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
Claim 13 is objected to because of the following informalities: “further” should be deleted from line 1. Appropriate correction is required.
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 10 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.
Regarding claim 10, the wording of “prior or with to a” in line 2 is confusing. It appears that the words are out of order. For purposes of examination, the examiner interprets “prior or with to a” to mean “prior to or with a”.
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.
Claims 15-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Belkowitz et al (WO 2023/154511), hereinafter referred to as Belkowitz ‘511.
Regarding claim 15, Belkowitz ‘511 discloses a nanosilica composition for application to soil, the composition comprising nanosilica particles in an aqueous suspension and a polymer, wherein the nanosilica particles exhibit a particle size from about 1 nm to about 1000 nm, and the nanosilica particles are present from about 1 wt% to about 50 wt% of the total weight of the composition (e.g. claim 14). Examiner notes that the recitation “for application to soil” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone.
Regarding claim 16, Belkowitz ‘511 further discloses that the nanosilica particles exhibit a particle size from about 10 nm to about 500 nm (e.g. claim 15).
Regarding claim 17, Belkowitz ‘511 further discloses that the nanosilica particles have a shape that is spherical, elliptical, cylindrical, irregular, or a combination of any two or more thereof (e.g. claim 16).
Regarding claim 18, Belkowitz ‘511 further discloses that the nanosilica particles are coated (e.g. claim 17).
Regarding claim 19, Belkowitz ‘511 further discloses that the nanosilica particles are at least partially coated with alumina (e.g. claim 18).
Regarding claim 20, Belkowitz ‘511 further discloses that the polymer is a polycarbonate, a poly(meth)acrylate, a glycol ether, a poly-carboxylate comb polymer, or a mixture of any two or more thereof (e.g. claim 19).
Claims 15, 16 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Belkowitz et al (US 2020/0377372), hereinafter referred to as Belkowitz ‘372.
Regarding claim 15, Belkowitz ‘372 discloses a nanosilica composition for application to soil (e.g. claim 1), the composition comprising nanosilica particles in an aqueous suspension (e.g. claim 1) and a polymer (e.g. dispersing agent, paragraph 0027), wherein the nanosilica particles exhibit a particle size from about 1 nm to about 1000 nm (e.g. claims 2-6), and the nanosilica particles are present from about 1 wt% to about 50 wt% of the total weight of the composition (e.g. claim 8). Examiner notes that the recitation “for application to soil” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone.
Regarding claim 16, Belkowitz ‘372 further discloses that the nanosilica particles exhibit a particle size from about 10 nm to about 500 nm (e.g. claims 5 and 6).
Regarding claim 18, Belkowitz ‘372 further discloses that the nanosilica particles are coated (e.g. claim 1).
Regarding claim 19, Belkowitz ‘372 further discloses that the nanosilica particles are at least partially coated with alumina (e.g. claim 1).
Regarding claim 20, Belkowitz ‘372 further discloses that the polymer is a polycarbonate, a poly(meth)acrylate, a glycol ether, a poly-carboxylate comb polymer, or a mixture of any two or more thereof (e.g. paragraph 0027).
Claims 1, 2, 6, 9 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maejima et al (JP 4908184).
Regarding claim 1, Maejima discloses a method of treating soil (e.g. paragraphs 0022-0023), the method comprising applying a composition to soil to form a treated soil (e.g. claim 8, paragraph 0022), wherein the composition comprises nanosilica particles in an aqueous suspension (e.g. claim 1, paragraph 0007), and the treated soil exhibits reduced erosion, shrinkage, swelling and increased unconfined compressive and shear strength compared to soil that has not been treated with the composition (e.g. paragraph 0008, wherein the composition of Maejima will produce the same reduced erosion, shrinkage, swelling and increased unconfined compressive and shear strength as the claimed invention because of the similar properties).
Regarding claim 2, Maejima further discloses that the composition further comprises a polymer (e.g. claim 4).
Regarding claim 6, Maejima further discloses that the nanosilica particles are present from about 1 wt% to about 50 wt% of the total weight of the composition (e.g. paragraph 0014).
Regarding claim 9, Maejima further discloses that the aqueous suspension further comprises a solvent surfactant, silicate, hydrophobic material, degreaser, dispersant, stabilizer, polymer, carbon nanotube, graphene, or a combination of any two or more thereof (e.g. paragraph 0019 and/or 0020).
Regarding claim 14, Maejima further discloses that the applying comprises injecting or mixing the composition into the soil (e.g. claim 8, paragraph 0022).
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.
Claims 1-14 (as best understood) are rejected under 35 U.S.C. 103 as being unpatentable over by Belkowitz et al (WO 2023/154511) in view of Greenwood et al (WO 03/033618).
Regarding claim 1, Belkowitz ‘511 discloses a method of treating a material (e.g. claim 1), the method comprising applying a composition to a material to form a treated material (e.g. claim 1), wherein the composition comprises nanosilica particles in an aqueous suspension (e.g. claim 1). Belkowitz ‘511 does not disclose that the material is soil. Greenwood teaches a method of treating soil (e.g. claim 1), the method comprising applying a composition to soil to form a treated soil (e.g. page 5, lines 11-13), wherein the composition comprises nanosilica particles in an aqueous suspension (e.g. page 2, lines 34-36). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to use soil as taught by Greenwood for the material of Belkowitz ‘511 because Greenwood teaches that the composition benefits both soil and rock (e.g. page 1, lines 2-5) and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. Examiner notes that the composition of Belkowitz ‘511 will produce the same reduced erosion, shrinkage, swelling and increased unconfined compressive and shear strength as the claimed invention because of the similar properties.
Regarding claim 2, the combination of Belkowitz ‘511 and Greenwood further discloses that the composition further comprises a polymer (e.g. Belkowitz ‘511, claim 2).
Regarding claim 3, the combination of Belkowitz ‘511 and Greenwood further discloses that the nanosilica particles exhibit a particle size from about 1 nm to about 1000 nm (e.g. Belkowitz ‘511, claim 3).
Regarding claim 4, the combination of Belkowitz ‘511 and Greenwood further discloses that the nanosilica particles exhibit a particle size from about 10 nm to about 500 nm (e.g. Belkowitz ‘511, claim 4).
Regarding claim 5, the combination of Belkowitz ‘511 and Greenwood further discloses that the nanosilica particles have a shape that is spherical, elliptical, cylindrical, or irregular (e.g. Belkowitz ‘511, claim 5).
Regarding claim 6, the combination of Belkowitz ‘511 and Greenwood further discloses that the nanosilica particles are present from about 1 wt% to about 50 wt% of the total weight of the composition (e.g. Belkowitz ‘511, claim 6).
Regarding claim 7, the combination of Belkowitz ‘511 and Greenwood further discloses that the nanosilica particles are coated (e.g. Belkowitz ‘511, claim 7).
Regarding claim 8, the combination of Belkowitz ‘511 and Greenwood further discloses that the nanosilica particles are at least partially coated with alumina (e.g. Belkowitz ‘511, claim 8).
Regarding claim 9, the combination of Belkowitz ‘511 and Greenwood further discloses that the aqueous suspension further comprises a solvent surfactant, silicate, hydrophobic material, degreaser, dispersant, stabilizer, polymer, carbon nanotube, graphene, or a combination of any two or more thereof (e.g. Belkowitz ‘511, claim 9).
Regarding claim 10, the combination of Belkowitz ‘511 and Greenwood further discloses that the composition comprises applying a first nanosilica composition having a first nanosilica particle size prior or with to a second nanosilica composition having a second nanosilica particle size, wherein the first nanosilica particle size is larger than the second nanosilica particle size (e.g. Belkowitz ‘511, claim 10).
Regarding claim 11, the combination of Belkowitz ‘511 and Greenwood further discloses that applying the composition comprises applying a coated nanosilica composition prior to or with a non-coated nanosilica composition (e.g. Belkowitz ‘511, claim 11).
Regarding claim 12, the combination of Belkowitz ‘511 and Greenwood further discloses that the polymer is a polycarbonate, a poly(meth)acrylate, a glycol ether, a poly-carboxylate comb polymer, or a mixture of any two or more thereof (e.g. Belkowitz ‘511, claim 12).
Regarding claim 13, the combination of Belkowitz ‘511 and Greenwood further discloses that the aqueous suspension further comprises a solvent comprising a glycol ether, alcohol, ketone, or a combination of any two or more thereof (e.g. Belkowitz ‘511, claim 13).
Regarding claim 14, the combination of Belkowitz ‘511 and Greenwood further discloses that the applying comprises injecting or mixing the composition into the soil (e.g. Greenwood, page 5, lines 11-13).
Claims 3-5 and 10 (as best understood) are rejected under 35 U.S.C. 103 as being unpatentable over Maejima et al (JP 4908184) alone.
Regarding claims 3 and 4, Maejima discloses the invention substantially as applied above and further discloses that nanosilica particles are known to have a size of about 10 to 20 nm (e.g. paragraph 0003) and such nanosilica particles have an S value of 80-100% (e.g. paragraph 0010) and high S values are essential to the invention (e.g. paragraph 0010, claim 1) but Maejima does not explicitly disclose that the nanosilica particles exhibit a particle size from about 1 nm to about 1000 nm or from about 10 nm to about 500 nm. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to use nanosilica particles with a size of about 10 to 20 nm because a change in the size of a prior art device is a design consideration within the skill of the art, and Maejima discloses that this size range is known to produce the required high S values.
Regarding claim 5, Maejima discloses the invention substantially as applied above but does not explicitly disclose that the nanosilica particles have a shape that is spherical, elliptical, cylindrical, or irregular. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to form the nanosilica particles of Maejima with a variety of shapes including spherical, elliptical, cylindrical, and irregular because a change in the shape of a prior art device is a design consideration within the skill of the art.
Regarding claim 10, Maejima discloses the invention substantially as applied above and further discloses that applying the composition comprises applying a first nanosilica composition having a first nanosilica particle size prior or with to a second nanosilica composition having a second nanosilica particle size (e.g. paragraph 0022) but Maejima does not explicitly disclose that the first nanosilica particle size is larger than the second nanosilica particle size. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to form the first nanosilica particle size larger than the second nanosilica particle size because a change in the size of a prior art device is a design consideration within the skill of the art, and for the expected benefit of using different sizes as disclosed (e.g. paragraph 0022) thereby customizing the method.
Claims 7, 8, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Maejima et al (JP 4908184) as applied to claim 1 above, and further in view of Greenwood et al (WO 03/033618).
Regarding claims 7 and 8, Maejima discloses the invention substantially as applied above but does not explicitly disclose that the nanosilica particles are coated with alumina. Greenwood teaches a method of treating soil (e.g. claim 1), the method comprising applying a composition to soil to form a treated soil (e.g. page 5, lines 11-13), wherein the composition comprises nanosilica particles in an aqueous suspension (e.g. page 2, lines 34-36), and wherein the nanosilica particles are at least partially coated with alumina (e.g. page 3, lines 21-26 and 33-34). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to use alumina coated nanosilica particles as taught by Greenwood for the nanosilica particles of Maejima because such is a known material in the art and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use.
Regarding claim 11, Maejima discloses the invention substantially as applied above and further discloses that applying the composition comprises applying a first nanosilica composition and a different second nanosilica composition (e.g. paragraph 0022) but Maejima does not explicitly disclose that the first nanosilica composition is a coated nanosilica composition and the second nanosilica composition is a non-coated nanosilica composition. Greenwood teaches a method of treating soil (e.g. claim 1), the method comprising applying a composition to soil to form a treated soil (e.g. page 5, lines 11-13), wherein the composition comprises nanosilica particles in an aqueous suspension (e.g. page 2, lines 34-36), and wherein the nanosilica particles may be coated (e.g. page 3, lines 21-26). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to use a coated a coated nanosilica composition as taught by Greenwood for the first nanosilica composition of Maejima because such is a known material in the art and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use.
Regarding claim 13, Maejima discloses the invention substantially as applied above but does not explicitly disclose that the aqueous suspension comprises a solvent comprising a glycol ether, alcohol, ketone, or a combination of any two or more thereof. Greenwood teaches a method of treating soil (e.g. claim 1), the method comprising applying a composition to soil to form a treated soil (e.g. page 5, lines 11-13), wherein the composition comprises nanosilica particles in an aqueous suspension (e.g. page 2, lines 34-36), and wherein the aqueous suspension comprises a solvent comprising a glycol ether, alcohol, ketone, or a combination of any two or more thereof (e.g. alcohol, page 3, lines 9-12). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to use alcohol as taught by Greenwood for the aqueous suspension of Maejima because such is a known material in the art and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Maejima et al (JP 4908184) as applied to claim 2 above, and further in view of Roddy et al (US 2010/0016183).
Regarding claim 12, Maejima discloses the invention substantially as applied above and further discloses that the polymer can be a number of different types of polymer (e.g. paragraph 0015) but Maejima does not explicitly disclose that the polymer is a polycarbonate, a poly(meth)acrylate, a glycol ether, a poly-carboxylate comb polymer, or a mixture of any two or more thereof. Roddy teaches a method comprising applying a composition to soil (e.g. claim 7, paragraph 0016), wherein the composition comprises nanosilica particles in an aqueous suspension (e.g. claims 7 and 9), wherein the composition further comprises a polycarbonate, a poly(meth)acrylate, a glycol ether, a poly-carboxylate comb polymer, or a mixture of any two or more thereof (e.g. polycarbonate, claim 19, paragraph 0039). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to use a polycarbonate as taught by Roddy for the polymer of Maejima because such is a known material in the art and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Belkowitz et al (US 2020/0377372) alone.
Regarding claim 17, Belkowitz ‘372 discloses the invention substantially as applied above and further discloses that the nanosilica particles have a shape (e.g. paragraph 0019) but Belkowitz ‘372 does not explicitly disclose that the shape is spherical, elliptical, cylindrical, irregular, or a combination of any two or more thereof. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to form the nanosilica particles of Belkowitz ‘372 with a variety of shapes including spherical, elliptical, cylindrical, and irregular because a change in the shape of a prior art device is a design consideration within the skill of the art.
Conclusion
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/S.N.L./Examiner, Art Unit 3678
/AMBER R ANDERSON/Supervisory Patent Examiner, Art Unit 3678