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
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 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.
Claim(s) 1, 2, 3, 5, 10-13, 15, 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maxwell.
Regarding claim 1, Maxwell teaches a method of installing a mastic footprint that is water, fuel, salt, and temperature resistant at a structure, the method comprising: cutting the surface material based on predetermined parameters (page 21), a shape for the mastic footprint that does not adversely affect adjacent surface material; where the shape minimizes the mastic footprint from crossing an existing surface material joint at an angle (see page 14, diamond shape meeting joints at an angle of around 90 degrees) preparing the structure (clean, prime) ; preparing a footprint; applying hot mastic to the footprint to install the mastic footprint, the applying comprising mixing a mastic base that is hot with a bulking stone (page 7), where the bulking stone is from 25% to 80% of the mastic footprint (see Safety Data Sheet, paragraph 3; 30-70%). Regarding the specific depth of at least 2.54 cm and a minimum distance of at least 15.24 centimeters, selecting an appropriate repair depth and distance sufficient for structural performance is a routine design consideration taught by Maxwell. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modifying the depth and distance of the footprint of Maxwell within known workable ranges constitutes a change in size or degree of a known result-effective variable. See In re Aller, 220 F.2d 454 (CCPA 1955) (where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges by routine experimentation is not inventive). Regarding selecting the footprint shape to minimize crossing an existing joint at an angle between 80 and 100 degrees, Maxwell teaches forming repair perimeters that avoid weak or acute intersections and that are substantially perpendicular to existing joints. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the footprint of Maxwell cross a joint at an angle within 80–100 degrees to optimize a known geometric relationship for stress distribution, which is a result-effective variable.
Regarding claim 2, Maxwell teaches the surface material is concrete (Page 7, GAP-Mastic).
Regarding claim 3, Maxwell teaches the surface material is asphalt (Page 7, GAP-Mastic).
Regarding claim 5, Maxwell teaches the bulking stone is from 40% to 80% of the mastic footprint (see SDS, 30-70%) and further teaches the invention as described above but fails to explicitly teach the minimum depth is equal to the depth of the surface material. Regarding the minimum depth, selecting an appropriate repair depth and distance sufficient for structural performance is a routine design consideration taught by Maxwell. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modifying the depth of the footprint of Maxwell within known workable ranges constitutes a change in size or degree of a known result-effective variable. See In re Aller, 220 F.2d 454 (CCPA 1955) (where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges by routine experimentation is not inventive
Regarding claim 10, Maxwell teaches the invention as described above but fails to explicitly teach the minimum depth is from at least 2.54 centimeters to less than the depth of the surface material, and wherein the bulking stone is from 25% to 50% of the mastic footprint. Regarding the minimum depth, selecting an appropriate repair depth and distance sufficient for structural performance is a routine design consideration taught by Maxwell. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modifying the depth of the footprint of Maxwell to a minimum of 2.54cm as it constitutes a change in size or degree of a known result-effective variable. See In re Aller, 220 F.2d 454 (CCPA 1955) (where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges by routine experimentation is not inventive). Regarding the aggregate forming 25–80% of the footprint, Maxwell teaches an aggregate-filled structural mastic repair material. The percentage of aggregate is a compositional variable that affects load-bearing performance and workability. Selecting an aggregate proportion within a workable structural range would have been routine optimization. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the aggregate of Maxwell 25-80% of the mastic footprint, since it has been held that where the general conditions of a claim are disclosed in the prior art discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 11, Maxwell teaches a method of installing a mastic footprint at a structure, the method comprising: forming the surface material based on predetermined parameters, a shape for the mastic footprint that does not adversely affect adjacent surface material (page 14), where the shape minimizes the mastic footprint from crossing an existing surface material joint at an angle (page 14, diamond shape meets joints at an angle); preparing the structure (clean, prime); preparing a footprint; applying hot mastic to the footprint to install the mastic footprint, the applying comprising mixing a mastic base that is hot with a bulking stone (page 7) where the bulking stone is from 25% to 80% of the mastic footprint (See SDS, 30-70%). Regarding the specific depth of at least 2.54 cm and a minimum distance of at least 15.24 centimeters, selecting an appropriate repair depth and distance sufficient for structural performance is a routine design consideration taught by Maxwell. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modifying the depth and distance of the footprint of Maxwell within known workable ranges constitutes a change in size or degree of a known result-effective variable. See In re Aller, 220 F.2d 454 (CCPA 1955) (where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges by routine experimentation is not inventive). Regarding selecting the footprint shape to minimize crossing an existing joint at an angle between 80 and 100 degrees, Maxwell teaches forming repair perimeters that avoid weak or acute intersections and that are substantially perpendicular to existing joints. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the footprint of Maxwell cross a joint at an angle within 80–100 degrees to optimize a known geometric relationship for stress distribution, which is a result-effective variable.
Regarding claim 12, Maxwell teaches the surface material is concrete (Page 7, GAP-Mastic).
Regarding claim 13, Maxwell teaches the surface material is asphalt (Page 7, GAP-Mastic).
Regarding claim 15, Maxwell teaches the bulking stone is from 40% to 80% of the mastic footprint (see SDS, 30-70%) and further teaches the invention as described above but fails to explicitly teach the minimum depth is equal to the depth of the surface material. Regarding the minimum depth, selecting an appropriate repair depth and distance sufficient for structural performance is a routine design consideration taught by Maxwell. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modifying the depth of the footprint of Maxwell within known workable ranges constitutes a change in size or degree of a known result-effective variable. See In re Aller, 220 F.2d 454 (CCPA 1955) (where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges by routine experimentation is not inventive.
Regarding claim 20, Maxwell teaches the bulking stone is from 25% to 50% of the mastic footprint (30-70%, See SDS). Maxwell further teaches the invention as described above but fails to explicitly teach the minimum depth is from at least 2.54 centimeters to less than the depth of the surface material. Regarding the minimum depth, selecting an appropriate repair depth and distance sufficient for structural performance is a routine design consideration taught by Maxwell. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modifying the depth of the footprint of Maxwell to a minimum of 2.54cm as it constitutes a change in size or degree of a known result-effective variable. See In re Aller, 220 F.2d 454 (CCPA 1955) (where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges by routine experimentation is not inventive).
Regarding claim 21, Maxwell teaches a mastic footprint around a structure, the mastic footprint comprising: parameters that provide water, fuel, salt and thermal resistance, a shape for the mastic footprint that does not adversely affect adjacent surface material (page 14, diamond), where the shape minimizes the mastic footprint from crossing an existing surface material joint at an angle (diamond shape intersects joint at an angle); wherein the mastic footprint is produced by preparing the surface material to the parameters; preparing the structure (clean, prime); preparing a footprint; applying hot mastic to the footprint to install the mastic footprint, the applying comprising mixing the mastic with a bulking stone (page 7), where the bulking stone is from 25% to 80% of the mastic footprint (See SDS). Regarding the specific depth of at least 2.54 cm and a minimum distance of at least 15.24 centimeters, selecting an appropriate repair depth and distance sufficient for structural performance is a routine design consideration taught by Maxwell. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modifying the depth and distance of the footprint of Maxwell within known workable ranges constitutes a change in size or degree of a known result-effective variable. See In re Aller, 220 F.2d 454 (CCPA 1955) (where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges by routine experimentation is not inventive). Regarding selecting the footprint shape to minimize crossing an existing joint at an angle between 80 and 100 degrees, Maxwell teaches forming repair perimeters that avoid weak or acute intersections and that are substantially perpendicular to existing joints. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the footprint of Maxwell cross a joint at an angle within 80–100 degrees to optimize a known geometric relationship for stress distribution, which is a result-effective variable.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maxwell in view of Weyers et al. (5,427,819) (“Weyers”).
Regarding claims 4 and 14, Maxwell teaches the invention as described above but fails to teach preparing the surface with denatured alcohol. Weyers teaches repairing a concrete surface which includes preparing the surface by applying denatured alcohol to the adjacent surface material and structure (Column 4, Lines 15-20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use denatured alcohol to prepare the surface of Maxwell as taught by Weyers as it is obvious to use a known technique to improve similar devices in the same way.
Regarding claims 6 and 16, Maxwell as modified by Weyers teaches preparing the footprint further comprises removing dirt, rust, and debris from the structure for proper adherence of the mastic footprint to the structure.
Regarding claims 7 and 17, Maxwell as modified by Weyers fails to teach the structure is a fuel island. Since Maxwell teaches applying mastic around solid structures, the examiner takes official notice that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method of Maxwell around a fuel island as it is obvious to use a known technique to improve similar devices in the same way.
Regarding claim 8 and 18, Maxwell as modified by Weyers fails to teach the structure is a spill bucket. Since Maxwell teaches applying mastic around solid structures, the examiner takes official notice that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method of Maxwell around a spill bucket as it is obvious to use a known technique to improve similar devices in the same way.
Regarding claim 19, Maxwell teaches the structure is a manhole (page 14).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is listed on the attached PTO-892. Kim teaches a mastic composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABIGAIL ANNE RISIC whose telephone number is (571)270-7819. The examiner can normally be reached 8-5, M-Th.
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/ABIGAIL A RISIC/Primary Examiner, Art Unit 3671 March 4, 2026
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