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 Preliminary Amendment
The preliminary amendment submitted on 30 April 2024 has been entered. After entry of the amendment claims 1-13 and 15-21 are currently pending in the application.
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 17 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.
The claim is confusing and therefore vague and indefinite as it is unclear as to how a ratio can be represented using units (i.e. mass %). Clarification is requested.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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 1-11, 13, and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Koyanagi et al (US Patent Application Publication No. US 2020/0038827 A1).
The reference teaches, in the claims:
A foaming agent composition for civil engineering-construction materials comprising an anionic surfactant (A), a surfactant aid (B) and a water-insoluble or slightly water-soluble nonionic surfactant (C). The anionic surfactant (A) is an anionic surfactant having an alkyl group or alkenyl group with 8 or more and 22 or less carbons such as alkyl or alkenyl ether sulfates having an alkyl group or alkenyl group with 8 or more and 22 or less carbons (claim 3). The surfactant aid (B) is a hydrocarbon derivative with 8 or more and 22 or less carbons such as monohydric alcohols with 8 or more and 22 or less carbons (claim 6). The water-insoluble or slightly water-soluble nonionic surfactant (C) is a nonionic surfactant having an alkyl group or alkenyl group with 5 or more and 22 or less carbons such as polypropylene glycol monoalkyl ethers having one alkyl group with 8 or more and 22 or less carbons and having an average number of moles of added oxypropylene of 1 or more and 10 or less; and glyceryl ethers having an alkyl group or alkenyl group with 5 or more and 22 or less carbons. Examples include 2-ethylhexyl glyceryl ether, Pentyl glyceryl ether, Isodecyl glyceryl ether, Polyoxypropylene (average number of added moles: 3) octyl ether, and Diethylene glycol monobutyl ether (Table 1-3). The anionic surfactant (A) is contained in an amount of 60% by mass or more and 95% by mass or less provided that the total of (A), (B) and (C) is 100% by mass (claim 11). The surfactant aid (B) is contained in an amount of 2.5% by mass or more and 20% by mass or less provided that the total of (A), (B) and (C) is 100% by mass (claim 12). The water-insoluble or slightly water-soluble nonionic surfactant (C) is contained in an amount of 2.5% by mass or more and 20% by mass or less provided that the total of (A), (B) and (C) is 100% by mass. Claim 16 recites the addition of water and a hydraulic material. The hydraulic material may be cement, gypsum or the like.
The instant claims are obvious over the reference.
As for claim 1, the reference teaches gypsum which meets the hydraulic powder and water. The anionic surfactant (A) which may be alkyl or alkenyl ether sulfates having an alkyl group or alkenyl group with 8 or more and 22 or less carbons meets component (A1). The surfactant aid (B) meets component (A2). The component (C) meets component (B) as it may be Pentyl glyceryl ether or diethylene glycol monobutyl ether which have a logP that falls within the claimed range. As for the mass ratio, the reference teaches amounts of components that result in a ratio that overlaps the claimed range and 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), see MPEP 2144.05.
As for claim 2, as the hydraulic powder just be gypsum it would therefore possess a content that falls within the claimed range.
As for claim 3, the reference teaches an alkyl or alkenyl sulfate having an alkyl group or alkenyl group with 8 or more and 22 or less carbons and this overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 4, the reference teaches amounts of components that result in a ratio that overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 5, the reference teaches an amount that falls within the claimed range as it teaches 60% by weight or more.
As for claim 6, the reference teaches diethylene glycol monobutyl ether which is an example of a glycol ether.
As for claim 7, the hydraulic powder which is gypsum appears to meet this limitation as the reference does not recite the addition of clinker ground product.
As for claim 8, as the composition may be the same it would therefore inherently possess the claimed property. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 9, this method is taught by the reference. The reference teaches the claimed composition as discussed in the rejection of claim 1. The reference teaches, in claims 18-19, and 22, the claimed method steps.
As for claim 10, as the hydraulic powder just be gypsum it would therefore possess a content that falls within the claimed range.
As for claim 11, the reference teaches an alkyl or alkenyl sulfate having an alkyl group or alkenyl group with 8 or more and 22 or less carbons and this overlaps the claimed range and overlapping ranges are deemed to be obvious.
As for claim 13, as the composition may be the same the hardened composition would therefore inherently possess the claimed property. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 15, the reference teaches a monohydric alcohol.
As for claim 16, the reference teaches diethylene glycol monobutyl ether.
As for claim 17, paragraph [0061] teaches a mass ratio of water to hydraulic powder of 0.1 or more and .8 or less which overlaps the claimed ratio and overlapping ranges are deemed to be obvious.
As for claims 18 and 19, based on paragraph [0057] which teaches that the foaming agent composition for hydraulic compositions is used as an aqueous solution containing component (A), component (B) and component (C) at a concentration of 0.05% by mass or more and 2.0% by mass or less in total (calculated based on the form of solid content). The total content of component (A), component (B) and component (C) in the aqueous solution is more preferably 0.1% by mass or more and more preferably 1.5% by mass or less, furthermore preferably 1.0% by mass or less and the amounts of the components (A), (B) and (C) recited in claims 11-13, the amounts overlaps the claimed ranges of amounts and overlapping ranges are deemed to be obvious.
As for claims 20 and 21, as the composition may be the same the hardened composition would therefore inherently possess the claimed property. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Koyanagi et al (US Patent Application Publication No. US 2020/0038827 A1) in view of Hirooka et al (US Patent Application Publication No. US 2019/0054656 A1).
Koyanagi et al was discussed previously, above.
Hirooka et al teaches that it is known to produce a gypsum board by molding a gypsum slurry and then hardening of the slurry.
The instant claim is obvious over the combination of references.
Koyanagi et al teaches the formation of a gypsum slurry however it fails to teach the formation of a gypsum board using the composition. It does teach in paragraph [0151] that the composition was placed in a mold and hardened. Hirooka et al is relied on to show that it is known to form gypsum boards by placing the composition into a mold and then hardening and accordingly it is within the level of ordinary skill in the art to form a gypsum board from the composition of Koyanagi et al by using a board shaped mold without producing any unexpected results. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
ajg
June 17, 2026
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