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 1-11 and 15-17 and species R1-O (2) for the hydrophilic group and a shear treatment in the reply filed on 4/7/2026 is acknowledged. Claim 1 is designated as generic to the elected group. Claims 1-3, and formula (2) of claim 4, 5-11 and 15-19 read on the elected species.
Claims 12-14 and 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventive group and non-elected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/6/2026.
Claims 1-11 (regarding claim 4 only formula (2) is considered as it is representative of the elected species the remaining formula are withdrawn from consideration at this time) and 15-17 are under consideration/examination.
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, 9/11/2025, and 1/12/2024 have been considered by the examiner.
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.
Claim Rejections - 35 USC § 112
Claims 7 and 17 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 7 is indefinite as it appears to repeat various Markush members, it is unclear whether applicant is attempting to claim a combination of additives/compositional components by their function in combination or if the applicant is merely reciting a broad Markush group.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 does not recite any additional compositional components but rather appears to recite the intended use of the composition as a cement hydration product. The intended use is not required to give life meaning and vitality to the claim. See MPEP 2111 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) Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-8, 15 and 17 is/are rejected under 35 U.S.C. 102 (a)(1)(2) as being anticipated by JP H05310457A Hiroyuki Takihana
Regarding Claims 1-8, 15 and 17:
JP H05310457A Hiroyuki Takihana discloses a reinforcing material for hydraulic inorganic molded body (Abstract)(meeting claim 15)
The composition reinforces a hydraulic inorganic molded body and high strength inorganic material capable of obtaining a hydraulic inorganic with good moldability even with a small amount of water. (Abstract) (meeting claim 15) The hydraulic composition may include ordinary Portland cement, simple cement etc. (L166-174) (meeting claim 15 and 17)
The composition comprising:
Mighty 150 sodium lignin sulfonate (L277 and L320 meeting the limitation for a compound containing a hydrophilic group and a hydrophobic group with high affinity for carbon this being one of the examples used in the instant specification) and a powder including flake graphite (Line 141 meeting the limitation for flaky carbon of claim 1-- 100 % carbon meeting claim 8)
The average particle size of 200 microns (L250)
(Mighty 150 + Naphthalene sulfonic acid-formaldehyde condensate sodium salt )
Water is added to the composition (L250)(meeting claim 2)
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241
432
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(meeting the limitation for aryl group of claim 5 meeting the limitation for a So3Na group of claim 4 and for an aryl group with two or more aromatic rings of claim 6),
The composition reduces water L 244-249 and L339-345 further meeting claim 7 )
The polymer substance includes those that absorb excess water and can serve as a binder for filling voids such as methyl cellulose, hydroxymethyl cellulose, hydroxyethyl cellulose and cellulose ethers such as carboxy methyl cellulose and hydroxy propyl methyl cellulose, polyvinyl alcohol, polyacrylic acid and lignin sulfonate added at 5 pbw per 100 pbw of the hydraulic inorganic substance (L 200-210) (meeting the limitation for a hydrophilic group R1O where R1 is a divalent organic group and the oxygen is an ether bond)
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300
388
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Showing an ether group and divalent organic group of CH2/methylene bridge (meeting the limitation for an alkyl group of claim 5 where the ether group and divalent organic group are hydrophilic and the CH2CO2H group is hydrophobic and the hydroxyl groups are hydrophilic. Meeting claims 3-4 also meeting the limitation for a water reducing admixture of claim 7 (see instant specification at P25-P26 where polycarboxylate ether compound are listed as well as other compounds above and below recited by the prior art)
(claim 5 having been afforded the broadest reasonable interpretation in view of the specification claimed any number of carbons for the alkyl, alkenyl, cycloalkyl, aryl groups and 3 or more carbons for the poly oxy alkylene group)
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.
Claim(s) 9-11 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP H05310457A Hiroyuki Takihana as applied to claims 1-8, 15 and 17 above.
Claim Interpretation/Introduction:
This claim interpretation/Introduction is expressly incorporated into each rejection below as though fully set forth therein. As below set forth the prior art renders obvious the various claimed ranges.
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)"
The prior art teaches optimizing various properties of the composition by controlling and altering size, thickness, etc. as more fully below set forth such as viscosity, strength, coating ability, water retention, etc. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Regarding Claims 9-10:
JP H05310457A Hiroyuki Takihana discloses the limitations above set forth.
The average thickness of the powder (i.e. flaky graphite) refers to the average length in the direction of the shortest dimension of the powder, and the average particle size refers to the average dimension of the surface perpendicular to the average thickness. When the average particle size of the tabular inorganic substance is small, it becomes difficult for the tabular inorganic substance to retain water, and when it is large, a gap is generated between the superabsorbent resin and the tabular inorganic substance. It becomes difficult for the entire surface to be covered with the powder of the plate-like inorganic substance, and the water absorbed by the super absorbent polymer is discharged at one time when kneading with the hydraulic inorganic substance, and the powder is sprinkled. The average particle size is preferably 0.01 to 0.5 times.
The inorganic particles sizes include average particle size 230 micron average thickness 3.5 and 46 microns average thickness 8 (Examples)
The average particle size of 200 microns (L250)
Regarding Claim 11:
JP H05310457A Hiroyuki Takihana discloses the limitations above set forth.
Since a continuous powder is generated and the mechanical strength of the finally obtained cured product becomes low when the amount increases, it is preferably 50 to 500 parts by weight with respect to 100 parts by weight of the super absorbent polymer. (within/overlapping the claimed range)
Regarding Claim 16:
JP H05310457A Hiroyuki Takihana discloses the limitations above set forth.
In the second aspect of the present invention, a water-soluble polymer substance whose surface is not coated with the powder of the tabular inorganic substance may be added, if necessary. The water-soluble polymer substance dissolves in water to impart viscosity, enhances the fluidity of the composition obtained from the hydraulic inorganic substance and water, and makes the shape ability good (L195-199)
Further, it is not particularly limited as long as it is a polymer substance that can absorb excess water in the hardened cement and can serve as a binder for filling voids between cement particles, for example, methyl cellulose, hydroxymethyl cellulose, hydroxyethyl cellulose, (L200-203)
Examples thereof include cellulose ethers such as carboxymethyl cellulose and hydroxypropyl methyl cellulose, polyvinyl alcohol, polyacrylic acid, and lignin sulfonate. If the amount of the above water-soluble polymer substance added is too large, the water resistance of the resulting molded article will decrease, so 5 parts by weight or less is preferable for 100 parts by weight of the hydraulic inorganic substance. (overlapping claim 16)(L204 and 243 et seq)
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.
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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
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