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 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 – 4, 6, 8 – 10, 12, 14, and 17 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0174569 to Warren et al. (hereinafter Warren) in view of US 2018/0171062 to Nefzger et al. (hereinafter Nefzger).
Regarding Claims 1 – 4, 12, and 17 – 19. Warren teaches a polymer concrete composition in which polymers are used to replace cement as a binder [0028], i.e. a curable binder composition. The organic polymer binder specifically comprises a polyisocyanate and polyol [0031] – [0032]. The composition also further comprises an aggregate/filler in an amount of 50 to 90 weight percent [0033]. In the inventive example, water is provided in an amount of 0.5 weight percent of the composition [0050]. The composition is cured to form a light weight, foamed polymer concrete [0013], i.e. a cured mineral binder composition having a foam structure.
Warren does not expressly teach the composition further comprises a desiccant. However, Nefzger teaches the concept of including calcium sulphate in polyurethane compositions in an amount of in particular 0.3 to 25 weight percent [0073]. Calcium sulphate is set forth as a desiccant in instant Claim 2. Warren and Nefzger are analogous as they are from the same field of endeavor, namely foamed polyurethane compositions. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to include calcium sulphate in the composition of Warren in the amount taught by Nefzger. The motivation would have been that Nefzger teaches calcium sulphate also functions as a flame retardant in polyurethane foams [0073], which would be desirable in the foams of Warren which are intended to be used in building components [0002].
Though Nefzger does not expressly teach the desiccant content provides a cured binder composition that has a foam structure with a density within the range of 1.7 to 3.9 g/cm3, Nefzger teaches an identical desiccant to that claimed (calcium sulphate). Nefzger further teaches a desiccant proportion (0.3 to 25% by weight) which overlaps with the claimed proportion of desiccant of not more than 1% by weight, based on 100% by weight of the curable binder composition, set forth in instant Claim 3. Thus, the amounts of desiccant in Nefzger’s preferred range which overlap with the instantly claimed range (0.3 to 1% by weight) would be expected to provide a foam structure in the range of 1.7 to 3.9 g/cm3.
Regarding Claim 6. Warren teaches the curable binder composition of Claim 1. The water content of the curable binder composition is indicated to be no less than 0.1 weight percent of the composition [0034]. While this range is to identical the claimed range of not more than 0.01 to 0.45% by weight water, it does overlap. It has been held that 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 USPG 90 (CCPA 1976) (MPEP 2144.05).
Regarding Claim 8. Warren teaches the curable binder composition of Claim 1. In the inventive example, the filler provided is a quartz silica aggregate [0049].
Regarding Claim 9. Warren teaches the curable binder composition of Claim 1 wherein the aggregate/filler may be talc or may be sand having a particle size as low as 10 microns (0.01 mm) [0033]. Though Warren does not expressly teach an embodiment in which these fillers are used together, it has been held that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) Consequently, it is the Office’s position that, before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use a combination of talc and sand having a particle size as low as 0.01 mm. In light of In re Kerkhoven, combining talc and sand of this particle size would have been obvious given their known and shared intended use as aggregates in the composition of Warren.
Regarding Claim 10. Warren teaches the curable binder composition of Claim 1 wherein the polyol is provided in an amount of 10 to 15% by mass and the isocyanate is provided in an amount of 5 to 15% by mass [0031] – [0032], corresponding to an amount of polyol and isocyanate together of 15 to 30 mass%.
Regarding Claim 14. Warren teaches the curable binder composition of Claim 1 wherein the isocyanate is provided in an amount of 5 to 15% by mass; the polyol is provided in an amount of 10 to 15% by mass [0031] – [0032]; the aggregate/filler in an amount of 50 to 90 weight percent [0033]; and water may be provided in an amount of 0.5 weight percent of the composition [0050]. No other ingredients are required to be present in the composition and therefore embodiments in which auxiliaries total roughly zero weight percent of the composition are readily envisioned from the reference disclosure. It is additionally the Office’s position that it would have been obvious to include calcium sulphate in the composition of Warren in an amount in the instantly claimed range, as taught by Nefzger, for the reasons detailed in the rejection of Claim 1 above under 35 U.S.C. 103 above.
Regarding Claim 20. Warren teaches the curable binder composition of Claim 1 but does not expressly teach the foam obtained upon curing has a pore diameter in the instantly claimed ranges. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Warren, when modified by Nefzger in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a cured binder composition having a pore diameter in the instantly claimed range, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0174569 to Warren et al. (hereinafter Warren) in view of US 2018/0171062 to Nefzger et al., as applied to Claim 1 above, and further in view of GB 2460707 to Ridgway et al. (hereinafter Ridgway).
Regarding Claim 7. Warren teaches the curable binder composition of Claim 1 wherein a preferred aggregate/filler is sand [0033] but does not expressly teach it comprises at least three different grain fractions. However, Ridgway teaches the concept of using a silicate filler having different grain fractions in a polymer aggregate composition. The filler may specifically comprise a fine filler grain fraction having a particle size of less than 0.5 mm; a fine glass sand fraction having a particle size of 0.5 to 1 mm; and a coarse glass sand grain fraction having a particle size of 1 – 3 mm (Table 1 on Pages 6 – 7). Warren and Ridgway are analogous as they are from the same field of endeavor, namely filled polymer compositions. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide the silicate filler of Ridgway as the filler in the composition of Warren. The motivation would have been that Ridgway teaches the disclosed fillers comprising grain fractions of differing particle sizes provide advantages, such as closer packing of the filler particles and products of higher compressive strength (Page 6, Lines 1 – 11).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0174569 to Warren et al. (hereinafter Warren) in view of US 2018/0171062 to Nefzger et al., as applied to Claim 1 above, and further in view of US 2012/0029145 to Brown (hereinafter Brown).
Regarding Claim 11. Warren teaches the curable binder composition of Claim 1 but does not expressly teach a mixture of polyols having different OH functionality are provided. However, Brown teaches the concept of using a mixture of polyols having different OH functionality in the preparation of polyurethane composite materials [0163]. Warren and Brown are analogous as they are from the same field of endeavor, namely polyurethane composite materials. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide a mixture of polyols having different OH functionality in the composition of Warren. The motivation would have been that Brown teaches mixture of polyols having different OH functionality may provide advantages such as provide polyurethanes with improved properties, e.g. impact strength and stress cracking resistance [0163].
Response to Arguments
Applicant's arguments filed December 22, 2025 have been fully considered. The Office responds as follows:
I. Claim Objections
The Office agrees that the amendments to the claims overcome the outstanding objections to the claims. Accordingly, all claim objections have been withdrawn.
II. Rejections Under 35 U.S.C. 112(b)
The Office agrees that the amendments to the claims overcome the outstanding rejections under 35 U.S.C. 112(b) to the claims. Accordingly, all rejections under 35 U.S.C. 112(b) have been withdrawn.
III. Rejections Under 35 U.S.C. 102 and 103
Applicant argues that Schümann does not disclose a curable binder composition containing water in an amount of 0.005 – 5 weight, as is now set forth in amended Claim 1. The Office agrees. The outstanding rejections of the claims under 35 U.S.C. 102 and 103 in view of Schümann have consequently been withdrawn.
With respect to the rejection of the claims under 35 U.S.C. 103, applicant argues that Warren does not teach a desiccant is added to its composition while Nefzger only teaches adding calcium sulfate as a flame retardant. It is then applicant’s position that neither reference is suitably relied upon to teach the use of a desiccant in an amount such that a foam structure prepared from the composition would have a density within the claimed range of 1.7 to 3.9 g/cm3.
However, Nefzger teaches the concept of including calcium sulphate in polyurethane compositions in an amount of in particular 0.3 to 25 weight percent [0073]. Though Nefzger does not expressly teach the desiccant content provides a cured binder composition that has foam structure with a density within a range of 1.7 to 3.9 g/cm3, Nefzger teaches an identical desiccant to the claimed (calcium sulphate). Nefzger further teaches a desiccant proportion (0.3 to 25% by weight) which overlaps with claimed proportion of desiccant of not more than 1% by weight, based on 100% by weight of the curable binder composition set forth in instant Claim 3. A composition and its properties are inseparable. Thus, the amounts of calcium sulphate/desiccant in Nefzger’s preferred range which overlap with the instantly claimed range (0.3 to 1% by weight) would be expected to provide a foam structure with a range of 1.7 to 3.9 g/cm3.
Applicant argues that Nefzger teaches a desiccant range of 0.3 to 25 weight percent, which is much wider than the range of 1 – 10 weight percent exemplified in Table 11 of the instant application. It has been held that 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 USPG 90 (CCPA 1976) (MPEP 2144.05) Moreover, as detailed above, it is the Office’s position that the parts of the preferred range of Nefzger which fall within the instantly claimed range would necessarily correspond to amounts which provide a foam structure with a range of 1.7 to 3.9 g/cm3.
The outstanding rejections under 35 U.S.C. 103 over Warren in view of Nefzger have consequently been maintained.
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.
Correspondence
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764