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 .
The amendment dated 01/22/2026 has been considered and entered. The response was considered but was not found to be persuasive. Therefore, the previous rejections are maintained.
Claim Rejections - 35 USC § 102/103
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.
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 1 – 9, 11 – 14, 16 – 22 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Ihsan et al. (US 2017/0240470) or, in the alternative, under 35 U.S.C. 103 as obvious over Ihsan et al. (US 2017/0240470)
In regards to claim 1, Ihsan teaches geopolymer coating composition for building construction and a coated component for use in building construction comprising the coating and a method of coating comprising applying a curable geopolymer mixture to the surface of the component and curing the mixture (abstract). The geopolymer is prepared from a curable mixture comprising about 15% to about 35% of metakaolin, about 20% to about 55% by weight of aqueous alkali metal silicate solution which comprises from 15 to 45% of alkali metal silicate [0044].
The composition comprises fibrous materials such as glass fibres, etc., at from 4 to 20% of the composition [0045]. A filler may be present at up to 55% (i.e., 0 to 55%) in the composition [0060]. The fillers may be any material such as glass microspheres, aerogels, aeroclays, perlite (i.e., about 1% in one embodiment), vermiculite, wollastonite (i.e., about 3.2% in one embodiment), soluble starch (i.e., about 0.4%) etc. [0039, 0067, 0077]. Optionally, up to 30% of muscovite mica (an aluminosilicate) also provides filler of the claim [0044]. Since fillers are optional, the claim is either anticipated or is at least obvious.
While the size of the fillers is not particularly recited, they are known to be particles having sizes in the claimed ranges. For instance, wollostonite (i.e., wollastonite) minerals are known to be microparticles (i.e., having from 0 to 200 microns) and thus would have particle sizes in the claimed range. Similarly, Perlite are particles known to have particle sizes of from 1 to 12mm which overlaps the claimed range.
In regards to claims 2, 3, Ihsan teaches the composition comprising the alkali metal silicates such as sodium and potassium alkali metal silicates [0054].
In regards to claim 4, Ihsan teaches the composition comprising water [0053].
In regards to claim 5, Ihsan teaches the composition optionally comprising fillers and combinations such as muscovite (mica) which is an aluminosilicate, wollastonite (i.e., wollostonite), perlite etc. as previously stated.
In regards to claims 6 – 9, Ihsan teaches the composition having the claimed limitations as previously stated.
In regards to claims 10 – 13, Ihsan teaches the composition which is cured. The process of curing does not carry patentable weight, or is at least provided when the cured product of the claim is taught.
In regards to claim 14, Ihsan teaches the composition having the claimed ingredients which has similar ingredients and would be expected to exhibit similar properties as claimed.
In regards to claims 16, 21, 22, Ihsan teaches the composition having the same ingredients which are blended together and cured. Curing may occur at ambient temperatures [0059]. While the specific process parameters such as reaction temperature, order of mixing, time interval for curing are not particularly recited, they are parameters that are optimizable and persons of ordinary skill in the art at the time the claim was filed would have found obvious.
In regards to claims 17 – 20, Ihsan teaches the composition having the claimed ingredients which are blended together and cured and useful as a coating on a substrate and/or provides a composite having fibers such as fiber glass etc., as previously stated.
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 – 3, 9, 11 – 18, 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 8 of copending Application No. 18/364,271. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches composition for coating comprising filler, geopolymer binder comprising metakaolin and alkali metal silicate in a solvent, which is used as an overlay on paper and cured at about 60 to 100℃ and provides a thickness of up to about 100 gsm and similar properties as the claimed composition. The process conditions such as process of adding and mixing the recited ingredients in various steps and at specific lengths of times, or the use of containers are routine process steps that would have been obvious to persons of ordinary skill in the art and can routinely be optimized
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that Ihsan fails to teach the specific fillers of the claims or their particle sizes. The argument is not persuasive.
The claimed fillers such as wollostonite etc., are taught. Wollostonite is a microparticle that is known to have the particle sizes of the claims.
Applicant argues that the geopolymers of Ihsan are foamed geopolymers which are different from the geopolymers of the claims. The argument is not persuasive.
The claims are drawn to a composition having specific ingredients which Ihsan teaches. Also, the claims do not teach away from foamed geopolymers contrary to applicant’s arguments.
Applicant argues that the composition of Ihsan comprises muscovite mica which is not required in the claims. The argument is not persuasive.
While the claim may not require the presence of muscovite, it does not teach away from its presence in the composition.
Applicant does not disparage the rejections based on double patenting which are hereby maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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