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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 3-21, claim 1 recites a ratio (B)/(A) of a pore volume (B) in a pore size range of 6 to 560 nm with respect to a pore volume (A) in a pore size range of 660 to 9,100 nm, is 1.70 to 6.0. Applicants’ specification as originally filed does not recite pore volume “in a pore size range” as claimed for each of pore volume (A) and (B). Therefore, the limitations constitute new matter.
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 and 3-21 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.
Regarding claims 1 and 3-21, claim 1 recites a pore size distribution that is determined by a mercury intrusion using a porosimetry pore volume analyzer. It is unclear how the pore size distribution is determined as claimed, as Applicants’ specification only appears to set forth a mercury intrusion method using a mercury intrusion porosimetry pore volume analyzer without any recitation of the actual mercury intrusion method. Note that even if a mercury intrusion method is ordinarily known in the art, it is unclear if the claimed mercury intrusion method requires the analyzer set forth in the specification. Therefore, it is unclear how the pore size distribution is determined.
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 and 3-21 are rejected under 35 U.S.C. 103 as being unpatentable over USPN 7,128,965 to Famy in view of USPN 7,993,570 to Naji.
Regarding claims 1 and 3-21, Famy teaches a cementitious product in panel form comprising at least one hydraulic binder, such as Portland cement, at least one filler, such as calcium carbonate, and at least synthetic fibers (Famy, Abstract, column 2 lines 53-62). Famy teaches that the product comprises 20 to 50% by weight of cement, 35 to 65% by weight calcium carbonate, 2 to 10% by weight synthetic fibres, 0 to 30% by weight of pozzolan, and 0 to 10% by weight of additives (Id., column 4 lines 10-33). Famy teaches that the product also includes at least plant fibres, especially cellulose fibers such as pine, in an exemplary amount of 3% (Id., column 3 lines 25-33, Examples 1 and 2). Note that pine cellulose fibers are ordinarily known in the art as wood pulp fibres. Famy teaches that the pozzolan includes fly ash (Id., column 3 lines 34-50, Example 2). Note that 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). The existence of overlapping or encompassing ranges shifts the burden to Applicants to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Famy does not appear to specifically teach the claimed pore size distribution and ratio. However, Naji teaches a similar fibre-cement composite having a predetermined pore size distribution, such that in critical zones of the distribution, the pore volume is substantially equivalent to or less than the pore volume in a respective critical zone of a conventional high density product (Naji, Abstract). Naji teaches that the material provides improved properties including durability and workability (Id.). Naji teaches that the fibre reinforced cement typically comprises a binder such as cement in a range of about 10% to 60% by total weight, pozzolanic materials including fly ash, siliceous material, and reinforcing fibers such as polyamides, polypropylene, polyacrylonitrile, PVA, and cellulose pulps (Id., column 4 lines 14-67). Naji teaches pore size distribution and mean pore diameter and pore volume at Figure 2, including pore sizes and respective pore volumes within the claimed ranges (see additionally Id., column 5 lines 46-62). Naji teaches that the properties of the fibre cement composite, in particular durability and workability in extreme climactic conditions, may be linked to the pore size distribution (Id., column 5 line 63 to column 6 line 32, column 9 line 25 to column 10 line 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the cementitious product of Famy, wherein the product comprises a pore size distribution and pore volume ratio with pore size ranges, such as within the claimed ranges, as taught by Naji, motivated by the desire of forming a conventional cementitious product having predictably improved durability and workability suitable for the intended application.
Regarding claims 6-9 and 16-21, Famy teaches that the synthetic fibers are particularly a thermoplastic polymer, such as polyvinyl alcohol, polypropylene, or polyethylene fibers (Famy, column 2 lines 10-20), preferably having a diameter of 5 to 16 µm and a length from 3 to 8 mm (Id., column 3 lines 1-24). Additionally, Naji teaches that suitable synthetic fibers include polyamides, polypropylene, polyacrylonitrile, PVA, and cellulose pulps.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the cementitious product of the prior art combination, wherein the synthetic fibers comprise the claimed synthetic fibers including the claimed aspect ratio, as taught by Famy and Naji, motivated by the desire of forming a conventional cementitious product comprising synthetic reinforcing fibers known in the art as being functionally equivalent and predictably suitable for similar cementitious products.
Regarding claims 10-14, although Famy does not appear to teach the claimed bulk density, Naji teaches that the density of a fibre-cement composite is no greater than about 1.6 gms per cm3 (Naji, column 2 lines 44-52). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the cementitious product of the prior art combination, wherein the product comprises a density such as within the claimed range, as taught by Naji, motivated by the desire of forming a conventional cementitious product having properties known in the art as being predictably suitable for similar cementitious products.
Additionally, although the prior art combination does not appear to teach the claimed water absorption rate, total heat value and flexural strength, it is reasonable for one of ordinary skill to expect that the claimed properties naturally flow from the teachings of the prior art combination, as the prior art combination teaches a substantially similar structure and composition and properties as claimed. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Response to Arguments
Applicant’s arguments have been considered but are moot based on the new ground of rejection.
Conclusion
Applicants’ amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicants are 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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786
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