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
Applicant's election with traverse of Group I, Claims 1-15 in the reply filed on 01/13/2026 is acknowledged. The traversal is on the ground(s) that the Applicant finds that the finding of lack of unity of invention is premature because a full search of the prior art has yet to be conducted (see Applicant’s arguments at page 6, paragraphs 3-4). This is not found persuasive because, as outlined in the previous office action, the Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of “composition comprising alkali metal compound and aluminium sulfate, wherein the alkali metal is selected from sodium, potassium and/or lithium”, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Angelskaar et al. (US 2006/0048685 A1, cited in the IDS) (“Angelskaar” hereinafter). Angelskaar teaches an aqueous solution or dispersion of a blend of… aluminium sulphate… at least one of… sodium hydroxide (see Angelskaar at [0005]-[0006] and [0010]).
The requirement is still deemed proper and is therefore made FINAL.
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/13/2026.
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 5 and 15 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.
Claim 5 line 2 reciting “the alkali metal atoms” lacks proper antecedent basis because claim 1 recites “at least one soluble alkali metal compound”, which would contain “alkali metal ions”, not “alkali metal atoms”, as evidenced by Purdue (Atoms vs Ions) (“Purdue” hereinafter) (see Purdue at paragraphs 1-2 and 4 evidencing atoms are neutral… ions are electrically charged particles… the gain or loss of electrons by an atom to form negative or positive ions has an enormous impact on the chemical and physical properties of the atom… sodium metal, for example, which consists of neutral sodium atoms, bursts into flame when it comes in contact with water… positively charged Na+… unreactive).
Similarly claim 15 reciting “the calcium atoms or magnesium atoms” lacks antecedent basis because claim 15 recites “calcium compound or magnesium compound”.
Examiner will treat the recitation “atoms” as “ions”, which appears to be consistent with “at least one soluble alkali metal compound” recited in claim 1 and “calcium compound or magnesium compound” in claim 15.
Claim Rejections - 35 USC § 102
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.
Claims 1-4 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Angelskaar.
Regarding claim 1, Angelskaar teaches a method (see Angelskaar at [0005]-[0006] and [0009]-[0010] teaching an accelerator composition adapted to be used with sprayed cementitious compositions, which is a… dispersion of a blend of the essential components 1-3… component 1 – aluminium sulphate… optionally with at least one of components 4-7, with the proviso that at least one of… component 4… be present… component 4 – at least one of… sodium hydroxide, see Angelskaar at [0030] teaching the accelerator compositions may be prepared by simply mixing the abovementioned compounds in any order),
for adjusting the viscosity of an aluminum sulfate suspension (based on specification at page 6 lines 22-28 disclosing what is meant more particularly by “adjusting the viscosity” in the present context that the viscosity of the aluminum sulfate suspension is controlled and/or adjusted by the soluble alkali metal compound… more particularly, the presence of the soluble alkali metal compound alters or reduces the viscosity of the aluminum sulfate suspension compared to that of an aluminum sulfate suspension that does not contain the soluble alkali metal compound but is otherwise of identical composition, see Angelskaar at [0005]-[0006], [0009]-[0010] and [0030] outlined above and see steps below, which is taken to meet the claimed limitations because Angelskaar teaches the presence of the soluble alkali metal compound that alters or reduces the viscosity of the aluminum sulfate suspension),
comprising a step of mixing (see Angelskaar at [0030] teaching the accelerator compositions may be prepared by simply mixing the abovementioned compounds in any order),
at least one soluble alkali metal compound, wherein the alkali metal is selected from… sodium (see Angelskaar at [0010] teaching component 4 – at least one of… sodium hydroxide, see Angelskaar at [0025] teaching component 4 is typically added to the accelerator composition as a 30% weight solution in water). Since component 4 is added in a solution in water, it is taken to meet the claimed “soluble”,
aluminum sulfate (see Angelskaar at [0006] teaching component 1 – aluminium sulphate), and
water (see Angelskaar at [0030] teaching give an aqueous solution… in some cases, additional water will need to be added).
Regarding claim 2, Angelskaar teaches the limitations as applied to claim 1 above, and Angelskaar further teaches wherein the aluminum sulfate suspension is a solidification accelerator and/or hardening accelerator for a composition comprising a mineral binder, wherein the aluminum sulfate suspension is preferably a spray concrete accelerator (see Angelskaar at [0005] teaching an accelerator composition adapted to be used with sprayed cementitious compositions), which is taken to meet the claimed recitations because the limitations are not steps to the claimed method.
Regarding claims 3-4, Angelskaar teaches the limitations as applied to claim 1 above, and Angelskaar further teaches wherein the alkali metal compound is an… hydroxide (claim 3), and wherein the alkali metal compound is selected from… sodium hydroxide (claim 4) (see Angelskaar at [0010] teaching component 4 – at least one of… sodium hydroxide).
Regarding claim 11, Angelskaar teaches the limitations as applied to claim 1 above, and Angelskaar further teaches wherein the alkali metal compound is added to the aluminum sulfate suspension or during the production of the aluminum sulfate suspension… as an aqueous solution (see Angelskaar at [0025] teaching component 4 is typically added to the accelerator composition as a 30% weight solution in water, see Angelskaar at [0030] teaching the accelerator compositions may be prepared by simply mixing the abovementioned compounds in any order).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5, 7-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Angelskaar.
Regarding claim 5, Angelskaar teaches the limitations as applied to claim 1 above, and Angelskaar further teaches wherein an amount of the at least one alkali metal compound is chosen such that the alkali metal atoms, based on the total weight of the aluminum sulfate suspension, have a proportion of 0.02-5% by weight (see Angelskaar at [0010] teaching component 4 – at least one of… sodium hydroxide, see Angelskaar at [0018] teaching component 4 – up to 15%) (see MPEP 2144.05(I)). Sodium is taken to meet the claimed “alkali metal atoms/ions” (see 112 rejection).
Regarding claim 7, Angelskaar teaches the limitations as applied to claim 1 above, and Angelskaar further teaches wherein the aluminum sulfate suspension, based on the total weight of the aluminum sulfate suspension, contains 22-46% by weight of aluminum sulfate (Al2(SO4)3) (see Angelskaar at [0006] teaching component 1 – aluminium sulphate, see Angelskaar at [0015] teaching component 1 – from 30 to 60%) (see MPEP 2144.05(I)).
Regarding claim 8, Angelskaar teaches the limitations as applied to claim 1 above, and Angelskaar further teaches wherein the aluminum sulfate suspension, based on the total weight of the aluminum sulfate suspension, contains 0.01-15% by weight of aluminum hydroxide (see Angelskaar at [0012] teaching component 6 – aluminium hydroxide, see Angelskaar at [0020] teaching component 6 – up to 15%) (see MPEP 2144.05(I)).
Regarding claim 10, Angelskaar teaches the limitations as applied to claim 1 above, and Angelskaar further teaches wherein the aluminum sulfate suspension additionally contains 0.1-15% by weight, based on the total weight of the aluminum sulfate suspension, of an alkanolamine, wherein the alkanolamine used is advantageously… diethanolamine (see Angelskaar at [0007] teaching component 2 – at least one of… an alkanolamine, see Angelskaar at [0016] teaching component 2 – from 0.1 to 15%, see Angelskaar at [0023] teaching component 2, alkanolamine… preferably… diethanolamine) (see MPEP 2144.05(I)).
Claims 6, 9, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Angelskaar as applied to claim 1 above, and further in view of Schurch et al. (US 2010/0018440 A1) (“Schurch” hereinafter).
Regarding claims 6 and 9, Angelskaar teaches the limitations as applied to claim 1 above, but Angelskaar does not explicitly teach wherein the aluminum sulfate suspension, based on the total weight of the aluminum sulfate suspension, has a proportion of sulfate (SO4) of 19-40% by weight, and wherein the aluminum sulfate suspension, based on the total weight of the aluminum sulfate suspension, has a proportion of aluminum (Al) of 3.5-10% by weight (claim 6), and wherein a molar ratio of aluminum to sulfate in the aluminum sulfate suspension is less than or equal to 0.9 (claim 9).
As mentioned, Angelskaar teaches an accelerator composition comprising aluminum sulfate (see Angelskaar at [0005]-[0006]).
Like Angelskaar, Schurch teaches an accelerator composition comprising aluminum sulfate (see Schurch at [0028] the accelerator… comprises from 17 to 35% by weight sulfate, from 3.2 to 9.5% by weight of aluminum), which overlaps with the claimed “wherein the aluminum sulfate suspension, based on the total weight of the aluminum sulfate suspension, has a proportion of sulfate (SO4) of 19-40% by weight, and wherein the aluminum sulfate suspension, based on the total weight of the aluminum sulfate suspension, has a proportion of aluminum (Al) of 3.5-10% by weight” (claim 6).
Schurch also teaches the molar ratio of aluminum to sulfate must in every case be less than 0.83 (see Schurch at [0035]), which overlaps with the claimed “wherein a molar ratio of aluminum to sulfate in the aluminum sulfate suspension is… less than… 0.9” (claim 9).
Additionally, MPEP states that "[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", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected from 17 to 35% by weight sulfate, from 3.2 to 9.5% by weight of aluminum, and molar ratio of aluminum to sulfate of less than 0.83 as taught by Schurch for the aluminum sulfate in the accelerator as taught by Angelskaar because there is a reasonable expectation of success that the disclosed amounts would be suitable.
Regarding claims 12-15, Angelskaar teaches the limitations as applied to claim 1 above, but Angelskaar does not explicitly teach wherein the alkali metal compound is used for reducing viscosity in combination with a calcium compound or a magnesium compound (claim 12), wherein the calcium compound or magnesium compound is an oxide, hydroxide, carbonate, nitrate, sulfate, phosphate, halide, formate, acetate and/or citrate (claim 13), wherein the calcium compound is calcium carbonate, calcium oxide and/or calcium hydroxide and the magnesium compound is magnesium carbonate, magnesium oxide and/or magnesium hydroxide (claim 14), and wherein an amount of the calcium compound or magnesium compound is chosen such that the calcium atoms or magnesium atoms, based on the total weight of the aluminum sulfate suspension, have a proportion of 0.001-4% by weight (claim 15).
However, please see claim 6 and 9 rejections based on Schurch as it applies here as well.
Additionally, Schurch teaches in order to obtain accelerators having a long shelf-life, magnesium hydroxide (Mg(OH)2 is additionally used for the preparation, preferably in an amount of from 0.1 to 10% by weight… based on the total amount of the accelerator (see Schurch at [0041]), which is taken to meet the claimed wherein the alkali metal compound is used for reducing viscosity in combination with… a magnesium compound (claim 12), wherein the… magnesium compound is… hydroxide (claim 13), wherein… the magnesium compound is… magnesium hydroxide (claim 14), and wherein an amount of the… magnesium compound is chosen such that the… magnesium atoms (see 112 rejection), based on the total weight of the aluminum sulfate suspension, have a proportion of 0.001-4% by weight (claim 15) (see MPEP 2144.05(I)). Magnesium oxide is expected to be capable of reducing viscosity in combination with the alkali metal compound as taught by Angelskaar.
Additionally, MPEP states that "[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", and “the normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” (see MPEP § 2144.05.II.A).
As such, one of ordinary skill in the art would appreciate that Schurch teaches that in order to obtain accelerators having a long shelf-life, an amount of from 0.1 to 10% by weight magnesium hydroxide is added, and seek those advantages by adding an amount of from 0.1 to 10% by weight magnesium hydroxide in the accelerator as taught by Angelskaar.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add magnesium hydroxide as taught by Schurch in the accelerator as taught by Angelskaar in order to obtain accelerators having a long shelf-life, and to have selected an amount of from 0.1 to 10% by weight magnesium hydroxide as taught by Schurch in the accelerator as taught by Angelskaar because there is a reasonable expectation of success that the disclosed amounts would be suitable.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 6-9 and 12-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12-14 and 17 of U.S. Patent No. 12338174 (“’174” hereinafter). Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and ‘174 claim a method for adjusting the viscosity of an aluminum sulfate suspension comprising the step of mixing aluminum sulfate and soluble magnesium compound.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731