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 without traverse of Group I claims 1-12 in the reply filed on 1/16/2026 is acknowledged.
Applicant’s election of Group I in the reply filed on 1/16/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/12/2026, 2/20/2024, 2/20,2024 and 1/23/2024 have been considered by the examiner.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
35 USC § 102
Claim(s) 1 and 4-5 is/are rejected under 35 U.S.C. 102(a)(1)(2) as anticipated by Barrera et al (US 2016/0046823)
Regarding claims 1and 4-5:
CLAIM INTERPRETATION:
Claim 1 recites an intended use in the preamble: “A binder reducing formulation for addition to a cementitious composition comprising a hydraulic binder”
The claim proceeds to recite the binder reducer formulation comprising carbon nanotubes, glycerol, silane, nano silica and surfactant. The preamble does not further limit the claimed composition which is fully recited in the body of the claim.
MPEP 2111.02 If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)
As below set forth Barerra teaches a composition comprising carbon nanotubes, nano silica surfactant etc. of instant clams 4-5. No cement and no hydraulic binder is required in these claims.
Barrera et al teaches a composition comprising:
silica such as nano particles of silica [0110] (meeting the limitations of claims 1 and 6 for nano silica)
glycerol lubricant and preservative (See claim 43 reference)(meeting the limitations of claims 1 and 6 for glycerol)
multi walled carbon nanotubes (See claim 43 reference)(meeting the limitations of claims 1 and 6 for carbon nanotubes and claim 12 for multi walled nanotubes)
where the nanotubes may have surface modification and functionalized carbon nanotubes (i.e. functionalization [0053]-[0054]) where the nanotubes are treated with acid and functionalized [0088][0105] (meeting claim 12)
a silane compound [0054] such as 3 glycidyloxypropyltrimethoxysilane [0096] (i.e. meeting the limitation of claims 1 and 6 for a surfactant and the limitations of claims 4-5 )
one or more surfactants [0008]
The composition comprises a binder [0008]
The composition is included in cement and concrete, etc. [0015][0093]
The composition comprises surfactants and other additives to adjust strength and offer alternatives to fully water based solutions [0011—0012]a and
Includes additives such as defoamers, surface cleaners, UV blockers, [0014] masking agents, slip agents, adherent agents [0090] the composition may comprise ceramic nanoparticles to enable color change [0009] and may comprise ingredients that affect color such as dye, and multifunctional additives, cleaners, [0089] (meeting claim 11 for colorant)
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 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.
35 USC § 103
Claim(s) 2-3 is/are under 35 U.S.C. 103 as obvious over Barrera et al (US 2016/0046823) as applied to claims 1 and 4-5 above further in view of Guerrero Gonzales (WO 2020/239919A1)
Regarding Claims 2-3
Berrera discloses the limitations above set forth.
Berrera discloses:
multi walled carbon nanotubes (See claim 43 reference)(meeting the limitations of claims 1 and 6 for carbon nanotubes and claim 12 for multi walled nanotubes)
where the nanotubes may have surface modification and functionalized carbon nanotubes (i.e. functionalization [0053]-[0054]) where the nanotubes are treated with acid and functionalized [0088][0105]
Berrera does not expressly disclose the acid functionalizing the multi walled carbon nano tubes to be a carboxylic acid.
Guerrero Gonzales (WO 2020/239919A1) discloses a similar composition to that of Berrera comprising cement and carbon nanotubes. Guerrero discloses the carbon nanotubes are functionalized by carboxyl groups and result in a significant enhancement of compressive strength when used in low dosages (Abstract) and are multi walled carbon nanotubes (P5 L15-30)
The composition may further comprise one or more additives common in the field such as plasticizers/superplasticizers, strength enhancers accelerators air entrainers corrosion inhibitors etc. (P14 L30-P15L10)
The composition comprising Portland cement and other hydraulic binders and pozzolana slag flay ash silica etc. and aggregates (P15 L5 – P16 L10)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use a carboxylic acid to functionalize the multi walled carbon nanotubes of Berrera as taught by Guerrero in order to further impart improved compressive strength with a reasonable expectation of success. Since Berrera expressly contemplates improved strength and expressly contemplates acid functionalized carbon multi walled nanotubes doing so amounts to nothing more than use of a known functional izer (carboxylic acid) in a known environment (carbon multi walled nanotube) to achieve an expected result (improved strength of cement compositions) with a reasonable expectation of success.
35 USC § 103
Claim(s) 6, 7-8 and 9-12 are rejected under 35 U.S.C. 103 as obvious over Barrera et al (US 2016/0046823) as applied to claims 1, 4-5 above further in view of Gonzalez Calderon et al (WO 2020201476A1)
Regarding claims 6, 7-8 and 9-12:
Barrera et al teaches a composition comprising:
silica such as nano particles of silica [0110] (meeting the limitations of claims 1 and 6 for nano silica)
glycerol lubricant and preservative (See claim 43 reference)(meeting the limitations of claims 1 and 6 for glycerol)
multi walled carbon nanotubes (See claim 43 reference)(meeting the limitations of claims 1 and 6 for carbon nanotubes and claim 12 for multi walled nanotubes)
where the nanotubes may have surface modification and functionalized carbon nanotubes (i.e. functionalization [0053]-[0054]) where the nanotubes are treated with acid and functionalized [0088][0105] (meeting claim 12)
a silane compound [0054] such as 3 glycidyloxypropyltrimethoxysilane [0096] (i.e. meeting the limitation of claims 1 and 6 for a surfactant and the limitations of claims 4-5 )
one or more surfactants [0008]
The composition comprises a binder [0008]
The composition is included in cement and concrete, etc. [0015][0093]
The composition comprises surfactants and other additives to adjust strength and offer alternatives to fully water based solutions [0011—0012]a and
Includes additives such as defoamers, surface cleaners, UV blockers, [0014] masking agents, slip agents, adherent agents [0090] the composition may comprise ceramic nanoparticles to enable color change [0009] and may comprise ingredients that affect color such as dye, and multifunctional additives, cleaners, [0089] (meeting claim 11 for colorant)
The examiner maintains that one of ordinary skill in the art at the time of filing the invention would find it obvious to try to use cement with aggregate and a hydraulic binder or in the alternative would find it obvious to try a cement type hydraulic binder in the composition of Barrera
NOTE TEACHINGS OF INSTANT SPECIFICATION WHERE APPLICANT RECOGNIZED CEMENT IS HYDRUALIC BINDER: Applicant recognizes that concrete comprises a cement binder and aggregate [0050] of instant specification. Applicant recognizes hydraulic binder includes cement such as Portland cement [0015] instant specification
Further Regarding Claims 6-8 and 11-12:
Berrera discloses the limitations above set forth.
Berrera does not expressly disclose the composition comprising aggregate or the cement to be Portland cement:
Assuming arguendo one of skill in the art at the time of filing the invention would not readily envisage cement to be or to comprise a hydraulic binder and/or would not find same obvious to try:
Further Regarding the limitations for hydraulic binder, Portland cement, aggregate:
Gonzalez Calderon et al WO 2020201476A1 discloses a composition similar to that of Berrera. Gonzalez et al discloses a container for transporting nano materials and the use of nanomaterials in production of concrete or mortar. (Abstract) The composition comprises nanoparticles such as carbon nanoparticles (:10 L1-8) in the form of a nanotube. (P10 L8-15)
The nanotubes are functionalized (P12 L3-8) such as with a silane and silicic acid (P12 L15-22)
The composition comprises as with silane or siloxane 3-Glycidoxypropyltrimethoxysilane, and combinations thereof (P12 L10-15)
The nanotubes are used in production of concrete and mortar to impart and enhance properties such as compressive strength, tensile strength bond strength ductility, permeably and shrinkage (P10 L30-35)
The composition includes a surface modifier and surfactant including a silicone surfactant and combinations thereof (P11 L17-35)
The composition comprises cement an aggregate the nanomaterial solvent dispersed nanomaterial etc. (P15 L30-P16 L10) The cement is Portland cement as it is typically used in production of concrete or mortar (P16 L30-35)(where Portland cement is acknowledged by applicant as a hydraulic binder per above)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use the Portland cement and aggregate of Gonzelez in the composition of Berrera as the Portland cement with aggregate will be imbued with greater strength as recognized by both Berrera and Gonzalez. Berrera expressly contemplates the use of cement and concrete so doing so is nothing more than adding a known types of cement Portland cement with an aggregate to a known composition of carbon nanotubes with various nano silica and surfactants to achieve an expected result of concrete composition with improved strength with a reasonable expectation of success.
Further Regarding Claims 9-10:
The composition may be cured [0014] [0051-0052][0112] The composition improves strength [0-016] As such the prior art renders obvious to one of ordinary skill in the art at the time of filing the invention to use an effective amount to improve strength. It is known that one of ordinary skill in the art at the time of filing the invention would be able to ascertain an effective amount to improve strength. See MPEP 2173.05 c
The reference teaches the claimed composition and teaches the composition improves strength, as such it will necessarily possess the claimed properties including but not limited to mechanical strength after curing as set forth in instant claims 9-10 in ranges which meet and/or in the alternative would be expected overlap the claimed property ranges.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
See MPEP 2144.05(I): "In the case where the 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)"
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732