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
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/02/2026.
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 1-11 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 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.
Regarding claim 1, the phrases “preferably” and “more preferably” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 2-11 depend from claim 1 and are therefore similarly indefinite.
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.
Claims 1, 2, 4-5, 10-11, 16-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hanna 20120115380 A1.
Regarding claim 1, Hanna teaches a composition comprising for a water storage liner (Abstract, Title). Hanna teaches the composition is an aqueous composition (Paragraph [0038]). This reads on the claimed “water.” Hanna also teaches the composition comprises a binder polymer (Paragraph [0006]). This reads on the claimed binder polymer. Hanna also teaches the composition comprises additives (Paragraph [0148]). Hanna also teaches the composition comprises a first, second, and third filler (Paragraph [0013-0015]).
Hanna teaches the second filler has a size of 0.5-5 microns (Paragraph [0111]). This overlaps with the claimed range of 5-99 microns.
Hanna teaches the first filler comprises sand, ground glass, or crushed rock (Paragraph [0110]). Hanna teaches the first filler can be a mixture of any of these (Paragraph [0110]). Hanna teaches the first filler can has a size between 50 to 300 microns. This overlaps with the claimed range of a fine filler of 50-500 microns.
Hanna also teaches the composition can also comprise a third filler (Paragraph [0113]). Hanna teaches the third filler can be sand (Paragraph [0113]). It would have been obvious to select sand as the third filler because is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Hanna teaches the third filler can include any of the previous fillers (Paragraph [0113]). Hanna teaches coarse sand comprising 18-40 mesh can be used (Paragraph [0110]). It would have been obvious to select the third filler as a coarse sand with a size of 18-40 mesh because is prima facie obvious to select a known material based on its suitability for its intended use.
The coarse sand has a size of 18-40 Mesh. This corresponds to a size of about 400-1000 microns. This overlaps with the claimed range of coarse filler of 500-1000 microns.
Claim 1 also specifies the plaster mass is “for a single or multi layered plaster layer” The claimed intended use limitation does not require steps to be performed or limit the claims to a particular structure. Therefore, this feature does not further limit the scope of the instant claims and need not be taught by the prior art in order to read on the claims. See MPEP 2111.02
Regarding claims 2 and 16, Hanna teaches the polymer binder is 10-80% of the composition (Paragraph [011]). This overlaps with the claimed range of 3-15%.
Regarding claims 4 and 17, Hanna teaches the first filler is 5-50% by weight of the entire composition. This overlaps with the claimed range of 16-28%. Hanna teaches the second filler is 2-50% of the coating. This overlaps with the claimed range of 25-45% of the finest filler. Hanna teaches the third filler is present in amounts from 1-10% this overlaps with the claimed range of 6-18%.
Regarding claim 5, sand (Paragraph [0110]) reads on the claimed “silicate.”
Regarding claim 10, Hanna teaches the composition comprises a setting accelerator (Paragraph [0118]). This reads on the claimed “curing agent.”
Regarding claim 11, Hanna teaches the first filler is 5-50% by weight of the entire composition. This overlaps with the claimed range of 15-30%. Hanna teaches the second filler is 2-50% of the coating. This overlaps with the claimed range of 20-50% of the finest filler. Hanna teaches the third filler is present in amounts from 1-10% this overlaps with the claimed range of 5-20%.
Hanna teaches the polymer binder is 10-80% of the composition (Paragraph [0011]). This overlaps with the claimed range of 3-15% polymer binder.
Hanna teaches the setting accelerator is 2% or less by weight (Paragraph [0119]). This overlaps with the claimed range of 0-1.0% by weight. Hanna also teaches the composition comprises 0-1% other additives (Paragraph [0117]). This overlaps with the claimed range of 0-10%. Hanna also teaches the composition can comprise 75% other components and 25% water (Paragraph [0120]). This overlaps with the claimed range of 10-30% water.
Regarding claim 20, Hanna teaches the composition comprises a defoaming agent (Paragraph [0117]). Hanna teaches the defoaming agent is a silicone defoaming agent (Paragraph [0117]). This reads on the limitations of claim 20 where the additive is a polysiloxane.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hanna 20120115380 A1 as evidenced by Surface Prep, Crushed Glass Blasting Media (retrieved from: https://surfaceprep.com/product/crushed-glass/, retrieved on: 7/8/2026).
Regarding claim 6, Hana teaches the first filler is ground glass (Paragraph [0110]). Ground glass has a Moh’s hardness of 5.5-6.0 (Surface Prep, Page 2). This overlaps with the claimed range of at least 5.0.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hanna 20120115380 A1 in view of VInavil EVA 04, Technical Data Sheet, 11/30/2022.
Regarding claim 3, Hanna is silent on the glass transition temperature being in a range from 5-15C. However, Hanna does teach that usable vinyl acetate ethylene polymers under tradenames such as Vinavil can be used (Paragraph [0108]). Vinavil EVA 04 is a commercial Vinavil polymer. There are a limited number of VAE Vinavil polymers. It would have been obvious to one of ordinary skill in the art to select Vinavil EVA 04 as the VAE polymer because this represents a commercially available suitable EVA polymer identified by Hanna as a suitable VAE polymer (Paragraph [0108]). It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Vinivil EVA 04 has a glass transition temperature of 15 (Vinavil Technical Data Sheet, Page 1). This overlaps with the claimed glass transition temperature of 5-15C.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hanna 20120115380 A1 in view of Davis 20050076849 A1.
Regarding claim 18, Hanna is silent on the filler being one of the claimed fillers of claim 18. Hanna teaches a liner for water channels and water storage containers (Paragraph [0001])
Davis teaches a liner for an aquaculture reservoir which comprises a polymer (Abstract). Davis also teaches the linter additionally comprises fillers, and secondary fillers (Paragraph [0040]). Davis teaches that the filler can be a crystalline or non-crystalline silicon dioxide filler (Paragraph [0028]). It would have been obvious to one of ordinary skill in the art to select a quartz filler such as the one listed in Davis as the silicon dioxide filler (instead of the silica sand filler) of Hanna because Davis teaches quartz fillers are suitable silicon dioxide fillers in water liner applications. This reads on the claimed “quartz.” The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Claims 9 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hanna 20120115380 A1 in view of Chen US 20070179250.
Regarding claim 9, Hanna is silent on the finest filler being an oxide. However Hanna teaches the second filler is a reinforcing filler such as calcium carbonate (Paragraph [0111]). Hanna teaches a liner for water channels and water storage containers (Paragraph [0001])
Chen teaches a resin used as a pipe liner (Paragraph [0111]). Chen also teaches the pipe liner comprises a filler (Paragraph [0100]). Chen lists calcium carbonate and aluminum hydroxide as equally suitable fillers.
It would have been obvious to one of ordinary skill in the art to select aluminum hydroxide as the filler of Hanna instead of calcium carbonate because Chen teaches calcium carbonate and aluminum hydroxide are equally suitable as fillers in a composition for pipe liner applications. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. This reads on the claimed “aluminum hydroxide.”
Allowable Subject Matter
Claims 7-8 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 in such a way as to overcome the rejection under 35 U.S.C. 112(b) above.
Regarding claim 7, Hanna teaches the third filler is coarse sand which has a Moh’s hardness of over 5.0. Hanna does not teach multiple coarse fillers where one has a hardness of at most 5.0. Therefore Hanna does not teach the limitations of claim 7.
Regarding claim 8, Hanna teaches the second filler is calcium carbonate (Paragraph [0111]). Hanna also teaches the second filler can be wollastonite (Paragraph [0111]). Hanna teaches the second filler can be a mixture of calcium carbonate and wollastonite (Paragraph [0111]). It would have been obvious to select a mixture of calcium carbonate and wollastonite as the second filler because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Calcium carbonate has a Moh’s hardness of 3.0 (GNP Graystar, Page 1, Mohs Hardness (retrieved from: https://gnpgraystar.com/wp-content/uploads/2020/05/MohsHardness-1.pdf, retrieved on: 7/8/2026). This overlaps with the claimed range of “a maximum of 5.” Wollastonite has a Mohs hardness of 4.5-5.5 (USGS Industrial Minerals of the United States, Page 1, Wollastonite–A Versatile Industrial Mineral, USGS Fact Sheet FS-002-01, February 2001, U.S. Department of the Interior, U.S. Geological Survey). This overlaps with the claimed range of at least 5.0. Hanna teaches the calcium carbonate comprises 23% of the composition (Paragraph [0120]. However, Hanna is silent about the composition comprising more wollastonite than the calcium carbonate filler. Hanna teaches away from the composition comprising more wollastonite than calcium carbonate filler.
Relevant Prior Art
Wings 20220002201A1 teaches a composition that comprises 3 fillers. However, Wings is silent on the size of each filler. Wings also teaches the composition comprises water and the reference example teaches the water is 25-30% of the composition (Table 1). This overlaps with the claimed range of 25-30%. Wings is also silent on the composition comprising a curing agent. Therefore Wings does not read on the limitations of claim 11.
Avramidis US 20210009731 A1. teaches a composition comprising a copolymer (Abstract). Avramidis teaches the composition is used as a tape joint compound (Paragraph [0078]). Avramidis also uses the composition Avramidis teaches the composition also comprises additives such as curing agents and biocides (Paragraph [0078]). Avramidis also teaches the composition comprises a filler (Paragraph [0063]). However, Avramidis is silent on the composition comprising three different types of fillers.
Avramidis teaches the composition comprises the copolymer in amounts of 60% or greater this is outside of the range of the claimed amount of polymer binder exhibited in claim 11.
Wings 20210403744 teaches a composition comprises at least a first, second, and third filler (Paragraph [0028]). Wings also teaches the numbering (first, second, third and so on) can be changed (Paragraph [0028]). Wings also teaches the composition additionally comprises a binding agent (Paragraph [0034]). Wings teaches the binding agent is a polymer binding agent (Claim 8). Wings also teaches the composition comprises biocides as an additive (Paragraph [0046]). This reads on the claimed “additive.” Wings also teaches the composition comprises water (Paragraph [0047]). This reads on the claimed “water.”
Wings teaches the composition comprises a carbonate filler which is dolomite powder with a size of 10-30 microns. This reads on the claimed “finest filler.” Wings reaches the aluminum silicate filler has a D50 value from 90-200 microns this reads on the claimed “finest filler.”
However, Wings is silent on the third filler having a size of 500-2000 microns. Therefore, Wings does not read on the limitations of claim 1.
Moreel US 20190351595 teaches a composition for wall cladding comprising multiple fillers (Abstract). Moreel teaches the filling composition comprises a catalyst or hardener (Paragraph [0043]). Moreel teaches better filling occurs with fillers of different grain sizes one of a coarse grain size and one of a smaller finer grain size (Paragraph [0091]). Moreel also teaches the inclusion of a third even finer filler is preferable (Paragraph [0094]). However, Moreel is silent on the composition comprising water and therefore does not read on the limitation of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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