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 .
The applicant has amended the claims overcoming previous claim objections and rejections under section 112. The amended claims overcome the previous rejections under section 102; however, new grounds of rejection are below set forth citing to the same prior art as well as new claim objections.
Applicant has provided support for the amendments and new claim; accordingly, no new matter is presented.
Claim Objections
Applicant is advised that should claim 3 be found allowable, claim 31 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. 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).
Claim 31 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 3. 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).
Note: Claim 31 appears to be the same method with a different intended use in the preamble. Should applicant amend claim 31 to recite a different method the examiner will consider raising an election by original presentation.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3-4, 6, 9-13, 16, 18-19, 21, 23-27 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chiaverinie et al (US 2018/0230053)
Regarding Claims 3 and 31
Chiaverinie et al (US 2018/0230053) discloses a castable cement material (Abstract)[0047] (includes without vibration)
The composition is castable without vibration [0047] [0068] no consolidation is required (meeting claims 3 and 31)
The composition may be in the form of an aqueous suspension added to a dry cementitious material mix of binder containing Portland cement, water sand and aggregates [0079](meeting the limitation for adding)(meeting the limitation for mixing a dry cement composition with mixing water)
The composition comprises a viscosity modifier of carrageenan [0088] and superplasticizers [0041 0044-0045] [0150] (no other viscosity modifier is required)
The viscosity modifier is mixed with water [0082] See example 2 where water and polysaccharide are mixed. [0153](meeting the limitation for mixing with water in the absence of salt and pre hydrated with water in absence of salt of the claims)
The viscosity modifier (i.e. polysaccharide/carrageenan) is in an amount of 0.1 to 0.5 % See Table 5 and Table 6 for example with 0.1 wt. % polysaccharide) overlapping the range of the claims of at least 0.04 wt.%)
The internal curing system has a dry solid content [0078]
The composition comprises an internal curing system of a superabsorbent polymer in an aqueous suspension and a viscosity modifier agent [0081] The viscosity modifier agent is mixed with water (as such it is dry prior to addition of water) an inorganic salt is mixed in and the superabsorbent polymer is added [0080-0086] The viscosity modifier is carrageenan [0088] (i.e. a dry mixture formed into a suspension as in claims below )
In a possible or preferred embodiment, the internal curing system is first formulated and added afterwards (formulated dry first) as a stabilized aqueous suspension to a cementitious material mix (the cementious composition is dry until mixed with water i.e. water subsequently added meeting as set forth below claim 4) of binder containing mainly Portland cement, water, sand and optionally mineral additions, as well as, also optionally, fine and/or coarse aggregates.
The viscosity modifier is carrageenan [0088] (i.e. a suspension as in claims 3)(the carrageenan is dry until mixed with water and is capable of producing a flowable cementitious suspension when mixed with water and capable of a flowable cementitious suspension that can be cast without consolidation and vibration)
Cement includes a binder that sets and hardens and the most common is ordinary Portland cement and is blended with other materials [0029-0030] including mineral addition such as silica fume, fly ash slag etc. to enhance compressive strength improve durability etc. [0031-0033]
Further Regarding Claims 3 and 31:
The prior art discloses the claimed compositional components in ranges which meet and/or overlap the instantly claimed ranges. As such the composition will possess the claimed functionality and be capable of the recited uses of the instant claims.
The composition is a mortar mix and is used for crack resistant concrete production [0066][0121] [0 16]Table 3
As used herein, “Concrete” refers to, primarily, a combination of hydraulic binder, sand, fine and/or coarse aggregates, water. Admixture can also be added to provide specific properties such as flow, lower water content, acceleration, etc. [0046] (a flowable cement suspension and flowable concrete) The composition is self-curing [0075] [00114] has self-placing properties [0166]
The prior art discloses the claimed compositional components in ranges which meet and/or overlap the instantly claimed ranges. As such the composition will possess the claimed functionality and be capable of the recited uses of the instant claims including but not limited to capable of being cast without consolidation and vibration (where neither is required by the prior art), flowable (as taught by the prior art), self-leveling, being grout or mortar (as taught by the prior art), self-consolidating (i.e. self-curing as taught by the prior art) viscosity modification and rheology modification thereby capable of use as self-leveling flooring mortar crack injection anchorage sealing etc.)
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “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 discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) [T]he purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81
Regarding Claims 4 and 21, 24, 25, 26, and 27,
Chiaverinie et al (US 2018/0230053) discloses the limitations above set forth. Chiaverninie discloses a castable cement material (Abstract)
The composition is castable without vibration [0047] no consolidation is required (meeting claims 4, 21 et seq)
Chiaverinie discloses the additive of a super absorbent polymer powder is added to water before mixing with the dry components of cement/mortar to avoid shrinkage [0027]
The composition may be in the form of an aqueous suspension added to a dry cementitious material mix of binder containing Portland cement, sand and aggregates [0079](meeting the limitation for adding)
The composition comprises a viscosity modifier of carrageenan [0088] and superplasticizers [0041 0044-0045] [0150]
The internal curing system has a dry solid content and produced a castable material [0078]
The composition comprises an internal curing system of a superabsorbent polymer in an aqueous suspension and a viscosity modifier agent [0081] The viscosity modifier agent is mixed with water (as such it is dry prior to addition of water) an inorganic salt is mixed in and the superabsorbent polymer is added [0080-0086] The viscosity modifier is carrageenan [0088] (i.e. a dry mixture formed into a suspension as in claims 4 and 21 et seq)
In a possible or preferred embodiment, the internal curing system is first formulated and added afterwards (formulated dry first this system includes the viscosity modifier ) as a stabilized aqueous suspension to a cementitious material mix (the cementious composition is dry until mixed with water i.e. water subsequently added meeting claim 4) of binder containing mainly Portland cement, water, sand and optionally mineral additions, as well as, also optionally, fine and/or coarse aggregates.(meeting the limitation for free of coarse aggregates as they are not required).[0079]
The viscosity modifier is carrageenan [0088] (i.e. a suspension as in claims 4 and 21 et seq)(the carrageenan is dry until mixed with water and is capable of producing a flowable cementitious suspension when mixed with water and capable of a flowable cementitious suspension that can be cast without consolidation and vibration)
Cement includes a binder that sets and hardens and the most common is ordinary Portland cement and is blended with other materials [0029-0030] including mineral addition such as silica fume, fly ash slag etc. to enhance compressive strength improve durability etc. [0031-0033]
A cement mix was formed with the superabsorbent polymer in powder (i.e. no water) and then water was added [0145-0147]
While the examiner notes the materials all start as dry materials, water may be added at different points of mixing (i.e. just with the superabsorbent polymer or with the viscosity modifier and then added to the cement - when forming the internal curing mixture or when forming the super absorbent polymer portion). One of ordinary skill in the art at the time of filing the invention would be able to ascertain the best mixing order of dry and wet materials for purposes of storage, blending, viscosity, etc. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). (emphasis added by examiner) MPEP 2144.04
Further Regarding Claims 4, 21 and 24-27:
The prior art discloses the claimed compositional components in ranges which meet and/or overlap the instantly claimed ranges. As such the composition will possess the claimed functionality and be capable of the recited uses of the instant claims.
The composition is a mortar mix and is used for crack resistant concrete production [0066][0121] [0 16]Table 3 (i.e. instant claim 25)
As used herein, “Concrete” refers to, primarily, a combination of hydraulic binder, sand, fine and/or coarse aggregates, water. Admixture can also be added to provide specific properties such as flow, lower water content, acceleration, etc. [0046] (a flowable cement suspension and flowable concrete) The composition is self-curing [0075] [00114] has self-placing properties [0166]
The prior art discloses the claimed compositional components in ranges which meet and/or overlap the instantly claimed ranges. As such the composition will possess the claimed functionality and be capable of the recited uses of the instant claims including but not limited to capable of being cast without consolidation and vibration (where neither is required by the prior art), flowable (as taught by the prior art), self-leveling, being grout or mortar (as taught by the prior art), self-consolidating (i.e. self-curing as taught by the prior art) thereby capable of use as self-leveling flooring mortar crack injection anchorage sealing etc.)
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “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 discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) [T]he purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81
Regarding Claims 6, 9-12, 13, 16, 18-19 and 23
Chiaverinie et al (US 2018/0230053) discloses the limitations above set forth. The composition comprises an internal curing system of a superabsorbent polymer in an aqueous suspension and a viscosity modifier agent [0081] The viscosity modifier agent is mixed with water (as such it is dry prior to addition of water) an inorganic salt is mixed in and the superabsorbent polymer is added [0080-0086] The viscosity modifier is carrageenan [0088] (i.e. a suspension as in claim 4 and 21 et seq)
The cement material includes a binder with Portland cement of 290 kg and sand of 500kg (790 kg – 500/790kg = 0.6329 x 100 = 63.3 % sand and therefore 36.4 % cement )
The average quantity of sand is between 500-1600 kg per m3 of castable material
The range of water to binder ratio is 0.25 and 0.7 [0106] (i.e. overlapping water : cement ratio of claim 23)
The final formulation of the curing system is 0.4M to 70 M water; 0.05 M-0.5 M viscosity modifier 10M-30M inorganic salt and 5 M to 20 M pr superabsorbent polymer – M means mole% [0097-0101]
The composition comprises superplasticizers: Super plasticizers is a class of chemical admixture used in hydraulic cement composition including Portland cement having the ability to highly reduce water demand while maintaining good dispersion of cement and avoids aggregation to improved rheological properties and workability of cement at different stages of the hydration reaction [0045]
The composition may comprise PCE polycarboxylate acid copolymers which have a backbone of acrylic, methacrylic, maleic and related monomers grafted with poly oxy alkylene side chains such as EO/PO grafting could be ester or ether or amide or imide [0043]
The composition comprises an internal curing system of a superabsorbent polymer in an aqueous suspension and a viscosity modifier agent [0081] The viscosity modifier agent is mixed with water an inorganic salt is mixed in and the superabsorbent polymer is added [0080-0086] The viscosity modifier is carrageenan [0088]
The composition may comprise fine and/or coarse aggregates (See claim 2 of reference making coarse aggregates not required thereby meeting claims 6, 9-10 et seq.)
The internal curing system is 40M – 70 M water
0.05 – 0.5 M viscosity modifier and 10M-30M of inorganic salt and 5M-20 M of the superabsorbent polymer [0097-0101]
In one example of the internal curing system
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346
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(meeting the limitation for carrageenan -i.e. polysaccharide- in range of claims 6, 10, and 16)
Fine aggregates are manufacture natural or recycled minerals with particle size 2-12 mm typically 2-8 mm or 3-10 mm [0057] Sand aggregates are natural or recycled mineral with particle size lower than 3 or 4 mm [0057]
Mineral addition includes mineral admixture such as fly ash and slag [0032] and alumina silicate by product is fly ash [0037]
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(meeting the range of superplasticizer of claims 6, 10, and 16)
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(fly ash is a powder [0032] thereby overlapping the particle size of claim 19 and where the amount of fly ash is within the range of claim 19) Fly ash powder [0032]
As above set forth the prior art teaches points within various claimed ranges as well as overlapping ranges thereby rendering obvious the instantly claimed ranges as to size content, etc. The examiner notes the ranges of most claims are recited as “about” there is no definition of “about” in the specification; as such, a variance from the recited ranges would still be sufficient to establish prima facie showing of obviousness by a preponderance of the evidence. See MPEP 2144.05(I): "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, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
Several factors impact shrinkage, for example: the cement and water content, size of the aggregates, aggregate to cement ratio, excessive fines, admixtures, cement composition, temperature, humidity, curing process, etc. [0013]
One of ordinary skill in the art at the time of filing the invention could adjust the factors of size, content and ratio of the compositional components with a reasonable expectation of success to optimizes shrinkage performance. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Further Regarding Claims 11-12:
Sand aggregates are particle size lower than 3 or 4 mm [0058] sand includes natural and recycled minerals [0058] minerals include silica fume, etc. [0032](thereby rendering obvious siliceous sand)
Further Regarding Claim 13:
The composition mya comprise conventional additives such as water reducers plasticizers defoamers, etc. [0104]
Further Regarding Claim 18:
Cement includes a binder that sets and hardens and the most common is ordinary Portland cement and is blended with other materials [0029-0030] including mineral addition such as silica fume, fly ash slag etc. to enhance compressive strength improve durability etc. [0031-0033]
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chiaverinie et al (US 2018/0230053) as applied to claims 3-4, 21 and 24-27 and 31 and claims 6, 9-12, 13, 16, 18-19 and 23 above further in view of Skaggs et al (US 6,110,271)
Regarding Claim 20:
Chiaverinie et al (US 2018/0230053) discloses the limitations above set forth. Chiaverinie et al (US 2018/0230053) discloses the composition comprises superplasticizers: Super plasticizers is a class of chemical admixture used in hydraulic cement composition including Portland cement having the ability to highly reduce water demand while maintaining good dispersion of cement and avoids aggregation to improved rheological properties and workability of cement at different stages of the hydration reaction [0045]
Chiaverinie et al (US 2018/0230053) does not expressly disclose the species of the super plasticizer as those of instant claim 20.
Skaggs et al (US 6,110,271) discloses a cement system that comprises one or more viscosity modifying agents, a rheology improving amount of microbial polysaccharide having feature characteristic of S-657 as described in US 5,175,278 (C3 L1-10) The viscosity modifiers include carrageenan (C3 L40-42) The S 657 is present in a range of 0.001 to 1 wt.% (C 4 L50-60)
The composition includes cement systems such as Portland cement, pozzolan cement, slag cement calcium aluminate cement, gypsum cement, fly ash and the like (C3 L50-54) Grouts include Portland cement, pozzolan, silica fume and fly ash (C4 L63-65)
The composition comprises fine sand aggregate of 0-200 % and additional components which may be admixed include superplasticizers, viscosity modifiers, gas generating agents such as aluminum powder, etc. Superplasticizers are from 0-5 wt.% of cement and viscosity modifiers are 0- 1 wt.% of cement (C5 L10-25)
The composition comprises a dispersion agent (C3 L62-65)
The composition is an aqueous suspension with 0.001-3 wt.% water based on weight of formulation (C4 L1-8)
Dispersing agents include those that are water reducers and the composition comprises superplasticizers such as sulfonated naphthalene formaldehyde condensate which is commercially available from several companies and sulfonated melamine formaldehyde condensate also commercially available etc. (C4 L7-40)(meeting claim 20)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use the superplasticizers taught by Skaggs as the superplasticizer of Chiaverini as they are known to be used in Cementous compositions with carrageenan and sand (i.e. are compatible) and will impart the properties of water demand reduction as contemplated by Chiaverini and are commercially available. Further doing so amounts to nothing more than use of a known compound (i.e. sulfonated naphthalene formaldehyde condensate in a known environment (cement compositions) to achieve an entirely expected result (reduction of water demand) with a reasonable expectation of success.
Claim(s) 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chiaverinie et al (US 2018/0230053) as applied to claims 3-4, 21 and 24-27 and 31 and claims 6, 10-12, 13, 16, 18-19 and 23 above further in view of Utz et al (US 2005/0118130)
Regarding Claim 28-29:
Chiaverinie et al (US 2018/0230053) discloses the limitations above set forth.
Chiaverinie et al discloses the composition comprises viscosity modifiers selected from polysaccharides included carrageenan [0088] the viscosity modifier also serves as a stabilizer and prevents sedimentation of the SAP by increasing the viscosity of the formulation so the velocity of particle sinking is reduced [0082]
Chiaverinie et al does not expressly disclose the carrageenan to be k- carrageenan or to be a red algae powder.
Utz discloses a polysaccharide of kappa carrageenan (See claim 5 of reference) which is extracted from red seaweed [00112] There are commercially available carrageenan including kappa carrageenan [0254-0255] Red algae is among the most commercially important [0011] Carrageenan are commercially available from several sources of red seaweed [0012]
The polysaccharide (i.e. carrageenan) is minced dried polysaccharide (see claims 1-2 and 7-8 of Utz – i.e. powder) and is obtained from red algae (see claim 9 Utz)
The composition of the algae provides a pure product with improved viscosity parameters [0004]
The composition may be used as rheology modifiers, dispersants, stabilizers and the like in industrial construction products such as concrete, mortar and in cement compositions [0146]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use carrageenan from a commercially available red algae and from a dried red algae comprising kappa carrageenan as taught by Utz as the source of carrageenan in Chiaverinie as it is a suitable polysaccharide carrageenan source and suitable viscosity modifier for cement mortar and concrete compositions and will provide improved viscosity parameters to the composition and method of Chiaverinie.
Response to Arguments
Applicant's arguments filed 12/2/2025 have been fully considered but they are not persuasive.
Applicant argues the carrageenan (i.e. the polysaccharide viscosity modifier of the prior art) serves to stabilize a salted slurry preventing sedimentation of the polymer (SAP) but does not expressly teach the effect on the resulting cement mix and asserts it does not interact with the cement under “rheological active conditions” This is not persuasive. The carrageenan is expressly identified as a viscosity modifier in the prior art and is the claimed species, so it will perform this function in the composition. The viscosity may increase viscosity of the formulation [0082] in so doing it prevents sedimentation of the SAP [0082] It is also taught as part of a self-curing formulation and may be mixed with water [0083-0085] it is unclear what additional “rheological active conditions” applicant argues must be present outside the claim language. The prior art teaches all of the limitations of the instant claims and therefore meets the claim limitations. While no range of water is required in the claims, the prior art teaches water is added as such it results in a flowable cement of the instant claims.
While not claimed: Applicant argues the claimed composition produces a flowable cast without vibration/consolidation system. The prior art teaches the composition may be cast without vibration and is flowable as more fully above set forth. Applicant argues improved cohesion and reduced bleeding/segregation. This is also taught by the prior art ([0067 and 0054]) the composition of the prior art is self-curing (i.e. self-consolidating as argued by applicant) The prior art teaches the claimed method and composition as such it will provide the benefits as argued by applicant.
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. rheological active conditions”) 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).
In response to applicant's argument that the reference does not teach modifying the viscosity/rheology of the composition, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. When reading the preamble in the context of the entire claim, the recitation “modifying viscosity” /”modifying rheology” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
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).
Applicant argues the mixing order is material to the product. Applicant argues the prior art does not teach a flowable castable without vibration product. This is not persuasive. The prior art teaches the limitations for mixing the viscosity modifier with water prior to adding to the cement and forms a composition that is castable without vibration [0047] as set forth in the instant claims. The viscosity modifier is mixed with water [0082] See example 2 where water and polysaccharide are mixed. [0153] as such the prior art teaches the claimed mixing order.
Applicant argues the amendment to the claim as to the amount of carrageenan distinguishes the claimed invention from the prior art. This is no persuasive. As above set forth the prior art teaches a range of polysaccharide (i.e. carrageenan) which overlaps the range of the claimed invention.
Conclusion
THIS ACTION IS MADE FINAL. 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 PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732