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 .
Election/Restrictions
Newly submitted claims 8 and 11 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the composition of claim 1 can be used in a materially different method that is not forming a three-dimensional article.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 8 and 11 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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) 1-7 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Konishi et al. (2014/0345498) in view of Lakrout et al. (9,944,063) and Buhler et al. (2011/0039984).
Regarding claims 1 and 3-4: Konishi et al. teach a hydraulic composition comprising cement, hydroxypropyl methyl cellulose with a DS of 1.7 [Table 1] and a 2% aqueous solution viscosity of 15 to 80,000 mPas [0026], defoamer, water [Examples], polyvinyl alcohol [0028], and 0.05 to 50 parts by weight of boric acid as a set retarder [0044]. Konishi et al. teach 15 to 50 parts by weight of water per 100 parts by weight of the base compound (cement and aggregate combined [0027]) [0029].
Konishi et al. fail to teach borax.
However, Lakrout et al. teach that borax can be used interchangeably with boric acid as a retarder in a cement composition (column 20, lines 16-24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use borax as taught by Lakrout et al. in place of boric acid in Konishi et al. as a set retarder. It is a simple substitution of one known element for another to obtain predictable results.
Konishi et al. fail to teach the amount and claimed properties of the polyvinyl alcohol.
However, an analogous composition, Buhler et al. teach adding 0.2331 wt% of a polyvinyl alcohol with a degree of hydrolysis of 88 mol% and a 4 wt% aqueous solution viscosity of 40 mPas [0050] as a polyvinyl alcohol to stabilize the composition [Examples; Tables 1-4].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.2331 wt% of polyvinyl alcohol with a degree of hydrolysis of 88 mol% and a 4 wt% aqueous solution viscosity of 40 mPas as taught by Buhler et al. as the polyvinyl alcohol of Konishi et al. to stabilize the composition.
The ranges taught overlap the claimed ranges.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 2: Konishi et al. teach 0.22 parts by weight of hydroxypropyl methyl cellulose based on 100 parts by weight of cement [Examples; Table 2].
Regarding claims 5-6: Konishi et al. teach the same hydroxypropyl methyl cellulose with as claimed with a DS of 1.7 [Table 1] and a 2% aqueous solution viscosity of 15 to 80,000 mPas [0026] that overlaps the claimed and disclosed range. The overlapping solution viscosity also provides an overlapping thermal gelation temperature to the claimed ranges.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Regarding claim 7: Konishi et al. teach a re-emulsifiable (redispersible) polymer powder [0042, 0054; Examples].
Regarding claim 9: Since the composition is the same as claimed it will possess the claimed properties. 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 10: Konishi et al. teach a hydraulic composition comprising cement, hydroxypropyl methyl cellulose with a DS of 1.7 [Table 1]. A DS of 1.7 is very close to a DS of 1.77. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Response to Arguments
Applicant's arguments filed 11/28/2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., 3D printing) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The Applicant has made the argument that they have incorporated the claimed components in the composition for different reasons than the prior art cited. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See MPEP 2144.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The Applicant has alleged that there is no reasonable expectation of success. This is not persuasive because borax is a predictable replacement for boric acid as a set retarder, and substituting one polyvinyl alcohol for another polyvinyl alcohol is predictable.
The Applicant has alleged unexpected results. This is not persuasive because the claims are not commensurate is scope with the data provided.
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.
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