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
The Amendment filed 4/17/26 has been entered. Claims 1-4 and 6-22 are pending in the application, of which claims 20 and 21 are withdrawn. Claim 5 has been canceled and claim 22 is new. As such, the claims being examined are claims 1-4, 6-19, and 22. Applicant’s amendments to the claims have overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed 1/14/26. Applicant’s argument regarding the 112(b) rejection of the term “slurry” is persuasive and the rejection has been withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6-19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Rey (US 4,548,961- cited previously).
With respect to independent claim 1, Rey discloses a composition comprising epoxy resin, curing agent, silica sand, and silica flour (Abstract and col. 2 lines 26-33).
Regarding claim 1, Rey discloses wherein the composition comprises epoxy resin in an amount from 10 to 20 wt% (col. 2 line 63- col. 3 line 8). Although silent to wherein the amount of epoxy resin is “about 20 wt% to about 60 wt%,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for an epoxy resin amount as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed epoxy resin amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Further regarding claim 1, Rey discloses wherein the epoxy resin comprises diglycidyl ethers of bisphenol-A (col. 2 lines 50-62 and col. 3 lines 13-40). With regard to the remaining material (i.e., bisphenol-A-based epoxy resin and an aliphatic glycidyl ether), the Office considers this as an obvious variant to that disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the epoxy resin.
Further regarding claim 1, Rey discloses wherein the composition comprises curing agent in an effective amount (col. 2 line 63- col. 3 line 8). Although silent to wherein the amount of curing agent is “about 0.01 wt% to about 5 wt%,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a curing agent amount as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed curing agent amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Further regarding claim 1, Rey discloses wherein the composition comprises a siliceous aggregate in an amount of from 80 to 90 parts by weight and silica sand in an amount of at least 25% of said siliceous aggregate, i.e., silica sand is present in an amount of from 20 wt% to 22.5 wt% (col. 2 line 63- col. 3 line 8 and col. 4 lines 14-17). Although silent to wherein the amount of silica sand is “about 20 wt% to about 60 wt%,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a silica sand amount as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed silica sand amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Further regarding claim 1, Rey discloses wherein the composition comprises a siliceous aggregate in an amount of from 80 to 90 parts by weight and silica flour in an amount of 25% of said siliceous aggregate, i.e., silica flour is present in an amount of from 20 wt% to 22.5 wt% (col. 2 line 63- col. 3 line 8 and col. 4 lines 18-21). Although silent to wherein the amount of silica flour is “about 1 wt% to about 40 wt%,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a silica flour amount as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed silica flour amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claim 2, Rey discloses wherein the slurry comprises less than 5 wt% cement (col. 1 line 1- col. 6 line 67).
With respect to depending claim 3, Rey discloses wherein the slurry is free of cement (col. 1 line 1- col. 6 line 67).
With respect to depending claims 4, 6, 7, and 22, Rey discloses wherein the epoxy resin comprises diglycidyl ethers of bisphenol-A (col. 2 lines 50-62 and col. 3 lines 13-40). With regard to the remaining materials of the Markush groups, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the epoxy resin.
With respect to depending claim 8, Rey discloses wherein the composition comprises epoxy resin in an amount from 10 to 20 wt% (col. 2 line 63- col. 3 line 8). Although silent to wherein the amount of epoxy resin is “about 30 wt% to about 55 wt%,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for an epoxy resin amount as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed epoxy resin amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) With respect to depending claims 9 and 10, Rey discloses wherein the curing agent may be tetraethylenepentamine (TEPA) (Abstract, col. 2 lines 26-49, and col. 3 line 59- col. 4 line 3). With regard to the remaining materials of the Markush groups, the Office considers these as obvious variants to those disclosed by the reference, and, therefore, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to alternatively include such materials as the curing agent.
With respect to depending claim 11, Rey discloses wherein the composition comprises curing agent in an effective amount (col. 2 line 63- col. 3 line 8). Although silent to wherein the amount of curing agent is “about 0.5 wt% to about 2.5 wt%,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a curing agent amount as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed curing agent amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claims 12 and 13, Rey discloses wherein the average particle size of the silica sand ranges from 8 to 400 mesh (col. 3 lines 3-8). Although silent to wherein the average particle size of the silica sand is “about 75 µm to about 250 µm” or “about 100 µm to about 200 µm,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a silica sand average particle size as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed silica sand average particle size as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claim 14, Rey discloses wherein the composition comprises a siliceous aggregate in an amount of from 80 to 90 parts by weight and silica sand in an amount of at least 25% of said siliceous aggregate, i.e., silica sand is present in an amount of from 20 wt% to 22.5 wt% (col. 2 line 63- col. 3 line 8 and col. 4 lines 14-17). Although silent to wherein the amount of silica sand is “about 30 wt% to about 50 wt%,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a silica sand amount as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed silica sand amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claims 15 and 16, Rey discloses wherein the average particle size of the silica flour ranges from 8 to 400 mesh (col. 3 lines 3-8). Although silent to wherein the average particle size of the silica flour is “about 5 µm to about 75 µm” or “about 15 µm to about 60 µm,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a silica flour average particle size as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed silica flour average particle size as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claim 17, Rey discloses wherein the composition comprises a siliceous aggregate in an amount of from 80 to 90 parts by weight and silica flour in an amount of 25% of said siliceous aggregate, i.e., silica flour is present in an amount of from 20 wt% to 22.5 wt% (col. 2 line 63- col. 3 line 8 and col. 4 lines 18-21). Although silent to wherein the amount of silica flour is “about 7 wt% to about 30 wt%,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a silica flour amount as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed silica flour amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claim 18, Rey discloses wherein the composition comprises a siliceous aggregate in an amount of from 80 to 90 parts by weight, wherein silica sand is in an amount of at least 25% of said siliceous aggregate and silica flour is in an amount of 25% of said siliceous aggregate (col. 2 line 63- col. 3 line 8 and col. 4 lines 14-21). Although silent to wherein the weight ratio of silica sand to silica flour is “about 3:1 to about 1:1,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for the weight ratio as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight ratio as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
With respect to depending claim 19, Rey discloses wherein the composition comprises a siliceous aggregate comprising silica sand and silica flour in an amount of from 80 to 90 parts by weight (col. 2 line 63- col. 3 line 8). Although silent to wherein the amount of silica sand and silica flour is “at least about 40 wt%,” as instantly claimed, it would have been obvious for a person having ordinary skill in the art before the effective filing date of the claimed invention to provide for a silica flour amount as claimed insofar as because it has been held "[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)
Furthermore, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed silica sand and silica flour amount as critical and it is unclear if any unexpected results are achieved by using the instantly claimed molecular weight range. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969)
Response to Arguments
Applicant's arguments filed 4/17/26 have been fully considered but they are not persuasive.
Applicant argues that although Rey discloses an epoxy resin comprising bisphenol-A or an aliphatic glycidyl ether, he fails to expressly disclose wherein the epoxy resin comprises bisphenol-A and an aliphatic glycidyl ether. The Examiner finds this argument unpersuasive. As noted above, this combination amounts to nothing more than an obvious variant of the epoxy resin. That is to say, the combination is but one of many similar known combinations which are known to be obvious variants to that which is disclosed.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AVI T. SKAIST whose telephone number is (571)272-9348. The examiner can normally be reached M-F 9:30-6.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674
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