DETAILED ACTION
Pending Claims
Claims 1-4 are under examination.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 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 1 is confusing and therefore vague and indefinite as both smectite and montmorillonite are recited components however montmorillonite is a type of smectite clay (see the Odom reference entitled “Smectite clay Minerals: Properties and Uses”) and therefore it is unclear as to how they are distinguished from each other. As montmorillonite is an example of a smectite, one component (i.e. montmorillonite) would satisfy both the claimed smectite and montmorillonite component and this leads to confusion as the dependent claims recite an amount for each of these materials. Claims in which one component is defined so broadly that it reads on a second, fail to meet the requirements of the second paragraph of 35 USC 112. See Ex parte Ferm et al 162 USPQ 504. Clarification is requested.
Claim 2 is confusing and therefore vague and indefinite as the upper limit of the montmorillonite component or the lower limit of one of smectite or vermiculite as incorrect because if the lower limit (i.e. 5%) for each of smectite and vermiculite is correct then the upper limit of the montmorillonite component can never be 90% as the composition also comprises magnesium hydroxide and graphite components. Clarification is requested.
Claim 4 is confusing and therefore vague and indefinite as it is unclear as to how the composition can comprise 80% by weight of the montmorillonite, 10% by weight of the smectite, 10% by weight of the vermiculite are contained, based on the total weight of the grounding resistance soil mixture when the composition also contains magnesium hydroxide and graphite components. Clarification is requested.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by China Patent Specification No. CN 108467582 A.
The reference teaches, in the abstract, a highly insulated flame-retardant material which comprises 25-35 pts. wt. polyamide resin, 10-30 pts. wt. phenolic resin, 4-8 pts. wt. aluminum hydroxide, 2-5 pts. wt. expanded graphite, 5-10 pts. wt. magnesium hydroxide, 8-12 pts. wt. silicon dioxide, 6-8 pts. wt. aluminum oxide, 8-12 pts. wt. vermiculite, 1-3 pts. wt. octadecyl dimethyl benzyl ammonium bromide, 5-10 pts. wt. glass fiber, 5-10 pts. wt. cotton fiber, 1-3 pts. wt. sodium montmorillonite, 2-3 pts. wt. urea, 3-5 pts. wt. propylene carbonate, 4-8 pts. wt. montmorillonite, 5-7 pts. wt. barium sulfate, 3-6 pts. wt. plasticizer, 1-6 pts. wt. antioxidant, 1-3 pts. wt. silane coupling agent, 0.5-1 pts. wt. accelerating agent and 2-3 pts. wt. compatibilizer.
The instant claim is met by the reference.
As for claim 1, the reference teaches a composition comprising at least expanded graphite, magnesium hydroxide, vermiculite, sodium montmorillonite, and montmorillonite. As the composition contains 2 different types of montmorillonite and since montmorillonite is a smectite clay, then one meets the montmorillonite component and the other the smectite component. As the composition contains the same components as claimed it can function as a grounding resistance and ground rod corrosion inhibitor absent evidence showing otherwise. It is the position of the examiner that the preamble limitation is of no consequence when the composition is the same. Ultimate utility does not make a composition patentable. That is, the future use of a composition adds little or no patentable weight to a composition claim when the composition is the same (ln re Pearson 181 USPQ 641). Patentability does not depend upon intended use (Ex parte Wikdahl 10 USPQ2d 1546).
References Cited By the Examiner
Korea Patent Specification No. KR 10-1321821 B1 teaches a grounding module having resistor layers wherein one layer may be formed of a composition as follows: Graphite 50 to 55% , 8 to 12% of bentonite, 30 to 40% of cement, 0.8% of magnesium sulfate (MgSO4), 0.3% of sodium nitrite (NaNO2), 0.25% of silicon oxide (SiO2) , 0.2% of calcium oxide (CaO), and 0.2% of magnesium oxide (MgO).
Korea Patent Specification No. KR 10-20050106162 A teaches a composition of an earth resistance agent comprising 60 to 99% by weight montmorillonite and 1-40% by weight of water-soluble polymer such as polyvinyl alcohol, polyethylene oxide and 1 to 30% by weight of silica.
Japan Patent Specification No. JP H07-142136 A teaches a grounding resistance-reducing agent containing a conductive fiber, and a hygroscopic substance such as bentonite.
These references cited by the Examiner fail to teach or render obvious the claimed composition.
Allowable Subject Matter
Claims 2-4 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and provided that the 112(b) rejections are overcome.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach all of the limitations found in the dependent claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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February 2, 2026
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