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 .
Response to Amendment
This office action is in response to the Amendment filed on 07/16/2026.
Claims 1-15 are presently pending and under examination; claims 1-15 are amended; claim 16 is canceled.
The objection to the abstract is withdrawn in light of the amendments to the abstract; some of the objections to the specification are withdrawn in light of the amendments to the specification, and others are maintained as set forth below.
The objections to claims 3, 5, 7-8 and 15 are withdrawn in light of the amendments to the claims; the objections to claims 4, 11 and 14 are maintained; some of the objections to claims 1-2, 9 and 13 are withdrawn, and others are maintained as set forth below.
New objections to claims 3-4, 8-10 and 14-15 are present herein in light of the amendments to the claims.
Some of the rejections of claims 1-15 under 35 U.S.C 112b) are withdrawn in light of the amendments to the claims, and others are maintained as set forth below.
The 35 U.S.C. 102 rejection of claims 1-2, 4-6, 8-9 and 11-12 over PAUL is withdrawn in light of the amendments to the claims; the 35 U.S.C. 103 rejections of claim 15 over PAUL, claims 3, 7 and 10 over PAUL in view of ZINATULLIN, and claims 3, 10 and 13-14 over PAUL in view of KIM are maintained.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities:
Tables 1-2 should be reformatted so that the words are clear and legible.
Appropriate correction is required
Claim Objections
Claims 1-4, 8-11 and 13-15 are objected to because of the following informalities:
Claims 1, 4, 9, 11 and 13 contain a punctuation error; “wherein,” should read “wherein” with no comma (see claim 1 at lines 6 and 15, claim 4 at line 4, and claim 9 at lines 6 and 15, claim 11 at line 5, and claim 13 at lines 8 and 17).
Claim 2 contains a grammatical and punctuation error; “where,” should read “wherein” with no comma (see claim 2 at line 4).
Claims 3 and 10 contain a grammatical error; “consisting” should read “consisting of” (see claim 3 at line 2 and claim 10 at line 3).
Claim 4 contains a grammatical error; in “R”, R”’ are optionally substituted aromatic or aliphatic hydrocarbon radical”, either “are” should read “is an”, or “radical” should read “radicals” (see claim 4 at lines 4-5).
Claim 4 contains a grammatical error; “C1-C20 group” should read either “a C1-C20 group” or “C1-C20 groups” (see claim 4 at line 5).
Claims 8 and 14 contain a grammatical error; “mixture thereof” should read “a mixture thereof” (see claims 8 and 14 each at line 2).
In claim 9, the word “average” appears to be mistakenly in bold typeface (see claim 9 at line 16); it is suggested not to use bold typeface so that this word matches the formatting of every other word of the claims.
Claim 14 contains a grammatical error; “comprising” should read “comprises” (see claim 14 at line 2).
Claim 15 appears to contain a typographical error; “(Ia)thereof” should read “(Ia) thereof” with a space between words (see claim 15 at line 20).
Appropriate correction is required.
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 1-15 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 1-2, 9, 12-13 and 15 recite the limitation “alkyl silane or hydrolysate” (see claim 1 at line 3, claim 2 at lines 1-2, claim 9 at line 3, claim 12 at lines 2-3, claim 13 at line 5, and claim 15 at line 6). Prior to amendment, the claims recited “alkyl silane or its hydrolysate”, however as amended it is now unclear whether “hydrolysate” is meant to refer to a hydrolysate of an alkyl silane or to any hydrolysate, rendering the metes and bounds of the claim indefinite.
For purposes of examination, Examiner treated this limitation as meaning an alkyl silane or hydrolysate thereof. Clarification is requested.
Claims 1, 9, 13 and 15 recite the limitation "R1 is same or different and is a hydrogen atom, a monovalent alkyl group with 1-4 carbon atoms, R2 is same or different and is a monovalent alkyl group with 1-3 carbon atoms, R3 is same or different and is a monovalent alkyl with…" (see claim 1 at lines 7-9, claim 9 at lines 7-9, claim 13 at lines 9-11, and claim 15 at lines 10-12). These limitations are indefinite and the scope of the claims cannot be ascertained. It is not clear from this language what R1, R2 and R3 are meant to be the same as or different from. As written the claim also indicates that R1 is a hydrogen atom which is a monovalent alkyl group with 1-4 carbon atoms, which does not make sense. The meaning of “R3… is a monovalent alkyl” is also unclear.
For purposes of examination, Examiner treated this limitation as meaning R1 is a hydrogen atom or a monovalent alkyl group with 1-4 carbon atoms, R2 is a monovalent alkyl group with 1-3 carbon atoms, and R3 is a monovalent alkyl group. Clarification is requested.
Claims 1, 9, 13 and 15 recite the limitation "in more than 50 percent of all units of formula (Ia), b is less than c, wherein, a, b, c are same or different and are integers or fractions" (see claim 1 at lines 15-16, claim 9 at lines 15-16, claim 13 at lines 17-18, and claim 15 at lines 18-19). These limitations are indefinite and the scope of the claims cannot be ascertained. It is not clear from this language what a, b and c are meant to be the same as or different from. It is also not clear from the language “a, b, c” whether this limitation is directed toward a, b and c or toward a, b or c. As written, it is also ambiguous whether everything following “wherein” is meant to apply to only more than 50 percent of all units of formula (Ia) or to all units of formula (Ia).
For purposes of examination, Examiner treated this limitation as meaning that in more than 50 percent of all units of formula (Ia), b is less than c; and wherein a, b and c are integers or fractions (i.e., a, b and c across all units are integers or fractions, rather than in more than 50 percent). Clarification is requested.
Claim 2 recites the limitation “X is same or different and is a halide, -OR, R is same or different and is a C1-C20 group, and R’ is same or different and is a C1-C20 group” (see claim 2 at lines 5-7). These limitations are indefinite and the scope of the claims cannot be ascertained. It is not clear from this language what R and R’ are meant to be the same as or different from. The meaning of “halide, -OR” is also unclear.
For purposes of examination, Examiner treated this limitation as meaning that X is a halide or an -OR group, R is a C1-C20 group, and R’ is a C1-C20 group. Clarification is requested.
Claims 4 and 11 recite the limitation “wherein, R”, R”’ is an optionally substituted aromatic or aliphatic hydrocarbon radical” (see claim 4 at lines 4-5 and claim 11 at lines 5-6). The scope of the claims cannot be determined as it is not clear whether R”, R”’ is supposed to mean R” and R”’ or R” or R”’.
For purposes of examination, Examiner treated this limitation as meaning that R” and R”’ are optionally substituted aromatic or aliphatic hydrocarbon radicals. Clarification is requested.
Claim 5 recites the limitation “wherein R1, R2 are each methyl or ethyl” (see claim 5 at line 1). The scope of the claim cannot be determined as it is not clear whether R1, R2 is supposed to mean R1 and R2 or R1 or R2.
For purposes of examination, Examiner treated this limitation as meaning that either R1 or R2 is a methyl or ethyl group. Clarification is requested.
Claim 6 recites the limitation “its… mixture composition” (see claim 6 at line 2), and claim 12 recites “or mixture composition” (see claim 12 at line 3); it is not clear to what “its mixture composition” or “mixture composition” is meant to refer, as no “mixture composition” is recited in claim 1. Clarification is requested.
Claims 6 and 12 recite the limitation “the silicon resin of formula (Ia)” (see claim 6 at line 2 and claim 12 at lines 2-3). There is insufficient antecedent basis for this limitation in the claims.
For purposes of examination, Examiner treated this limitation as referring to the silicon resin comprising units of formula (Ia) recited in claim 1. Clarification is requested.
Claim 15 recites the limitation “0.01 to 100%” (see claim 15 at line 4), but does not specify whether these are percentages measured on the basis of weight or volume, rendering the scope of the claim indefinite.
For purposes of examination, Examiner treated these percentages as being weight percentages. Clarification is requested.
Claim 15 recites the limitation “the concrete or mortar” (see claim 15 at line 32). There is insufficient antecedent basis for this limitation in the claim.
For purposes of examination, Examiner treated “the concrete or mortar” as referring to the previously recited concrete or mortar composition. Clarification is requested.
Claims 3, 7-8, 10 and 14 are included herein as each depends from a claim which is indefinite for the reasons set forth above.
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 4-6, 8-9, 11-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Paul, et al. (U.S. Pub. No. 2018/0282234-A1) (hereinafter, “PAUL”).
Regarding claim 1, PAUL teaches a compressive strength improving, water uptake reducing additive composition (see PAUL generally at paragraphs [0024]-[0028], [0042], [0075] and [0078] and Table 6, teaching a self-dispersible mixture additive which increases compressive strength and decreases water uptake when used in cement compositions) comprising:
an alkyl silane or its hydrolysate or a mixture thereof comprising a silicon resin comprising units of the formula (Ia) (R1O)aR2bR3cSiO(4-a-b-c)/2 (Ia) (see PAUL at paragraphs [0024]-[0028], [0066]-[0067] and [0075] and claims 1 and 3-5, teaching a mixture of alkyltrialkoxysilanes or their hydrolysates wherein R’ is same or different and is selected from, e.g., mixtures of octyl and propyl groups, e.g., a mixture of hydrolyzed propyltrimethoxysilane and hydrolyzed octyltriethoxysilane having greater than one unit, which are alkyl silane hydrolysates comprising a silicon resin comprising units of formula (Ia) as claimed; see Applicant’s specification at pg. 29 and 37-38, stating that hydrolyzed alkoxysilane is silicon resin, and that propyltrimethoxysilane and octyltriethoxysilane are exemplary alkyl silanes of the invention meeting the limitations of formula (Ia) as claimed), wherein
R1 is a hydrogen atom or a monovalent alkyl group with 1-4 carbon atoms, R2 is a monovalent alkyl group with 1-3 carbon atoms, R3 is a monovalent alkyl with at least 4 carbon atoms, a is 0 to 3, b is 0 to 3, and c is 0 to 3 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; octyltriethoxysilane (C14H32O3Si) when hydrolyzed and condensed forms a polymer having units C8H17SiO1.5, which is of formula (Ia) wherein R3 is an octyl group, a is 0, b is 0 and c is 1, and propyltrimethoxysilane (C6H16O3Si) when hydrolyzed and condensed forms a polymer having units C3H7SiO1.5, which is of formula (Ia) wherein R3 is a propyl group, a is 0, b is 1, and c is 0),
with the provisos that a+b+c≤3 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, in C8H17SiO1.5, a is 0, b is 0 and c is 1, so a+b+c = 1, and in C3H7SiO1.5, a is 0, b is 1 and c is 0, so a+b+c = 1),
and the average value of b across all units of formula (Ia) is greater than 0 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, PAUL teaches using a mixture of hydrolyzed alkoxysilanes with some having units wherein b is 1, i.e., the average value of b across all units of formula (Ia) is greater than 0),
wherein a, b and c are integers or fractions, each value being defined per unit or as an average value across all units of formula (Ia) (see PAUL at [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, a is 0, b is 0 or 1, and c is 0 or 1).
PAUL does not explicitly mention that in more than 50 percent of all units of formula (Ia), b is less than c when using a mixture of alkyltrialkoxysilanes; however, as discussed above, PAUL teaches using a mixture of hydrolyzed alkoxysilanes including units of formula (Ia) wherein b is 0 and c is 1, i.e., b is less than c (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5). As set forth in MPEP § 2144.05, 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)). Additionally, PAUL explicitly teaches that varying the dosage of alkoxysilanes having different R’ groups, specifically a propyl R’ group and having an octyl R’ group, affects the water absorption properties of the cement (see PAUL at Abstract, paragraph [0050], and Table 1). PAUL therefore explicitly teaches that the amount of the silane having units wherein b is less than c and the amount of the silane having units wherein b is not less than c is a result-effective variable that may be optimized by one of ordinary skill in the art. MPEP states that “[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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art to vary, through routine experimentation and optimization, the ratio of the units having octyl groups (b < c) and the units having propyl groups (b > c) in the mixture in order to achieve the desired hydrophobicity of the cement product in which the additive is used (see PAUL at Abstract, paragraphs [0028], [0050], [0066]-[0067] and [0075], claims 1 and 3-5, and Table 1).
Regarding claim 9, PAUL teaches a compressive strength improving, water uptake reducing, self-dispersible mixture additive composition (see PAUL generally at paragraphs [0024]-[0028], [0042], [0075] and [0078] and Table 6, teaching a self-dispersible mixture additive which increases compressive strength and decreases water uptake when used in cement compositions) comprising:
an alkyl silane or its hydrolysate or a mixture thereof comprising a silicon resin comprising units of the formula (Ia) (R1O)aR2bR3cSiO(4-a-b-c)/2 (Ia) (see PAUL at paragraphs [0024]-[0028], [0066]-[0067] and [0075] and claims 1 and 3-5, teaching a mixture of alkyltrialkoxysilanes or their hydrolysates wherein R’ is same or different and is selected from, e.g., mixtures of octyl and propyl groups, e.g., a mixture of hydrolyzed propyltrimethoxysilane and hydrolyzed octyltriethoxysilane having greater than one unit, which are alkyl silane hydrolysates comprising a silicon resin comprising units of formula (Ia) as claimed; see Applicant’s specification at pg. 29 and 37-38, stating that hydrolyzed alkoxysilane is silicon resin, and that propyltrimethoxysilane and octyltriethoxysilane re exemplary alkyl silanes of the invention meeting the limitations of formula (Ia) as claimed), wherein
R1 is a hydrogen atom or a monovalent alkyl group with 1-4 carbon atoms, R2 is a monovalent alkyl group with 1-3 carbon atoms, R3 is a monovalent alkyl with 4-20 carbon atoms, a is 0 to 3, b is 0 to 3, and c is 0 to 3 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; octyltriethoxysilane (C14H32O3Si) when hydrolyzed and condensed forms a polymer having units C8H17SiO1.5, which is of formula (Ia) wherein R3 is an octyl group, a is 0, b is 0 and c is 1, and propyltrimethoxysilane (C6H16O3Si) when hydrolyzed and condensed forms a polymer having units C3H7SiO1.5, which is of formula (Ia) wherein R3 is a propyl group, a is 0, b is 1, and c is 0),
with the provisos that a+b+c≤3 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, in C8H17SiO1.5, a is 0, b is 0 and c is 1, so a+b+c = 1, and in C3H7SiO1.5, a is 0, b is 1 and c is 0, so a+b+c = 1),
and the average value of b across all units of formula (Ia) is greater than 0 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, PAUL teaches using a mixture of hydrolyzed alkoxysilanes with some having units wherein b is 1, i.e., the average value of b across all units of formula (Ia) is greater than 0),
wherein a, b and c are integers or fractions, each value being defined per unit or as an average value across all units of formula (Ia) (see PAUL at [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, a is 0, b is 0 or 1, and c is 0 or 1).
PAUL does not explicitly mention that in more than 50 percent of all units of formula (Ia), b is less than c when using a mixture of alkyltrialkoxysilanes; however, as discussed above, PAUL teaches using a mixture of hydrolyzed alkoxysilanes including units of formula (Ia) wherein b is 0 and c is 1, i.e., b is less than c (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5). As set forth in MPEP § 2144.05, 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)). Additionally, PAUL explicitly teaches that varying the dosage of alkoxysilanes having different R’ groups, specifically a propyl R’ group and having an octyl R’ group, affects the water absorption properties of the cement (see PAUL at Abstract, paragraph [0050], and Table 1). PAUL therefore explicitly teaches that the amount of the silane having units wherein b is less than c and the amount of the silane having units wherein b is not less than c is a result-effective variable that may be optimized by one of ordinary skill in the art. MPEP states that “[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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art to vary, through routine experimentation and optimization, the ratio of the units having octyl groups (b < c) and the units having propyl groups (b > c) in the mixture in order to achieve the desired hydrophobicity of the cement product in which the additive is used (see PAUL at Abstract, paragraphs [0028], [0050], [0066]-[0067] and [0075], claims 1 and 3-5, and Table 1).
Regarding claim 2, PAUL teaches an additive composition according to claim 1, comprising an alkyl silane of formula (Ib) or its hydrolysate or mixture thereof (X)4-nSiR'n (Ib), wherein n is any number from 1 to 3, X is a halide or an -OR group wherein R a C1-C20 group, and R' is a C1-C20 group (see PAUL at paragraphs [0018], [0024] and [0028]; see also Applicant’s specification at pg. 24, acknowledging that PAUL discloses the claimed alkyl silane).
Regarding claims 4, 8 and 11, PAUL teaches an additive composition according to claims 1 and 9, further comprising: an additive selected from (a) an amino silane, (b) an amino siloxane or (c) an organic additive selected from a hyperbranched polycarboxylate polymer or molecules having groups NR"2-, or R"2N-R"'-NR"- or R"N=NR", wherein R" and R"' are optionally substituted aromatic or aliphatic hydrocarbon radicals having C1-C20 group, or a mixture thereof, as recited by claims 4 and 11, and wherein the organic additive comprises a diamine or an alkanolamine, or a mixture thereof, as recited by claim 8 (see PAUL at paragraph [0067], teaching triethanolamine).
Regarding claim 5, PAUL teaches an additive composition according to claim 1, wherein R1 or R2 is a methyl or ethyl group, and R3 is an octyl or iso-octyl group (paragraphs [0028], [0066]-[0067] and [0075]); it is noted that octyltriethoxysilane (C14H32O3Si) is of the formula (Ia) wherein R1 is an ethyl group and R3 is an octyl group, and a is 3, b is 0 and c is 1, however, alkyltrialkoxysilanes have 3 oxygen atoms and cannot meet the limitation of a+b+c ≤3 as claimed; as set forth above, when hydrolyzed and condensed, octyltriethoxysilane forms a polymer having units C8H17SiO1.5, which is of formula (Ia) wherein R3 is an octyl group, a is 0, b is 0 and c is 1, and a+b+c≤3; this is considered to meet the limitations of “wherein R1 or R2 is a methyl or ethyl group” as presently claimed, as R1 or R2 can be any group, such as a methyl or ethyl group, but are still not required by the claim as both a and b can be 0, and also as the claimed units (Ia) are formed from the hydrolysis and condensation of an alkyl silane wherein R1 is an ethyl group and R3 is an octyl group).
Regarding claims 6 and 12, PAUL teaches an additive composition according to claims 1 and 9, wherein the silicon resin comprising units of the formula (Ia) is emulsified or is in a solvent (see PAUL at Abstract and paragraphs [0001] and [0044]).
Regarding claim 15, PAUL teaches a cement mortar or concrete composition (see PAUL at paragraphs [0040] and [0055] and Tables 5 and 7, teaching concrete and mortar compositions) comprising:
I) a cement composition (see PAUL generally at Abstract and paragraphs [0002], [0046] and [0072]) comprising:
0.01 to 5% by weight of a cement additive composition (see PAUL at paragraph [0072], teaching cement compositions comprising 300 g of hydraulic binder (Portland cement) and 2.5 g of the additive, i.e., 0.8% by weight; also see PAUL at paragraph [0050], teaching using 0.125% to 0.5% by weight of the additive) comprising:
a) 0.01 to 100% of a compressive strength improving, water uptake reducing additive composition (see PAUL at, e.g., paragraph [0072], teaching a cement composition consisting of hydraulic binder (Portland cement) and the additive as claimed, i.e., the claimed additive is 100% by weight of the cement additive composition) comprising:
an alkyl silane or its hydrolysate or a mixture thereof comprising a silicon resin comprising units of the formula (Ia) (R1O)aR2bR3cSiO(4-a-b-c)/2 (Ia) (see PAUL at paragraphs [0024]-[0028], [0066]-[0067] and [0075] and claims 1 and 3-5, teaching a mixture of alkyltrialkoxysilanes or their hydrolysates wherein R’ is same or different and is selected from, e.g., mixtures of octyl and propyl groups, e.g., a mixture of hydrolyzed propyltrimethoxysilane and hydrolyzed octyltriethoxysilane having greater than one unit, which are alkyl silane hydrolysates comprising a silicon resin comprising units of formula (Ia) as claimed; see Applicant’s specification at pg. 29 and 37-38, stating that hydrolyzed alkoxysilane is silicon resin, and that propyltrimethoxysilane and octyltriethoxysilane re exemplary alkyl silanes of the invention meeting the limitations of formula (Ia) as claimed), wherein
R1 is a hydrogen atom or a monovalent alkyl group with 1-4 carbon atoms, R2 is a monovalent alkyl group with 1-3 carbon atoms, R3 is a monovalent alkyl with 4-20 carbon atoms, a is 0 to 3, b is 0 to 3, and c is 0 to 3 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; octyltriethoxysilane (C14H32O3Si) when hydrolyzed and condensed forms a polymer having units C8H17SiO1.5, which is of formula (Ia) wherein R3 is an octyl group, a is 0, b is 0 and c is 1, and propyltrimethoxysilane (C6H16O3Si) when hydrolyzed and condensed forms a polymer having units C3H7SiO1.5, which is of formula (Ia) wherein R3 is a propyl group, a is 0, b is 1, and c is 0),
with the provisos that a+b+c≤3 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, in C8H17SiO1.5, a is 0, b is 0 and c is 1, so a+b+c = 1, and in C3H7SiO1.5, a is 0, b is 1 and c is 0, so a+b+c = 1),
and the average value of b across all units of formula (Ia) is greater than 0 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, PAUL teaches using a mixture of hydrolyzed alkoxysilanes with some having units wherein b is 1, i.e., the average value of b across all units of formula (Ia) is greater than 0),
wherein a, b and c are integers or fractions, each value being defined per unit or as an average value across all units of formula (Ia) (see PAUL at [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, a is 0, b is 0 or 1, and c is 0 or 1);
b) 0 to 69.99% of an additive selected from (a) an amino silane, (b) an amino siloxane or (c) an organic additive selected from a hyperbranched polycarboxylate polymer or molecules having groups NR"2-, or R"2N-R"'-NR"- or R"N=NR", wherein R" and R"' are optionally substituted aromatic or aliphatic hydrocarbon radicals having C1-C20 group, or a mixture thereof (see PAUL at, e.g., paragraph [0072], teaching a cement composition consisting of hydraulic binder (Portland cement) and the additive of a) as claimed, i.e., the additive of a) is 100% by weight of the cement additive composition, i.e., other additives are 0%);
c) 0 to 30% of an antifoam composition selected from a silicone antifoam composition and a non-silicone antifoam composition and its mixtures thereof (see PAUL at, e.g., paragraph [0072], teaching a cement composition consisting of hydraulic binder (Portland cement) and the additive of a) as claimed, i.e., the additive of a) is 100% by weight of the cement additive composition, i.e., other additives are 0%); and
II) a silica composition (see PAUL at paragraph [0055], teaching a mortar comprising the additive, sand, water, and Portland cement, which is a silica composition; see also Applicant’s specification at pg. 38, describing an identical mortar composition, i.e., Portland cement appears to be the silica composition as claimed),
wherein the concrete or mortar composition has a compressive strength improvement in a range of 10 to 30% determined according to DIN EN 12390-3 or DIN EN 196-1, respectively (see PAUL at Table 6, teaching that the additive composition causes an improvement in compressive strength of, e.g., 4.15 to 16.02 N/mm2, or 3.09 to 3.62 N/mm2, i.e., an improvement of 13% or 17%.).
PAUL does not explicitly mention that in more than 50 percent of all units of formula (Ia), b is less than c when using a mixture of alkyltrialkoxysilanes; however, as discussed above, PAUL teaches using a mixture of hydrolyzed alkoxysilanes including units of formula (Ia) wherein b is 0 and c is 1, i.e., b is less than c (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5). As set forth in MPEP § 2144.05, 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)). Additionally, PAUL explicitly teaches that varying the dosage of alkoxysilanes having different R’ groups, specifically a propyl R’ group and having an octyl R’ group, affects the water absorption properties of the cement (see PAUL at Abstract, paragraph [0050], and Table 1). PAUL therefore explicitly teaches that the amount of the silane having units wherein b is less than c and the amount of the silane having units wherein b is not less than c is a result-effective variable that may be optimized by one of ordinary skill in the art. MPEP states that “[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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art to vary, through routine experimentation and optimization, the ratio of the units having octyl groups (b < c) and the units having propyl groups (b > c) in the mixture in order to achieve the desired hydrophobicity of the cement product in which the additive is used (see PAUL at Abstract, paragraphs [0028], [0050], [0066]-[0067] and [0075], claims 1 and 3-5, and Table 1;
PAUL teaches that the additive composition decreases water uptake (see PAUL at, e.g., paragraphs [0078] and Tables 8-10), but fails to explicitly mention that the concrete or mortar composition has a reduction of water uptake in a range of 10 to 40% according to ASTM C1585; however, as described above, PAUL teaches a mortar composition as claimed by the present claim, therefore the mortar composition of PAUL would be expected to have the same or overlapping properties as the present invention, including a reduction of water uptake in a range from 10 to 40%. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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.
Claims 3, 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over PAUL in view of Zinatullin, et al. (RU-2520608-C1) (hereinafter, “ZINATULLIN”; citations herein refer to the attached machine translation).
Regarding claims 3, 7 and 10, as applied to claims 1 and 9 above, PAUL teaches an additive composition according to claims 1 and 9.
PAUL teaches that to improve the performance characteristics, further additives can be added to the self-dispersible mixture additive (see PAUL at paragraph [0039]); however, PAUL fails to explicitly teach that the additive composition further comprises an antifoam composition selected from the group consisting of a silicone antifoam composition, a non-silicone antifoam composition, and a mixture thereof, as recited by claims 3 and 10, wherein the silicone antifoam composition comprises a silicone polymer, a silica, a surfactant, and water, as recited by claim 7.
ZINATULLIN teaches an additive for mortar compositions which includes an antifoam additive comprising an aqueous emulsion of polymethylalkylsiloxanes (i.e., silicone polymers), nonionic surfactants, and aerosil (i.e., silica) (see ZINATULLIN at paragraphs 6-7 and 17-18). ZINATULLIN teaches that the formation of foam in a cement mortar can lead to the formation of porous cement stone and as a result decrease the strength, and that the introduction of this antifoam into the additive eliminates the formation of foam in a cement mortar, which increases the strength of the mortar (see ZINATULLIN at paragraph 17).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the additive composition of PAUL by incorporating the silicone antifoam additive comprising silicone polymer, silica, surfactant and water taught by ZINATULLIN (see ZINATULLIN at paragraph 18). One of ordinary skill in the art would have been motivated to make this modification for the benefit of providing an additive which can inhibit the formation of foam when added to a cement mortar, thereby increasing the strength of the mortar (see ZINATULLIN at 17).
Claims 3, 10 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over PAUL in view of Kim, et al. (KR-101963579-B1) (hereinafter, “KIM”; citations herein refer to the attached machine translation), with evidence from PCA, “Environmental Product Declaration Portland Cement” (hereinafter, “PCA”) as to the rejection of claim 13.
Regarding claims 3 and 10, as applied to claims 1 and 9 above, PAUL teaches an additive composition according to claims 1 and 9.
PAUL teaches that to improve the performance characteristics, further additives can be added to the self-dispersible mixture additive (see PAUL at paragraph [0039]); however, PAUL fails to explicitly teach that the additive composition further comprises an antifoam composition selected from the group consisting of a silicone antifoam composition, a non-silicone antifoam composition, and a mixture thereof.
However, antifoam compositions are common and well-known additives for cement compositions in the art. For example, KIM teaches additives for concrete compositions including alkyl silanes, e.g., alkyltrialkoxysilanes, and silicone and non-silicone antifoaming agents (see KIM at Abstract and paragraphs [0022], [0052]-[0054] and [0086]-[0090]). KIM teaches that antifoaming agents reduce the increase in the amount of air in the composition due to the generation of entrained air (see KIM at paragraph [0052]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the additive composition of PAUL by incorporating an antifoaming agent as taught by KIM (see KIM at paragraphs [0022] and [0052]-[0054). One of ordinary skill in the art would have been motivated to make this modification for the benefit of being able to control the air content of the cement composition to which the additive is added, as taught by KIM (see KIM at paragraph [0052]).
Regarding claim 13, PAUL teaches a compressive strength improving, water uptake reducing cement composition (see PAUL generally at Abstract and paragraph [0002]) comprising:
a) 0.01 to 5% by weight of a compressive strength improving, water uptake reducing additive composition (see PAUL at paragraph [0072], teaching cement compositions comprising 300 g of binder (Portland cement) and 2.5 g of the additive, i.e., 0.8% by weight; also see PAUL at paragraph [0050], teaching 0.125% to 0.5% by weight of the additive) comprising:
an alkyl silane or its hydrolysate or a mixture thereof comprising a silicon resin comprising units of the formula (Ia) (R1O)aR2bR3cSiO(4-a-b-c)/2 (Ia) (see PAUL at paragraphs [0024]-[0028], [0066]-[0067] and [0075] and claims 1 and 3-5, teaching a mixture of alkyltrialkoxysilanes or their hydrolysates wherein R’ is same or different and is selected from, e.g., mixtures of octyl and propyl groups, e.g., a mixture of hydrolyzed propyltrimethoxysilane and hydrolyzed octyltriethoxysilane having greater than one unit, which are alkyl silane hydrolysates comprising a silicon resin comprising units of formula (Ia) as claimed; see Applicant’s specification at pg. 29 and 37-38, stating that hydrolyzed alkoxysilane is silicon resin, and that propyltrimethoxysilane and octyltriethoxysilane re exemplary alkyl silanes of the invention meeting the limitations of formula (Ia) as claimed), wherein
R1 is a hydrogen atom or a monovalent alkyl group with 1-4 carbon atoms, R2 is a monovalent alkyl group with 1-3 carbon atoms, R3 is a monovalent alkyl with 4-20 carbon atoms, a is 0 to 3, b is 0 to 3, and c is 0 to 3 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; octyltriethoxysilane (C14H32O3Si) when hydrolyzed and condensed forms a polymer having units C8H17SiO1.5, which is of formula (Ia) wherein R3 is an octyl group, a is 0, b is 0 and c is 1, and propyltrimethoxysilane (C6H16O3Si) when hydrolyzed and condensed forms a polymer having units C3H7SiO1.5, which is of formula (Ia) wherein R3 is a propyl group, a is 0, b is 1, and c is 0),
with the provisos that a+b+c≤3 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, in C8H17SiO1.5, a is 0, b is 0 and c is 1, so a+b+c = 1, and in C3H7SiO1.5, a is 0, b is 1 and c is 0, so a+b+c = 1),
and the average value of b across all units of formula (Ia) is greater than 0 (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, PAUL teaches using a mixture of hydrolyzed alkoxysilanes with some having units wherein b is 1, i.e., the average value of b across all units of formula (Ia) is greater than 0),
wherein a, b and c are integers or fractions, each value being defined per unit or as an average value across all units of formula (Ia) (see PAUL at [0028], [0066]-[0067] and [0075] and claims 1 and 3-5; as discussed above, a is 0, b is 0 or 1, and c is 0 or 1); and
c) a clinker (see PAUL at paragraph [0072], teaching Portland cement, which typically comprises an average of 91.4% clinker by weight as evidenced by PCA; see PCA at pg. 4).
PAUL does not explicitly mention that in more than 50 percent of all units of formula (Ia), b is less than c when using a mixture of alkyltrialkoxysilanes; however, as discussed above, PAUL teaches using a mixture of hydrolyzed alkoxysilanes including units of formula (Ia) wherein b is 0 and c is 1, i.e., b is less than c (see PAUL at paragraphs [0028], [0066]-[0067] and [0075] and claims 1 and 3-5). As set forth in MPEP § 2144.05, 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)). Additionally, PAUL explicitly teaches that varying the dosage of alkoxysilanes having different R’ groups, specifically a propyl R’ group and having an octyl R’ group, affects the water absorption properties of the cement (see PAUL at Abstract, paragraph [0050], and Table 1). PAUL therefore explicitly teaches that the amount of the silane having units wherein b is less than c and the amount of the silane having units wherein b is not less than c is a result-effective variable that may be optimized by one of ordinary skill in the art. MPEP states that “[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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art to vary, through routine experimentation and optimization, the ratio of the units having octyl groups (b < c) and the units having propyl groups (b > c) in the mixture in order to achieve the desired hydrophobicity of the cement product in which the additive is used (see PAUL at Abstract, paragraphs [0028], [0050], [0066]-[0067] and [0075], claims 1 and 3-5, and Table 1).
However, PAUL fails to explicitly teach that the additive composition comprises b) 15% to 35% of a pozzolanic material, or that the clinker is present in an amount of 60% to 80%.
KIM teaches cement compositions (concrete) including additives, e.g., alkyltrialkoxysilanes (see KIM at Abstract and paragraphs [0086]-[0090]), wherein the binder comprises Portland cement and fly ash (a pozzolanic material), wherein the fly ash is included in an amount of 1 to 20 parts by weight, based on 100 parts by weight of the cement (see KIM at Abstract and paragraphs [0034]). KIM teaches that mixing the fly ash with the cement in this amount results in compositions having improved workability, alleviated curing heat, and improved long-term strength and water tightness (see KIM at paragraphs [0039]-[0043]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the cement composition of PAUL by including fly ash in an amount of 1 to 20 parts by weight based on 100 parts by weight of the cement as taught by KIM (see KIM at Abstract). One of ordinary skill in the art would have been motivated to make this modification for the benefit of improving the workability, long-term strength and water-tightness of the cement composition as taught by KIM (see KIM at paragraphs [0039]-[0043]).
Using 1 to 20 parts by weight of fly ash per 100 parts by weight of Portland cement would result in a cement composition comprising approximately 1% to 17% by weight of fly ash and 76% to 90% by weight of clinker (which as discussed above comprises an average of 91.4% by weight of Portland cement); these ranges overlap with and thereby render obvious the claimed ranges. As set forth in MPEP § 2144.05, 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)).
Regarding claim 14, as applied to claim 13 above, PAUL in view of KIM teaches an additive composition according to claim 13, wherein the additive composition further comprises a diamine or an alkanolamine, or a mixture thereof (see PAUL at paragraph [0067], teaching triethanolamine).
Response to Arguments
Applicant's arguments filed 07/16/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(b) for claims 1-15 and under 35 U.S.C. 103 for claims 1-2, 4-6, 8-9 and 11-12 over PAUL as set forth above.
Applicant argues that PAUL does not teach the amended limitation which requires that the average value of b across all units of formula (Ia) is greater than 0 (see Remarks at pg. 11-13). However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that PAUL does not teach the new limitation that the average value of b across all units of formula (Ia) is greater than 0, the Examiner respectfully disagrees. As discussed in the rejection above, PAUL explicitly teaches using a mixture of alkyltrialkoxysilanes or their hydrolysates wherein R’ is same or different and is selected from, e.g., mixtures of octyl and propyl groups, e.g., a mixture of hydrolyzed propyltrimethoxysilane and hydrolyzed octyltriethoxysilane having greater than one unit, which are alkyl silane hydrolysates comprising a silicon resin comprising units of formula (Ia) as claimed (see PAUL at paragraphs [0024]-[0028], [0066]-[0067] and [0075] and claims 1 and 3-5). As discussed in the rejection above, this mixture includes units of formula (Ia) wherein b is 1; i.e., PAUL explicitly teaches mixtures of silanes/hydrolysates as claimed wherein the average value of b across all units of formula (Ia) is greater than 0.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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