DETAILED ACTION
Response to Amendment
In response to the amendment received on 09/18/2025:
claims 1-7 and 9-19 are currently pending
claims 1, 13 and 16-17 are amended
claims 18-19 are added
previously presented 112b rejections are withdrawn in light of the amendment to the claims
previously presented 101 rejection is withdrawn in light of the amendment to the claims
new prior art grounds of rejection reapplying Kobayashi, Caveny, Lorenz and Schinabeck are presented herein
Claim Rejections - 35 USC § 103
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.
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, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (JP 2017160076) with reference to the provided machine translation, hereinafter referred to as KOBAYASHI, in view of Schinabeck et al. (US 7605196 B2), hereinafter referred to as SCHINABECK.
Regarding claim 1, KOBAYASHI teaches an admixture for concrete (paragraph [1]: an additive for hydraulic composition and a concrete composition), comprising a lignin derivative (A) (paragraphs [71]: in addition to the cement admixture polymer, the cement admixture may contain other components; and [74]: lignin sulfonic acid salt), copolymer having a hydrolysable group (B) (paragraphs [5]: a polycarboxylic acid type copolymer; and [49]: examples of the monomer (c) include hydroxyalkyl (meth) acrylates such as hydroxyethyl (meth) acrylate and hydroxypropyl (meth) acrylate) and a (meth)acrylic-based viscosity component (C) (paragraph [75 (2)]: polymer emulsion: copolymer of various vinyl monomers such as alkyl (meth)acrylate), wherein the copolymer having a hydrolysable group (B) is a copolymer of at least two monomers consisting of an ethylenically unsaturated monomer having hydrolysability (b1) and an ethylenically unsaturated monomer having a polyalkyleneoxide ether chain (b2) (paragraph [49]: examples of the monomer (c) include hydroxyalkyl (meth) acrylates such as hydroxyethyl (meth) acrylate and hydroxypropyl (meth) acrylate… various (alkoxy) (poly) alkylene glycol mono (meth) acrylates).
But KOBAYASHI fails to explicitly teach wherein the number average molecular weight of the (meth)acrylic-based viscosity adjusting component C is in the range of 50,000 g/mol or more and 20,000,000 g/mol or less.
However, SCHINABECK discloses water-soluble copolymers used as water retention agents, stabilizers and rheology modifiers in aqueous building material systems based on hydraulic binders such as cement, the copolymers are highly effective water retention agents even when used in relatively small amounts (see SCHINABECK at Abstract). SCHINABECK teaches that the water-soluble, sulfo group-containing copolymers consist of structural groups a), b), c), and d), a) and b) being mandatory (see SCHINABECK at Col. 3, lines 29-32). SCHINABECK also teaches that the first structural group is a sulfo group-containing substituted acrylic or methacrylic acid derivative of formula (I):
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wherein R1 and R4=hydrogen, R2 and R3=methyl group, M=hydrogen, a monovalent metal cation (sodium or potassium) or an unsubstituted ammonium ion (see SCHINABECK at Col. 3, lines 33-59). Additionally, SCHINABECK teaches that the copolymers according to the invention preferably have a number average molecular weight Mn of from 50,000 to 20,000,000 g/mol and are excellent additives for aqueous building material systems containing hydraulic binders such as cement (see SCHINABECK at Col. 7, lines 37-42). SCHINABECK also teaches that previously described sulpho group-containing polymers of very high molecular weight display very good water retention properties, and have a very good stabilizing effect in that they markedly increase the plastic viscosity of the mix (see SCHINABECK at Col. 2, lines 34-38).
Both KOBAYASHI’s and SCHINABECK’s disclosures are from the same field of endeavor and describe additives for building material systems based on hydraulic binders such as cement. According to MPEP § 2144.06(I), "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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Therefore, 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 modified the additive for a hydraulic composition of KOBAYASHI by utilizing a copolymer of monomers such as alkyl(meth)acrylate with a number average molecular weight Mn of from 50,000 to 20,000,000 g/mol as disclosed by SCHINABECK (see SCHINABECK at Col. 7, lines 37-42), based on teachings of SCHINABECK describing that sulpho group-containing polymers of very high molecular weight display very good water retention properties, and have a very good stabilizing effect in that they markedly increase the plastic viscosity of the mix (see SCHINABECK at Col. 2, lines 34-38).
The rationale for such modification would have been combining prior art elements according to known methods to yield predictable results. See MPEP §2143(I) (Exemplary rationale (A)).
Regarding claim 15, KOBAYASHI as modified by SCHINABECK teaches a concrete, containing the admixture for concrete according to claim 1 and containing more than 30% by mass of blast furnace slag (paragraphs [1]: an additive for hydraulic composition and a concrete composition; and [20-21]: examples of “pozzolanic substances” include blast furnace slag; when the hydraulic composition contains a pozzolanic substance, the content ratio of pozzolanic substance with respect to the total amount of hydraulic cement and pozzolanic substance is preferably greater than 30% by mass). KOBAYASHI teaches a range which is identical and anticipates the claimed range.
Regarding claim 17, KOBAYASHI as modified by SCHINABECK teaches a use of admixture for concrete according to claim 1, wherein the admixture is added to a concrete containing more than 30% by mass of blast furnace slag (paragraphs [1]: an additive for hydraulic composition and a concrete composition; and [20-21]: examples of “pozzolanic substances” include blast furnace slag; when the hydraulic composition contains a pozzolanic substance, the content ratio of pozzolanic substance with respect to the total amount of hydraulic cement and pozzolanic substance is preferably greater than 30% by mass). KOBAYASHI teaches a range which is identical and anticipates the claimed range.
Claims 1-7, 9-14, 16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Caveny et al. (US Pub. No.: 2004/0262001 A1), hereinafter referred to as CAVENY, in view of Lorenz et al. (US 8519029 B2), hereinafter referred to as LORENZ, and SCHINABECK.
Regarding claim 1, CAVENY teaches an admixture for concrete (see CAVENY at paragraph [0019]: the set retarder composition), comprising a lignin derivative (A) (see CAVENY at paragraph [0029]: the set retarder composition may comprise a lignin-based retarder) and a (meth)acrylic-based viscosity component (C) (see CAVENY at paragraph [[0020]: the set retarder compositions comprise an acrylamide polymer derivative), a copolymer having a hydrolysable group (B). While CAVENY teaches that the set retarder compositions may comprise a dispersant and that a variety of dispersants known to those skilled in the art may be used (see CAVENY at paragraph [0032]), CAVENY is silent with respect to the dispersant being the copolymer having a hydrolysable group (B) and being a copolymer of at least two monomers consisting of an ethylenically unsaturated monomer having hydrolysability (b1) and an ethylenically unsaturated monomer having a polyalkyleneoxide ether chain (b2).
However, LORENZ teaches non-ionic copolymers comprising a hydrolysable moiety and at least one dispersing moiety (see LORENZ at Col. 2, lines 4-5). LORENZ discloses that the use of the non-ionic copolymers as a potential dispersant reservoir in cementitious compositions provides extended workability retention, and that the use of non-ionic copolymers allows for better control over longer-term concrete workability, more uniformity and tighter quality control for concrete producers (see LORENZ at Col. 1, lines 53-62). LORENZ teaches copolymer comprising the following monomers: component A comprising at least one ethylenically unsaturated carboxylic acid ester monomer comprising a moiety hydrolysable in cementitious mixture (see LORENZ at Col. 2, lines 63-67), and component B comprising at least one ethylenically unsaturated, carboxylic ester or alkenyl ether monomer comprising oxyalkylene side group (see LORENZ at Col. 3, lines 4-6).
One of ordinary skill in the art would have recognized the potential need to improve the composition of CAVENY based on the teachings of CAVENY describing that the dispersant acts to control the rheology of the cement composition and to stabilize the cement composition (see CAVENY at paragraph [0032]). Moreover, one of ordinary skill in the art would have been motivated to utilize the non-ionic polymer dispersant disclosed by LORENZ since LORENZ explicitly teaches that the use of the non-ionic copolymers as a potential dispersant reservoir in cementitious compositions provides extended workability retention, and allows for better control over longer-term concrete workability, more uniformity and tighter quality control for concrete producers (see LORENZ at Col. 1, lines 53-62).
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 composition of CAVENY by including the non-ionic polymer comprising a hydrolysable moiety and at least one dispersing moiety disclosed by LORENZ in order to provide extended workability retention and allow for better control over longer-term concrete workability.
While CAVENY discloses that in certain embodiments, the acrylamide polymer derivative may have a weight average molecular weight of below about 50000 (see CAVENY at paragraph [0026]), CAVENY is silent with respect to the number average molecular weight of the (meth)acrylic-based viscosity adjusting component (C) is in the range of 50,000 g/mol or more and 20,000,000 g/mol or less.
However, SCHINABECK discloses water-soluble copolymers used as water retention agents, stabilizers and rheology modifiers in aqueous building material systems based on hydraulic binders such as cement, the copolymers are highly effective water retention agents even when used in relatively small amounts (see SCHINABECK at Abstract). SCHINABECK teaches that the water-soluble, sulfo group-containing copolymers consist of structural groups a), b), c), and d), a) and b) being mandatory (see SCHINABECK at Col. 3, lines 29-32). SCHINABECK also teaches that the first structural group is a sulfo group-containing substituted acrylic or methacrylic acid derivative of formula (I):
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wherein R1 and R4=hydrogen, R2 and R3=methyl group, M=hydrogen, a monovalent metal cation (sodium or potassium) or an unsubstituted ammonium ion (see SCHINABECK at Col. 3, lines 33-59). Additionally, SCHINABECK teaches that the copolymers according to the invention preferably have a number average molecular weight Mn of from 50,000 to 20,000,000 g/mol and are excellent additives for aqueous building material systems containing hydraulic binders such as cement (see SCHINABECK at Col. 7, lines 37-42). SCHINABECK also teaches that previously described sulpho group-containing polymers of very high molecular weight display very good water retention properties, and have a very good stabilizing effect in that they markedly increase the plastic viscosity of the mix (see SCHINABECK at Col. 2, lines 34-38).
Both CAVENY and SCHINABECK disclose additive comprising (meth)acrylic-based copolymer for building material systems based on hydraulic binders such as cement. CAVENY and SCHINABECK also disclose the copolymers comprising the structural unit of the same composition (see CAVENY at paragraphs [0020-21] and SCHINABECK at Col. 3, lines 33-59). According to MPEP § 2144.06(I), "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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Therefore, 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 modified the (meth)acrylic-based copolymer of CAVENY to have a number average molecular weight Mn of from 50,000 to 20,000,000 g/mol as disclosed by SCHINABECK (see SCHINABECK at Col. 7, lines 37-42)., based on teachings of SCHINABECK describing that sulpho group-containing polymers of very high molecular weight display very good water retention properties, and have a very good stabilizing effect in that they markedly increase the plastic viscosity of the mix (see SCHINABECK at Col. 2, lines 34-38).
The rationale for such modification would have been combining prior art elements according to known methods to yield predictable results. See MPEP §2143(I) (Exemplary rationale (A)).
Regarding claim 2, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 1, further comprising a hydroxycarboxylic acid and/or saccharide (D) (see CAVENY at paragraph [0036]: various organic acids can be included in the set retarder composition including citric acid, gluconic acid).
Regarding claim 3, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 1, wherein the molar ratio of the ethylenically unsaturated monomer having hydrolysability (b1) is 0.50 or more and 10 or less, based on the ethylenically unsaturated monomer having a polyalkyleneoxide ether chain (b2) (see LORENZ at Col. 5, lines 57-60: the mole ratio of component A/(b1) to components B and C/(b2), that is (A):(B)+(C), is between about 1:1 to about 10:1). LORENZ teaches molar ratio range, which is within the claimed range.
Regarding claim 4, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 1, wherein the molar ratio of the ethylenically unsaturated monomer having hydrolysability (b1) is 1.1 or more and 5.0 or less, based on the ethylenically unsaturated monomer having a polyalkyleneoxide ether chain (b2) (see LORENZ at Col. 5, lines 57-60: the mole ratio of component A/(b1) to components B and C/(b2), that is (A):(B)+(C), is between about 1:1 to about 10:1). LORENZ teaches molar ratio range, which overlaps and renders obvious the claimed range. 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. See MPEP §2144.05(I).
Regarding claim 5, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 1, wherein the ethylenically unsaturated monomer having hydrolysability (b1) is a compound represented by the following general formula (1) (see LORENZ at Col. 11, lines 40-45 and 50: examples of ethylenically unsaturated monomers capable of forming hydrolysable monomer residues comprising component A include hydroxypropyl methacrylate).
Regarding claim 6, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 1, wherein the ethylenically unsaturated monomer having a polyalkyleneoxide ether chain (b2) is a compound represented by the following general formula (2) (see LORENZ at Col. 6, general formula (I) and lines 7-18: Q is a component A ethylenically unsaturated monomer comprising a hydrolysable moiety, G comprises C(O)-O, R1 and R2 each independently comprises at least one C2-C8 alkyl; R3 comprises (CH2)c wherein each c is a numeral from 2 to about 5; each R5 comprises at least one H).
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General formula (I) (see LORENZ at Col. 6).
Regarding claim 7, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 1, wherein the (meth)acrylic-based viscosity adjusting component (C) is a polymer comprising as a constituent unit, a monomer which is a sulfo-group-containing (meth)acrylic acid derivative (see CAVENY at paragraph [0020]: monomer formed from 2-acrylamido-2methylpropane sulfonic acid or derivative).
Regarding claim 9, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 7, wherein the polymer comprising, as a constituent unit, a monomer which is a sulfo-group-containing meth(acrylic) acid derivative, is a compound having a constituent unit represented by the general formula (3) (see CAVENY at attached monomer formula and paragraphs [0020]: monomer formed from 2-acrylamido-2methylpropane sulfonic acid or derivative; and [0021]: wherein M is hydrogen, ammonium, sodium or potassium).
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Monomer formed from 2-acrylamido-2methylpropane sulfonic acid or derivative (see CAVENY at paragraph [0020]).
Regarding claim 10, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 1, wherein 0.50% by mass or more and 20.0% by mass or less of the lignin derivative (A) is contained in the admixture for concrete (see CAVENY at paragraph [0030]: the lignin-based retarder may be present in the set retarder composition in an amount in the range of from about 1% to about 95% by weight). CAVENY teaches a range which overlaps with the claimed range.
Regarding claim 11, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 1, wherein 0.50% by mass or more and 30.0% by mass or less of the copolymer having a hydrolysable group (B) is contained in the admixture for concrete (see CAVENY at paragraph [0032]: the dispersant is present in the set retarder composition in an amount in the range of from about 5% to about 70% by weight). CAVENY teaches a range which overlaps with the claimed range.
Regarding claim 12, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 1, but fails to explicitly teach wherein 0.001% by mass or more and 0.150% by mass or less of the (meth)acrylic-based viscosity adjusting component (C) is contained in the admixture for concrete.
However, as was discussed in the rejection of claim 1 above spanning paragraphs on pages 6-10, SCHINABECK discloses water-soluble copolymers used as water retention agents, stabilizers and rheology modifiers in aqueous building material systems based on hydraulic binders such as cement, the copolymers are highly effective water retention agents even when used in relatively small amounts (see SCHINABECK at Abstract). SCHINABECK teaches polymers comprising the same sulfo group-containing monomers as disclosed by CAVENY (see rejection of claim 1 above spanning paragraphs on pages 6-10). SCHINABECK also teaches that the preferred amounts of the copolymers, depending on type of use, being between 0.001 and 5% by weight, based on the dry weight of the construction material (see SCHINABECK at Col. 8, lines 19-22). CAVENY teaches that the disclosed set retarder composition is present in the cement composition in an amount in the range of from 0.01% to about 5% bwoc (see CAVENY at paragraph [0039]).
Additionally, 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", and “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” (see MPEP § 2144.05(II)(A)). Thus, one of ordinary skill in the art would have been motivated to adjust the amount of (meth)acrylic-based polymer to be between 0.001 and 5% bwoc as disclosed by SCHINABECK, which when applied to composition of CAVENY would result in (meth)acrylic-based polymer being in the range of 0.1% to 100% based on CAVENY’s teaching that the disclosed set retarder composition is present in the cement composition in an amount in the range of from 0.01% to about 5% bwoc (see CAVENY at paragraph [0039]).
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 selected amounts of (meth)acrylic-based polymer from within the range taught by SCHINABECK to be within the claimed range because there is a reasonable expectation of success that the amount disclosed by SCHINABEK would be suitable, since SCHINABECK explicitly teaches that the copolymers are highly effective water retention agents even when used in relatively small amounts (see SCHINABECK at Abstract).
Regarding claim 13, CAVENY as modified by LORENZ and SCHINABECK teaches the admixture for concrete according to claim 1, wherein 0.10% by mass or more and 20.0% by mass or less of the hydroxycarboxylic acid is contained in the admixture for concrete (see CAVENY at paragraph [0036]: the organic acid is present in the set retarder composition in an amount in the range of from about 0.01% to about 5% by weight). CAVENY teaches a range which overlaps with the claimed range.
Regarding claim 14, CAVENY as modified by LORENZ and SCHINABECK teaches a concrete, containing the admixture for concrete according to claim 1, wherein a water-cement ratio, which indicates the ratio of a mass of water to a mass of cement, is 45% or more (see CAVENY at paragraphs [0016]: the cement compositions comprise a cement, water and a set retarder composition; and [0018]: the water is present in the cement compositions in an amount of from about 15% to about 200% by weight of cement). CAVENY teaches a range which overlaps with the claimed range.
Regarding claim 16, CAVENY as modified by LORENZ and SCHINABECK teaches a use of admixture for concrete according to claim 1, wherein the admixture is added to concrete with a water-cement ratio, which indicates the ratio of a mass of water to a mass of cement, is 45% or more (see CAVENY at paragraphs [0016]: the cement compositions comprise a cement, water and a set retarder composition; and [0018]: the water is present in the cement compositions in an amount of from about 15% to about 200% by weight of cement). CAVENY teaches a range which overlaps with the claimed range.
Regarding claim 18, CAVENY as modified by LORENZ and SCHINABECK teaches a use of admixture for concrete according to claim 1, wherein the number average molecular weight of the (meth)acrylic-based viscosity adjusting component (C) is in the range of 100,000 g/mol or more and 20,000,000 g/mol or less (see rejection of claim 1 above spanning paragraphs on pages 6-10 and SCHINABECK at Col. 7, lines 37-42: a number average molecular weight Mn of from 50,000 to 20,000,000 g/mol).
Regarding claim 19, CAVENY teaches an admixture for concrete (see CAVENY at paragraph [0019]: the set retarder composition), comprising a lignin derivative (A) (see CAVENY at paragraph [0029]: the set retarder composition may comprise a lignin-based retarder) and a (meth)acrylic-based viscosity component (C) (see CAVENY at paragraph [[0020]: the set retarder compositions comprise an acrylamide polymer derivative), a copolymer having a hydrolysable group (B). While CAVENY teaches that the set retarder compositions may comprise a dispersant and that a variety of dispersants known to those skilled in the art may be used (see CAVENY at paragraph [0032]), CAVENY is silent with respect to the dispersant being the copolymer having a hydrolysable group (B) and being a copolymer of at least two monomers consisting of an ethylenically unsaturated monomer having hydrolysability (b1) and an ethylenically unsaturated monomer having a polyalkyleneoxide ether chain (b2).
However, LORENZ teaches non-ionic copolymers comprising a hydrolysable moiety and at least one dispersing moiety (see LORENZ at Col. 2, lines 4-5). LORENZ discloses that the use of the non-ionic copolymers as a potential dispersant reservoir in cementitious compositions provides extended workability retention, and that the use of non-ionic copolymers allows for better control over longer-term concrete workability, more uniformity and tighter quality control for concrete producers (see LORENZ at Col. 1, lines 53-62). LORENZ teaches copolymer comprising the following monomers: component A comprising at least one ethylenically unsaturated carboxylic acid ester monomer comprising a moiety hydrolysable in cementitious mixture (see LORENZ at Col. 2, lines 63-67), and component B comprising at least one ethylenically unsaturated, carboxylic ester or alkenyl ether monomer comprising oxyalkylene side group (see LORENZ at Col. 3, lines 4-6).
One of ordinary skill in the art would have recognized the potential need to improve the composition of CAVENY based on the teachings of CAVENY describing that the dispersant acts to control the rheology of the cement composition and to stabilize the cement composition (see CAVENY at paragraph [0032]). Moreover, one of ordinary skill in the art would have been motivated to utilize the non-ionic polymer dispersant disclosed by LORENZ since LORENZ explicitly teaches that the use of the non-ionic copolymers as a potential dispersant reservoir in cementitious compositions provides extended workability retention, and allows for better control over longer-term concrete workability, more uniformity and tighter quality control for concrete producers (see LORENZ at Col. 1, lines 53-62).
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 composition of CAVENY by including the non-ionic polymer comprising a hydrolysable moiety and at least one dispersing moiety disclosed by LORENZ in order to provide extended workability retention and allow for better control over longer-term concrete workability.
But CAVENY as modified by LORENZ fails to explicitly teach wherein 0.001% by mass or more and 0.150% by mass or less of the (meth)acrylic-based viscosity adjusting component (C) is contained in the admixture for concrete.
However, as was discussed in the rejection of claim 1 above spanning paragraphs on pages 6-10, SCHINABECK discloses water-soluble copolymers used as water retention agents, stabilizers and rheology modifiers in aqueous building material systems based on hydraulic binders such as cement, the copolymers are highly effective water retention agents even when used in relatively small amounts (see SCHINABECK at Abstract). SCHINABECK teaches polymers comprising the same sulfo group-containing monomers as disclosed by CAVENY (see rejection of claim 8 above). SCHINABECK also teaches that the preferred amounts of the copolymers, depending on type of use, being between 0.001 and 5% by weight, based on the dry weight of the construction material (see SCHINABECK at Col. 8, lines 19-22). CAVENY teaches that the disclosed set retarder composition is present in the cement composition in an amount in the range of from 0.01% to about 5% bwoc (see CAVENY at paragraph [0039]).
Additionally, 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", and “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” (see MPEP § 2144.05(II)(A)). Thus, one of ordinary skill in the art would have been motivated to adjust the amount of (meth)acrylic-based polymer to be between 0.001 and 5% bwoc as disclosed by SCHINABECK, which when applied to composition of CAVENY would result in (meth)acrylic-based polymer being in the range of 0.1% to 100% based on CAVENY’s teaching that the disclosed set retarder composition is present in the cement composition in an amount in the range of from 0.01% to about 5% bwoc (see CAVENY at paragraph [0039]).
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 selected amounts of (meth)acrylic-based polymer from within the range taught by SCHINABECK to be within the claimed range because there is a reasonable expectation of success that the amount disclosed by SCHINABEK would be suitable, since SCHINABECK explicitly teaches that the copolymers are highly effective water retention agents even when used in relatively small amounts (see SCHINABECK at Abstract).
Response to Arguments
Applicant's arguments filed 09/18/2025 have been fully considered but they are not persuasive.
Applicant argues that CAVENY discloses two separate embodiments of its set retarder composition does not include a lignin derivative and an acrylamide polymer derivative (see Remarks received on 09/18/2025 at paragraph 3, p. 6).
However, the examiner respectfully disagrees for the following reasons. As was discussed in the rejection of claim 1 above spanning paragraphs on pages 6-10, CAVENY discloses the set retarder compositions of the present invention generally comprising an iron compound and at least one of an acrylamide polymer derivative or a lignin-based retarder (see CAVENY at paragraph [0019]). The examiner interprets the phrase “at least one of” as indicating the set retarder composition that may comprise both: an acrylamide polymer derivative and a lignin-based retarder. Additionally, MPEP §2123(I) states: "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)); and “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments”. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Thus, the disclosure of CAVENY reasonably suggests to one of ordinary skill in the art the possibility of obtaining a set retarder composition comprising both an acrylamide polymer derivative and a lignin-based retarder.
Applicant’s arguments with respect to CAVENY failing to disclose or suggest a copolymer having a hydrolysable group (B) (see Remarks received on 09/18/2025 at last paragraph on page 6) have been considered but are moot because the presented grounds of rejection (see rejection of claim 1 above spanning paragraphs on pages 6-10) rely on combination of CAVENY and LORENZ with respect to the matter specifically challenged in the argument.
Applicant argues that while CAVENY and SCHINABECK disclose similar copolymers, there is no teaching or suggestion in Caveny that an acrylamide polymer derivative having a molecular weight of 100,000 g/mol or more would be suitable or workable for its iron-based set retarder composition (see Remarks received on 09/18/2025 at the paragraph 2 on page 7). CAVENY discloses that in certain embodiments, the acrylamide polymer derivative may have a weight average molecular weight of below about 50000 (see CAVENY at paragraph [0026]). However, as was discussed above in the rejection of claim 1 above spanning paragraphs on pages 6-10, SCHINABECK discloses that the copolymers according to the invention preferably have a number average molecular weight Mn of from 50,000 to 20,000,000 g/mol and are excellent additives for aqueous building material systems containing hydraulic binders such as cement (see SCHINABECK at Col. 7, lines 37-42). SCHINABECK also discloses that previously described sulpho group-containing polymers of very high molecular weight display very good water retention properties, and have a very good stabilizing effect in that they markedly increase the plastic viscosity of the mix (see SCHINABECK at Col. 2, lines 34-38). Additionally, MPEP §2143(I)(G) provides example of rationales that may support a conclusion of obviousness including: “Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention”. Thus, based on the disclosure of SCHINABECK, one of ordinary skill in the art would have recognized the potential benefit of using the polymer with a higher average molecular weight, as disclosed by SCHINABECK.
Therefore, the rejection of claims as being unpatentable over KOBAYASHI, CAVENY, SCHINABECK and LORENZ is maintained.
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.
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/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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