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 .
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grassl et al. (WO 2019/077050) in view of Moorer et al. (4,204,877).
Regarding claims 1 and 3-5: Grassl et al. teach a set control composition for cementitious systems comprising:
c) 0.125 % bwoc of a polyacrylic acid or polymethacrylic acid homopolymer whose milliequivalent number of carboxyl groups is 5.00 meq/g or higher (page 4, lines 35-37, page 5, lines 19-20; Examples), and a molecular weight of 1,000 to 10,000 g/mol (page 5, lines 23-26; Examples),
b) sodium carbonate, claimed (B-2) (Examples; Tables), and
a dispersant (page 7, lines 1-15; Examples; Tables).
Grassl et al. fail to teach a polyol.
However, Moorer et al. teach that diglycerol is a compound that retards the hardening or setting of a cement composition (column 2, lines 50-54), and can be used as a set retarder to cement (column 2, lines 35-44). The compound is not limited to use as a grinding aid, since in the examples the compound is added as a retarder to already ground cement (Example 3). Moorer et al. teach adding 0.05 bwoc% of the polyglycerol (Example 3; Table III).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.05 bwoc% of diglycerol as taught by Moorer et al. to the set retarder composition of Grassl et al. to retard to hardening or setting of the cement composition. The amount added provides a claimed c) to a) ratio of 0.05/0.125 = 0.4.
Regarding claim 2: Grassl et al. teach sodium gluconate as a particularly preferred component of the composition (column 6, lines 11-13).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add sodium gluconate as an additional retarder to the composition. It is obvious to combine separately taught prior art ingredients which perform the same function; it is logical that they would produce the same effect and supplement each other. In re Crockett 126 USPQ 186. See MPEP 2144.06.
Regarding claim 6: Since diglycerol is a polyhydric alcohol similar to the example compound in the instant specification, but with an additional alcohol group, the claimed precipitation of calcium aluminate will be met. The courts have stated that 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, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 7: diglycerol is very structurally similar to the glycerol option of the claimed P-I structure.
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) (discussed below and in MPEP § 2144) for an extensive review of the case law pertaining to obviousness based on close structural similarity of chemical compounds. See also MPEP § 2144.08, paragraph II.A.4.(c).
Regarding claim 8: Grassl et al. teach the claimed dispersant (page 7, lines 1-15; Examples).
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/683820. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Relevant Prior Art
Sun et al. (Construction and Building Materials 233 (2020) 117104) teach that glycerin has been an important component of set retarders commonly used in cement industry for a long time (page 2).
Response to Arguments
Applicant's arguments filed 6/8/2026 have been fully considered but they are not persuasive.
The applicant has stated that all components are need for a sufficient open time and high early compressive strength. The applicant alleges that the effect of sodium carbonate and glycerol combined is synergistic. This is not persuasive because the claims are not commensurate in scope with the data provided.
The applicant has alleged that Grassl et al. teach against the inclusion of diglycerol because of the retarding effect of diglycerol, and the requirement of high early strength in Grassl et al. This is not persuasive because the composition Grassl et al. includes retarding agents (page 2, lines 19-20; page 6, line 8; page 24, line 34; Examples). Grassl et al. cannot teach against components that are required in their composition.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.05 bwoc% of diglycerol as taught by Moorer et al. to the set retarder composition of Grassl et al. to retard to hardening or setting of the cement composition.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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