DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claims 1-2, 7, and 9-11 are objected to because of the following informalities:
As to Claims 1-2 and 7: The applicants are advised to replace the term “hydrolysable” recited in claims 1-2 and 7 with “hydrolyzable”.
Moreover, as to claim 1, as supported at paragraph [0006] of applicants’ published application, i.e., US PG PUB 2024/0101487, the applicants are advised to replace the claimed phrase “for use in making a dry mix composition comprising:” with the new phrase “for use in making a dry mix composition, wherein the powder composition comprises:”.
As to Claim 9: The applicants are advised to replace the claimed phrase “the dry mix compositions” with “the dry mix composition”.
As to Claim 10: The applicants are advised to replace the claimed phrase “further comprising a cellulose ether” with the new phrase “wherein the powder composition further comprises a cellulose ether” consistent with paragraph [0051] of applicants’ published application, i.e., US PG PUB 2024/0101487.
As to Claim 11: The applicants are advised to replace the claimed phrase “the composition” with the new phrase “the powder composition” consistent with paragraphs [0018] and [0053] of applicants’ published application, i.e., US PG PUB 2024/0101487.
Appropriate corrections are required.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
3. Claims 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Eck et al. (US 6,090,868)1.
The claims are directed to a storage stable powder composition for use in making a dry mix composition comprising: a water dispersible polymer powder (RDP) and a granular composition of a silicate carrier, a polydiorganosiloxane, a hydrolysable silane containing a C4-C12 alkyl group, or an oligomer thereof, and a polymer encapsulant, wherein the weight ratio of the RDP to the granular composition ranges from 90:10 to 98:2.
Paragraph [0029] of applicants’ published application, i.e., US PG PUB 2024/0101487, defines the claimed term “dry mix” as a storage stable powder containing cement, cellulose ether or any other polymeric additive, fillers and any dry additives where no water is present in a dry mix; hence it is storage stable.
As to Claims 1 and 4-7: Eck et al. disclose a powder composition for dry mixing without water (Col. 1, lines 10-15 and Col. 3, lines 1-10), comprising organic polymer powders which are redispersible in water (Col. 3, lines 9-10), corresponding to the claimed water redispersible polymer powder (RDP), and organosilicon powder (corresponding to the claimed granular composition) made of carrier substances, one or more organosilicon compounds selected from octyltriethoxysilane (which according to present claim 7 corresponds to the claimed hydrolysable silane containing a C4-C12 alkyl group) and a hydroxyl terminal polydimethylsiloxane (corresponding to the claimed polydiorganosiloxane) and a polymer encapsulant, e.g., polyvinyl alcohol microencapsulant, for the organosilicons compounds including the claimed hydrolysable silane and polydiorganosiloxane (Col. 2, lines 66-67, Col. 5, line 5-Col. 6, line 20, and Col. 9, lines 30-35). The hydroxyl terminal polydimethylsiloxane taught by Eck et al., according to paragraphs [0048] and [0049] of applicants’ published application, i.e., US PG PUB 2024/0101487, corresponds to the claimed polydiorganosiloxane having a room temperature viscosity in neat form of from 40-500 mPa∙s.
However, Eck et al. do not mention the claimed silicate carrier with sufficient specificity to constitute anticipation within the meaning of 35 USC 102. They also do not specify the size of the silicate carrier as required by claim 4.
Nevertheless, Eck et al. do disclose the use of any carrier substances that may be selected from, among other things, magnesium hydrosilicates (corresponding to the claimed silicate carrier), such as those having a particle size of 0.005-3000 µm (which overlaps with the claimed silicate carrier’s mean diameter ranging from 0.2-0.8 µm), to prepare organosilicon powder (granular composition) used in a powder composition having higher flexibility suitable for use as cement mortars and dry mixing (Col. 2, lines 5-11 and Col. 6, lines 5-50).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to select the silicate carrier (magnesium hydrosilicates), including those having the claimed size, as one of the carrier substances, with a reasonable of expectation of successfully preparing organosilicon powder (granular composition) used in a powder composition having higher flexibility suitable for use as cement mortars and dry mixing as suggested by Eck et al.
As to the weight ratio of the RDP to the granular composition recited in claim 1: Eck et al. disclose that the amounts of organic polymer powder including the claimed RDP and organosilicon powder (granular composition) added depends greatly on the particular use for which the powder composition is intended with the content of the organic polymer powder (RDP) being considerably higher than the content of organosilicon powder (granular composition) (Col. 2, lines 55-65 and Col. 6, lines 30-67). Eck et al. also disclose that these amounts of the claimed RDP and granular composition can be optimized in the desired ratio amounts for the purposes of preparing powder composition having higher flexibility suitable for use as cement mortars and dry mixing (Col. 2, lines 5-11 and Col. 6, lines 32-67). Thus, it would have been obvious to one of ordinary skill in the art to use optimum or workable amounts of organic polymer powder including RDP and organosilicon powder (granular composition), corresponding to the claimed ratio, for the purposes of preparing powder composition having higher flexibility suitable for use as cement mortars and dry mixing as suggested by Eck et al. See MPEP section 2144.05, IIB.
As to the storage stable property recited in the preamble of claim 1: This property would have naturally followed from the suggestion of Eck et al. since Eck et al. would have suggested the claimed powder composition for use in making a dry mix composition with no water present for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “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.”
4. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Eck et al. (US 6,090,868) as applied to claims 1 and 4-7 above, and further in view of KIESEWETTER et al. (US 2015/0307399).
The disclosure with respect to Eck et al. in paragraph 3 is incorporated here by reference. However, Eck et al. do not specify the RDP as including an ethylene-vinyl acetate (VAE) copolymer that does not contain, in copolymerized form, monomers containing a C4 or higher alkyl group as recited in claim 3.
Nevertheless, KIESEWETTER et al. disclose the use of RDP comprising copolymers of vinyl acetate with from 1 to 40% by weight of ethylene or copolymers of vinyl acetate with from 1 to 40% by weight of ethylene and from 1 to 50% by weight of one or more further comonomers selected from the group consisting of vinyl esters having from 1 to 12 carbon atoms in the carboxylic acid radical (corresponding to the claimed RDP including ethylene-vinyl acetate (VAE) copolymer that does not contain, in copolymerized form, monomers containing a C4 or higher alkyl group) to provide hydraulically setting mixtures with increase in adhesive, flexural and/or compressive strength following curing of dry mortar formulations (Paragraphs [0017] and [0027]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the RDP comprising the claimed ethylene-vinyl acetate (VAE) copolymer that does not contain, in copolymerized form, monomers containing a C4 or higher alkyl group taught by KIESEWETTER et al. in the powder composition of Eck et al., with a reasonable expectation of successfully increasing adhesive, flexural and/or compressive strength following curing of dry mortar formulations.
5. Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Eck et al. (US 6,090,868) as applied to claims 1 and 4-7 above, and further in view of Dombrowski et al. (US 9,181,130)2.
The disclosure with respect to Eck et al. in paragraph 3 is incorporated here by reference. Eck et al. also disclose addition of filler to their powder composition (Col. 6, lines 40-45). Eck et al. further disclose 0.1-20% by weight of one or more redispersible organic polymer powder (RDP) and one or more organosilicon powder (granular composition) (Col. 2, lines 55-65), which overlaps with the claimed 0.5-5.5 wt% of RDP and granular composition. See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
However, they do not mention the addition of cement and its particular amount, and cellulose ether, as required by claims 8-10.
Nevertheless, Dombrowski et al. also disclose adding 5-50 parts by weight of cement (which overlaps with the claimed 15-35 wt.% of cement), cellulose ether, and the remainder being quartz sand and other inorganic fillers to prepare powder composition having superior bonding strength and good workability useful for dry mix formulations and cement-based tile adhesives (Col. 1, lines 10-15, Col. 8, lines 20-37, Col. 9, lines 58-60, and Col. 10, lines 1-20 and lines 46-50, and see also abstract).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the cement and its claimed amount, cellulose ether, and quartz sand taught by Dombrowski et al. to the powder composition discussed in Eck et al., with a reasonable expectation of successfully obtaining superior bonding strength and good workability useful for dry mix formulations and cement-based tile adhesives.
As to Claim 11: These properties would have naturally followed from the suggestion of Eck et al. and Dombrowski et al. since Eck et al. and Dombrowski et al. would have collectively suggested the claimed powder composition for use in making a dry mix composition for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “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.
Allowable Subject Matter
6. Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Correspondence
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 07/31/2023.
2 Cited in the IDS submitted by applicants on 07/31/2023.