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 .
Response to Claim Amendment filed 03/25/2026
2. Claim 1 was amended to include new limitations supported at page 5, lines 5-15, of the specification as originally filed.
New claim 9 was also added which is supported at page 5, lines 11-14, together with page 7 (“Table 2”), of the specification as originally filed.
Thus, no new matter is present.
Since this amendment is presented for the first time in prosecution of this application, it necessitates new ground(s) of rejection(s) as set forth below.
Accordingly, this action is properly made FINAL.
3. Claim 4 was amended to be in independent form. However, the new amendment “0.02%-3% by weight” to claim 4 is not properly supported by the specification as originally filed and thus, introduce new matter in violation of 35 USC 112(a) for the reasons set forth below.
4. The 112(b) rejection set forth in paragraph 4 of the previous Office action mailed 01/15/2026 is no longer applicable and thus, withdrawn because the applicants amended claims 2 and 4 to provide the same with clarity.
5. The 112(d) rejection set forth in paragraph 5 of the previous Office action mailed 01/15/2026 is no longer applicable and thus, withdrawn because the applicants amended claim 2 to provide proper dependency.
Claim Objections
6. Claim 1 and 4 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to add the phrase “wherein the PET is a PET microfiber” after the claimed phrase “a length of 0.5 mm-100 mm”. As to Claim 4: The applicants are advised to replace the claimed phrase “a PET microfiber” with the new phrase “a polyethylene terephthalate (PET) microfiber”. The applicants are also advised to replace “on PET microfibers” with “on the PET microfiber” to provide consistent language.
Appropriate corrections are required.
Specification-Objection
7. The disclosure is objected to because of the following informalities:
At page 5, line 10, of the present specification: The applicants are advised to replace the comma (,) between “41” and “4” with a period (.).
Appropriate correction is required.
Drawings-Objection
8. The drawings filed 06/13/2023 are objected to for the following reason:
The applicants are advised to replace all the commas (,) with a period (.) both in Fig. 1 and Fig. 2. For instance, it is suggested to change “8,7” to “8.7”.
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.
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.
9. Claims 4 and 8 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.
Newly amended claim 4 recites, among other things, “finish oil between 0.02%-3% by weight” (Emphasis added).
This new limitation fails to satisfy the written description requirement of 35 USC 112(a) since there is no written descriptive support for this phrase in the application as originally filed, see MPEP § 2163. While page 5, lines 11-15, of the specification as originally filed only shows finish oil between 0.02%-3%, there is no written descriptive support for finish oil as a % by weight. Moreover, there are no examples in the specification where one could reasonably calculate the finish oil amount based on weight of the microfibers. Tables 1 and 2 of the present specification report weights for water, dry mix and fiber, but make no mention of finish oil.
Accordingly, it is deemed that this limitation introduces new matter in violation of 35 USC 112(a).
It is also noted that since claim 8 is dependent on claim 4, and thus, incorporates all the limitations of claim 4, including those that introduce new matter, claim 8 is rejected along with claim 4.
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.
10. Claims 1-2 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 842 400 (hereinafter referred to as “EP ‘400”) in view of DE SEQUEIRA SERRA NUNES (US 2013/0139731).
This rejection is adequately set forth in paragraph 6 of the previous Office action mailed 01/15/2026 and is incorporated therein.
As to newly amended claims 1 and 2: EP ‘400 discloses a mixture obtained from admixing a dry mortar and fibers with water (Paragraphs [0001], [0009], and [0011]), corresponding to the claimed mortar mixture, wherein the dry mortar (corresponding to the claimed dry mix) of the mixture comprises at least one cementitious binder and at least one aggregate, preferably a mixture of sand and fine aggregate (corresponding to the claimed sand/aggregate), in a dry state (Paragraphs [0010]-[0011] and [0049]). EP ‘400 further discloses that its fibers can be natural fibers and fibers based on polyethylene terephthalate (PET) (Paragraphs [0050] and [0051]), corresponding to the claimed polymer fibers. Moreover, EP ‘400 teaches using different fibers including polypropylene (Paragraph [0051]) as required by newly amended claim 2. Additionally, EP ‘400 teaches employing fibers including PET fibers having a diameter of 1-100 µm (which overlaps with the claimed diameter of 5-35 microns) and a length of 0.1-1.1 mm (which overlaps with the claimed length of 0.5-100 mm) (Paragraphs [0023], [0051] and [0055]). 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 applicants, has been held to be a prima facie case of obviousness.).
While EP ‘400 broadly discloses adding at least one cementitious binder comprises or consists of any cement, such as Portland cement, to the dry mortar (dry mix) of the mixture for building materials (Paragraphs [0011] and [0027]-[0039]), it does not specify its cement as including white cement/grey cement as required by the claims of the present application.
Nevertheless, DE SEQUEIRA SERRA NUNES discloses the use of grey and white Portland cements as cementitious binders for the purposes of obtaining fast-developing strengths and dependent on the desired colors of building materials (Paragraphs [0022] and see also abstract).
Given the above teachings, it would have been obvious to one of ordinary skill in the art employ the white cement/grey Portland cements taught by DE SEQUEIRAQ SERRA NUNES as the cements of the cementitious binders in the mortar mixture of EP ‘400, with a reasonable expectation of successfully obtaining fast-developing strengths and desired colors of building materials.
Additionally, EP ‘400 discloses using the above mortar mixture for building materials (Paragraph [0011]), which broadly includes the claimed pool plasters. In any event, since EP ‘400 and DE SEQUERIA SERRA NUNES collectively suggest preparing identical or substantially identical mixture as claimed, the mixture suggested by EP ‘400 and DE SEQUERIA SERRA NUNES would also be capable of being used for pool plasters. See 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.” See also MPEP 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”). Moreover, there is nothing on this record to distinguish the claimed mortar mixture from the mortar mixture described by EP ‘400 and DE SEQUERIA SERRA NUNES.
11. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over EP 3 842 400 (hereinafter referred to as “EP ‘400”) in view of DE SEQUEIRA SERRA NUNES (US 2013/0139731) as applied to claims 1-2 and 5-6 above, and further in view of Chau et al. (US 9,802,865).
The disclosures with respect to EP ‘400 and DE SEQUEIRA SERRA NUNES set forth above and in the previous Office action mailed 01/15/2026 are incorporated herein.
However, they do not mention using PET microfibers having the particular length recited in claim 9.
Nevertheless, Chau et al. disclose the use of PET fibers having a length of less than about 12 mm (which is inclusive of the claimed length of 6 mm) and a diameter of less than about 50 microns (corresponding to the claimed PET microfibers) for the purposes of imparting improved flexure strength for applications involving mortar and concrete repair materials (Col. 6, lines 26-67).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the PET microfibers having the claimed length taught by Chau et al. in the mortar mixture suggested by EP ‘400 and DE SEQUERIA SERRA NUNES, with a reasonable expectation of successfully imparting improved flexure strength for applications involving mortar and concrete repair materials.
Response to Applicants’ Arguments in their Remarks filed 03/25/2026
12. Applicants’ argument in their Remarks are fully considered but are not found persuasive for the following reasons:
(A) The applicants argue at pages 6 and 7 of their Remarks that EP ‘400 and Nunes do not teach the specific micro-scale diameters or the claimed length range
However, this argument is not well taken because EP ‘400 does teach the specific micro-scale diameters and the claimed length range. Specifically, as mentioned above, EP ‘400 teaches employing fibers including PET fibers having a diameter of 1-100 µm (which overlaps with the claimed diameter of 5-35 microns) and a length of 0.1-1.1 mm (which overlaps with the claimed length of 0.5-100 mm) (Paragraphs [0023], [0051] and [0055]). 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 applicants, has been held to be a prima facie case of obviousness.).
(B) The applicants argue at pages 8 and 9 of their Remarks that applicants’ disclosure demonstrates an unexpected property combination that is not predictable outcome of following the broad teaching of the possibility to use other fibers based on polyolefins such as fibers based on PET in EP ‘400, and thus, the specific PET fiber with a diameter of 5-35 microns and a length of 0.5-100 mm is a critical feature of the invention recited in newly amended claim 1. The applicants rely on Table 2 of the present specification for further support.
Contrary to the applicants’ argument, the combination of EP ‘400 and Nunes would have suggested the claimed mortar mixture.
With respect to the applicants' position and data in Table 2 of the present specification directed to alleged unexpected results, it is well settled that the applicants have the burden of showing that the claimed invention as whole imparts unexpected results. Here, (1) the applicants do not include any details of a meaningful comparison (i.e., side-by-side experimental evidence) between the claimed invention and the closest prior art holding all variables constant except for the novel features of the claimed invention.
Moreover, (2) the applicants have not shown why the limited showing in Table 2 is commensurate in scope with the degree of protection sought by the very broad claims of the instant application, see MPEP § 716.02. While the examples in Table 2 of the present specification are limited to specific mixtures made of particular amounts of water, dry mix made of white sand and sand, and PET fiber having a particular length of 6 mm, the claims are not so limited. The applicants have not shown that the alleged unexpected properties applicable to the mixtures exemplified in the specification are applicable to the myriad of other materially different mixtures embraced by the claims. The claims as recited require any amounts of water, dry mix comprising white cement/grey cement and sand/aggregate, and polymer fiber comprising PET having a diameter of 5-35 microns and broad range length of 0.5-100 mm.
Accordingly, the applicants fail to rebut the prima facie case of obviousness established in the record.
(C) The applicants argue at pages 9 and 10 of their Remarks that the cited references do no individually or in combination recognizes or address the specific technical issues of pool plaster exposed continuously or repeatedly to water, chemicals and mechanical wear, and thereby the inventor identified a problem others did not.
However, this argument is not convincing at this time because as long as some reason, motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the reference be combined for the reasons or problems contemplated by the inventor. According to MPEP section 2141, III, “In determining obviousness, neither the particular motivation to make the claimed invention nor the problem the inventor is solving controls. The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all facts.” In this case, for the reasons set forth above, the collective teachings of EP ’400 and Nunes would have suggested the newly claimed mortar mixture.
(D) The applicants argue at page 10 of their Remarks that claim 9 recites additional features not shown in the cited references.
As mentioned above, because claim 9 is presented for the first time in prosecution of this application, it necessitates new ground(s) of rejection. Thus, as mentioned above, the newly cited Chau et al. in combination with EP ‘400 and Nunes would have suggested the claimed length. Specifically, Chau et al. disclose the use of PET fibers having a length of less than about 12 mm (which is inclusive of the claimed length of 6 mm) and a diameter of less than about 50 microns (corresponding to the claimed PET microfibers) for the purposes of imparting improved flexure strength for applications involving mortar and concrete repair materials (Col. 6, lines 26-67). It follows that it would have been obvious to one of ordinary skill in the art to use the PET microfibers having the claimed length taught by Chau et al. in the mortar mixture suggested by EP ‘400 and Nunes, with a reasonable expectation of successfully imparting improved flexure strength for applications involving mortar and concrete repair materials.
(E) The applicants at pages 10 and 11 of their Remarks that claim 4 was further amended to address the 112(b) rejection set forth in the prior Office action, and thus, claim 4 together with dependent claim 8 are in condition for allowance.
However, while there are still no prior art rejections of present claims 4 and 8 and Examiner appreciates the amendment made to claim 4, the amendment added to claim 4 presents new matter in volitation of 35 USC 112(a) for the reasons set forth above.
Correspondence
13. As mentioned in paragraph 7 of the earlier Office action mailed 01/15/2026, it is noted that there are no prior art rejections of present claims 4 and 8.
14. 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.
15. 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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