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 without traverse of Invention I (claims 1-19) in the reply filed on 11/12/25 is acknowledged.
Claim Objections
Claims 1, 2, 8, 11, 14, and 17 are objected to because of the following informalities:
On line 2 of claim 1, “of an” should be removed.
On line 3 of claim 1, “of a” should be removed.
On line 1 of claim 2, “comprising” should be “wherein the slurry comprises…”
On line 1 of claim 2, “of” should be removed.
On line 1 of claim 8, “of the” should be removed.
On line 1 of claim 11, “of the” should be removed.
On line 1 of claim 14, “of” should be removed.
On line 1 of claim 17, “of” should be removed.
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 1-19 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 pre-AIA the applicant regards as the invention. Claims 1-19 recite “a slurry…” and “the slurry…” The term “slurry” is indefinite in that it is unclear as to how a composition comprising only dry ingredients might constitute a “slurry,” i.e., be a semiliquid mixture. For purposes of examination, the term “slurry” will be considered as if written as “composition.” Claims 2-19, dependent upon claim 1, are hereby rejected under 35 USC 112(b) as being dependent upon a rejected base claim.
Claim 3 is 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 pre-AIA the applicant regards as the invention. Claim 3 recites the limitation “wherein the slurry is substantially free from cement.” The term “substantially free” is a relative term which renders the claim indefinite. The term " substantially free" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to the amount of cement necessary for the slurry to be considered as “substantially free from cement” as claimed. For purposes of examination, the term “substantially free from cement” will be considered as if written as “free of cement.”
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.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Rey (US 4,548,961- cited by Applicant).
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 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 4-7, 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)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Alanqari et al. (US 11,624,020) teaches a composition comprising epoxy resin, curing agent, silica sand, and silica flour.
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/AVI T SKAIST/Examiner, Art Unit 3674
/WILLIAM D HUTTON JR/Supervisory Patent Examiner, Art Unit 3674