DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
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.
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).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12044512. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain substantially similar subject matter.
Claim 1 of the ‘512 patent includes limitations directed towards a bullet-absorbing concrete structure comprising cement, fine aggregate, fiber and air entrainment additive with a stopping power for a bullet to a specific energy level. Claim 1 of the instant application includes limitations directed towards a concrete structure with fine aggregate, fiber and a specific bullet energy level absorption amount.
Claim 11 of the ‘512 patent includes limitations directed towards a bullet-absorbing concrete structure comprising concrete mixture with cement, a specific density and a specific bullet energy absorption capacity. Claim 11 of the instant application includes limitations directed towards cement, a specific density and specific bullet energy absorption capacity.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11435169. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain substantially similar subject matter.
Claim 1 of the instant application includes limitations directed towards a concrete structure, with cement, fine aggregate, fiber and energy absorption capacity. Claim 1 of the ‘169 patent includes limitations directed towards a bullet absorbing concrete structure that includes a cement, aggregate, fiber, air entrainment and the structure being capable of stopping a bullet within a certain distance. The claims are substantially similar in scope.
Claim 13 of the instant application includes limitations directed towards a bullet-absorbing concrete structure with cement, fine aggregate, air entrainment additive, a specific density. Claim 11 of the ‘169 patent includes limitations directed towards a concrete mixture with cement a specific density and a specific energy absorption percentage. The claims are substantially similar in scope.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 10739114. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain substantially similar subject matter.
Claim 1 of the instant application limitations directed towards a concrete structure constructed with a concrete mixture that includes fine aggregate and fiber with an energy absorption amount. Claim 1 of the ‘114 patent includes limitations directed towards a bullet-absorbing concrete structure constructed with concrete mixture that includes fine aggregate, fiber and an energy absorption capacity similar to claim 1 of the instant 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 2 recites the limitation "a concrete mixture" in "the concrete structure is constructed with a concrete mixture." Specifically, "concrete mixture" was previously introduced in a parent claim, so it is unclear whether "a concrete mixture" refers to that previously introduced element or introduces a new, separate element. Accordingly, the claim is rendered indefinite.
Claim 4 recites the limitation "an air entrainment additive" in "an air entrainment additive includes a mixture of a fatty alkanolamide." Specifically, "air entrainment additive" was previously introduced in a parent claim, so it is unclear whether "an air entrainment additive" refers to that previously introduced element or introduces a new, separate element. Accordingly, the claim is rendered indefinite.
Claim 10 recites the limitation "a concrete mixture" in "the concrete structure is constructed with a concrete mixture." Specifically, "concrete mixture" was previously introduced in a parent claim, so it is unclear whether "a concrete mixture" refers to that previously introduced element or introduces a new, separate element. Accordingly, the claim is rendered indefinite.
Claim 16 recites the limitation "an air entrainment additive" in "an air entrainment additive includes a mixture of a fatty alkanolamide." Specifically, "air entrainment additive" was previously introduced in a parent claim, so it is unclear whether "an air entrainment additive" refers to that previously introduced element or introduces a new, separate element. Accordingly, the claim is rendered indefinite.
Claim 19 recites the limitation "the concrete structure absorbs" in "the concrete structure absorbs and stops a projectile with a kinetic energy of between about 1.0 kJ (750 foot-pounds) and 20.3 kJ (15." There is insufficient antecedent basis for this limitation in the claim.
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 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)(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 1-3, 5-7, 10-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Huntsman (US 6620236 B2).
Regarding claim 1, Huntsman teaches 1. A concrete structure constructed with a concrete mixture comprising:(i) cement; See Abstract; Col. 4 of Table 1 which teaches the cement and the concrete structure., (ii) fine aggregate; and See Abstract; Col. 4 of Table 1 which teaches the fine aggregate., (iii) fiber; See Abstract; Col. 4 of Table 1 which teaches the use of fiber., wherein the concrete structure absorbs and stops a projectile with a kinetic energy of between about 1.0 kJ (750 foot-pounds) and 20.3 kJ (15,000 foot-pounds) in less than about 6 inches. See Abstract; 3:29+ which teaches the bullet absorption. Additionally, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) Moreover, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As such, the structure of the fine aggregate, fiber and cement is present and the structure is capable of meeting the claim limitations.
Regarding claim 2, Huntsman teaches 2. The concrete structure of claim 1, wherein the concrete structure is constructed with a concrete mixture comprising about 1 part by mass cement and about 0.5 to 1.5 part by mass fine aggregate. See Col. 4, Table 1.
Regarding claim 3, Huntsman teaches 3. The concrete structure of claim 1, wherein the concrete mixture further includes an air entrainment additive. See Col. 4, Table 1.
Regarding claim 5, Huntsman teaches 5. The concrete structure of claim 1, wherein the concrete mixture further includes a lead leaching preventative. See Col. 4, Ln. 17+.
Regarding claim 6, Huntsman teaches 6. The concrete structure of claim 1, wherein the concrete mixture is poured at a density of between about 88 and about 90.8 pounds per cubic foot. See Abstract; Col. 4 of Table 1; 3:29+.
Regarding claim 7, Huntsman teaches 7. The concrete structure of claim 1, wherein the concrete mixture further includes calcium phosphate and/or aluminum phosphate. See Col. 3 the disclosure mentions precipated or powdered calcium phosphate and different aluminum compounds which are inclusive of precipitated aluminum phosphate.
Regarding claim 10, Huntsman teaches 10. The concrete structure of claim 1, wherein the concrete structure is constructed with a concrete mixture comprising about 0.005 to 0.15 part by mass fiber and about 0.0005 to 0.05 part by mass air entrainment additive. See Col. 4, Table 1 The specific amount of fiber and air entrainment additive is a known result effective variable as shown in the reference. The examiner notes that the fiber and air entrainment additive is a result effective variable. In Re Aller states that "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (See MPEP 2144.05 II) As such, it would have been obvious to one skilled in the art, at the time of the invention, to modify Huntsman with the fiber and air entrainment additive percentage to obtain optimal ranges by routine experimentation.
Regarding claim 11, Huntsman teaches 11. A concrete structure constructed with a concrete mixture comprising: cement; See Abstract; Col. 4 of Table 1 which teaches the cement and the concrete structure., the concrete mixture having been poured at a density of between about 88 and about 90.8 pounds per cubic foot; and See Abstract; Col. 4 of Table 1; 3:29+, wherein the concrete structure absorbs and stops a projectile with a kinetic energy of between about 1.0 kJ (750 foot-pounds) and 20.3 kJ (15,000 foot-pounds) in less than about 8 inches. See Abstract; 3:29+ which teaches the bullet absorption. Additionally, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) Moreover, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As such, the structure of the fine aggregate, fiber and cement is present and the structure is capable of meeting the claim limitations.
Regarding claim 12, Huntsman teaches 12. The concrete structure of claim 11, wherein the concrete mixture further includes fiber. See Abstract; Col. 4 of Table 1 which teaches the use of fiber.
Regarding claim 13, Huntsman teaches 13. The concrete structure of claim 11, wherein the concrete mixture further includes a lead leaching preventative. See Col. 4, Ln. 17+.
Regarding claim 14, Huntsman teaches 14. The concrete structure of claim 11, wherein the concrete mixture further includes fine aggregate. See Abstract; Col. 4 of Table 1 which teaches the fine aggregate.
Regarding claim 15, Huntsman teaches 15. The concrete structure of claim 11, wherein the concrete mixture further includes an air entrainment additive. See Col. 4, Table 1.
Claims 19-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Constantz (US 20090020044 A1).
Regarding claim 19, Constantz teaches 19. A concrete structure constructed with a concrete mixture comprising: cement; See [0008+] which teaches the cement and the concrete structure., wherein the concrete structure absorbs and stops a projectile with a kinetic energy of between about 1.0 kJ (750 foot-pounds) and 20.3 kJ (15,000 foot-pounds) in less than about 8 inches. See [0008+] wherein the reference teaches the concrete structure with cement which teaches the structure and thus inherently includes the functioning. Additionally, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) Moreover, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As such, the structure of the fine aggregate, fiber and cement is present and the structure is capable of meeting the claim limitations.
Regarding claim 20, Constantz teaches 20. The concrete structure of claim 19, wherein the concrete structure is constructed without preformed foam. See [0080+] which teaches the lack of preformed foam.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham. Exemplary rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
The notations noted below apply to all rejections: In as much structure set forth by the applicant in the claims, the device is capable of use in the intended manner if so desired (See MPEP 2112). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, it meets the claim limitations. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto, 312 F.2d 937, 939, 136 USPQ 458, 459 (CCPA 1963). The intended use defined in the preamble and body of the claim breathes no life and meaning structurally different than that of the applied reference.
Claims 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Huntsman (US 6620236 B2) in view of DarafillDry_NPL (www.graceconstruction.com, Grace Concrete Products Darafill Dry Controlled low strength material performance additive. (Year: 2007)).
Regarding claim 4, DarafillDry_NPL teaches 4. The concrete structure of claim 3, wherein an air entrainment additive includes a mixture of a fatty alkanolamide, diethanolamine, perlite, and quartz dust. See Entire Document.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Huntsman with DarafillDry_NPL as the substitution of one known air entrainment additive (the Huntsman air entrainment additive) with another air entrainment additive (the DarafillDry air entrainment additive) is an indication of obviousness. Further, the use of the Darafill Dry would allow for improved flowability, lower densities, elimination of segregation and settlement and the control of strength (See DarafillDry_NPL).
Regarding claim 16, DarafillDry_NPL teaches 16. The concrete structure of claim 15, wherein an air entrainment additive includes a mixture of a fatty alkanolamide, diethanolamine, perlite, and quartz dust. See Entire Document.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Huntsman with DarafillDry_NPL as the substitution of one known air entrainment additive (the Huntsman air entrainment additive) with another air entrainment additive (the DarafillDry air entrainment additive) is an indication of obviousness. Further, the use of the Darafill Dry would allow for improved flowability, lower densities, elimination of segregation and settlement and the control of strength (See DarafillDry_NPL).
Claims 8-9, 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Huntsman (US 6620236 B2) in view of Manual On Control of Air Content in Concrete_NPL ("Manual on Control of Air Content in Concrete", David A. Whiting and Mohamad A. Nagi, Portland Cement Association (Year: 1998)).
Regarding claim 8, Manual On Control of Air Content in Concrete_NPL teaches 8. The concrete structure of claim 1, wherein the concrete mixture further includes air bubbles resulting from an air entrainment additive that are less than about 0.04 inches in diameter and greater than about 0.003 inches in diameter. See Entire Document the reference teaches the different sizes for the bubbles. The examiner notes that the bubble size is a result effective variable. In Re Aller states that "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (See MPEP 2144.05 II) As such, it would have been obvious to one skilled in the art, at the time of the invention, to modify Huntsman with the claimed bubble size to obtain optimal ranges by routine experimentation.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Huntsman with Manual On Control of Air Content in Concrete_NPL to prevent damage to the concrete during freezing (See Page 2).
Regarding claim 9, Manual On Control of Air Content in Concrete_NPL teaches 9. The concrete structure of claim 1, wherein the concrete mixture further includes air bubbles resulting from an air entrainment additive that are less than about 0.001 inches in diameter and greater than about 0.0004 inches in diameter. See Entire Document the reference teaches the different sizes for the bubbles. The examiner notes that the bubble size is a result effective variable. In Re Aller states that "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (See MPEP 2144.05 II) As such, it would have been obvious to one skilled in the art, at the time of the invention, to modify Huntsman with the claimed bubble size to obtain optimal ranges by routine experimentation.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Huntsman with Manual On Control of Air Content in Concrete_NPL to prevent damage to the concrete during freezing (See Page 2).
Regarding claim 17, Manual On Control of Air Content in Concrete_NPL teaches 17. The concrete structure of claim 11, wherein the concrete mixture further includes air bubbles resulting from an air entrainment additive that are less than about 0.04 inches in diameter and greater than about 0.003 inches in diameter. See Entire Document the reference teaches the different sizes for the bubbles. The examiner notes that the bubble size is a result effective variable. In Re Aller states that "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (See MPEP 2144.05 II) As such, it would have been obvious to one skilled in the art, at the time of the invention, to modify Huntsman with the claimed bubble size to obtain optimal ranges by routine experimentation.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Huntsman with Manual On Control of Air Content in Concrete_NPL to prevent damage to the concrete during freezing (See Page 2).
Regarding claim 18, Manual On Control of Air Content in Concrete_NPL teaches 18. The concrete structure of claim 11, wherein the concrete mixture further includes air bubbles resulting from an air entrainment additive that are less than about 0.001 inches in diameter and greater than about 0.0004 inches in diameter. See Entire Document the reference teaches the different sizes for the bubbles. The examiner notes that the bubble size is a result effective variable. In Re Aller states that "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (See MPEP 2144.05 II) As such, it would have been obvious to one skilled in the art, at the time of the invention, to modify Huntsman with the claimed bubble size to obtain optimal ranges by routine experimentation.
It would have been obvious to one of ordinary skill in the art, at the date of the effective filing, to modify Huntsman with Manual On Control of Air Content in Concrete_NPL to prevent damage to the concrete during freezing (See Page 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S VANDERVEEN whose telephone number is (571)270-0503. The examiner can normally be reached Monday - Friday 11am - 7pm CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at (571) 270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S VANDERVEEN/Examiner, Art Unit 3711
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