DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of species I in the reply filed on 10/08/25 is acknowledged. Upon further consideration, the lack of unity requirement has been withdrawn.
Claims 1-20 are pending for examination herein.
Drawings
Figure 1 is objected to because it is labeled as “Figure 1” and there is only a single figure within the application; applications including only 1 figure are required to refer to the single figure as “Figure.” See CFR 1.84(u)(1). Applicant is required to rename Figure 1 as “Figure” and refer to the figure as such throughout the specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because it includes grammatical errors; for example, in lines 2-3, the phrase “for reducing the thermal conductivity of a mineral foam produced by a including contacting a cement slurry and an aqueous foam” requires revision. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The use of the term SOCAL 31, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The use of the term MIKHART 1, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The use of the term BLIND’R, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112
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.
Claims 1-20 are 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 1 provides for the use of “a component A” for reducing the thermal conductivity of a mineral foam, but since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active positive steps delimiting how this use is actually practiced. Does the mere inclusion of a component A with the latter claimed Portland clinker reduce the thermal conductivity of the mineral foam? Is a particular reaction and/or process required/“used” to reduce the thermal conductivity of the mineral foam with component A? Or possibly a particular amount thereof? How indeed is component A “utilized” for reducing the thermal conductivity?
For examination purposes, the Office will consider the mere inclusion of component A in the cement slurry will be considered to be a teaching of “utilizing a component A” as claimed.
The Examiner notes, the overall wording of claim 1 is cumbersome and confusing. Applicant may consider rewording the claim to recite:
A method for reducing the thermal conductivity of a mineral foam comprising:
preparing a cement slurry, wherein the cement slurry comprises Portland clinker and a component A selected from the group consisting of a mineral component, sand, wood flour or combinations thereof; and
contacting the cement slurry with an aqueous foam to produce the mineral foam.
Applicant’s assistance in clarifying any reduction in thermal conductivity afforded by component A within the above suggested claim amendments is requested should a particular degree of reduction in thermal conductivity be achieved/required and/or a particular amount of component A be necessary in order to impart a particular level of reduction.
Claim 1 recites “a component A selected from mineral component sand, wood flour or combinations thereof.” It is unclear if Applicant intends such to be a Markush group. If so, use of proper Markush language, i.e. -selected from the group consisting of- is advised.
Claim 1 recites the limitation "the thermal conductivity" in the second line thereof. There is insufficient antecedent basis for this limitation in the claim
Claim 1 recites the limitation "the cement composition" in the second to last line thereof. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-20 are rejected by virtue of their dependency upon a rejected base claim.
Claim 2 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 2 recites “wherein the mineral component is selected from.” However, Applicant has not positively defined component A as the mineral component. Revision to require -The method according to claim 1, wherein component A comprises the mineral component and wherein the mineral component is- is advised.
Claim 2 recites “wherein the mineral component is selected from.” It is unclear if Applicant intends such to be a Markush group. If so, use of proper Markush language, i.e. -selected from the group consisting of- is advised.
Claim 3 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 3 recites “wherein the sand is.” However, Applicant has not positively defined component A as the sand. Revision to require -The method according to claim 1, wherein component A comprises the sand and wherein the sand is- is advised.
Claim 4 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 4 recites “wherein the wood flour is.” However, Applicant has not positively defined component A as the wood flour. Revision to require -The method according to claim 1, wherein component A comprises the wood flour and wherein the wood flour is- is advised.
Claim 6, along with claims 7-9, 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 6 recites “wherein the component A is selected from slag, limestone, wood flour and mixtures thereof.” The Examiner notes, it is unclear if Applicant intends such to be a Markush group. If so, use of proper Markush language, i.e. -selected from the group consisting of- is advised.
Claim 6 recites “wherein the component A is selected from slag, limestone, wood flour and mixtures thereof.” However, independent claim 1, upon which claim 6 depends, recites “a component A selected from mineral component, sand, wood flour or combinations thereof.” Although it would appear Applicant intends the slag and limestone to potentially further define the “mineral component,” no such correlation is directly made. It is unclear if claim 1 is intended to be a Markush group and if claim 6 intends to further define, for example, the “mineral component” in claim 1, or if Applicant is reciting additional elements in claim 6. Clarification and consistent use of proper Markush language is advised.
Claim 9 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 9 recites “wherein the mineral component is limestone.” However, Applicant has not positively defined component A as the mineral component. Revision to require -The method according to claim 1, wherein component A comprises the mineral component and wherein the mineral component is- is advised.
Furthermore, claim 9 depends upon claim 6, wherein limestone is recited. It would appear Applicant should define the mineral component as limestone within claim 6, and not a claim dependent therefrom in order to positively define component A as a mineral component and the mineral component as limestone.
Claim 10 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 10 recites “wherein the mineral component is.” However, Applicant has not positively defined component A as the mineral component. Revision to require -The method according to claim 1, wherein component A comprises the mineral component and wherein the mineral component is- is advised.
Claim 11 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 11 recites “wherein the mineral component is selected from.” However, Applicant has not positively defined component A as the mineral component. Revision to require -The method according to claim 1, wherein component A comprises the mineral component and wherein the mineral component is- is advised.
Claim 11 recites “wherein the mineral component is selected from.” It is unclear if Applicant intends such to be a Markush group. If so, use of proper Markush language, i.e. -selected from the group consisting of- is advised.
Claim 11 recites the limitation "the mineral addition" in the last line thereof. There is insufficient antecedent basis for this limitation in the claim. Applicant has not previously claimed a mineral addition, but rather “a mineral component.”
Claim 12, along with claim 13, 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 12 recites “wherein the component A is a combination of material containing calcium carbonate and of component selected from.” It appears Applicant is attempting to further define the previously claimed “mineral component” of claim 1, but there is no direct correlation to such. Should the materials of claim 1 for component A be intended to be a Markush group, a link between such is required.
Claims 12 and 13 each recite “of component selected from.” It is unclear if Applicant intends such to be a Markush group. If so, use of proper Markush language, i.e. -selected from the group consisting of- is advised. It is further noted, the article “a” should be added prior to component.
Claim 14 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 14 recites “wherein in the cement slurry, weight water/cement composition ratio.” It is unclear what is intended by this phrase. It appears Applicant is intending to recite a range for the weight ratio based on the description in the specification. As such, replacement of the current phrase with -wherein in the cement slurry, weight ratio- is advised.
Claim 15 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 15 recites in the last line “casting the foamed cement slurry and leave it set.” The phrase “leave it set” is unclear. Furthermore, the tense “leave” is not consistent with the previous gerund phraseology. 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 the limitation "the dry mineral foam" in line 1 thereof. There is insufficient antecedent basis for this limitation in the claim as no dry mineral foam has been previously recited and/or required in independent claim 1, upon which claim 16 depends.
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 the limitation "the dry mineral foam" in line 1 thereof. There is insufficient antecedent basis for this limitation in the claim as no dry mineral foam has been previously recited and/or required in independent claim 1, upon which claim 17 depends.
Claim 17 recites two thermal conductivity ranges for respective dry densities; there is, however, no conjunction therebetween. As such, it is unclear if Applicant is requiring the dry mineral foam to have one of the recited ranges or both, i.e., should the conjunction be “and” or “or” or “and/or?” Clarification is required.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation 0.03-0.1 W/m.K and 20-500kg/m3, and the claim also recites 0.033-0.060 W/m.K and 20-100kg/m3 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102/Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1, 2, 5, 6, 12, 14-16, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tintillier et al. (WO 2019/229121 A1 – cited and provided by Applicant).
With respect to independent claim 1, Tintillier et al. discloses a method comprising utilizing a component A selected from mineral component, sand, wood flour or combinations thereof (p. 14, l. 25-p. 15, l. 27), for reducing the thermal conductivity of a mineral foam produced by a process comprising a step of contacting a cement slurry and an aqueous foam (p. 5, l. 1-5), the cement composition used to prepare the cement slurry comprising the component A (p. 14, l. 25-p. 15, l. 27) and 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).
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). The reference further provides an example wherein mineral particles are added to the exemplary slurry (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. Although silent to explicitly “utilizing” component A “for reducing the thermal conductivity of a mineral foam,” 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 in amounts overlapping those instantly claimed and disclosed by Applicant, it is the position of the Office that mineral particles/component A of Tintillier et al. would indeed be “utilized to” reduce the thermal conductivity of the mineral foam since Tintillier et al. discloses the same mineral components as claimed, and, thus, the thermal conductivity of the mineral foam produced therewith would inherently act in the same manner as claimed, i.e., it will be reduced. If there is any difference between the “use” of component A of Tintillier et al. and that of the instant claims, the difference would have been minor and obvious insofar as because “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).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102.” See MPEP 2112(111) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
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 5, Tintillier et al. discloses wherein the cement composition comprises at least 20 wt% of component A, compared to the total weight of the cement composition (p. 14, l. 26-30).
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 12, Tintillier et al. discloses wherein the component A is 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 14, Tintillier et al. discloses wherein in the cement slurry, weight water/cement composition ratio is as claimed (p. 16, l. 5-9).
With respect to dependent claim 15, Tintillier et al. discloses wherein the mineral foam is produced by a process comprising: separately preparing a cement slurry and an aqueous foam, the cement slurry comprises water and cement composition, wherein the cement composition used to prepare the cement slurry comprises Portland clinker and a component A as defined in claim 1 (p. 14, l. 25-30); contacting the cement slurry with the aqueous foam to obtain a foamed cement slurry; and casting the foamed cement slurry and leave it 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 18, Tintillier et al. discloses wherein the cement composition comprises at least 50 wt% of component A, compared to the total weight of the cement composition (p. 14, l. 27-28).
With respect to dependent claim 19, 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).
Claim Rejections - 35 USC § 103
Claims 7, 9-11, 13, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tintillier et al..
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 13, 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 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 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 20, Tintillier et al. discloses 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). The Examiner notes, 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 therein. 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.
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).
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 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), 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 1-20 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). 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.
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2015/0083958 (cited above) defines “fine” mineral particles as those having a D50 less than or equal to 5 microns.
US 2017/0158568 discloses a low conductivity mineral foam that includes a mineral addition.
US 10836677 discloses sand and mineral component additions to a mineral foam.
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
01/08/26