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 Objections
Claims 1, 4, 7–12, 14 and 17 are objected to because of the following informalities:
Claims 1, 4 and 14: each of these claims recites “the D50 is comprised” from a size range; the transitional phrase “comprise” is open-ended, allowing for other, unnamed components or conditions to be included, but this doesn’t agree with a fixed parameter like D50; if the D50 is between 10 to 600 nm, it cannot comprise additional sizes outside that range, because then it wouldn’t be a D50; for clarity, the Examiner recommends rephrasing these limitations to recite “the D50 is between” or “the D50 ranges from”;
Claims 7–12: the limitation “wherein the cement composition […] comprises […] a material containing calcium carbonate being limestone” is worded awkwardly, because “being limestone” isn’t properly integrated to the clause as a limitation; the Examiner recommends rephrasing to “wherein the cement composition […] comprises […] a material containing calcium carbonate, said material being limestone”;
Claim 14: the first method step recites “separately preparing a cement slurry and a gas-forming liquid, the cement slurry comprises…”, which requires a connecting term such as “wherein” to properly identify the latter clause as a further limitation, i.e., this should read “wherein the cement slurry comprises…”;
Claim 14: as amended, it appears as though the first step ends with both a comma and a semicolon (i.e., “or combinations thereof,;”);
Claim 17: the final item of the list is missing a bullet point (compare to claim 14, which has a bullet point for the same list item).
Appropriate correction is required.
Claim Interpretation
Claim 1 recites the limitation “for reducing a thermal conductivity of a mineral foam”. This is a statement of intended purpose. Pursuant to MPEP 2111.02, statements reciting an intended purpose must result in a manipulative difference in order to carry patentable weight. Claim 1 recites a method comprising utilizing component A to reduce the thermal conductivity of a mineral foam, but any comparable mineral foam utilizing component A will have the same thermal conductivity properties, whether or not thermal conductivity is explicitly recited as a targeted parameter. Accordingly, the statement of intended purpose is not considered to result in a manipulative difference between the claimed method and any comparable method. The statement of intended purpose will therefore not be given patentable weight when applying prior art to claim 1.
Claim 1 further recites the mineral foam as “produced by a process”. This is product-by-process language. Pursuant to MPEP 2113, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by those steps. There are sufficient structural limitations in the product-by-process claims to establish the intended structure. The claimed method requires a mineral foam, which comprises Portland clinker, component A, ultrafine particles with D50 between 10–600 nm, a transition metal salt, and water. All of these are structural limitations that will be considered in applying prior art, because they directly impact the composition and structure of the resulting mineral foam. However, limitations regarding the gas-forming liquid will not be considered, as a gas-forming liquid, a gas-forming solid, or direct bubbling of gas into the cement slurry can all reasonably arrive at the claimed mineral foam. This interpretation extends to claim 14, which further limits the product-by-process limitations of claim 1. Claim 17 explicitly recites a method for manufacturing a mineral foam, wherein the method requires a gas-forming liquid. As Claim 17 does not recite a product-by-process, the gas-forming liquid in claim 17 is considered to have patentable weight, and will be considered when applying prior art.
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 1–20 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 claim 1, the limitation “the mineral foam is produced by a process comprising…” is indefinite. As discussed above, the product-by-process limitations convey sufficient structural detail in the recited process, and are therefore not indefinite. However, the specific wording of this claim leads to indefiniteness because it is unclear if the claim requires the product to actually be produced by the practitioner. Disregarding the intended purpose limitations (see above), the claim essentially recites a method of utilizing component A in a product, which is indefinite pursuant to MPEP 2173.05(q): “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness”. However, since the product-by-process limitations are being given patentable weight, this also calls into question what exactly is being claimed, as a product and process in the same claim leads to indefiniteness when it isn’t clear whether the claim is drawn to the product and not the process (see MPEP 2173.05(p)). Claim 1 recites a method of using component A to achieve an intended property in a product, wherein the product is produced by a method, so the claim could reasonably be interpreted as being drawn to the use of component A in a mineral foam to achieve an intended property (i.e., the use itself is being claimed), or it could be interpreted as being drawn to a method of making a mineral foam, wherein the method comprises using component A. If a practitioner were to utilize component A in a pre-purchased mineral foam, that would infringe on one reading of the claim but not the other. The exact scope of the claimed subject matter is therefore unclear, leading to indefiniteness.
Claims 2–20, being dependent on claim 1, inherit its deficiencies, and are rejected on the same grounds.
Regarding claim 3, the limitation “the sand is composed of particles that have a size greater than 0 mm to 2 mm” is indefinite because “greater than 0 mm to 2 mm” could be interpreted as “greater than 0 mm and up to 2 mm”, or as “greater than both 0 mm and 2 mm”. For purposes of examination, the Examiner will herein interpret this claim as reciting “the sand is composed of particles that are less than or equal to 2 mm in size”, because that would inherently include all sizes down to 0 mm, and seems to align with the “0/2” notation used in the specification (see pg. 7, ll. 28–31).
Regarding claim 14, there is ambiguous antecedent basis for “a cement slurry” and “a gas-forming liquid” in the first method step. Parent claim 1 already introduces “a cement slurry” and “a gas-forming liquid”, so their re-introduction in claim 14 with the article “a” leads to indefiniteness because it is unclear if they are meant to be the cement slurry and gas-forming liquid already introduced in claim 1, or if they are being newly introduced. Furthermore, the second method step recites “contacting the cement slurry with a gas-forming liquid” (emphasis added), which leads to ambiguous antecedent basis within the claim, since it isn’t clear if the gas-forming liquid introduced in the first method step is being used in the second method step, or if the second method step is introducing a new gas-forming liquid. For purposes of examination, the Examiner will interpret claim 14 as having proper antecedence both within the claim and with its parent claim 1.
Regarding claim 16, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 16 recites the broad recitation “from 0.03 to 0.07 W/m∙K for a dry density ranging from 50 to 180 kg/m3”, and the claim also recites “from 0.035 to 0.06 W/m∙K for dry density ranging from 80 to 130 kg/m3” which is the narrower statement of the range/limitation (the thermal conductivity and density are both broader in the former, and both narrower in the latter). The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 17, there is ambiguous antecedent basis for “a gas-forming liquid” in the second method step. The second method step recites “contacting the cement slurry with a gas-forming liquid” (emphasis added), which leads to ambiguous antecedent basis within the claim, since it isn’t clear if the gas-forming liquid introduced in the first method step is being used in the second method step, or if the second method step is introducing a new gas-forming liquid. For purposes of examination, the Examiner will interpret claim 17 as having proper antecedence within the claim.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 6, 13, 14 and 17 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Bernard (US 2017/0349498 A1, hereinafter “Bernard”).
Regarding claim 1, Bernard teaches a method for the production of mineral foam (see generally abstract), which achieves very low thermal conductivity (see paragraph 0012), wherein the mineral foam utilizes a mineral component or sand (see paragraph 0051; this is considered to satisfy the claimed “component A” limitation). Bernard teaches the mineral foam as being produced by contacting a cement slurry with a pore-forming agent (see paragraph 0019; “adding to the mixture” is considered to meet the claimed “contacting” limitation; also see paragraph 0072 teaching the pore-forming agent as an aqueous solution of hydrogen peroxide, meaning the “pore-forming agent” taught by Bernard is a gas-forming liquid). Bernard further teaches the cement slurry as comprising a mineral component (see paragraph 0051), cement (see paragraph 0015 teaching cement; see paragraph 0022 teaching the cement as Portland cement; the “clinker” limitation will be addressed below), ultrafine particles with a D50 in the range of 10 to 600 nm (see paragraph 0017), a transition metal salt (see paragraph 0039), and water (see paragraph 0018).
Regarding the limitation wherein the cement composition comprises Portland clinker, it is noted that Bernard fails to explicitly teach the use of Portland clinker. Cement clinker is an intermediate product which is not directly used in cementitious compositions; it must first be ground and mixed with a set retarder, usually calcium sulfate, at which point it is considered cement. Applicants claim a cement composition comprising Portland clinker, but for it to be a cement composition, the clinker must necessarily have been ground and mixed with a set retarder. This also aligns with Applicants’ own definition of “cement” in their specification (see pg. 4, ll. 1–19). As Portland clinker is merely an intermediate and cannot produce a cement composition by itself, the claimed cement composition is considered to be met by Bernard’s use of cement, as Bernard could have also produced a cement composition by using Portland clinker as an intermediate. The product-by-process limitations recited in claim 1 (see the above “Claim Interpretation” section) can be met by any substantially similar product, and since Bernard arrives at a substantially similar mineral foam, Bernard is considered to anticipate the limitations of claim 1.
Regarding claim 2, Bernard teaches the method according to claim 1, and further teaches the limitation wherein the mineral component is selected from slag, pozzolanic material, fly ash, calcined schists, calcium carbonate, silica fume, siliceous component, metakaolin and mixtures thereof (see paragraph 0054; “siliceous component” is met by silica sand; see paragraph 0060 teaching “pozzolanic materials” as including calcinated [calcined] schists and clays [metakaolin is a component of calcined clay]).
Regarding claim 6, Bernard further teaches the limitation wherein component A comprises material containing calcium carbonate and at least one further component selected from, inter alia, sand, a mineral addition different from material containing calcium carbonate, and combinations thereof (see paragraph 0054; Bernard teaches “or mixtures thereof”, which means calcium carbonate can be used in conjunction with any of the other recited mineral components, including sand and natural pozzolanic materials, wherein the natural pozzolans are taught to include minerals such as calcined clays and schists [see paragraphs 0060–0063 teaching specific mineral additions]).
Regarding claim 13, Bernard teaches the limitation wherein the cement slurry has a water/cement mass ratio (hereinafter “w/c ratio”) ranging from 0.25 to 0.7. However, the w/c ratio disclosed by Bernard is simply the mass ratio between water and cement (see paragraph 0065), whereas claim 13 specifies that “cement” includes the mass of cement, mineral addition, and ultrafine particles. Therefore, it is necessary to convert Bernard’s w/c ratio before it can be applied to the claimed w/c ratio. Bernard provides an example embodiment in Table 1 (pg. 8, sample 389), which comprises 71.9 wt.% cement, 4.83 wt.% ultrafine particles, and 22.35 wt.% mineral addition, and which has a w/c ratio of 0.76. Taking 100 wt.% to be 100 kg, and applying a w/c ratio of 0.76 to 71.9 kg of cement, Bernard’s composition comprises 71.9 kg cement, 4.83 kg ultrafine particles, 22.35 kg mineral addition, and 54.6 kg water (71.9 kg × 0.76). The combined mass of all dry components is 99.08 kg, and thus the w/c ratio in terms of the claimed definition of “cement” is 0.55 (54.6 ÷ 99.08). This falls within the w/c ratio range of claim 13.
Regarding claim 14, Bernard teaches the mineral foam as being produced by a process comprising the following steps:
separately preparing a cement slurry and a gas-forming liquid (see paragraphs 0014–0019, wherein the cement slurry is prepared in step (i) and is then mixed with a gas-forming liquid in step (ii), which indicates that they were prepared separately), wherein the cement slurry comprises a cement composition, ultrafine particles of which the D50 is between 10–600 nm, a transition metal salt and water, and wherein the cement composition comprises Portland clinker and component A (see paragraphs 0015–0018 teaching cement, ultrafine particles with the claimed D50, and water; see paragraph 0022 teaching the cement as Portland cement; see paragraph 0039 teaching the inclusion of a transition metal salt; see paragraph 0051 teaching a mineral additive, which satisfies the “component A” limitation);
contacting the cement slurry with a gas-forming liquid comprising a gas-forming agent to obtain a foamed cement slurry (see paragraph 0019 teaching the combination of the cement slurry with a pore-forming agent; “combination” inherently implies “contacting”; see paragraph 0072 teaching the pore-forming agent as an aqueous solution of hydrogen peroxide, meaning it is a gas-forming liquid in which hydrogen peroxide serves as the gas-forming agent; the result of the mixture is necessarily a foamed cement slurry);
leaving the foamed cement slurry expanding to form the mineral foam (see paragraph 0021 teaching a step of leaving the mixture to expand; see paragraph 0013 teaching the method steps as resulting in a mineral foam).
Regarding claim 17, Bernard teaches a method for manufacturing a mineral foam comprising the following steps:
separately preparing a cement slurry as defined in claim 1 and a gas-forming liquid (see paragraphs 0014–0019, wherein the cement slurry is prepared in step (i) and is then mixed with a gas-forming liquid in step (ii), which indicates that they were prepared separately; see the above rejection of claim 1 regarding the formulation of the cement slurry);
contacting the cement slurry with a gas-forming liquid comprising a gas-forming agent to obtain a foamed cement slurry (see paragraph 0019 teaching the combination of the cement slurry with a pore-forming agent; “combination” inherently implies “contacting”; see paragraph 0072 teaching the pore-forming agent as an aqueous solution of hydrogen peroxide, meaning it is a gas-forming liquid in which hydrogen peroxide serves as the gas-forming agent; the result of the mixture is necessarily a foamed cement slurry);
leaving the foamed cement slurry expanding to form the mineral foam (see paragraph 0021 teaching a step of leaving the mixture to expand; see paragraph 0013 teaching the method steps as resulting in a mineral foam).
Claims 1, 2, 6, 14, 15 and 17 are further rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jezequel (WO 2019/092090 A1, hereinafter “Jezequel”).
Regarding claim 1, Jezequel teaches a method for the production of mineral foam (see generally abstract), wherein the mineral foam utilizes a mineral component (see pg. 11, ll. 17–26; this is considered to satisfy the claimed “component A” limitation). Jezequel teaches the mineral foam as being produced by contacting a cement slurry with a gas-forming liquid (see pg. 4, ll. 7–20; “adding to the cement slurry” is considered to meet the claimed “contacting” limitation). Jezequel further teaches the cement slurry as comprising a mineral component (see pg. 11, ll. 17–26), cement (see pg. 4, l. 10 teaching cement; also see pg. 7, ll. 11–15 teaching the cement as Portland cement, formed from ground Portland clinker), ultrafine particles with a D50 in the range of 10 to 600 nm (see pg. 4, l. 11), a transition metal salt (see pg. 4, l. 13 teaching manganese salts, wherein manganese is a transition metal), and water (see pg. 4, l. 14).
Regarding claim 2, Jezequel teaches the method according to claim 1, and further teaches the limitation wherein the mineral component is selected from slag, pozzolanic materials, fly ash, calcined schists, material containing calcium carbonate, silica fume, siliceous component, metakaolin, and mixtures thereof (see pg. 11, ll. 17–26; see pg. 12, ll. 22–26 teaching the pozzolanic materials as including calcinated [calcined] schists and clays [metakaolin is a component of calcined clays]).
Regarding claim 6, Jezequel further teaches the limitation wherein component A comprises material containing calcium carbonate and at least one further component selected from, inter alia, sand, a mineral addition different from material containing calcium carbonate, and combinations thereof (see pg. 11, ll. 17–26; Jezequel teaches “or mixtures thereof”, which means calcium carbonate can be used in conjunction with any of the other recited mineral components, including sand and natural pozzolanic materials, wherein the natural pozzolans are taught to include minerals such as calcined clays and schists [see paragraphs 0060–0063 teaching specific mineral additions]).
Regarding claim 14, Jezequel teaches the mineral foam as being produced by a process comprising the following steps:
separately preparing a cement slurry and a gas-forming liquid (see pg. 4, ll. 7–20, wherein the cement slurry is prepared in step (i) and is then mixed with a gas-forming liquid in step (ii), which indicates that they were prepared separately), wherein the cement slurry comprises a cement composition, ultrafine particles of which the D50 is between 10–600 nm, a transition metal salt and water, and wherein the cement composition comprises Portland clinker and component A (see pg. 4, ll. 10–14 teaching cement, ultrafine particles with the claimed D50, manganese salts [a transition metal], and water; see pg. 7, ll. 11–15 teaching the cement as Portland cement; see pg. 11, ll. 17–26 teaching a mineral additive, which satisfies the “component A” limitation);
contacting the cement slurry with a gas-forming liquid comprising a gas-forming agent to obtain a foamed cement slurry (see pg. 4, ll. 15–21 teaching the addition of a gas-forming liquid comprising a gas-forming agent to the cement slurry to obtain a foaming slurry; “adding” inherently implies “contacting”);
leaving the foamed cement slurry expanding to form the mineral foam (see pg. 4, l. 23 teaching a step of leaving the foaming slurry to expand; see pg. 4, ll. 7–8 teaching the product as a mineral foam).
Regarding claim 15, Jezequel further teaches the limitation wherein the mineral foam has a dry density ranging from 50 to 180 kg/m3 (see pg. 21, ll. 5–7 teaching this density range).
Regarding claim 17, Jezequel teaches a method for manufacturing a mineral foam comprising the following steps:
separately preparing a cement slurry as defined in claim 1 and a gas-forming liquid (see pg. 4, ll. 7–20, wherein the cement slurry is prepared in step (i) and is then mixed with a gas-forming liquid in step (ii), which indicates that they were prepared separately; see the above rejection of claim 1 regarding the formulation of the cement slurry);
contacting the cement slurry with a gas-forming liquid comprising a gas-forming agent to obtain a foamed cement slurry (see pg. 4, ll. 15–21 teaching the addition of a gas-forming liquid comprising a gas-forming agent to the cement slurry to obtain a foaming slurry; “adding” inherently implies “contacting”);
leaving the foamed cement slurry expanding to form the mineral foam (see pg. 4, l. 23 teaching a step of leaving the foaming slurry to expand; see pg. 4, ll. 7–8 teaching the product as a mineral foam).
Claim Rejections - 35 USC § 103
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 3, 5, 7–12, 15, 16, and 18–20 are rejected under 35 U.S.C. 103 as being unpatentable over Bernard. Evidentiary support for the use of limestone as a calcium carbonate-containing material is provided by Tongli Heavy Machinery (“6 Main Raw Material for Cement Industry”, <cementl.com>, hereinafter “Tongli”), and is applied to claims 7–12 (see MPEP 2124 regarding the appropriate use of evidentiary support that does not properly antedate the filing date).
Regarding claim 3, Bernard teaches the method according to claim 1, and further teaches the limitation wherein the sand is composed of particles that have a size greater than 0 mm to 2 mm (interpreted as ≤ 2mm; see the above 112(b) rejection) (see paragraph 0051 teaching the D50 of the mineral component, including sand, as ranging from 0.1 to 4 mm; the D50 indicates that 50% of particles are no bigger than a specified size, which means that the other 50% of particles are bigger than the specified size; without knowing the distribution of particle sizes, it isn’t possible to determine the exact range of particle sizes taught by Bernard, but absent any evidence of criticality of the claimed size range, a D50 of 2 mm inherently includes sand particles of which 50% are within the claimed range, which is considered to overlap with the claimed range (see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Thus, claim 3 is rendered prima facie obvious.
Regarding claims 5 and 18, Bernard teaches the mass of component A as 15–50 wt.% relative to the mixture of step (i) (see paragraph 0052), but claims 5 and 18 require the weight relative to the cement composition, which is defined in claim 1 to comprise the cement and component A, whereas Bernard’s step (i) mixture includes other additives. However, Bernard also teaches example embodiments (see pg. 8, Table 1), wherein the dry formulation from step (i) is given as weight percentages. Setting 100 wt.% equal to 100 kg, Bernard’s sample 389 comprises 71.9 kg of cement and 22.35 kg of mineral addition (component A). This means Bernard’s equivalent to the claimed cement composition comprises 24 wt.% component A (22.35 kg ÷ [71.9 kg + 22.35 kg]), which is sufficiently close to the claimed “more than 25 wt.%” to render claim 5 prima facie obvious (see MPEP 2144.05(I) regarding the obviousness of ranges that do not overlap, but are merely close).
Regarding claim 18, Bernard teaches a mass of component A as 15–50 wt.% relative to the mixture of step (i), but, as discussed above, the mixture of step (i) includes more components than the claimed cement composition. Therefore, the amount of component A relative to just the mass of the cement and component A together will be higher than 15–50 wt.%. Although no specific embodiments are disclosed to provide an actual upper bound for the range, this is sufficient to support a prima facie obviousness rejection, because the upper bound of 50 wt.% was already sufficiently close to the claimed “at least 52 wt.%” (see MPEP 2144.05(I) regarding the obviousness of ranges that do not overlap, but are merely close; also see MPEP 2144.05(II) stating that differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical). Thus, claims 5 and 18 are rendered prima facie obvious.
Regarding claims 7–12, Bernard teaches the limitation wherein the cement composition of the cement slurry comprises the claimed concentrations of a material containing calcium carbonate (see paragraphs 0052 and 0055 teaching 15 to 50 wt.% mineral additions, wherein suitable mineral additions include materials containing calcium carbonate, for example calcareous materials [wherein “calcareous” means “materials containing calcium carbonate”]; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges; also see the above rejection of claim 18 describing the 15–50 wt.% range as actually being higher when recontextualized in terms of the claimed cement composition). Bernard explicitly teaches the mineral additions as being selected from calcium carbonate, slag, silica fume, and mixtures thereof (see paragraph 0054), which means the combinations of mineral additions claimed in claims 8–12 are also met by Bernard. The claimed concentrations of each combination of mineral components each add up to a range that overlaps with Bernard’s 15–50 wt.% range, and the specific ratios of each claimed component can be reasonably arrived at through routine optimization (see MPEP 2144.05(I) and (II) regarding the obviousness of overlapping ranges, and the use of routine optimization to arrive at a non-critical concentration). Thus, Bernard teaches the claimed components and ranges of claims 7–12.
Bernard fails to explicitly teach the limitation wherein the material containing calcium carbonate is limestone. Limestone is a calcareous rock, but Bernard’s calcareous materials are a broader genus than limestone, and may include, for example, soils, sediments, and shells. However, in the context of cementitious products, limestone is well-understood to be a traditional and widely used source of calcium carbonate, as discussed in Tongli (see highlighted sections). Tongli also discusses typical methods of processing limestone, including crushing it into a fine powder and mixing with other materials, which is directly compatible with Bernard’s teachings. A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Bernard’s calcareous mineral additives encompass limestone, because limestone is a ubiquitous and well-recognized source of calcium carbonate in cementitious materials. Thus, claims 7–12 are rendered prima facie obvious.
Regarding claim 19, Bernard fails to explicitly teach the limitation wherein the cement slurry has a water/cement mass ratio (hereinafter “w/c ratio”) ranging from 0.29 to 0.45. As discussed in the above rejection of parent claim 13, the w/c ratio disclosed by Bernard is simply the mass ratio between water and cement (see paragraph 0065), whereas claim 19 inherits the definition of “cement” from parent claim 13, defining it to include the mass of cement, mineral addition, and ultrafine particles. In the above rejection of claim 13, the w/c ratio in terms of the claimed definition of “cement” is calculated to be 0.55. This falls above the upper bound of claim 18, but the w/c ratio is well-understood to be an optimizable parameter in cementitious products, and a person having ordinary skill in the art before the effective filing date of the claimed invention could have reasonably arrived at the claimed w/c ratio through routine optimization (see MPEP 2144.05(II) stating that differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical). Thus, claim 19 is rendered prima facie obvious.
Regarding claims 15, 16 and 20, Bernard teaches the limitation of claim 15 wherein the mineral foam has a dry density ranging from 50 to 180 kg/m3 (see paragraph 0097 teaching the dry density as 50–600 kg/m3; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Bernard further teaches the limitation of claim 16, wherein, for a dry density ranging from 50 to 180 kg/m3, the dry mineral foam has a thermal conductivity ranging from 0.03 to 0.07 W/m∙K (see paragraph 0107 teaching the thermal conductivity as ranging from 0.03 to 0.5 W/m∙K; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Bernard further teaches the limitation of claim 20, wherein the mineral foam has a dry density ranging from 80 to 130 kg/m3 (see paragraph 0097 teaching the dry density as 50–600 kg/m3; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges). Thus, claims 15, 16 and 20 are rendered prima facie obvious.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Bernard, or alternatively Jezequel, as applied to claim 1 above, and further in view of Sarmin (Songklanakarin J. Sci. Technol., 41(4), 734–741, 2019, hereinafter “Sarmin”).
Regarding claim 4, Bernard, or alternatively Jezequel, teaches the method according to claim 1, but fails to explicitly teach component A as comprising wood flour, and thus fails to teach the limitation of claim 4, wherein the wood flour is composed of particles that have a D50 between 0.1 to 200 µm. Sarmin teaches wood flour as an additive for geopolymer cements (see generally abstract; the term “particles” simply refers to discrete units of something, so wood flour is inherently comprised of wood particles), wherein the wood flour has a size ranging from 70–150 µm (see Table 2, wherein wood flour is labeled “C100”; if the full size range is between 70–150 µm, this means the D50 must fall somewhere within that range, and thus Sarmin teaches a D50 that falls within the broader claimed range). Sarmin further teaches the inclusion of wood aggregates as improving the porosity over cements without wood aggregates (see pg. 737, Table 4 and Figure 3; also see pg. 738, paragraph 2 teaching higher porosity and lower density), which is advantageous for improving the properties of the low-density mineral foam taught by either Bernard or Jezequel. Furthermore, Sarmin teaches wood flour as uniformly dispersing in the cement matrix, achieving a comparable compressive strength to the sample without wood flour when cured at 80 °C (see pg. 739, final paragraph of section 3.2 and Figure 6). Sarmin teaches the wood flour with a geopolymer cement, not a Portland cement-based mineral foam, but a geopolymer cement is formed using aluminosilicates such as fly ash and slag, which are taught by both Bernard and Jezequel as mineral additives (see the above rejections of claim 2), so wood flour is expected to be compatible with at least some of the dry components of the mineral foam, and Sarmin does not teach or suggest an incompatibility with Portland cement. Therefore, a person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the mineral foam of either Bernard or Jezequel can be modified to include wood flour as taught by Sarmin. The motivation supporting this combination most closely aligns with KSR Rationale G, which states it is prima facie obvious for some teaching, suggestion or motivation in the prior art (Sarmin’s use of wood flour to improve porosity and lower density of a cementitious product without compromising compressive strength) to lead a person having ordinary skill in the art to modify the prior art reference or to combine prior art reference teachings (Bernard’s or Jezequel’s cementitious mineral foam) to arrive at the claimed invention, if there is a reasonable expectation of success (wood flour is directly compatible with aluminosilicates, and there is no teaching or suggestion that would lead a person having ordinary skill in the art to believe it is incompatible with the other components of Bernard or Jezequel, so one of ordinary skill in the art could have arrived at the claimed invention with a reasonable expectation of success). The proposed modification arrives at the claimed invention, and thus claim 4 is rendered prima facie obvious.
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, 2, 6, 14–16 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 10, and 11 of copending Application No. 19/135,972 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims would be obvious over the reference claims (see below).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application
Reference Application
[Claim 1]
A method comprising utilizing a component A selected from mineral component, sand, wood flour or combinations thereof, for reducing a thermal conductivity of a mineral foam,
the mineral foam is produced by a process comprising a step of contacting a cement slurry and a gas-forming liquid,
the cement slurry comprises a cement composition, ultrafine particles of which the D50 is comprised from 10 to 600 nm, a transition metal salt and water, the cement composition comprising Portland clinker and the component A,
the gas-forming liquid comprises a gas-forming agent.
A method for the production of mineral foam (claim 1), utilizing at least one supplementary mineral component (claim 7),
the mineral foam is produced by a process comprising a step of contacting a cement slurry and an aqueous foam (claim 1, “gas-forming liquid” is product-by-process),
the cement slurry comprises a cement composition, a transition metal salt and water (claim 1), and further comprising ultrafine particles and a mineral component (claim 7: “at least one mineral component”; specification, pg. 8, ll. 24–27: “the mineral component is advantageously composed of particles that have a D50 generally comprised between 0.1 to 150 µm”, which is 100–1500 nm, and thus the reference’s claimed mineral component inherently has an overlapping range with the claimed ultrafine particles).
[Claim 2]
The method according to claim 1, wherein the mineral component is selected from slag, pozzolanic materials, fly ash, calcined schists, material containing calcium carbonate, silica fume, siliceous component, metakaolin and mixtures thereof.
At least one supplementary mineral component selected from calcium carbonate, silica fume, slags, siliceous sands, fly ash, and pozzolanic materials (claim 7)
[Claim 6]
The method according to claim 1, wherein component A comprises material containing calcium carbonate and at least one further component selected from sand, wood flour, a mineral addition different from material containing calcium carbonate, and combinations thereof.
At least one supplementary mineral component selected from calcium carbonate, silica fume, slags, siliceous sands, fly ash, and pozzolanic materials (claim 7)
[Claim 14]
The method according to claim 1, wherein the mineral foam is produced by a process comprising the following steps:
- separately preparing a cement slurry and a gas-forming liquid, the cement slurry comprises a cement composition, ultrafine particles of which the D50 is comprised from 10 to 600 nm, a transition metal salt and water, the cement composition comprising Portland clinker and component A selected from mineral component, sand, wood flour or combinations thereof,;
- contacting the cement slurry with a gas-forming liquid comprising a gas-forming agent to obtain a foamed cement slurry;
- leaving the foamed cement slurry expanding to form the mineral foam.
A method for the production of a mineral foam (claim 1), comprising:
separately preparing a cement slurry and an aqueous foam (claim 1, step (i); “gas-forming liquid” is product-by-process),
cement, ultrafine particles, transition metal salt, water, mineral component (claims 1 and 7)
contacting the cement slurry with the aqueous foam (claim 1, step (ii)),
leaving the foamed slurry to set (claim 1, step (iv)).
[Claim 15]
The method according to claim 1, wherein the mineral foam has a dry density ranging from 50 to 180 kg/m3.
Mineral foam density is 20–300 kg/m3 (claim 10, overlapping range)
[Claim 16]
The method according to claim 15, wherein the dry mineral foam has a thermal conductivity ranging:
- from 0.03 to 0.07 W/m∙K for dry density ranging from 50 to 180 kg/m3;
- from 0.035 to 0.06 W/m∙K for dry density ranging from 80 to 130 kg/m3.
Mineral foam density is 20–300 kg/m3 (claim 10, overlapping range)
Thermal conductivity is 0.030–0.150 W/m∙K (claim 11, overlapping range)
[Claim 20]
The method according to claim 15, wherein the mineral foam has a dry density ranging from 80 to 130 kg/m3.
Mineral foam density is 20–300 kg/m3 (claim 10, overlapping range)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached Tue, Thu, Sat, Sun from 7 AM to 5 PM.
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, Amber 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
