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 of Group I, claims 1-10, in the reply filed on 07/06/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/06/2026.
Specification
The abstract of the disclosure is objected to because of the following informality:
The abstract contains a grammatical error at line 2; it appears that “including” should read “includes”.
Appropriate correction is required.
Claim Objections
Applicant is advised that should claim 2 be found allowable, claim 5 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-10 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 the limitation "a particle size distribution generally below a particle size threshold" (see claim 1 at lines 3-4). The use of the word “generally” renders the scope of the claim indefinite as it is not clear whether the limitation following “generally” is actually a required part of the claimed invention or is optional. It is also not clear to what kind of “particle size distribution” this limitation is meant to refer and how this would be different from a “particle size” below a threshold. It is further unclear in what way this is meant to limit the scope of the claim at all, as “a threshold” is not defined and could therefore be anything, i.e., no actual limitation exists. Any particles would have a size below some undefined threshold.
For purposes of examination, Examiner treated this limitation as meaning that the phosphate component has a particle size (i.e., this does not limit claim 1 beyond requiring that the phosphate component comprises particles as no actual threshold size is recited). Clarification is requested.
Claims 1-2 recite the limitation "alkali earth metal" (see claim 1 at line 5 and claim 2 at line 1); this renders the scope of the claim indefinite as it is not clear what an “alkali earth metal” is, i.e., it seems that this should refer to either an alkali metal or an alkaline earth metal.
For purposes of examination, Examiner treated “alkali earth metal” as actually meaning alkaline earth metal, as this would appear most in keeping with Applicant’s intent. Clarification is requested.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites “below one or more of 600 and 300 microns” (see claim 4 at lines 1-2), i.e., claim 4 recites the broad recitation “below 600 microns”, and the claim also recites “below 300 microns” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
For purposes of examination, Examiner treated this limitation in claim 4 as though it recites “below 600 microns”. Clarification is requested.
Claims 3 and 5-10 are included herein as each depends from a claim which is indefinite for reasons set forth above.
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.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Leiva, et al. (WO-2016102868-A2) (hereinafter, “LEIVA”; citations herein refer to the attached machine translation).
Regarding claim 1, LEIVA teaches a package for producing a mortar (see LEIVA generally at paragraphs 3 and 23, teaching a phosphate binder system which can be used in mortar compositions), the package comprising:
a filler (see LEIVA at paragraph 7, teaching fillers, e.g., mica, talc, fly ash),
a first binder component comprising a phosphate component, wherein the phosphate component has a particle size distribution generally below a particle size threshold (see LEIVA at paragraphs 4, 15, 25-26 and 36 teaching an acidic phosphate salt powder (i.e., having a particle size), e.g., potassium dihydrogen phosphate);
a second binder component comprising an alkali earth metal oxide component (see LEIVA at paragraphs 6-7 and 36, teaching magnesium oxide).
It is noted that “for producing a mortar” and “wherein, when mixed with a solvent, the filler, the first binder component, and the second binder component form a mortar for application to a surface” are merely a recitation of an intended use of the claimed package rather than being limitations directed to the package itself and therefore do not hold patentable weight in the present claims; any package according to claim 1 would be expected to be able to perform the intended use of being mixed with a solvent to form a mortar for application to a surface (see MPEP § 2112.01). Although not required to meet the limitations of the present claim, LEIVA teaches that the binder system is mixed with a solvent (water) to make a mortar (see LEIVA at paragraphs 3 and 23-26).
Regarding claims 2 and 5, LEIVA teaches a package according to claim 1, wherein the alkali earth metal oxide component is a magnesium oxide component (see LEIVA at paragraphs 6-7 and 36).
Regarding claim 3, LEIVA teaches a package according to claim 1, wherein the phosphate component comprises monopotassium phosphate (see LEIVA at paragraphs 15 and 36, teaching potassium dihydrogen phosphate, i.e., monopotassium phosphate).
Regarding claim 6, LEIVA teaches a package according to claim 1, wherein the second binder component is in powdered form (see LEIVA at paragraphs 25-26).
Regarding claim 7-8, LEIVA teaches a package according to claim 1. The recitations of “wherein the solvent comprises a moisture retention component” in claim 7 and “wherein the moisture retention component comprises liquid silicate” in claim 8 are merely recitations of an intended use of the claimed package rather than being limitations directed to the package itself and therefore do not hold patentable weight in the present claims. Any package as claimed by claim 1 would be expected to be able to perform the intended use of being mixed with a solvent comprising a moisture retention component or with a solvent comprising liquid silicate to form a mortar. 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). 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.
Regarding claim 9, LEIVA teaches a package according to claim 1, further comprising: a powdered moisture retention component (see LEIVA at paragraphs 22 and 25-26, teaching including an additive such as a silicate or a water-retaining agent, and teaching that the components other than water are powdered);
wherein the filler, the first binder component, and the second binder component are powdered (see LEIVA at paragraphs 25-26).
It is noted that “wherein the solvent is water” is merely a recitation of an intended use of the claimed package rather than being a limitation directed to the package itself and therefore does not hold patentable weight in the present claim; any package according to claim 1 would be expected to be able to perform the intended use of being mixed with water to form a mortar for application to a surface (see MPEP § 2112.01). Although not required to meet the limitations of the present claim, LEIVA teaches that the binder system is mixed with water to make a mortar (see LEIVA at paragraphs 3 and 23-26).
Claims 1-2, and 5-10 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Landrou, et al. (WO-2023237186-A1) (hereinafter, “LANDROU”).
Regarding claim 1, LANDROU teaches a package for producing a mortar (see LANDROU generally at Abstract, pg. 2, lines 15-19, pg. 3, line 24 - pg. 4, line 2, and pg. 13, lines 18-20, teaching a mineral binder which is used to provide mortars), the package comprising:
a filler (see LANDROU at pg. 2, line 26 - pg. 3, line 1, teaching adding fly ash or other fillers to the mineral binder),
a first binder component comprising a phosphate component, wherein the phosphate component has a particle size distribution generally below a particle size threshold (see LANDROU at pg. 6, lines 4-12);
a second binder component comprising an alkali earth metal oxide component (see LANDROU at pg. 4, line 18, teaching magnesium oxide).
It is noted that “for producing a mortar” and “wherein, when mixed with a solvent, the filler, the first binder component, and the second binder component form a mortar for application to a surface” are merely a recitation of an intended use of the claimed package rather than being limitations directed to the package itself and therefore do not hold patentable weight in the present claims; any package according to claim 1 would be expected to be able to perform the intended use of being mixed with a solvent to form a mortar for application to a surface (see MPEP § 2112.01). Although not required to meet the limitations of the present claim, LANDROU teaches that the binder system is mixed with a solvent (water) to make a mortar (see LANDROU at pg. 2, lines 15-19, pg. 6, lines 8-10 and pg. 13, lines 18-20).
Regarding claims 2 and 5, LANDROU teaches a package according to claim 1, wherein the alkali earth metal oxide component is a magnesium oxide component (see LANDROU at pg. 4, line 18).
Regarding claim 6, LANDROU teaches a package according to claim 1, wherein the second binder component is in powdered form (see LANDROU at pg. 4, lines 21-22).
Regarding claim 7-8, LANDROU teaches a package according to claim 1. The recitations of “wherein the solvent comprises a moisture retention component” in claim 7 and “wherein the moisture retention component comprises liquid silicate” in claim 8 are merely recitations of an intended use of the claimed package rather than being limitations directed to the package itself and therefore do not hold patentable weight in the present claims. Any package as claimed by claim 1 would be expected to be able to perform the intended use of being mixed with a solvent comprising a moisture retention component or with a solvent comprising liquid silicate to form a mortar. 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). 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.
Regarding claim 9, LANDROU teaches a package according to claim 1, further comprising: a powdered moisture retention component (see LANDROU at pg. 4, lines 16-17 and 23-25, pg. 7, lines 16-17 and pg. 8, lines 15-17, teaching fine, dry mineral binder particles (i.e., powders) including potassium silicate);
wherein the filler, the first binder component, and the second binder component are powdered (see LANDROU at pg. 4, lines 21-22, pg. 6, lines 4-12, pg. 7, line 12, and pg. 8, lines 15-17).
It is noted that “wherein the solvent is water” is merely a recitation of an intended use of the claimed package rather than being a limitation directed to the package itself and therefore does not hold patentable weight in the present claim; any package according to claim 1 would be expected to be able to perform the intended use of being mixed with water to form a mortar for application to a surface (see MPEP § 2112.01). Although not required to meet the limitations of the present claim, LANDROU teaches that the binder system is mixed with water to make a mortar (see LANDROU at pg. 2, lines 15-19, pg. 6, lines 8-10 and pg. 13, lines 18-20).
Regarding claim 10, LANDROU teaches a package according to claim 9, wherein the powdered moisture retention component comprises potassium silicate (see LANDROU at pg. 7, lines 16-17).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over LANDROU.
Regarding claim 4, LANDROU teaches a package according to claim 1, wherein the particle size threshold overlaps with and thereby renders obvious the claimed range of below 600 microns (see LANDROU at pg. 6, lines 11-12, teaching a phosphate particle size of 30 to 800 microns). 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)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Ellenrieder, et al. (U.S. Pub. No. 2012/0247369-A1) (hereinafter, “ELLENRIEDER”):
ELLENRIEDER teaches a package for producing a mortar comprising a filler, one or more binder components which may comprise a phosphate component having a particle size and an alkaline earth metal oxide component (MgO), and a liquid or powdered alkali metal silicate such as potassium silicate (see ELLENRIEDER at Abstract and paragraphs [0017], [0019], [0036], [0038], [0048]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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