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 .
Drawings
The drawings were received on 04/13/26. These drawings are accepted.
Specification
The substitute specification filed 04/13/26 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6-13, 15-19 and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claim 1 has been amended to require “wherein the mineral foam possesses a reduced thermal conductivity relative to a comparative mineral foam having a same dry density and prepared from a cement slurry in which the component A is absent.” Such a feature, however, has not been provided for in the specification as filed. Although Applicant discloses in [0182] (as taken from the pre-grant publication) wherein the mineral foam has excellent thermal properties, and in particular very low thermal conductivity compared to mineral foams having a similar dry density, such does not provide for a comparative mineral foam having a same dry density as instantly claimed. Applicant’s statement of support for the amendment in [0035] is acknowledged; however, the statements made therein appear to compare equal density slurries of Portland clinker, which is more specific than Applicant’s instantly claimed “comparative” mineral foam which would encompass any and all potential comparison’s, i.e., cement compositions formed from cement other than Portland clinker, and, thereby, are not supported by the specification as filed. Claims 2-4, 6-13, 15-19 and 21-23 are rejected by virtue of their dependency upon a rejected base claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, along with claims 2-4, 6-13, 15-19 and 21-23, dependent therefrom, is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The term “comparative” in claim 1 is a relative term which renders the claim indefinite. The term “comparative” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term “comparative” renders the scope of claim 1, along with those claims dependent therefrom, indefinite as it is unclear as to what a “comparative” mineral foam encompasses. Although Applicant recites wherein component A is absent, are all other additives within the “comparative” slurry the same, i.e., is a comparative slurry without component A intended to encompass a cement slurry comprising a cement composition and water in the same water/cement composition weight ratio instantly claimed with the only difference being such is prepared without component A? Is a “comparative” slurry one that may include additional components/additives therein? A slurry formed from any type of cement? Clarification is required.
Claim 16, along with claim 19, dependent therefrom, is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 16 recites “a dry mineral foam has a dry density” and depends upon independent claim 1; claim 1 recites “a mineral foam,” but does not in itself refer to such as dry. It is unclear if/how “a dry mineral foam” and the associated density range recited therefor is indeed pertaining to the mineral foam of claim 1 or if such is a separate material. Clarification is required. Claim 19 is rejected by virtue of its dependency upon claim 16.
Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 17 recites “a dry mineral foam has a dry density” and depends upon independent claim 1; claim 1 recites “a mineral foam,” but does not in itself refer to such as dry. It is unclear if/how “a dry mineral foam” and the associated density range recited therefor is indeed pertaining to the mineral foam of claim 1 or if such is a separate material. Clarification is required.
Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 18 recites the limitation "according to claim 5." There is insufficient antecedent basis for this limitation in the claim as claim 5 has been canceled. It appears claim 18 may be intended to be dependent upon claim 1.
Claim 19 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 19 recites “a dry mineral foam has a dry density” and depends upon claim 16, which depends upon claim 1; claim 1 recites “a mineral foam,” but does not in itself refer to such as dry. Claim 16 refers to “a dry mineral foam.” It is unclear if/how “a dry mineral foam” and the associated density range recited therefor is indeed pertaining to the mineral foam of claim 1 and if “a dry mineral foam” of claim 19 is intended to be the same dry mineral foam of claim 16, or a separate dry mineral foam therefrom. Clarification is required.
Claim 23 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 23 recites the limitation "the cement foam” in line 2. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 2, 6, 7, 9-13, 15-19 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Tintillier et al. (WO 2019/229121 A1 – cited previously).
With respect to independent claim 1, Tintillier et al. discloses a method comprising:
providing a cement slurry comprising a cement composition comprising Portland clinker (p. 14, l. 18-20 and p. 15, l. 24-27, wherein the preferred types of Portland cement, i.e., CEM I, etc. include clinker) and a component A that is selected from the group consisting of a mineral component, sand, wood flour or combinations thereof (p. 14, l. 25-p. 15, l. 27), wherein:
the cement composition comprises component A (p. 14, l. 25-30), and
the cement slurry has a water/cement composition weight ratio in a range from 0.28 to 0.6 (p. 16, l. 5-9); and
contacting the cement slurry with an aqueous foam to produce a foamed cement slurry (p. 5, l. 1-5; abstract); and
allowing the foamed cement slurry to set, thereby forming a mineral foam (abstract).
Tintillier et al. discloses the addition of mineral particles to a cement slurry to produce a mineral foam, wherein the amount thereof may be from 0-50 wt% (p. 14, l. 25-30); an example wherein mineral particles are added to the exemplary slurry is provided (p. 25, l. 7-8). The reference additionally suggests wherein the mineral foam has excellent thermal properties, including a very low thermal conductivity, with values including 0.030-0.150 W/m.K (p. 22, l. 19-23), i.e., a range encompassing the entirety of that which is instantly claimed by Applicant for the instant mineral foam, as per dependent claim 17 as well as wherein the dry mineral foam has a dry density overlapping that of instant dependent claim 16 (p. 4, l. 15-16; p. 22, l. 1-3). Although silent to the amount of component A as at least 40 wt% based on the total weight of the cement slurry, and wherein the mineral foam possesses a reduced thermal conductivity relative to a comparative mineral foam having a same dry density and prepared from a cement slurry in which the component A is absent, since the mineral foam of Tintillier et al. indeed has a reduced thermal conductivity, including values for such that encompass the range instantly claimed and disclosed by Applicant, and further includes the same materials as component A as instantly claimed, and has a dry density overlapping that which is disclosed by Applicant, it is the position of the Office that one having ordinary skill in the art would indeed recognize an optimal amount of component A to provide in the cement composition in order to obtain the disclosed reduced thermal conductivity therewith since it has been held "[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) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent of component A as critical and it is unclear if any unexpected results are achieved by using component A in such amounts. Since the mineral foam of Tintillier et al. is suggested as achieving the same thermal conductivity as instantly claimed and disclosed by Applicant in claim 17, as well as the same dry density as claimed and disclosed by Applicant in claim 16, it does not appear that such would be considered unexpected results of providing for component A in an amount of at least 40 weight%, and, as such, the determination of optimal amount of component A would be achievable through routine experimentation in the art.
With regard to the allowing of the foamed cement slurry to set without being subjected to a thermal treatment and/or autoclave treatment, Tintillier et al. discloses through examples wherein the mineral foam possesses the reduced thermal conductivity without being subjected to a thermal treatment and/or autoclave treatment (p. 25, l. 5-p. 36, l. 21). Tintillier et al. does not explicitly disclose a requirement for subjecting the mineral foam to a thermal treatment and/or autoclave treatment, as is further exemplified through the examples of mineral foams produced by the disclosed method and highlighted throughout the examples. As such, it is the position of the Office that it would have been obvious to one having ordinary skill in the art to not subject the mineral foam of Tintillier et al. to a thermal treatment and/or autoclave treatment as such does not appear necessary in the production thereof, as per the disclosure of Tintillier et al., and thus one having ordinary skill in the art would recognize the ability to produce such mineral foams without subjecting such to the aforenoted processes.
With regard to wherein the mineral foam possesses a reduced thermal conductivity to a “comparative” mineral foam having a same dry density and prepared from a cement slurry in which the component A is absent, the Examiner notes, Tintillier et al. clearly suggests the inclusion of component A, as well as a reduced thermal conductivity thereof, and, as such, it would be expected for the mineral foam to possess a reduced thermal conductivity relative to a “comparative” mineral foam having a same dry density as claimed since it has been held “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. See MPEP 2112.01(1), 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 Warren Corp v D F Newfield Co, 1 F Supp 773, 22 USPQ 313 (EDNY 1934).
With respect to dependent claim 2, Tintillier et al. discloses wherein the mineral component is selected from the group as claimed (p. 14, l. 32-p. 15, l. 23).
With respect to dependent claim 6, Tintillier et al. discloses wherein component A is selected from the group as claimed (p. 14, l. 32-p. 15, l. 23).
With respect to dependent claim 7, Tintillier et al. discloses wherein the component A may include limestone, slag and mixtures thereof (p. 14, l. 32-p. 15, l. 4). The reference additionally suggests wherein the mineral particles may be present in an amount of 0-50 wt% (p. 14, l. 25-30). Although silent to wherein the cement composition comprises 0-15 wt% of limestone and at least 36 wt% of slag, the Examiner notes, when choosing not to include limestone in the composition, i.e., 0 wt% thereof, and slag in an amount in the range of 0-50 wt%, an amount of at least 36 wt% slag therein would have been obvious to one having ordinary skill in the art as based on the properties intended to impart to the cement slurry therewith since it has been held "[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) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent ranges of limestone and slag as critical and it is unclear if any unexpected results are achieved by using limestone and silica in such amounts. Since the mineral foam of Tintillier et al. is suggested as achieving the same thermal conductivity as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for each of limestone and slag in such amounts, and, as such, the determination of optimal amounts thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 9, Tintillier et al. discloses wherein the mineral component is limestone (p. 15, l. 26-27; p. 25, l. 8). The reference further suggests wherein mineral particles may be present in an amount of 0-50 wt% (p. 14, l. 25-30), wherein in the example, 10 wt% of limestone is included (p. 25, l. 8). Although silent to wherein the limestone is present in an amount of at least 30 wt%, the Examiner notes, when choosing and providing an amount of limestone within the range disclosed by Tintillier et al., an amount of at least 30 wt% thereof would have been obvious to one having ordinary skill in the art as based on the properties intended to impart to the cement slurry therewith since it has been held "[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) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent of limestone as critical and it is unclear if any unexpected results are achieved by using limestone in such amounts. Since the mineral foam of Tintillier et al. is suggested as achieving the same thermal conductivity as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for limestone in an amount as claimed, and, as such, the determination of optimal amounts thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 10, Tintillier et al. discloses wherein the mineral component is silica fume (p. 15, l. 13-16). The reference further suggests wherein mineral particles may be present in an amount of 0-50 wt% (p. 14, l. 25-30), wherein in the example, 10 wt% of a mineral particle is included (p. 25, l. 8). Although silent to wherein the silica fume, specifically, is present in an amount from 10-20 wt%, the Examiner notes, when choosing and providing an amount of silica fume within the range disclosed by Tintillier et al., i.e., 0-50 wt%, an amount of 10-20 wt% would have been obvious to one having ordinary skill in the art as based on the properties intended to impart to the cement slurry therewith since it has been held "[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) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent ranges of silica fume as critical and it is unclear if any unexpected results are achieved by using silica fume in such amounts. Since the mineral foam of Tintillier et al. is suggested as achieving the same thermal conductivity as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for silica fume in an amount as claimed, and, as such, the determination of optimal amounts thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 11, Tintillier et al. discloses wherein the mineral component is selected from the group as claimed (p. 14, l. 32-p. 15, l. 23, wherein at least fly ash is disclosed). The reference further suggests wherein mineral particles may be present in an amount of 0-50 wt% (p. 14, l. 25-30), wherein in the example, 10 wt% of a mineral particle is included (p. 25, l. 8). Although silent to wherein the mineral component, such as fly ash, specifically, is present in an amount of at least 30 wt% as claimed, the Examiner notes, when choosing and providing an amount of fly ash disclosed by Tintillier et al., i.e., 0-50 wt%, an amount of at least 30 wt% would have been obvious to one having ordinary skill in the art as based on the properties intended to impart to the cement slurry therewith since it has been held "[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) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent ranges of a mineral component selected from the group as claimed as critical and it is unclear if any unexpected results are achieved by using, for example, fly ash, in such amounts. Since the mineral foam of Tintillier et al. is suggested as achieving the same thermal conductivity as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for a mineral component selected from the group as claimed in an amount of at least 30 wt%, and, as such, the determination of optimal amounts thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 12, Tintillier et al. discloses wherein the component A comprises a combination of material containing calcium carbonate and of a component selected from the group as claimed (p. 14, l. 32-p. 15, l. 23; see p. 15, l. 4 wherein “mixtures thereof” is disclosed).
With respect to dependent claim 13, Tintillier et al. discloses wherein the component A may include calcium carbonate, as well as an additional component including pozzolanic materials, fly ash, slag, calcined schists, siliceous components and mixtures thereof (p. 14, l. 32-p. 15, l. 4). The reference additionally suggests wherein the mineral particles may be present in an amount of 0-50 wt% (p. 14, l. 25-30). In an example, Tintillier et al. suggests an amount of 10 wt% calcium carbonate in the form of limestone (p. 25, l. 8). Although silent to wherein the cement composition comprises 5-15 wt% of calcium carbonate and at least 30 wt% of the additionally claimed materials, the Examiner notes, when choosing to include a mixture of the materials disclosed by Tintillier et al., and, thereby providing for the combination of such in an amount in the range of 0-50 wt%, an amount of 5-15 wt% calcium carbonate with an amount of at least 30 wt% of the additionally claimed materials therewith would have been obvious to one having ordinary skill in the art as based on the properties intended to impart to the cement slurry therewith since it has been held "[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) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent ranges of calcium carbonate and the additional material as critical and it is unclear if any unexpected results are achieved by providing for such components in such amounts. Since the mineral foam of Tintillier et al. is suggested as achieving the same thermal conductivity as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for each of calcium carbonate and an additional mineral particle material as claimed therewith in such amounts, and, as such, the determination of optimal amounts thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 15, Tintillier et al. discloses wherein the mineral foam is produced by a process comprising: separately preparing the cement slurry and the aqueous foam, the cement slurry comprises water and the cement composition (p. 14, l. 25-30); contacting the cement slurry with the aqueous foam to obtain the foamed cement slurry; and casting the foamed cement slurry and allowing the casted foamed cement slurry to set (abstract; p. 4, l. 36-p. 5, l. 7).
With respect to dependent claim 16, Tintillier et al. discloses wherein the dry mineral foam has a dry density as claimed (p. 4, l. 15-16; p. 22, l. 1-3).
With respect to dependent claim 17, Tintillier et al. discloses wherein the dry mineral foam has a thermal conductivity overlapping the range as claimed (p. 22, l. 19-23). The reference further suggests wherein the dry mineral foam has a dry density overlapping the range claimed therefor (p. 22, l. 1-3). The reference additionally discloses wherein the thermal conductivity of a mineral foam in its final dry state is proportional to the density (p. 2, l. 8-11). As such, it would have been obvious to one having ordinary skill in the art to provide for a thermal conductivity as claimed at the instantly claimed dry density ranges since it has been held “[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). Obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed thermal conductivity and density range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the mineral foam of Tintillier et al. with mineral particles therein is suggested as having overlapping thermal conductivity and dry density to that which is instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result, and, as such, the determination of optimal thermal conductivity and dry density would be achievable through routine experimentation in the art.
With respect to dependent claim 18, Tintillier et al. discloses wherein the component A may include various materials (p. 14, l. 32-p. 15, l. 4). The reference additionally suggests wherein the mineral particles may be present in an amount of 0-50 wt% (p. 14, l. 25-30). Although silent to wherein the cement composition comprises at least 50 wt% of component A as claimed, it would have been obvious to one having ordinary skill in the art as based on the properties intended to impart to the cement slurry therewith since it has been held "[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) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent of component A as critical and it is unclear if any unexpected results are achieved by providing for such components in such amounts. Since the mineral foam of Tintillier et al. is suggested as achieving the same thermal conductivity as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for component A in an amount as instantly claimed, and, as such, the determination of optimal amounts thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 19, Tintillier et al. discloses wherein a dry mineral foam has a dry density as claimed (p. 4, l. 15-16; p. 22, l. 1-3).
With respect to new dependent claim 21, Tintillier et al. discloses wherein the dry mineral foam has a thermal conductivity overlapping the range as claimed (p. 22, l. 19-23). The reference further suggests wherein the dry mineral foam has a dry density overlapping the range claimed therefor (p. 22, l. 1-3). The reference additionally discloses wherein the thermal conductivity of a mineral foam in its final dry state is proportional to the density (p. 2, l. 8-11). As such, it would have been obvious to one having ordinary skill in the art to provide for a thermal conductivity as claimed at the instantly claimed dry density ranges since it has been held “[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). Obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed thermal conductivity and density range as critical and it is unclear if any unexpected results are achieved by providing for such. Since the mineral foam of Tintillier et al. with mineral particles therein is suggested as having overlapping thermal conductivity and dry density to that which is instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result, and, as such, the determination of optimal thermal conductivity and dry density would be achievable through routine experimentation in the art.
With respect to new dependent claim 22, Tintillier et al. discloses wherein in the cement slurry, weight water/cement composition ratio is as claimed (p. 16, l. 5-9).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tintillier et al. as applied to claim 1 above, and further in view of Bernardi et al. (US 2015/0083958 – cited previously).
Tintillier et al. discloses the method as set forth above with respect to independent claim 1, wherein examples of component A include slags, pozzolanic materials, fly ash, calcined schists, calcium carbonate, silica fume, siliceous additions, metakaolin, or mixtures thereof (p. 14, l. 32- p. 15, l. 27). The reference, however, fails to explicitly disclose the component as sand, and, further, sand having a size as claimed. Bernardi et al. teaches mineral foams prepared from a cement slurry and an aqueous foam wherein suitable mineral particles included therein are selected from calcium carbonate, silica, ground glass, solid or hollow glass beads, glass granules, expanded glass powders, silica aerogels, silica fume, slags, ground sedimentary siliceous sands, fly ash or pozzolanic materials or mixtures thereof ([0113]). The average size of such particles is 0.1-500 microns ([0126]). Mineral foams formed with such particles are further suggested as having excellent thermal properties, including very low thermal conductivity ([0015]). Since Tintillier et al. suggests various mineral particles as suitable for use in forming the mineral foam, including siliceous additions, and Bernardi et al. teaches some of the same mineral particles used in a mineral foam having very low thermal conductivity, while further suggesting siliceous sands as also suitable therefor, it would have been obvious to one having ordinary skill in the art to try sands, including those having a size within the range instantly claimed and suggested by Bernardi et al. in order to yield the predictable result of providing a low thermal conductivity mineral foam therewith.
Claims 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Tintillier et al. as applied to claims 1 and 6, respectively, above, and further in view of Waldmann et al. (DE 102018008701 A – all citations are to previously provided translation).
Tintillier et al. discloses the method as set forth above with respect to independent claim 1, wherein examples of component A include slags, pozzolanic materials, fly ash, calcined schists, calcium carbonate, silica fume, siliceous additions, metakaolin, or mixtures thereof (p. 14, l. 32- p. 15, l. 27). The reference, however, fails to explicitly disclose the component as wood flour, and, further, such as having a size as claimed. Waldmann et al. teaches mineral foams formed from water-setting inorganic binders including Portland cement with additives including finely divided inorganic substances such as kaolin, metakaolin, silicic acid, natural and artificial zeolites, pumice flour, fly ash, and their mixtures and mixtures with finely divided organic materials such as wood flour. The added materials are usually in finely divided or fine-grained form (p. 2, last paragraph). Since Tintillier et al. suggests various mineral particles as suitable for use in forming the mineral foam, including metakaolin and fly ash, and Waldmann et al. teaches some of the same mineral particles used in a mineral foam in combination with organic particles such as wood flour, while further suggesting fly ash and metakaolin as also suitable alternatives thereto/to use therewith, it would have been obvious to one having ordinary skill in the art to try fine-grained wood flour, as suggested by Waldmann et al. in order to yield the predictable result of providing a known alternative filler/aggregate material suitable for use in the formation of mineral foam to those disclosed by Tintillier et al. that is a non-settable component therein. With regard to the particular D50 thereof, the Examiner notes, fine particles are defined in the art as having a D50 less than 5 microns (see evidence in Conclusion of non-final rejection mailed 01/15/26), and as, such, it is the position of the Office, that when using the fine-grained wood flour of Waldmann et al., one having ordinary skill in the art would recognize the optimal size thereof for use in forming the mineral foam therewith since it has been held "[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). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed wood flour size range as critical and it is unclear if any unexpected results are achieved by using wood flour of such a size, and, as such, the determination of optimal D50 thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 8, Tintillier et al. discloses wherein the component A may include calcium carbonate, as well as materials including pozzolanic materials, fly ash, slag, calcined schists, siliceous components and mixtures thereof (p. 14, l. 32-p. 15, l. 4). The reference additionally suggests wherein the mineral particles may be present in an amount of 0-50 wt% (p. 14, l. 25-30). In an example, Tintillier et al. suggests an amount of 10 wt% calcium carbonate in the form of limestone (p. 25, l. 8). Although silent to wherein the cement composition comprises 5-15 wt% of limestone and 0.5-3 wt% of an additional mineral component, the Examiner notes, when choosing to include a mixture of the materials disclosed by Tintillier et al., and, thereby providing for the combination of such in an amount in the range of 0-50 wt%, an amount of 5-15 wt% limestone with an amount of 0.5-3wt% of an additional mineral material therewith would have been obvious to one having ordinary skill in the art as based on the properties intended to impart to the cement slurry therewith since it has been held "[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) See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent ranges of calcium carbonate and the additional material as critical and it is unclear if any unexpected results are achieved by providing for such components in such amounts. Since the mineral foam of Tintillier et al. is suggested as achieving the same thermal conductivity as instantly claimed and disclosed by Applicant, it does not appear that such would be considered an unexpected result of providing for each of calcium carbonate and an additional mineral particle material as claimed therewith in such amounts, and, as such, the determination of optimal amounts thereof would be achievable through routine experimentation in the art.
Tintillier et al., however, discloses wherein examples of the additional material include slags, pozzolanic materials, fly ash, calcined schists, calcium carbonate, silica fume, siliceous additions, metakaolin, or mixtures thereof (p. 14, l. 32- p. 15, l. 27). The reference, however, fails to explicitly disclose the additional component as wood flour. Waldmann et al. teaches mineral foams formed from water-setting inorganic binders including Portland cement with additives including finely divided inorganic substances such as kaolin, metakaolin, silicic acid, natural and artificial zeolites, pumice flour, fly ash, and their mixtures and mixtures with finely divided organic materials such as wood flour (p. 2, last paragraph). Since Tintillier et al. suggests various mineral particles as suitable for use in forming the mineral foam, including metakaolin and fly ash, and Waldmann et al. teaches some of the same mineral particles used in a mineral foam in combination with organic particles such as wood flour, it would have been obvious to one having ordinary skill in the art to try wood flour, as suggested by Waldmann et al. in combination with the finely divided inorganic mineral component, such as limestone, of Tintillier et al., in order to yield the predictable result of providing a known alternative filler/aggregate material suitable for use in the formation of mineral foam to those disclosed by Tintillier et al. that is a non-settable component therein and capable of use therewith so as to produce a mineral foam capable of being left to set.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-13, 15-19 and 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/720490 (‘490 herein) in view of Jezequel et al. (WO 2019/092090 A1 – cited previously). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and those of ‘490 seek to utilize a component A, selected from mineral component, sand, wood flour or combinations thereof, for reducing a thermal conductivity of a mineral foam; the cement composition used to prepare the cement slurry that is used in the process of producing the mineral foam in both the instant application and ‘490 comprises component A and Portland clinker. The instant claims contact the cement slurry with an aqueous foam while ‘490 contact the cement slurry with a gas forming liquid that comprises a gas forming agent. Although ‘490 fails to explicitly provide for an aqueous foam, it is noted, ‘490 discloses in the specification wherein the gas forming liquid is that which is disclosed by Jezequel et al.; Jezequel et al. suggests wherein the gas forming agent included in the gas forming liquid is diluted in water, thereby suggesting an aqueous foam. As such, it is the position of the Office that it would have been obvious to one having ordinary skill in the art to provide for an aqueous foam in the method of ‘490, i.e., through inclusion of an aqueous fluid with the gas forming agent used to generate the foam therein, thereby providing for the method instantly claimed. The Examiner notes, Applicant’s newly recited features of the weight percent of component A and the water/cement composition weight ratio in instant independent claim 1 are provided for by dependent claims 5 and 13, respectively, of ‘490 and therefore would be obvious thereover.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claim 23 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The Examiner notes, the prior art fails to sufficiently disclose, teach and/or suggest maintaining a dry density of the mineral foam while increasing an amount of component A therein as disclosed by Applicant in [0035] of the specification as published.
Response to Arguments
Applicant’s arguments and amendments made with respect to the 35 USC 112 rejections, as set forth in the previous office action, have been fully considered and are persuasive in view of Applicant’s amendments. The 35 USC 112 rejections as set forth therein have been withdrawn.
Applicant’s arguments with respect to the rejections of claims as anticipated by Tintillier have been fully considered and are persuasive in view of Applicant’s amendments to independent claim 1; Therefore, the rejection has been withdrawn. However, the rejections under 35 USC 103 with respect thereto have been maintained.
Applicant asserts claim 1 has been amended to require wherein the mineral foam possesses a reduced thermal conductivity relative to a comparative mineral foam having a same dry density and prepared from a cement slurry in which component A is absent. The Examiner notes the 35 USC 112 rejections now set forth above with respect to this limitation; however, it is noted, the features of new dependent claim 23 are not disclosed or suggested by the prior art and amendments to independent claim 1 to require such features would overcome the instant rejection.
Applicant asserts Tintillier is silent to a method as required by claim 1 and that advantageously the claimed cement slurry produces a cement foam having a reduced thermal conductivity with an equal dry density achieved by an increased concentration of component A. The Examiner notes, this feature is not explicitly recited in claim 1 as now presented, i.e., with respect to the increased concentration of component A. The Office maintains since Tintillier et al. clearly suggests producing a mineral foam having a reduced thermal conductivity and a density within the range instantly claimed that one having ordinary skill in the art would recognize an optimal amount of component A to include therein in order to achieve the thermal conductivities and dry densities instantly claimed for at least the reasons set forth above.
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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
06/09/26
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