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 with traverse of Group I in the reply filed on 07/09/26 is acknowledged.
Upon further consideration, the restriction requirement as set forth therein has been withdrawn.
Claims 1-18 are considered for examination herein.
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.
Claim 15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 15 provides for the use of a reactive resin component or reactive resin system, but since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active positive steps delimiting how this use is actually practiced.
Claim 15 fails to recite any specific steps associated with use of the reactive resin component or reactive resin system and/or offer any particular explanation of how the reactive resin component or reactive resin system is used in the method. It is unclear as to the scope of the manner in which the reactive resin component or reactive resin system is used and/or what is required in for the method to improve thixotropic properties of the reactive resin component and/or afterflow behavior of a reactive resin system. For example, does the mere inclusion of the compound of formula (I) improve thixotropic properties and/or afterflow behavior? Is a particular amount thereof required?
MPEP 2173.05(q) states “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
Instant claim 15 recites “utilizing a reactive resin component or reactive resin system comprising a compound of formula (I).” Such is similar to the example provided in MPEP 2173.05(q), wherein “utilizing a reactive resin component or reactive resin system” equates to “using monoclonal antibodies.” In both instances, the claim fails to identify a particular manner in which the object, i.e., reactive resin component or reactive resin system/monoclonal antibodies, is indeed used for its claimed purpose. Neither claim provides an active, positive step delimiting how the use is actually practiced.
Claim 18 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 18 provides for the application of a compound, but since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active positive steps delimiting how this use is actually practiced.
Claim 18 fails to recite any specific steps associated with “applying a compound of formula (I)” and/or offer any particular explanation of how the compound is applied in the method. It is unclear as to the scope of the manner in which the compound is applied and/or what is required in for the method to apply the compound so as to improve thixotropic properties of the reactive resin component. For example, does the mere inclusion of the compound of formula (I) improve thixotropic properties of the reactive resin component? Is a particular amount and/or manner of application thereof required?
MPEP 2173.05(q) states “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
Instant claim 18 recites “applying a compound of formula (I)…to improve thixotropic properties of a reactive resin component.” Such is similar to the example provided in MPEP 2173.05(q), wherein “applying a compound of formula (I)” equates to “using monoclonal antibodies” and “to improve thixotropic properties of a reactive resin” equates to “to isolate and purify human fibroblast interferon.” In both instances, the claim fails to identify a particular manner in which the object, i.e., compound of formula (I)/monoclonal antibodies, is indeed used for its claimed purpose, i.e., to improve thixotropic properties of a reactive resin component/to isolate and purify human fibroblast interferon. Neither claim provides an active, positive step delimiting how the use is actually practiced and, as such, claim 18 is rendered indefinite.
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.
Claims 15 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moszner (US 2002/0082315).
With respect to independent claim 15, Moszner discloses a method of improving thixotropic properties of a reactive resin component and/or afterflow behavior of a reactive resin system, the method comprising:
utilizing a reactive resin component or reactive resin system comprising a compound of
formula (I)
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:
wherein B is
(i) a divalent aromatic hydrocarbon group,
(ii) a divalent aromatic-aliphatic hydrocarbon group, or
(iii) a divalent linear, branched or cyclic aliphatic hydrocarbon group, or an aliphatic hydrocarbon group comprising a cycloaliphatic moiety, and
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wherein each R1 is independently a branched or linear aliphatic C1-C15 alkylene group.
([0080-81], wherein the above formula is disclosed).
With respect to independent claim 18, Moszner discloses a method for fastening anchoring elements in boreholes (The Examiner notes, when reading the preamble in the context of the entire claim, the recitation “for fastening anchoring elements in boreholes” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02), comprising:
applying a compound of formula (I):
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wherein B is
(i) a divalent aromatic hydrocarbon group,
(ii) a divalent aromatic-aliphatic hydrocarbon group, or
(iii) a divalent linear, branched or cyclic aliphatic hydrocarbon group, or an aliphatic hydrocarbon group comprising a cycloaliphatic moiety, and
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wherein each R1 is independently a branched or linear aliphatic C1-C15 alkylene group.
([0080-81], wherein the above formula is disclosed)
to improve thixotropic properties of a reactive resin component.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7-14, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Vogel et al. (EP 3129441 B1 – citations are to provided English translation) in view of Moszner.
With respect to independent claim 1, Vogel et al. discloses a method for fastening anchoring elements in boreholes, comprising:
curing a reactive resin component comprising a urethane (methacrylate) derivative (p. 7, “The group of ethylenically unsaturated compounds which comprise…urethane (meth)acrylates; p. 8, “Examples of urethane (meth)acrylates”) in a borehole with an anchoring element (p. 5, “The synthetic resin composition is used in particular as….in particular for fastening anchoring agents in substrates;” p. 12, “..which is set up for fastening anchoring elements in boreholes” and “in particular for fastening anchoring means such as anchor rods or the like;” p. 13, “…in particular for fastening anchoring means, such as anchor rods, bolts or the like, in recesses, such as boreholes.”
Vogel et al. discloses wherein the reactive resin component comprises a urethane (methacrylate) derivative (p. 7, “The group of ethylenically unsaturated compounds which comprise…urethane (meth)acrylates; p. 8, “Examples of urethane (meth)acrylates…”), as indicated above. The reference, however, fails to specifically identify a formula thereof, and, thus, a formula according to formula (I) as instantly claimed.
Moszner teaches reactive resin components comprising urethane di(meth)acrylate derivatives capable of flowing and capable of polymerization ([0010]) and further suggests wherein such can be used for the production of technical radically curing adhesives, cements and composites ([0079]; claim 18). Such components include a compound of formula (I):
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wherein B is
(i) a divalent aromatic hydrocarbon group,
(ii) a divalent aromatic-aliphatic hydrocarbon group, or
(iii) a divalent linear, branched or cyclic aliphatic hydrocarbon group, or an aliphatic hydrocarbon group comprising a cycloaliphatic moiety, and
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wherein each R1 is independently a branched or linear aliphatic C1-C15 alkylene group.
([0080]-[0081]).
Since Moszner teaches wherein the above reactive resin component comprising a compound of formula (I) can be used for the production of technical radically curing adhesives, cements and composites ([0079]) and provides for a reactive resin capable of flowing and capable of polymerization ([0010]), it would have been obvious to one having ordinary skill in the art to try such as the urethane (meth)acrylate in the method of Vogel et al. in order to yield the predictable result of allowing such to flow and subsequently polymerize within the borehole and cure therein.
With respect to dependent claim 2, Moszner teaches, wherein B is an aromatic C6-C20 carbon group. ([0080]-[0081], see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 3, Moszner teaches wherein B is (i) an optionally substituted benzene ring, two optionally substituted fused benzene rings or two optionally substituted benzene rings which are bridged via an alkylene group ([0080]-[0081], see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 4, Moszner teaches wherein B is (ii) a divalent aromatic-aliphatic hydrocarbon group of formula (Z) as claimed ([0080]-[0081], see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 7, Moszner teaches wherein the compound of formula (I) is as claimed ([0080]-[0081], see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 8, Moszner teaches wherein R1 is a C2- or C3-alkylene group. ([0019]; [0080]-[0081], see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 9, Moszner teaches wherein the compound of formula (I) is as claimed ([0080]-[0081], see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 10, Vogel et al. discloses wherein the reactive resin component comprises at least one inhibitor, at least one accelerator and optionally a least one diluent (p. 8, “Important examples of other ingredients are…”).
With respect to further dependent claim 11, Vogel et al. discloses wherein the reactive resin component further comprises filler and/or at least one additive (p. 8, “Important examples of other ingredients are…”).
With respect to dependent claim 12, Moszner teaches wherein a proportion of the compound of formula (I) in the reactive resin component is about 2.5 wt. % to about 45 wt. %, based on the reactive resin component ([0072], see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 13, Moszner teaches wherein the reactive resin component is in a multi- or a two- component system ([0072]-[0075], see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 14, Vogel et al. discloses the method further comprising preparing the reactive resin component (p. 13, “mixing components,” and “A variant of the use according to the invention provides that the components are introduced into a borehole”).
With respect to dependent claim 16, Moszner teaches combining or mixing the reactive resin component with a hardener ([0062]-[0065], the Examiner notes, Applicant defines hardener component as: “hardener component means a composition containing an initiator for the polymerization of a backbone resin” and further states “Another object of the present invention therefore also relates to a reactive resin system comprising a reactive resin component (A) and a hardener component (B) containing an initiator for the urethane methacrylate compound,”and, therefore, the initiator of Moszner provides for a hardener as claimed; see motivation to combine as set forth above in the rejection of claim 1).
With respect to dependent claim 17, Vogel et al. discloses wherein the anchoring element is selected from the group as claimed ;” p. 12, “in particular for fastening anchoring means such as anchor rods or the like;” p. 13, “…in particular for fastening anchoring means, such as anchor rods, bolts or the like, in recesses, such as boreholes”); and/or
wherein the borehole is in one or more of mineral substrates and/or metal substrates as claimed (p. 12, “…preferably of glass, metal, stone…; p. 13, “….masonry or concrete.”
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Vogel et al. in view of Moszner as applied to claim 1 above, and, further, in view of Nickerl (US 2020/0140593).
Vogel et al. in view of Moszner discloses the method as set forth above with respect to claim 1, wherein Moszner teaches the reactive resin component; Moszner, however, is silent on wherein B is (iii) a divalent linear or branched aliphatic C5-C8 hydrocarbon group or wherein B is an aliphatic hydrocarbon group Y as claimed.
Nickerl et al. teaches radically curable compounds for construction purposes and chemical fastening ([0001]) wherein such overlap that which is taught by Moszner ([0073], I; [0135]). As an alternative thereto, “X” of Nickerl et al., i.e., “B” of the instant claims, may include a divalent linear or branched aliphatic C5-C8 hydrocarbon group ([0078]-[0079]) or an aliphatic hydrocarbon group ([0135]).
Moszner and Nickerl are both considered to be analogous to the claimed invention because they are in the same field of reactive resin compositions and for structural materials development.
Therefore, it would have been obvious to someone of ordinary skill in the art before the
effective filing date of the claimed invention to have try a component for B as taught by Nickerl in the resin of Moszner in order to yield the predictable result of forming a reactive resin compound capable of use for construction purposes such as chemical fastening therewith.
Moszner and Buergel are both considered to be analogous to the claimed invention because they are in the same field of reactive resin selection and process development for structural materials development.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 15, 16 and 20 of U.S. Patent No. 11,459,422 (‘422 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and those issued in ‘422 provide for a method of incorporating a compound of formula (I) in a reactive resin system for the purpose of improving thixotropic properties of flow behavior of the resin system; ‘422 further provides for the method as used to anchor elements in a borehole as instantly claimed, as well as wherein the reactive-resin component is combined with a hardener. As such, the instant claims are fully encompassed by the methods of ‘422 and not patentably distinct therefrom.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 10,829,578 provides a method for fastening anchoring elements with reactive resin compounds.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
08/19/26
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