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 .
Election/Restrictions
2. Applicants’ election with traverse of Group I (claims 1, 2, 6-8 and 10; drawn to “a basic substance”) in the reply filed on 08/24/2026 is acknowledged. The applicants at pages 5 and 6 of their Remarks filed 08/24/2026 that the special technical feature is not the filler (comprising desert sand) and the additive (comprising silicon dioxide nanoparticles), but instead relates to the combination of the filler (comprising desert sand), the additive (comprising silicon dioxide nanoparticles) and the binder (comprising cement), and Karadkar reference of record does not teach or disclose cement, and thus, Karadkar reference does not teach or disclose the special technical feature. The applicants also argue at page 7 of their Remarks filed 08/24/2026 that there is unity between the claims of Groups I-III because all of the claims correspond to a substance, a substance mixture, and a method for producing the substance mixture, and there is no undue burden on the Examiner to perform the search.
However, these arguments are not persuasive at this time for the following reasons. First, contrary to applicants’ argument, the special technical feature is not the combination of the filler (comprising desert sand), the additive (comprising silicon dioxide nanoparticles) and the binder (comprising cement). Group III (claims 16-17) do not include the technical feature of a cement binder as Groups I and II, but does include the filler (comprising desert sand) and the additive (comprising silicon dioxide nanoparticles). Thus, as mentioned in the previous Office action mailed 02/24/2026, the special technical feature that is common to Groups I-III is the claimed filler (desert sand) and additive (silicon dioxide nanoparticles having a particle size of less than 10 nm) which is taught by Karadkar reference of record. It follows that since the technical features fail to define a contribution over Karadkar reference, there is a lack of unity between the cited claims. Moreover, there is search and examination burden on the Examiner because the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
Accordingly, the requirement is still deemed proper and is therefore made FINAL.
3. Claims 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 08/24/2026.
Claim Objections
4. Claims 1 and 10 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to replace the claimed “the basis substance” to “the basic substance”.
As to Claim 10: The applicants are advised to add the term “of” before the claimed terms “superplasticiser”, “organosilanol”, “water”, “hydrated lime”, “setting accelerator”, “latex powder” and “preservative”.
Appropriate corrections are required.
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.
5. Claims 1-2, 6-8, and 10 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.
As to Claim 1: It recites, among other things, “the properties” (Emphasis added). It is not clear what “the properties” recited in claim 1 are referring to.
As to Claim 7: It is not clear whether the nanoparticles have additional polydimethylsiloxane particles, or if the silicon dioxide nanoparticles have some kind of substructure made of polydimethylsiloxane particles. Clarification by applicants in the next response will be helpful to better ascertaining the scope of this claim.
As to Claim 10: It is unclear whether the particular additives listed in claim 10 are in lieu of or in addition to the nanoparticles in the form of silicon dioxide particles recited in claim 1, on which claim 10 depends on.
It is further noted that since claims 2, 6 and 8 are dependent on claim 1, they are rejected along with claim 1 because they incorporate all the limitations of claim 1, including those that are indefinite for the reasons set forth above.
Accordingly, the scope of these claims is deemed indefinite.
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.
6. Claims 1-2, 6, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sadikovic (US 2005/0172865) in view of Kumar et al. (US 2019/0284102).
As to Claims 1-2 and 6: Sadikovic discloses a binder composition for preparing a building material (Paragraph [0002]), comprising, among other things, a hydraulic binder material such as a slag material as a cementitious material (corresponding to the claimed binder comprising cement) that is mixed with other materials such as desert sand (corresponding to the claimed filler which serves as a basic material) (Paragraphs [0006], [0010], [0012]-[0013], [0020] and [0025]). Since the other material (filler) taught by Sadikovic only includes desert sand (Paragraphs [0020] and [0025]), the claimed at least one filler comprising at least 50% desert sand is met because the term “at least 50%” also includes 100% (or all of). Since the binder composition taught by Sadikovic is also used for preparing a building material and contains basic material such as desert sand as recited in the claim, Sadikovic’s binder composition is also a basic substance as claimed.
While Sadikovic broadly discloses the addition of additives for concrete (Paragraph [0021]), they do not specify them as including the claimed at least one additive for influencing the properties comprising nanoparticles in the form of silicon dioxide particles and having a particular particle size (i.e., less than 10 nm).
Nevertheless, Kumar et al. disclose using silica nanoparticles having a size of 5 nm-10 micrometer (corresponding to the claimed at least one additive for influencing the properties comprising nanoparticles in the form of silicon dioxide particles and overlaps with the claimed particle size of less than 10 nm) in compositions for use as cement and concrete hardening acceleration in the field of building materials (Paragraphs [0001], [0019] and [0066]). 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.”).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the claimed at least one additive for influencing the properties comprising nanoparticles in the form of silicon dioxide particles and having the claimed particle size taught by Kumar et al. in the cement binder composition of Sadikovic, with a reasonable expectation of successfully using the same for building materials.
As to Claim 10: Sadikovic does not specifically mention the addition of water in a proportion of 60 to 90% as required by the claim. However, Sadikovic does disclose the addition of water to the binder material to form a pasty binder composition which coats the surface of the sand and coarse aggregates, and through the hydration the binder paste hardens and gains strength to form concrete (Paragraph [0024]). Sadikovic also discloses that when water is mixed with the hydraulic binder, the binding occurs and results in building materials with remarkable properties including high strength, density, hardness, and heat resistance (Paragraph [0025]). In other words, the amount of water used is a known results-effective variable. Thus, it would have been obvious to one of ordinary skill in the art to employ an optimum or workable amount of water, inclusive of those claimed, in the binder composition, with a reasonable expectation of successfully obtaining building materials with remarkable properties including high strength, density, hardness, and heat resistance as suggested by Sadikovic.
7. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sadikovic (US 2005/0172865) in view of Kumar et al. (US 2019/0284102) as applied to claims 1-2, 6, and 10 above, and further in view of Xue et al. (US 2004/0171728).
The disclosures with respect to Sadikovic and Kumar et al. in paragraph 6 are incorporated here by reference.
However, they do not specifically mention that their silica nanoparticles are present in an aqueous emulsion as required by claim 8.
Nevertheless, Xue et al. disclose the use of silicon dioxide particles in the presence of aqueous emulsion to modify cement formulations and obtaining good performance properties (Paragraphs [0009] , [0019], [0022] and [0094]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the silicon dioxide particles in the presence of aqueous emulsion taught by Xue et al. in the composition suggested by Sadikovic and Kumar et al., with a reasonable expectation of successfully obtaining good performance properties.
Correspondence
8. For record purposes, it is noted that there are no prior art rejections of present claim 7 at this time.
9. 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.
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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.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
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