FINAL REJECTION
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 without traverse of Group I and fine aggregates as the boron containing carrier, in the reply filed on 02/20/26, is acknowledged. The claims that read on said election are 1, 4, 6-9, 17 and 19. As such, non-elected claims 2-3 and 18 are withdrawn from further consideration.
Applicant’s addition of claims 41-42 in the amendment filed 06/18/26 is acknowledged, but said claims are withdrawn by the examiner because they fall outside the scope of the elected invention. Specifically, new claim 41 is functionally drawn to a structure, not the elected composition, wherein the structure has been coated with the cementitious shielding composition of claim 1. In addition, new claim 42 is directly dependent on claim 18 which was not elected by applicant in the reply filed 02/20/26.
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, 4, 6, 9, 17 and 19 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.
Independent claim 1, by the amendment filed 06/18/26, has become very indefinite due to the sub-limitation of: “wherein the boron elemental composition is based on elemental boron, the boron compound, or a combination thereof,” as set forth in lines 20-21. Said sub-limitation renders the claim very indefinite because it directly contradicts the sub-limitation of: “and boron particles, wherein the boron particles include a boron compound, elemental boron, or a combination thereof;” as set forth in lines 3-4 of independent claim 1 which makes a specific distinction between boron compounds and elemental boron. As such, the phrase “boron elemental composition” is confusing and thus indefinite.
Claims 4, 6, 9, 17 and 19 are also being rejected here because they are either directly or indirectly dependent on rejected independent claim 1.
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.
Claim(s) 1, 4, 6, 17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hall et al. U.S. Patent Number 4,123,392.
Hall et al. discloses a non-combustible nuclear radiation shield formed by a continuous matrix of cementitious material (e.g. Portland cement, plaster of Paris, silica gel, clay, lead powder etc.) containing dispersed inorganic and/or organic hydrogenous material (e.g. metal hydrides, hydroxides, ammonium salts, polyethylene, polypropylene, polystyrene carbohydrates etc.). The dispersed material is a rigid combustible organic plastics or resin in particulate form. No more than 10% of the particles pass a 150 mesh screen. The continuous matrix forms 40-98% of the total volume of the shield, see title, abstract, column 4, lines 6-30 and column 4, line 66 to column 6, line 69.
Hall et al. further discloses that various additives can be added to the non-combustible nuclear radiation shielding composition to improve its neutron absorption abilities. Boron and boron containing compounds are specifically disclosed as being highly preferred neutron absorption additives, see column 8, line 32 to column 9, line 63. Hall et al. also discloses that it is most preferred that the boron compound is first loaded onto and admixed with polyethylene particles (hydrogenous material), said mixture is then subjected to a roll milling or kneading operation. The examiner holds that such results in the polyethylene particles having a coating of the boron compound thereon, thus fully meeting the limitations of applicant’s dependent claim 4.
Applicant’s said claims are deemed to be anticipated over Examples 2, 4 and 8-9. As way of illustration only, in Example 8 (in one embodiment) a polyethylene slab (corresponds to Applicant’s hydrogenous compound of independent claim 1) containing 5 weight percent boron was pulverized to pass a 60 mesh screen (i.e. 250 micron screen). Note: Once pulverized, the boron coated polyethylene particles also correspond to Applicant’s fine aggregates of independent claim 1. Two parts by volume of this powder was then admixed with Portland cement (corresponds to Applicant’s hydraulic binder of independent claim 1) and then made to pass a 300 mesh screen (i.e. 48 micron screen), and then formed into a non-combustible nuclear radiation shield. Hall et al.’s said Examples 2, 4 and 8-9 (also see second table in column 14), clearly teach non-combustible nuclear radiation shield compositions wherein the concentration of the components clearly fall within Applicant’s claimed concentration ranges of independent claim 1.
Claim(s) 9 is rejected under 35 U.S.C. 103 as obvious over Hall et al. U.S. Patent Number 4,123,392.
Hall et al. has been described above and “differ” from applicant’s claimed invention in that it is unclear if there is a direct teaching (i.e. by way of an example) to where the 10B abundance percentage is greater than the natural abundance of about 20 percent.
Applicant’s said dependent claim 9 would be clearly obvious over Hall et al.’s disclosure of column 9, lines 3-20 wherein it is taught that increasing the 10B abundance percentage over natural boron improves neutron absorption. In light of said teaching, one having ordinary skill in the art would be highly motivated to actually use a boron additive that comprises a higher 10B isotope percentage than found in natural boron compounds. It is not inventive to merely follow the direct disclosure of a prior-art reference.
Response to Arguments
Applicant's arguments filed 06/18/26 with the amendment have been fully considered but are not persuasive to put the application in condition for allowance for the reasons set forth above. Additional examiner comments are set forth next.
Applicant argues: “As stated by the Office, Hall teaches polyethylene compounds having boron thereon. Hall does not teach boron particles as a component of the cementitious shielding composition. In addition, Hall does not teach a cementitious shielding composition having all of the claimed features in combination. While Hall generally discloses that boron and boron-containing compounds can be added to improve neutron absorption abilities, Hall does not disclose a composition having an elemental boron composition of about 1 to 10 weight percent of the cementitious shielding composition as now stated in claim 1. The Examples cited by the Office do not establish the required elemental boron composition. For instance, Example 8 of Hall describes a polyethylene slab containing 5 weight percent boron that was pulverized, but this 5 weight percent boron is relative to the polyethylene component, not the total cementitious shielding composition. In addition, Hall does not disclosure the specific combination of compositional ranges now recited in claim 1. Hall does not provide any teachings for this specific combination of components or motivation to use the specific combinations. For at least these reasons, the rejection of claim 1 should be withdrawn.”.
Examiner’s response: The last paragraph of Applicant’s amendment to independent claim 1, basically incorporated the limitations of now canceled dependent claims 7-8, which were previously rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hall et al.. Thus, these concentration limitations were already indicated by the examiner to be anticipated within Hall et al.’s Examples 2, 4 and 8-9. Furthermore, contrary to Applicant’s argument that: “Hall does not teach boron particles as a component of the cementitious shielding composition.”. is the actual disclosure of Hall et al.’s said Examples. Hall et al.’s Example 8 clearly teaches pulverized polyethylene in particulate form containing 5 weight percent boron, wherein said is subsequently admixed with other components, such as Portland Cement (a hydraulic binder), to make a cementitious shielding composition.
The Examiner also takes issue with Applicant’s sub-argument that: “The Examples cited by the Office do not establish the required elemental boron composition. For instance, Example 8 of Hall describes a polyethylene slab containing 5 weight percent boron that was pulverized, but this 5 weight percent boron is relative to the polyethylene component, not the total cementitious shielding composition.”.
The Examiner wants to point out that Applicant’s independent claim 1 has the sub-limitation of: “wherein the cementitious shielding composition has an elemental boron composition of about 1 to 10 weight percent of the cementitious shielding composition,” [Emphasis added]. Said wording does NOT require that the boron component itself is about 1 to 10 weight percent of the cementitious shielding composition, but rather requires that a composition comprising a boron component is contained in an amount of about 1 to 10 weight percent of the overall cementitious shielding composition. As way of illustration only, if the concentration of boron in the elemental boron composition is 2 weight percent, and the elemental boron composition itself is contained in an amount of 1 weight percent of the overall cementitious shielding composition, the actual concentration of the boron component in the overall cementitious shielding composition would be 0.02 weight percent.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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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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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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