanolamine in order to achieve a composition that increase grinding efficiency and improve material properties for hydraulic binders [0013].
Claim Objections
Claim 2 is objected to because of the following informalities: Considering that Applicant removed the abbreviation “(A)” in Claim 1, please also remove “(A)” in Claim 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.
Claims 1-6, 9, 10, 12, 13, and 18-22 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.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: grinding the hydraulic binder with the composition (C), whereby a flowability of a hydraulic binder in the mill is reduced (emphasis added). Claim 1 merely recites grinding the hydraulic binder in the mill, not necessarily with composition (C). Because Claim 1 is cast in an open language, the claim may be broadly interpretated as adding the hydraulic binder to a mill, grinding the hydraulic binder, and then adding a composition (C) to the mill. Such interpretation reads on “adding the hydraulic binder and a composition (C) … to the mill, and grinding the hydraulic binder”. Thus, the instant claim does not necessarily grind together the hydraulic binder and composition (C) to reduce the flowability of a hydraulic binder in the mill.
Claim 1 recites the limitation "the flowability of a hydraulic binder". There is insufficient antecedent basis for this limitation in the claim. Further clarification is also needed if “a hydraulic binder” in the instant limitation should refer back to the added hydraulic binder previously recited, or should be clarified as a grinded hydraulic binder, etc.
Claim 10 recites a method of forming the composition (C) by “converting an alkanolamine selected from the group consisting of TIPA and DIPA to a partially salified form, to obtain the composition (C) according to claim 1” (emphasis added). Claim 1, in which Claim 10 is dependent from, recites that there are two components in composition (C). Therefore, Claim 10 is indefinite because it is unclear if composition (C) is now limited to only having secondary or tertiary alkanolamine in the form of a salt.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claim 19 recites the broad recitation of polynaphthalene sulfonates or naphthalene-based superplasticizers, and the claim also recites sulfonated salts of naphthalene and formaldehyde polycondensates which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1, 2, 9, 10, 12, 13, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20140150694 (“Marazzani et al.”).
With regards to Claims 1 and 2, Marazzani et al. teaches a method for grinding a hydraulic binder in a mill, comprising: adding the hydraulic binder and a composition comprising a secondary or tertiary alkanolamine in the form of salt and non-salified alkanolamine to the mill. Marazzani et al. teaches the alkanolamine of the secondary or tertiary alkanolamine and the alkanolamine of the non-salified alkanolamine are independently chosen from the group consisting of triisopropanolamine (TIPA) and diisopropanolamine (DIPA) (Abstract, [0014], [0020], [0027], [0028], [0056], [0058]-[0061], and [0080]).
While Marazzani et al. does not explicitly teach an example of the concentrations of the secondary or tertiary alkanolamine salt and the non-salified alkanolamine, Marazzani et al. does teach examples of a mixture of two alkanolamines having a weight ratio of 1:1 (Please see A5 in Table 1), and an example of only TIPA (Please see A2 in Table 1). Marazzani et al. further recognizes that TIPA and DIPA are functional equivalent in that they are known substances in the art that act as grinding aids and/or aids for improving the material properties of a solid ([0055]-[0060]). Therefore, the Examiner deems that it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have of equal parts of the secondary or tertiary alkanolamine salt and the non-salified alkanolamine in order to achieve a composition that increase grinding efficiency and improve material properties for hydraulic binders [0013].
In view of Marazzani et al. disclosing grinding the hydraulic binder with TIPA and DIPA, the Examiner deems that it is intrinsic that the flowability of a hydraulic binder in the mill is reduced. It has been held that where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the burden of proof is shifted to applicant to show that prior art products do not necessarily or inherently possess characteristics of claimed products where the rejection is based on inherency under 35 USC §102 or on prima facie obviousness under 35 USC §103, jointly or alternatively. In re Best, Bolton, and Shaw, 195 USPQ 430. (CCPA 1977).
With regards to Claim 9, Marazzani et al. teaches the alkanolamine of the secondary or tertiary alkanolamine and/or the alkanolamine of the non-salified alkanolamine is triisopropanolamine (TIPA) [0058].
With regards to Claim 10, Marazzani et al. teaches a method of converting an alkanolamine selected from the group consisting of TIPA and DIPA to a partially salified form, to obtain the composition (C), and before adding the composition (C) to the mill (Abstract, [0011], [0013], [0014], [0020], [0055]-[0059], and [0075]).
With regards to Claims 12, 19, and 20, Marazzani et al. teaches the claimed additive(s) (please see [0056] and [0065]-[0067]).
With regards to Claim 13, Marazzani et al. teaches one or more defoamers are used in combination with the alkanolamine salt [0065].
Claims 3-5, 18, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20140150694 (“Marazzani et al.”) as applied to Claim 1 above, and further in view of US Pub. No. 20150027347 (“Pellerin et al.”)
With regards to Claims 3-5 and 18, Marazzani et al. teaches the secondary or tertiary alkanolamine in the form of a salt, as set forth above.
Marazzani et al. does not teach the alkanolamine salt is a hydrochloric acid salt.
However, Pellerin et al. teaches a secondary or tertiary alkanolamine in the form of a salt, wherein the alkanolamine salt is a hydrochloric acid salt (Abstract, [0025], [0026], and [0047]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Marazzani et al.’s alkanolamine salt be a hydrochloric acid salt, as demonstrated by Pellerin et al., in order to obtain a composition that reduces setting time, ensuring good compressional strength at an early sate, limit corrosion phenomena and which is stable at low temperature [0009].
With regards to Claim 22, Marazzani et al. teaches including additives (please see [0056] and [0065]-[0067]).
Marazzani et al. does not teach the claimed salt(s) that are used in addition to the alkanolamine salt.
However, Pellerin et al. teaches its admixture to additionally include calcium chloride [0037]. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include calcium chloride as it is a known accelerator for setting and hardening hydraulic binder ([0005] and [0037]).
Claims 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20140150694 (“Marazzani et al.”) as applied to Claim 1 above, and further in view of FR 3002162 (“Pellerin2”).
Marazzani et al. teaches including superplasticizer of a comb polymer comprising a polycarboxylate backbone with polyether side chains bound to it ([0065]-[0067]).
Marazzani et al. does not explicitly teach its comb polymer is a poly [(meth)acrylic acid – grafted – ethylene polyoxide].
However, Pellerin2 teaches poly [(meth)acrylic acid – grafted – ethylene polyoxide] as an additive to its grinding aid composition (Abstract). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to incorporate the claimed additive in order to improve the hydraulic binder’s workability and durability.
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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785