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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/12/2024 and 12/6/2023 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.
Claims 1-7 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 recites plastic crumb. This term is indefinite as there is no uniformly recognized size range for “crumb”. Giving the claims the broadest reasonable interpretation in view of the specification and for purposes of examination any particulate, grain, flake, etc. of plastic will be deemed to meet the limitation for crumb.
Claim 2 recites “a fraction 0.3 mm to 2.0 mm” clarification is required as to whether this is a different material from the sand or that the sand has a particle size including this range.
Claims 2-7 recites ranges of compositional components “on top of” it is unclear what this means. The examiner notes that since claim 1 recites that the plastic, the cement and the superplasticizer are to total 100 %, the composition cannot comprise any more additive components. The ranges of claims 2-7 are indefinite and the metes and bounds of the claims are indefinite.
Specification
The use of the term ARC 42/30 and Betodur AS which appears to be a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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) 1-3 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable Barrow et al (WO 98/50318A1) further in view of Ali, Jose, et al (US 2019/0337850)
Regarding Claims
Barrow discloses a composition comprising at least cement and particles of plastics (See claim 1 of reference)
Barrow discloses a cementious composition comprising 25-90 vol.% plastic particles (Abstract) preferably 30- 60 % plastic particles (P2 last 2 lines) (overlapping the claimed range of claim 1 and also leaving 10-75 wt.5 for cement making the range of cement an overlapping range)
The composition comprises at least one fine aggregate and other additives (P3 2nd par) and water (P3 par 3)
The composition will comprise an appropriate quantity of water (P5 Par 3) (rendering obvious the water of instant claim 6 esp. where the amounts of cement and plastic are recited as above)
The composition comprises cement (P5 par 2)
The composition comprises at least one fine aggregate such as sand quartzose or feldspathoid sand (i.e. silica sand of claim 2 where given the amount of plastic and cement will overlap the claimed range) or the like and other additives including stabilizers, plasticizers entrainment agents, additives conferring sulfate resistance, curing accelerators, setting retardant, colourants, and other additives known to those skill in the art (P5 par 4)
The additive are used in relatively small amounts. For example, macerator may be used at 0.3 to 0. 5 wt. % (P5 par 5) (meeting claim 3 with overlapping range)
The composition may further comprise pozzolanic substance include but not limited silica fume used in amounts greater than the additives (P5 6th par) (meeting the limitation of claim 7 with overlapping ranges given the amounts of plastic and cement recited)
Ground glass may be used as a fine aggregate to replace some of he sand (P5 last par)
Fine aggregate may replace some of the sand (P5 last par) (overlapping the range of claim 2 for fraction 0.3mm to 2. mm and also the range of silica sand given the amounts of plastic and cement)
While the reference recites plasticizer and one of ordinary skill in the art would find it obvious to try to use a “superplasticizer” -assuming arguendo it is not obvious to try:
Wile the reference recites fine aggregate and one of ordinary skill in the art would know that fine aggregate would meet or overlap the claimed fraction of incant claim 2, assuming it is not obvious:
Ali, Jose, et al (US 2019/0337850) discloses a concrete mixture comprises coarse aggregate and recycled plastic pieces from waste plastic such as polyethylene in the form of flakes, fibers or granules (i.e. crumbs) (Abstract)
Water Mixture:
The composition may be prepared as a premix to which water may be added [0109] 9a dry mixture) [0068] (dry ingredients) the dry ingredients may be mixed with each other before mixing with the water [0105] the composition may be a dry ready mix [0112]
Regarding Plastic:
Ali, Jose, et al (US 2019/0337850) discloses a concrete mixture comprises coarse aggregate and recycled plastic pieces from waste plastic such as polyethylene in the form of flakes, fibers or granules (i.e. crumbs) (Abstract) (meeting the limitation for plastic crumb.)
The plastic includes granules, flake and fibers such as in a size diameter of 2 mm and 2-5 mm long [1036-0137] meeting the limitation for plastic crumb.
The composition includes coarse aggregate which includes plastic of 10-100% of the coarse aggregate. The coarse aggregate is 5-40 wt.% of the composition (See claim 1 reference)( overlapping the range of plastic such as when the coarse aggregate is 100 % plastic and is in the composition at an amount of 40 wt.%)
The composition comprises 12-25 wt.% Portland cement (overlapping the claimed range) [0013] The Portland cement includes Type CEM 1 EN 197-1 (i.e. meeting claim 2 for CEM I 32.5)[0068]
Regarding silica sand, silica fume and gravel:
The composition comprises aggregates such as sand and gravel [0069]
The composition comprises 37-57 wt. % fine aggregate (fine aggregate i.e. sand and silica fume), 5-40 wt.% coarse aggregate [0013] (coarse aggregate – i.e. gravel)
The fine aggregate is sand having an average particle size of less than 1.5 mm [0026] The fine aggregate includes sand such as desert or dune sand [0071] the most common constituent of sand is silica [0072] [0075] fine aggregate includes sand [0075]
The composition may include a blend including silica fume [0068]
The composition includes gravel having a particle size 2 to 64 mm [0073] (overlapping the claimed range of 0/4 fraction) being a coarse aggregate. The coarse aggregate is 5-40 wt.% of the composition based on the amount of plastic in the coarse aggregate the amount of gravel will overlap the claimed range.
Regarding Superplasticizer:
The composition comprises superplasticizer of 0.1 to 2 wt.% [0022] the superplasticizers are high range water reducers which aid in reducing agglomeration by acting as a dispersant [0102] including melamine type superplasticizers including sulfonated melamine, poly melamine sulfonates, sulfonated melamine formaldehyde [0104] (meeting the limitation of claims 1 and 3) the examiner maintains that 2 wt. % is sufficiently close to 2.7 wt.% so as to render the claimed composition obvious to one of ordinary skill in the art at the time of filing the invention in the absence of evidence of criticality of ranges (the composition of the prior art is akin to that of the instant claims in that it comprises each and every component in ranges which overlap the instantly claimed ranges and is used as a cement composition and would be expected to perform in the same and/or similar manner so as not to be patentably distinct).
Ali et al teaches a concrete comprising waste plastic pieces and coarse aggregate having high compressive strength low thermal conductivity low weight (Abstract)
The composition comprises 12-25 wt. Portland cement, 37-57 % fine aggregate, 5-40 wt.% coarse aggregate and 5- 12 wt.% water [0013]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use a “superplasticizer” in the amounts taught by Ali in the composition of Barrow as Barrow expressly recites using those additives known to those of skill in the art and already contemplates a plasticizer. Further doing so amounts to nothing more than use of a known additive (superplasticizer) in a known composition (plastic cement mix) to achieve an entirely expected result (i.e. superplasticizers afford water retention and dispersant properties)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use fine aggregate in the sizes taught by Ali as the composition of Barrow as Barrow expressly recites using fine aggregate which are known to those of skill in the art to include the particle size taught by Ali (overlapping the claimed ranges).
Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
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)
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable Barrow et al (WO 98/50318A1) further in view of Ali, Jose, et al (US 2019/0337850) as applied to claims 1-3 and 6-7 above further in view of Dubey et al (US 2009/0239977)
Regarding Claim 4
Modified Barrow discloses the limitations above set forth. Barrow discloses the composition comprising known additives and discloses the composition comprising ground glass (as above set forth) Barrow does not expressly disclosed the composition comprising an ARC synthetic fiber.
Dubey et US 2009/0239977 al teaches a Cementous composition comprising glass fibers (i.e. an ARC fiber) (Abstract)
The composition comprises an inorganic cement binder including Portland cement an inorganic mineral filler such as silica sand at 0.8-1:50:1 weight ratio to the binder, a pozzolanic micro filler such as silica fume, a superplasticizer at 0.75-2.5 wt.% and water [0009]
The fiber reinforcement includes alkali resistant glass fibers for strength and weight properties [0043] in amounts such as 3 % [0251]
The product may have a laminate skin surface [0044]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add the alkali resistant glass fiber of Dubey to the composition of Barrow in order to impart improved strength and weight properties. (given the amount of plastic and cement etc. required by Barrow and an indication of the small amounts of the additives, the amount will overlap the claimed range)
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable Barrow et al (WO 98/50318A1) further in view of Ali, Jose, et al (US 2019/0337850) as applied to claims 1-3 and 6-7 above further in view of Albright et al (US 2011/0155019)
Regarding Claim 5:
Modified Barrow discloses the limitations above set forth. Barrow disclose the composition may be used in a variety of applications such as concrete, bricks, blocks, pipes, paving stones, tiles and garden ornaments. Since the composition may used in garden ornaments, adding decorative paint would be obvious to try for one of ordinary skill in the art at the time of filing the invention. Notwithstanding same, while Barrow discloses additional additives but does not expressly disclose paint (and assuming arguendo it is not obvious to try).
Albright et al (US 2011/0155019) Teaches a composition comprising:
Albright discloses a composition and formulation of cement for use in masonry products [0002] Cement blend for making concrete comprising 60-90 wt.% Portland cement, 0.1-6 wt.5 fumed silica, (See claim 1 reference) comprising water (and sand (See claims 10-11) and aggregate (See claim 12)
A polymeric binder such as thermoplastic polymers and thermosetting polymers such as PVA, PVDF, PEO, polyethylene, polypropylene, polyacrylate, urethan, polyester etc. in the form of particles having diameters of from about 0.01 microns to less than 10 microns or preferable 0.05 microns to about 1 micron [0116] (meeting the limitation for plastic crumb) The amount of binder is selected based on the desired degree of flexibility [01117]
The composition may be a component in a paint [0119] in any color [0120-0121]
The composition may comprise synthetic fibers [0137]
The mixture may be combined with latex paint to confer mold prevention and insulating properties [0057]
The composition may include paint 1- 20 wt.5 dry paint [0121]
The composition may be used as ornamental concrete (i.e. garden ornaments) as swell as bricks, wall board, concrete, roof tiles etc. [0132][0193]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add paint to the composition of Modified Barrow as taught by Albright in order to impart color to the product of Barrow such as garden ornaments and brick.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18567445 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application has the same effective filing date is not a divisional application and recites and claims the same compositional components in the claimed ranges differing only by recites the components are mixed rendering the composition obvious and subject to obviousness double patenting.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732