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
Claims 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 27, 2026.
Applicant's election with traverse of Group I, claims 1-11 in the reply filed on May 27, 2026 is acknowledged. The traversal is on the ground(s) that the Office has not met the burden that the groups lack unity with each other specifically describing the special technical feature in each group. This is not found persuasive because the restriction was required on the grounds that the groups of inventions do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding technical feature because the shared technical feature among the inventions does not make a contribution over the prior art which was presented in the previously mailed restriction requirement. The mere incorporation of the limitations of claim 1 into the claims of Groups II-VI does not establish unity where the common subject matter does not define a contribution over the prior art. With respect to Applicant’s argument that the Office has misinterpreted the phrase “contribution which each of the inventions, considered as a whole, makes over the prior art” as relating to patentable claims and Applicant’s allegation that said interpretation denies Applicant’s due process since the claims have not been examined nor rejected, “[i]f the examiner finds that a national stage application lacks unity of invention under § 1.475, the examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted. Such requirement may be made before any action on the merits but may be made at any time before the final action at the discretion of the examiner. Review of any such requirement is provided under §§ 1.143 and 1.144” (emphasis added, see MPEP 1893.03(d)). Furthermore, although Applicant argues that the International Searching Authority has searched the claims belonging to different groups identified within the previously mailed restriction requirement, this does not preclude the Office from making an independent finding of lack of unity.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on July 25, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
The information disclosure statement (IDS) submitted on July 25, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
The information disclosure statement (IDS) submitted on September 28, 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the Office.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 2 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claims 1 and 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Shibai et al. (US20020099115, hereinafter referred to as “Shibai”), Carelli et al. (US20140238676, hereinafter referred to as “Carelli”) and Uzawa et al. (JP2002193655A, English translation provided for citations, hereinafter referred to as “Uzawa”).
As to Claim 1: Shibai teaches a powdery dispersant for hydraulic compositions comprising a copolymer particle obtained by polymerizing a vinyl monomer (a) which may be an unsaturated carboxylic acid derivative having a polyoxyalkylene group (e.g., methoxypolyethylene glycol ([0030]), which reads on the claimed constituent unit (2) represented by the claimed formula (2) wherein R2 = Me or H, R3 = H, R4 = 1 carbon atom, and n = 1) and a vinyl monomer (b) which may be a monocarboxylic acid monomer (e.g., (meth)acrylic acid ([0032]), which reads on the claimed constituent unit (1) represented by the claimed formula (1) wherein R1 = Me or H, and M = H or a alkali metal), the polymerized product of which may form a particle (i.e., component (A1)) having a particle diameter of 500 µm or less ([0055]), which substantially overlaps with the claimed particle size range and would not require the presence of particles 70 µm or less. While Shibai does not explicitly teach a melting point for the constituent units (1) and (2), evidence indicates that methoxypolyethylene glycol monomethacrylate1 and methacrylic acid2 inherently exhibit melting points within the claimed range.
Shibai teaches that the composition may comprise an anti-foam agent or surfactant ([0054]), but does not teach a surface tension at a concentration of 5 mass% thereof.
Carelli teaches a related cement slurry composition comprising organic polymeric particles (e.g., poly(acrylic) particles ([0025]) blended with a non-ionic surfactant (Abstract and [0018]). Carelli teaches various non-ionic surfactants having a surface tension of 21 to 36 dynes/cm (wherein 1 dyne/cm = 1 mN/m) at a concentration of 1 wt% in water at 25 ˚C (Table 2), which is construed to fall within the claimed range (i.e., measured at 5 mass%) as the surface tension behavior of non-ionic surfactants is understood to decrease with increasing concentration until the critical micelle concentration. Based on the disclosure of Carelli, a person having ordinary skill in the art would have understood that the surface tension of a nonionic surfactant component should be routinely optimized to within the claimed range to achieve improvement in polymeric particle dispersion and foam reduction ([0029]), thus rendering obvious the selection of the same for the anti-foam agent or surfactant contemplated by Shibai.
Shibai teaches that the composition may comprise inorganic particle carrier compound (e.g., silica powder) ([0043]), but is silent towards the median diameter thereof.
Uzawa teaches a related cement-based hydraulic composition comprising an inorganic powder which may be quartz (i.e., silica) having an average particle diameter of 3 to 20 µm ([0018]), which is within the claimed range. It would have been obvious to a person having ordinary skill in the art at the time of the invention to select a particle diameter within the claimed range for the inorganic powder additive contemplated by Shibai, and the motivation to have done so would have been, as Uzawa suggests, that the overlapping portion is a usable range for the particle diameter of an inorganic powder additive within a cement-based hydraulic composition known to improve packing density after hardening ([0018]).
Shibai does not measure or report a surface tension for the overall hydraulic composition at a concentration of 5 mass% at 25 ˚C.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Shibai as modified by Carelli and Uzawa teaches all of the ingredients in the amounts disclosed in the instant specification made by a substantially similar process such that a person having ordinary skill in the art using the plain meaning of the claim language in light of the specification as it would be understood to result in the claimed properties. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e., overall surface tension of the hydraulic composition, would naturally arise and be achieved by a composition with all the claimed ingredients. 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.
As to Claim 3: Shibai, Carelli, and Uzawa teach the composition of claim 1 (supra).
Shibai does not measure or report a surface tension for the overall hydraulic composition at a concentration of 5 mass% at 25 ˚C.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Shibai as modified by Carelli and Uzawa teaches all of the ingredients in the amounts disclosed in the instant specification made by a substantially similar process such that a person having ordinary skill in the art using the plain meaning of the claim language in light of the specification as it would be understood to result in the claimed properties. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e., overall surface tension of the hydraulic composition, would naturally arise and be achieved by a composition with all the claimed ingredients. 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.
As to Claim 4: Shibai, Carelli, and Uzawa teach the composition of claim 1 (supra).
Shibai teaches a powdery dispersant for hydraulic compositions comprising a copolymer particle obtained by polymerizing a vinyl monomer (a) which may be an unsaturated carboxylic acid derivative having a polyoxyalkylene group (e.g., methoxypolyethylene glycol ([0030]), which reads on the claimed constituent unit (2) represented by the claimed formula (2) wherein R2 = Me or H, R3 = H, R4 = 1 carbon atom, and n = 1) and a vinyl monomer (b) which may be a monocarboxylic acid monomer (e.g., (meth)acrylic acid ([0032]), which reads on the claimed constituent unit (1) represented by the claimed formula (1) wherein R1 = Me or H, and M = H or a alkali metal), the polymerized product of which may form a particle (i.e., component (A1)). Shibai teaches that the composition may comprise an anti-foam agent or surfactant ([0054]) (i.e., a component A2). Shibai further teaches wherein the dispersant has a particle diameter of 500 µm or less ([0055]), which overlaps with the claimed particle size range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Shibai suggests, that the overlapping portion is a usable range for the particle size of a powdery dispersant composition for use in hydraulic applications.
As to Claim 5: Shibai, Carelli, and Uzawa teach the composition of claim 1 (supra).
Shibai does not explicitly teach wherein the composition comprises 0.5 to 9 vol% having a particle size of 70 µm or less. However, a person having ordinary skill in the art at the time of the invention would have recognized that the particle size and particle size distribution would control the solubility of the dispersant (see [0055] of Shibai). As such, it would have been considered to be a result effective variable by a person having ordinary skill in the art at the time of the invention. “[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 MPEP § 2144.05(II). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have optimized the particle size and distribution of particle sizes of Shibai through routine experimentation, and the motivation to have done so would have been, as Shibai suggests, to control the solubility/dispersibility of the powdery dispersant (see [0055] of Shibai).
As to Claim 6: Shibai, Carelli, and Uzawa teach the composition of claim 1 (supra).
Shibai teaches a powdery dispersant for hydraulic compositions comprising a copolymer particle obtained by polymerizing a vinyl monomer (a) which may be an unsaturated carboxylic acid derivative having a polyoxyalkylene group (e.g., methoxypolyethylene glycol ([0030]), which reads on the claimed constituent unit (2) represented by the claimed formula (2) wherein R2 = Me or H, R3 = H, R4 = 1 carbon atom, and n = 1) and a vinyl monomer (b) which may be a monocarboxylic acid monomer (e.g., (meth)acrylic acid ([0032]), which reads on the claimed constituent unit (1) represented by the claimed formula (1) wherein R1 = Me or H, and M = H or a alkali metal), the polymerized product of which may form a particle (i.e., component (A1)) having a particle diameter of 500 µm or less ([0055]), which substantially overlaps with the claimed particle size ranges. While Shibai does not explicitly teach a melting point for the constituent units (1) and (2), evidence indicates that methoxypolyethylene glycol monomethacrylate3 and methacrylic acid4 inherently exhibit melting points within the claimed range.
As to Claim 7: Shibai, Carelli, and Uzawa teach the composition of claim 1 (supra).
Shibai further teaches wherein the composition comprises silica powder or calcium carbonate ([0043]).
As to Claim 8: Shibai, Carelli, and Uzawa teach the composition of claim 1 (supra).
Shibai teaches that the composition may comprise inorganic particles (e.g., silica) ([0043]), but is silent towards the median diameter thereof.
Uzawa teaches a related cement-based hydraulic composition comprising an inorganic powder which may be quartz (i.e., silica) having an average particle diameter of 3 to 20 µm ([0018]), which is within the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to select a particle diameter within the claimed range for the inorganic powder additive contemplated by Shibai, and the motivation to have done so would have been, as Uzawa suggests, that the overlapping portion is a usable range for the particle diameter of an inorganic powder additive within a cement-based hydraulic composition known to improve packing density after hardening ([0018]).
As to Claim 9: Shibai, Carelli, and Uzawa teach the composition of claim 1 (supra).
Shibai further teaches exemplary compositions comprising methacrylic acid (the structure of which reads on the claimed constituent unit (1)) in an amount of 70 mol% and MPEG (the structure of which reads on the claimed constituent unit (2)) in an amount of 30 mol% (Table 1, Copolymer No. 5), which are within the claimed range.
As to Claim 10: Shibai, Carelli, and Uzawa teach the composition of claim 1 (supra).
Shibai teaches that the composition may comprise inorganic particle carrier compound (e.g., silica powder) ([0043]), which may be present in an amount of 1 to 80% by weight of the overall powdery dispersant composition ([0043]). Taking an exemplary composition of Shibai (e.g., Production Example 1) which only requires a copolymer which reads on the claimed component (A1), this range overlaps with the claimed range for an amount of a particle (B). In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Shibai suggests, that the overlapping portion is a usable range for an amount of an inorganic particle carrier within a powdery dispersant composition for use in hydraulic applications.
As to Claim 11: Shibai, Carelli, and Uzawa teach the composition of claim 1 (supra).
Shibai teaches that the composition may comprise an anti-foam agent or surfactant in an amount of 0.01 to 10 wt% by weight of the overall powdery dispersant composition ([0054]). Taking an exemplary composition of Shibai (e.g., Production Example 1) which only requires a copolymer which reads on the claimed component (A1), this range overlaps with the claimed range for an amount of a surfactant component (A2). In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Shibai suggests, that the overlapping portion is a usable range for an amount of a surfactant/anti-foam component within a powdery dispersant composition for use in hydraulic applications.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Shibai et al. (US20020099115, hereinafter referred to as “Shibai”), Carelli et al. (US20140238676, hereinafter referred to as “Carelli”) and Uzawa et al. (JP2002193655A, English translation provided for citations, hereinafter referred to as “Uzawa”).
As to Claim 2: Shibai teaches a powdery dispersant for hydraulic compositions comprising a copolymer particle obtained by polymerizing a vinyl monomer (a) which may be an unsaturated carboxylic acid derivative having a polyoxyalkylene group (e.g., methoxypolyethylene glycol ([0030]), which reads on the claimed constituent unit (2) represented by the claimed formula (2) wherein R2 = Me or H, R3 = H, R4 = 1 carbon atom, and n = 1) and a vinyl monomer (b) which may be a monocarboxylic acid monomer (e.g., (meth)acrylic acid ([0032]), which reads on the claimed constituent unit (1) represented by the claimed formula (1) wherein R1 = Me or H, and M = H or a alkali metal), the polymerized product of which may form a particle (i.e., component (A1)) having a particle diameter of 500 µm or less ([0055]), which substantially overlaps with the claimed particle size ranges. As the structures of the claimed component (A1) copolymer are met by Shibai, the melting point of the of the monomers used to form the structure within the scope of the claimed structure are construed to meet the claimed melting point range.
Shibai teaches that the composition may comprise an anti-foam agent or surfactant ([0054]), but does not teach a surface tension at a concentration of 5 mass% thereof.
Carelli teaches a related cement slurry composition comprising organic polymeric particles (e.g., poly(acrylic) particles ([0025]) blended with a non-ionic surfactant (Abstract and [0018]). Carelli teaches various non-ionic surfactants having a surface tension of 21 to 36 dynes/cm (wherein 1 dyne/cm = 1 mN/m) at a concentration of 1 wt% in water at 25 ˚C (Table 2), which is construed to fall within the claimed range (i.e., measured at 5 mass%) as the surface tension behavior of non-ionic surfactants is understood to decrease with increasing concentration until the critical micelle concentration. Based on the disclosure of Carelli, a person having ordinary skill in the art would have understood that the surface tension of a nonionic surfactant component should be routinely optimized to within the claimed range to achieve improvement in polymeric particle dispersion and foam reduction ([0029]), thus rendering obvious the selection of the same for the anti-foam agent or surfactant contemplated by Shibai.
Shibai teaches that the composition may comprise inorganic particles (e.g., silica) ([0043]), but is silent towards the median diameter thereof.
Uzawa teaches a related cement-based hydraulic composition comprising an inorganic powder which may be quartz (i.e., silica) having an average particle diameter of 3 to 20 µm ([0018]), which is within the claimed range. It would have been obvious to a person having ordinary skill in the art at the time of the invention to select a particle diameter within the claimed range for the inorganic powder additive contemplated by Shibai, and the motivation to have done so would have been, as Uzawa suggests, that the overlapping portion is a usable range for the particle diameter of an inorganic powder additive within a cement-based hydraulic composition known to improve packing density after hardening ([0018]).
Shibai does not teach a surface tension for the overall hydraulic composition at a concentration of 5 mass% at 25 ˚C. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Shibai as modified by Carelli and Uzawa teaches all of the ingredients in the amounts disclosed in the instant specification made by a substantially similar process such that a person having ordinary skill in the art using the plain meaning of the claim language in light of the specification as it would be understood to result in the claimed properties. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e., overall surface tension of the hydraulic composition, would naturally arise and be achieved by a composition with all the claimed ingredients. 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.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Danzinger et al. (US20080139701, hereinafter referred to as “Danzinger”). Danzinger teaches a cement dispersant composition comprising a blend of polymeric particles and inorganic particles. Danzinger further teaches that the polymeric spherical particles have an average particle diameter of 30 to 300 µm, and further teaches that the diameter of particles having a diameter of 50 to 350 µm account for 70% or more of the total mass of the particles (Abstract). Danzinger further teaches that controlling subsets of particle size ranges prevents blocking/caking and promotes solubility of the dispersant ([0043]).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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, Mark Eashoo can be reached on (571) 272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767
1 Sigma-Aldrich - Poly(ethylene glycol) methyl ether methacrylate (Mn = 500) Product Page
2 NOAA - Methacrylic Acid Safety Data Sheet
3 Sigma-Aldrich - Poly(ethylene glycol) methyl ether methacrylate (Mn = 500) Product Page
4 NOAA - Methacrylic Acid Safety Data Sheet
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