DETAILED ACTION
This office action follows a reply filed on March 24, 2026. Claims 20, 22, 24-26, 28-29, 32, 35-36 and 38 have been amended. Claims 20-32 and 34-38 are currently pending and under examination.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 22 and 32 are objected to because of the following informalities:
In claim 32, please amend “i.(i.)” to “(i.)”; “ii.(ii.)” to “ii.”; and “iii(iii.)” to “(iii.)”.
Claim 22 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 21. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 20, 24-27, 29-32, and 34-38 are rejected under 35 U.S.C. 103 as being unpatentable over JP 07-268167 in view of DE 202010010080; however, for convenience, the machine translation of DE ‘080, provided by applicants.
JP ‘167 teaches a water-proofing material comprising an inorganic hydraulic substance, specifically listed to include quicklime, and an emulsion comprising a polymer containing alkyl (meth)acrylates, (meth)acrylic acid, and glycidyl (meth)acrylate having a glass transition temperature of -20°C or lower. JP ‘167 teaches that sand, calcium kaolin and kaolin can be added to the composition to improve the coating workability, toughness of the film, and reduction of film tack, and meets applicants’ powdery aggregate.
JP ‘167 teaches the inorganic hydraulic substance is added in an amount of 10-300 phr based on the solid content of the emulsion, which suggests a ratio of polymer:inorganic hydraulic composition of about 100:10-300, or 0.3-10:1. This range overlaps with the claimed range of 1:10 to 1:1 or 0.1-1:1, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
JP ‘167 does not teach the inorganic hydraulic material to include the powdery trass, as claimed.
DE ‘080 teaches hydraulic based building materials comprising quicklime together with trass and kaolin, teaching that the combination leads to a synergistic increase in strength compared to the individual components ([0034]), particularly compressive and/or flexural strength ([0099]-[0100]). DE ‘080 teaches the trass in an amount of 5-60 wt%, the range of which overlaps with the claimed ranges of at least 30 wt% of instant claim 1 and the range of 30-65 wt% of instant claim 25, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a combination of quicklime, trass and kaolin as the inorganic hydraulic substance in JP ‘167, as DE ‘080 teaches that this combination provides a synergistic increase in strength.
JP ‘167 in view of DE ‘080 is prima facie obvious over instant claims 1, 25, 27, 29 and 37-38.
As to claim 24, DE ‘080 teaches the quicklime/calcium oxide in an amount of 5-80 wt% and the amount of trass in an amount of 5-60 wt%, suggesting a maximum ratio of 60:5 or 12:1, showing that the suggested amounts overlap with the claimed ratio of 2:1 to 5:1, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
As to claim 26, DE ‘080 teaches the quicklime in an amount of 5-80 wt%, and overlaps with the claimed amount of 8-35 wt%, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
As to claim 30, JP ‘167 teaches the inclusion of a small amount of glycidyl methacrylate monomers, which would provide the polymer emulsion with self-crosslinking capabilities.
As to claim 31, JP ‘167 teaches that the polymer can include other monomers such as styrene, and in combination with the required acrylates meets applicants’ styrene-acrylate copolymers.
As to claim 32, JP ‘167 teaches the polymer in the polymer emulsion as comprising 30-98 wt% alkyl (meth)acrylate, which meets applicants’ (M1b); 0.1-3 wt% (meth)acdrylic acid, which meets applicnats’ (M2) monomers; 0.1-5 wt% glycidyl (meth)acrylate, which meets applicants’ (M3) monomers; and 1-70 wt% “other” monomers, which include styrene, which meets applicants’ (M1a) monomers.
JP ’167 exemplifies the following polymers, as provided by the Google machine translation, where Emulsion Nos. 1-4 meet applicants’ claimed polymers:
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As to claim 34, JP ‘167 exemplifies the inclusion of polyoxyethylene nonyl phenyl ether, a polymeric surfactant, which meets applicants’’ polymeric dispersant.
As to claim 35, JP ‘167 teaches adding the inorganic hydraulic material to the polymer (liquid) emulsion.
As to claim 36, choosing to supply the polymer as a powder and adding it to water to form the emulsion separately is prima facie obvious.
Claims 21-23 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over JP 07-268167 in view of DE 202010010080, as applied above to claims 20, 24-27, 29-32, and 34-38, and further in view of DE 102006051216. For convenience, the machine translation of DE ‘216 will be cited below.
JP ‘167 in view of DE ‘080 is prima facie obvious over instant claims 20, 24-27, 29-32, and 34-38, as described above and applied herein as such, as JP ‘167 teaches a water-proofing material comprising quicklime as an inorganic hydraulic material and an emulsion comprising a polymer containing alkyl (meth)acrylates, (meth)acrylic acid, and glycidyl (meth)acrylate having a glass transition temperature of -20°C or lower.
JP ‘167 teaches that gypsum and diatomaceous earth, which are well known light weight aggregates, can be added to the composition to improve the coating workability, toughness of the film, and reduction of film tack, and meets applicants’ powdery aggregate, but does not teach or suggest the inclusion of brick, as claimed in instant claims 21-23.
DE ‘080 similarly teaches that lightweight aggregates can be included, such as perlite, expanded glass, expanded clay, sytrofoam, expanded mica, foam plastics with a density of at most 2.2 kg/dm3.
DE ‘216 teaches lightweight aggregate, which includes diatomaceous earth, perlite, expanded glass, expanded mica, expanded clay, and crushed brick, with a density of less than 2 kg/dm3. DE ‘216 teaches that there is a focus on lightweight aggregate in order to produce building materials with reduced weight, and a focus on using waste materials in the construction industry.
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Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have added crushed brick in place of the diatomaceous earth in JP ‘167, as these are functionally equivalent lightweight aggregates, as taught by DE ‘216, and can be used from waste materials.
JP ‘167 in view of DE ‘080 and further in view of JP ‘167 is prima facie obvious over instant claims 21-22.
As to claim 23, DE ‘080 teaches a combination 12-22 parts trass and 1-10 parts expanded glass ([0118]). Substituting the expanded glass for brick powder is prima facie obvious, as they are both considered lightweight aggregate, and suggests a pozzolanic combination which comprises about 54-69 wt% trass and 31-46 wt% brick powder.
As to claim 28, the brick powder meets applicants’ powdery recycled material.
Allowable Subject Matter
Incorporating all of the limitations from claims 23 and 24 into claim 20 would place the application in condition for allowance. While the prior art suggests broad, overlapping ranges, one of ordinary skill in the art would not be motivated to choose a combination of trass and brick powder in the claimed amounts, with the pozzolanic material blend (trass and brick) in a weight ratio to quicklime as claimed. Most of the prior art suggests the trass in a lower amount than the quicklime, where the instant invention clearly requires the use of trass is a higher amount than the quicklime.
Response to Arguments
Applicant’s arguments with respect to the instant invention have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/ Primary Examiner, Art Unit 1766
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