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 2/25/26 and 12/7/23 have been considered by the examiner.
Election/Restrictions
Applicant's election with traverse of Group I claims 1, 4, 6, 7, 10, 11, 14 and 16 and species A no calcium chloride, 5-60 % B activated clay and C aggregate as in claim 5 in the reply filed on 4/23/2026 is acknowledged. The traversal is on the ground(s) that no example is set forth in the cited prior art which meets the claim limitations and asserts a product and process specially adapted for manufacture of product is permitted. Neither of the claimed methods are for manufacture of a composition and there is no statement or indication of how the process is specially adapted to form the composition (esp. where no steps are set forth) This is not found persuasive because the prior art need only establish the special technical feature does not make a contribution over the prior art – it is not necessary for the prior art to set forth a specific example to establish a lack of unity.
Applicant traverses asserting since no lack of unity was made in the PCT filing the examiner may not raise lack of unity and is bound thereby. This is not persuasive
1893.03(d) Unity of Invention [R-01.2024]
37 C.F.R. 1.499 Unity of invention during the national stage
If the examiner finds that a national stage application lacks unity of invention under § 1.475, the examiner may in an Office action require the applicant in the response to that action to elect the invention to which the claims shall be restricted. Such requirement may be made before any action on the merits but may be made at any time before the final action at the discretion of the examiner. Review of any such requirement is provided under §§ 1.143 and 1.144.
…
When making a lack of unity requirement, the examiner must (1) list the different groups of claims and (2) explain why each group lacks unity with each other group (i.e., why there is no single general inventive concept) specifically describing the unique special technical feature in each group. The examiner may make a lack of unity requirement in a national stage application even if no such requirement was made by the ISA or IPEA. (emphasis added by examiner)
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-3, 5, 8-9, 12-13 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group/species/invention there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/23/26
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).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 4 and the dependent claims 6, 7, 10, 11, 14 and 16 are rejected under 35 U.S.C. 101 because these claims in the preamble recite a method for improving… however no active positive steps delimiting how the method is practiced are set forth and are tantamount to a “use” where recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v.Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
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 and 4 and the dependent claims 6, 7, 10, 11, 14 and 16 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.
Claims 1 and 4 and the claims which depend therefrom do not set forth any active steps making the metes and bounds of the claimed method indefinite. The claims have been afforded the broadest reasonable interpretation in view of the specification without importing extraneous limitations from the specification. The preamble of these claims while reciting “method for” appear to be reciting an intended use – see MPEP 2111.02 The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. 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)
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, 4, 6, 7, 10, 11, 14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arango Campo et al (WO 2020/208552A1) published October 15, 2020 no common inventors or assignee to the instant application - citing to Arango Campo et al US 2022/0169570 as the English equivalent:
Regarding Claims 1, 4, 6, 7, 10, 11, 14, and 16:
Arango Campo discloses a composition comprising
activated clay 20-85 wt.% (overlapping the range of claims 1 and 4) ( see claim 1 reference)
and clinker 30-70 % (see claim 8 reference) (overlapping the ranges of claims 1 and 4 (see claim 14 reference)
limestone 10-75 wt.%, (overlapping the range of claim 1 and 4)
setting regulator 3-15 % (see claim 1 reference) the setting regular includes calcium sulfate gypsum calcium sulfate hemihydrate, calcium sulfate and combinations thereof (i.e. admixture) (See claims 7 and 16 of reference) (meeting the limitation of claims 1 and 4) (overlapping the range of claims 1 and 4 and meeting the limitation for calcium sulfate)
and alkali activator such as a salt of hydroxide/sodium hydroxide and combinations thereof (i.e. admixture0 (See claim 18 reference) (meeting claims 1, 4, 6, 10, 14 and 16) the alkaline activator in a range of between 1-10 % or 0-0.7 % [0060] (overlapping the range of claims 1 and 4)
no calcium chloride is required [0060] (meeting claims 7 and 11)
The prior art having taught overlapping ranges renders the instantly claimed ranges obvious to one of ordinary skill in the art at the time of filing the invention with a reasonable expectation of success. 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 composition is a mixture [0008] (i.e. an admixture)
Arango Campo discloses the composition affords improved strength [0002][0010-0011]Fig 1 and Fig 2 [0017][0035][0059] over different ages including 1 day, 3 days 7 days etc. [0062] [0067] [0092][0094] Table 4 [0101]-[0102] Table 5 [0103] et seq.
The composition of Arango Campo includes every claimed chemical component in ranges which overlap the instantly claimed ranges. As such these compositions will possess the claimed properties of imparting improved mechanical strength to a hydraulic composition and are capable of improving mechanical strength of hydraulic compositions and does so at days by at least 9 % (or at a rate which overlaps same). 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)
The preamble of these claims while reciting “method for” appear to be reciting an intended use – see MPEP 2111.02 The claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. 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)
To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)
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, 4, 6, 7, 10, 11, 14 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No.18266575 (reference application). In view of (JPWO 2016208277A1)
Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to cement compositions comprising overlapping ranges of clinker, activated clay, limestone, calcium sulfate additional additives such as salts retarding agents no calcium chloride is required.
The instant claims are direct to improved mechanical strength.
While the co-pending application claims a set retarder it does not expressly recite same to be an alkali salt of formate, carbonate, etc. of the instant claims.
JPWO 2016208277 discloses a cement composition which is rapid hardening comprising clinker (Abstract) and clay as well as gypsum and alkali carbonates such as sodium carbonate and method of making same improving strength of the hardened composition (See claims) .
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add the set retarder of sodium carbonate to the composition of the instant application to further impart improved strength.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action. For example: Matthes Castelltort Matschei Baalbaki (CA 2841109A1) discloses a hydraulic binder containing 25-85 wt.% clinker and 0 to 7 wt.% CaSo.sub.4, mineral additives, 1-10 wt.% dual setting control system comprising an activator a retarder (Abstract)
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
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