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
Applicant’s election without traverse of Group I and species of claim 3 : natural nanoporous silica, and claim 7: silane, silanol and siloxane precursors, of claims 1-3, 5-16, in the reply filed on 01/04/2026 is acknowledged.
Furthermore, for clarification, claims 9, 10, 13, and 14 are not present with the claims, therefore, the Examiner will take the position that they have been cancelled.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim 8 is objected to because of the following informalities: It appears that claim 8 recites a Markush group and should be amended as follow: .. selected from the group consisting of…. Appropriate correction is required.
Claim Rejections - 35 USC § 112
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance,
claim 2 recites:
the broad recitation 5-30 vol%, and
the claim also recites 10-20 vol% of the hydrophobic agent
which is the narrower statement of the range/limitation,
the broad recitation 1-10 wt%, , and
the claim also recites 2-3 wt% of the water-repellent nanoparticles
which is the narrower statement of the range/limitation.
the broad recitation 1-10 wt %, , and
the claim also recites 2-3 wt% of the of the nanofillers
which is the narrower statement of the range/limitation,
the broad recitation 1-5 wt%, , and
the claim also recites 1-3 wt% of the self-cleaning agent nanoparticles
which is the narrower statement of the range/limitation,
. the broad recitation 1-5 wt%, , and
the claim also recites 10 wt% of the water-repellent nanoparticles
which is the narrower statement of the range/limitation.
the broad recitation 10-30 wt%, , and
the claim also recites 10-20 wt% of the water
which is the narrower statement of the range/limitation.
the broad recitation 70-90wt%, , and
the claim also recites 80-90 wt% of the first solvent
which is the narrower statement of the range/limitation.
The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
All the claims dependent of claim 2 are also rejected.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 3 recites the broad recitation natural nanoporous silica, and the claim also recites diatomaceos earth or perlite which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
All the claims dependent of claim 3 are also rejected.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 8 recites the broad recitation based hydrophobic polymer is selected from, tetramethoxysilane, triethoxyethylsilane, trimethoxymethylsilane,… and the claim also recites polydimethylsiloxane with 20-15000 MPas.s viscosity which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 8 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of , wherein the silicon-based hydrophobic polymer is selected from polydimethylsiloxane with 20-15000 MPas.s viscosity, tetramethoxysilane, tetraethoxysilane, triethoxyethylsilane, trimethoxymethylsilane, triethoxymethylsilane, dimethoxydimethylsilane, dimethoxydiethylsilane, diethoxydiethylsilane, aminopropyltrimethoxysilylane, trimethylsilanol, triethylsilanol, tris(tert-butoxy)silanol, and sodium silicate is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the alternatives are not recognized as member of the same chemical class.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 11 recites the broad recitation alcohol , and the claim also recites ethanol and/or propanol and/or isopropanol and/or n-butanol and/or isobutanol which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 15 recites the limitation "the nano-additive" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5, 6, 11, 12, 15, and 16 are rejected under 35 U.S.C. 102 (a) (1) as being anticipate by Maslow et al. (US 2021/0332250 A1) (“Maslow” herein)
(Claims contain only selected species)
Claim 1
Maslow discloses a suspension for preserving masonry structures, comprising [0130]
a hydrophobic agent, [0012]
water-repellent nanoparticles, [0118-0123]
a nanofiller, [0118-0123]
a self-cleaning agent, [0118-0123]
a vegetable oil, [0091-0092]
a first solvent [0022-0025,0128], and
water, [0026, 0127]
wherein the water-repellent nanoparticles, the hydrophobic agent, the nanofiller, the self-cleaning agent and the vegetable oil are mixed with the first solvent and water, and are dispersed in a form of a nanocomposite suspension. [0089-0129]
Since Maslow discloses the same composition comprising a silicon based resin, a diatomite, an alcohol such as propanol, a titanium dioxide, an olive oil, and water, it would be a suspension for preventing masonry structures, a hydrophobic agent, a water-repellent nanoparticles, a nanofiller, a self-cleaning agent, a vegetable oil, a first solvent that would be dispersed and form a nanocomposite suspension.
"Products of identical chemical composition cannot have mutually exclusive properties”. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp v DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 2
Maslow discloses the suspension according to claim 1, wherein the suspension comprises
5-30 vol%, preferably 10-20 vol% of the hydrophobic agent, [0011-0012]
1-10 wt%, preferably 2-3 wt% of the water-repellent nanoparticles, [0118-0123]
1-10 wt%, preferably 2-3 wt% of the nanofillers, [0118-0123]
1-5 wt%, preferably 1-3 wt% of the self-cleaning agent, [0118-0123]
5-20 wt%, preferably 10 wt% of the vegetable oil, [0091-0092]
10-30 vol%, preferably 10-20 vol% of water [0025-0026, 0127-0128] and
70-90 vol%, preferably 80-90 vol% of the first solvent. [0022-0026, 0128],
Claim 3
Maslow discloses the suspension according to claim 2, wherein the water- repellent nanoparticles includes a natural nanoporous silica including diatomaceos earth or perlite. [0118-0123]
Claim 5
Maslow discloses the suspension according to claim 3 wherein the natural nanoporous silica includes diatomaceos earth including 93-98% of silicon and having 87-93% porosity, and/or perlite including 75-90% of silicon and having 70-85% porosity.
It is elementary that the mere recitation of a newly discovered function or property possessed by things in the prior art, does not cause a claim drawn to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to the critical for establishing novelty in the claimed subject matter, may in fact be a characteristic of the prior art, it possess the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinheart, 169 USPQ 226 (CCPA 1971).
Claim 6
Maslow discloses the suspension according to claim 2, wherein the hydrophobic agent is comprising at least one silicon-based hydrophobic polymer. (i.e. silicone based resin) [0011-0012]
Claim 11
Maslow discloses the suspension according to claim 2, wherein as the first solvent is used at least one alcohol, including ethanol and/or propanol and/or isopropanol and/or n-butanol and/or isobutanol or a mixture thereof. [0022-0025]
Claim 12
Maslow discloses the suspension according to claim 2, wherein the nanofillers have a particle size of 1-10 nm and have a specific surface area of 120-270 m2/g and include montmorillonite and/or bentonite and/or kaolinite nano clays. [0118-0123]
Claim 15
Maslow discloses the suspension according to claim 2, wherein the nano-additive as the self-cleaning agent has a particle size of 5-50 nm and specific surface area of 25-250 m2/g, and includes titanium dioxide and zinc oxide nanoparticles. [0118-0123] .
Claim 16
Maslow discloses the suspension according to claim 2, wherein the vegetable oil includes linseed oil and/or soybean oil and/or olive oil and/or sunflower oil and/or thyme oil and/or oregano oil and/or clove oil. [0091-0092]
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Maslow as applied to claims 1, 2, and 3 above, and further in view of Akamatsu et al. (US 5788990 A1) (“Akamatsu” herein).
Claim 7
Maslow discloses the suspension according to claim 6, wherein the silicon-based hydrophobic polymer [0011-0012]
Maslow however does not explicitly disclose includes a silane, silanol and siloxane precursors.
Akamatsu teaches the above limitation (See Col. 2 l. 39+ & Col. 3 l. 1-10 → Akamatsu teaches this limitation in that Examples of such agents include a composition composed solely of silicone resin having silanol groups or alkoxy groups bonded to silicon atoms, a composition composed of this silicone resin and a curing agent and/or curing catalyst, a composition composed of a diorganopolysiloxane having silanol groups or alkoxy groups bonded to silicon atoms along with a curing agent and/or curing catalyst, a composition composed of organohydrogen polysiloxane, a composition composed solely of silicone resin modified with an organic resin such as epoxy resin, polyester resin or phenol resin, a composition composed of this silicone resin and a curing agent and/or curing catalyst and a composition composed solely of an organotrialkoxysilane and/or a partial hydrolysis product thereof. Examples of methods for preparing the silicone resin having silanol groups or alkoxy groups bonded to silicon atoms include methods where a tetramethoxysilane, tetraethoxysilane or tetrapropoxysilane or other tetraalkoxysilane and/or methyltrimethoxysilane, methyltriethoxysilane, ethyltrimethoxysilane, vinyltrimethoxysilane, phenyltrimethoxysilane, phenyltriethoxysilane or other organotrialkoxysilane is subjected to hydrolysis and condensation along with, as necessary, dimethyldimethoxysilane, dimethyldiethoxysilane, methylvinyldimethoxysilane, methylphenyldimethoxysilane, methylphenyldiethoxysilane or other diorganodialkoxysilane and/or trimethylmethoxysilane, trimethylethoxysilane, dimethylvinylmethoxysilane, phenyltrimethoxysilane or other triorganoalkoxysilane; and methods wherein tetrachlorosilane and/or methyltrichlorosilane, ethyltrichlorosilane, vinyltrichlorosilane, phenyltrichlorosilane or other organotrichlorosilane is subjected to hydrolysis and condensation along with, as necessary, dimethyldichlorosilane, methylvinyldichlorosilane, methylphenyldichlorosilane, diphenyldichlorosilane and other diorganodichlorosilanes and/or trimethylchlorosilane, triethylchlorosilane, dimethylvinylchlorosilane, dimethylphenylchlorosilane or other triorganochlorosilane.) for the purpose of providing a water repellent. (Abstract)
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Maslow with the above limitation, as taught by Akamatsu, in order to provide a water repellent.
Claim 8
Maslow discloses the suspension according to claim 6, wherein the silicon-based hydrophobic polymer is selected from polydimethylsiloxane with 20-15000 MPas.s viscosity, tetramethoxysilane, tetraethoxysilane, triethoxyethylsilane, trimethoxymethylsilane, triethoxymethylsilane, dimethoxydimethylsilane, dimethoxydiethylsilane, diethoxydiethylsilane, aminopropyltrimethoxysilylane, trimethylsilanol, triethylsilanol, tris(tert-butoxy)silanol, and sodium silicate. (Same as claim 7)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shendy et al. (US 2020/0107310 A1) Solubilized Defoamers For Cementitious Compositions teaches Solubilizing agents are mixed with water insoluble defoamers and a dispersant for cementitious compositions to provide an admixture for cementitious compositions that is stable over time. Suitable solubilizing agents include alkoxylated moieties or particles. A cementitious composition is provided that includes cement, water, a water insoluble defoamer, a dispersant for cementitious compositions, and a solubilizing agent that solubilizes the water insoluble defoamer. A method is provided for making a cementitious composition that includes mixing cement, water, a water insoluble defoamer, a dispersant for cementitious compositions, and a solubilizing agent that solubilizes the water insoluble defoamer, McDaniel (US 2004/0109853 A1) Biological Active Coating Components, Coatings, And Coated Surfaces teaches Disclosed herein are novel coatings and paints comprising a biomolecule composition, wherein the biomolecule composition comprises a phosphoric triester hydrolase. Also disclosed herein are methods of detoxification of a surface contaminated with an organophosphorus compound by contacting the surface with such a coating or paint. Also disclosed herein are novel coating and paint components derived from microorganisms, and Bertin et al. (US 2019/0210918 A1) HYDROPHOBIC CONSTRUCTION MATERIAL teaches A construction material, a hydrophobic, optionally multi-cellular, inorganic particulate material for use in the construction material, for example, to improve the crush strength and/or stability of the construction material, a method of making the construction material, constructions comprising the construction material, and a method of improving the stability of a construction material.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 01/23/2026