DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed April 9, 2026 have been fully considered but they are not persuasive.
Applicant’s argument that Belkowitz ‘511 falls under an exception to prior art under 35 USC 102(b)(1) because Belkowitz ‘511 was not publicly available for more than 1 year prior to the effective filing date of the present application and Belkowitz ‘511 and the present application share 2 inventors is noted but is not considered persuasive because sharing 2 inventors does not automatically satisfy the exception. The prior art exception under 35 USC 102(b)(1)(A) requires that the prior art reference does not name additional authors on a printed publication or joint inventors on a patent. Since Belkowitz ‘511 names Eric Tyrrell who is not named in the application, it is not readily apparent from Belkowitz ‘511 that it is an inventor-originated disclosure. Thus, the publication is treated as prior art under AIA 35 U.S.C. 102(a)(1) unless there is evidence of record that an exception under AIA 35 U.S.C. 102(b)(1) applies. Applicant has not submitted any such evidence. See MPEP 2153.01(a) for details.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The subject matter which was not described in the specification is that the nanosilica particles are present from about 1 wt% to about 50 wt% of the total weight of the composition in combination with the composition including soil. The original specification describes a composition with nanosilica particles present from about 1 wt% to about 50 wt% of the total weight of the composition. There is no indication that this composition includes soil. This composition is added to soil, thereby creating a modified composition that includes the combination of nanosilica particles and soil. Such an addition of soil, however, would increase the total weight of the composition and therefore decrease the weight percentage of the nanosilica particles in the modified composition. The original specification does not disclose the weight percentage of the nanosilica particles in the modified composition that includes the soil, therefore it is not clear from the original specification that the inventors had possession of the claimed invention at the time the application was filed.
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 4 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.
Claim 4 is incomplete because the claim depends either directly or indirectly from a cancelled base claim. For purposes of examination, the examiner interprets claim 4 to depend from claim 1.
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 1, 4, 9, 10, 13 and 14 (as best understood) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greenwood (US 2003/0103814), hereinafter referred to as Greenwood ‘814.
Regarding claim 1, Greenwood ‘814 discloses a method of treating soil (e.g. claim 1), the method comprising applying a composition to soil to form a treated soil (e.g. claim 1), wherein the composition comprises nanosilica particles in an aqueous suspension (e.g. claim 11, paragraph 0013), 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. the composition of Greenwood ‘814 will produce the same reduced erosion, shrinkage, swelling and increased unconfined compressive and shear strength as the claimed invention because of the similar properties); wherein: the nanosilica particles are coated with alumina (e.g. claim 4); a pH of the composition is 7 <pH 10.7 (e.g. paragraph 0014); the nanosilica particles exhibit a particle size from about 1 nm to about 1000 nm (e.g. claim 11); and the nanosilica particles are present from about 1 wt% to about 50 wt% of the total weight of the composition (e.g. claim 5).
Regarding claim 4, Greenwood ‘814 further discloses that the nanosilica particles exhibit a particle size from about 10 nm to about 500 nm (e.g. claim 11).
Regarding claim 9, Greenwood ‘814 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 0013).
Regarding claim 10, Greenwood ‘814 further discloses that applying the composition comprises applying a first nanosilica composition having a first nanosilica particle size prior to or with 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. paragraph 0013 wherein the standard deviation of particle size results in a larger particle size composition portion and a smaller particle size composition portion).
Regarding claim 13, Greenwood ‘814 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. paragraph 0013).
Regarding claim 14, Greenwood ‘814 further discloses that the applying comprises injecting or mixing the composition into the soil (e.g. claim 2).
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, 2, 4, 5 and 9-20 (as best understood) are rejected under 35 U.S.C. 103 as being unpatentable over Belkowitz et al (WO 2023/154511), hereinafter referred to as Belkowitz ‘511, in view of Greenwood et al (WO 03/033618), hereinafter referred to as Greenwood ‘618.
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); wherein: the nanosilica particles are coated with alumina (e.g. claim 8); a pH of the composition is 7<pH≤10.7 (e.g. table on page 12); the nanosilica particles exhibit a particle size from about 1 nm to about 1000 nm (e.g. claim 3); and the nanosilica particles are present from about 1 wt% to about 50 wt% of the total weight of the composition (e.g. claim 6). Belkowitz ‘511 does not disclose that the material is soil. Greenwood ‘618 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 ‘618 for the material of Belkowitz ‘511 because Greenwood ‘618 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 ‘618 further discloses that the composition further comprises a polymer (e.g. Belkowitz ‘511, claim 2).
Regarding claim 4, the combination of Belkowitz ‘511 and Greenwood ‘618 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 ‘618 further discloses that the nanosilica particles have a shape that is spherical, elliptical, cylindrical, or irregular (e.g. Belkowitz ‘511, claim 5).
Regarding claim 9, the combination of Belkowitz ‘511 and Greenwood ‘618 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 ‘618 further discloses that the composition comprises applying a first nanosilica composition having a first nanosilica particle size prior to or with 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 ‘618 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 ‘618 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 ‘618 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 ‘618 further discloses that the applying comprises injecting or mixing the composition into the soil (e.g. Greenwood, page 5, lines 11-13).
Regarding claim 15, Belkowitz ‘511 discloses a nanosilica 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). Belkowitz ‘511 does not disclose that the composition includes soil. Greenwood ‘618 teaches a nanosilica composition comprising nanosilica particles in an aqueous suspension (e.g. page 2, lines 34-36) and soil (e.g. page 5, lines 11-13). It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to add the composition of Belkowitz ‘511 to soil as taught by Greenwood ‘618, thereby combining the composition with soil, because Greenwood ‘618 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 it also would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to maintain the nanosilica particles within the range of about 1 wt% to about 50 wt% of the total weight of the composition because the small amount of soil combined with the composition when the composition is first added to the soil will not significantly change the weight percentage.
Regarding claim 16, the combination of Belkowitz ‘511 and Greenwood ‘618 further discloses that the nanosilica particles exhibit a particle size from about 10 nm to about 500 nm (e.g. Belkowitz ‘511, claim 15).
Regarding claim 17, the combination of Belkowitz ‘511 and Greenwood ‘618 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. Belkowitz ‘511, claim 16).
Regarding claim 18, the combination of Belkowitz ‘511 and Greenwood ‘618 further discloses that the nanosilica particles are coated (e.g. Belkowitz ‘511, claim 17).
Regarding claim 19, the combination of Belkowitz ‘511 and Greenwood ‘618 further discloses that the nanosilica particles are at least partially coated with alumina (e.g. Belkowitz ‘511, claim 18).
Regarding claim 20, the combination of Belkowitz ‘511 and Greenwood ‘618 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 19).
Claims 5 and 11 (as best understood) are rejected under 35 U.S.C. 103 as being unpatentable over Greenwood ‘814 (US 2003/0103814) alone.
Regarding claim 5, Greenwood ‘814 discloses the invention substantially as applied above and further discloses that the nanosilica particles have a shape (e.g. all particles have a shape) but Greenwood ‘814 does not explicitly disclose that the shape 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 Greenwood ‘814 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 11, Greenwood ‘814 discloses the invention substantially as applied above and further discloses that the nanosilica composition can include coated or non-coated nanosilica particles (e.g. paragraph 0014) but Greenwood ‘814 does not explicitly disclose that the composition comprises a coated nanosilica composition and a non-coated nanosilica composition. It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to include both a coated and a non-coated nanosilica composition portion for the composition of Greenwood ‘814 because 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, and combining the coated and non-coated nanosilica compositions would provide the benefits of both types of compositions.
Claims 2 and 12 (as best understood) are rejected under 35 U.S.C. 103 as being unpatentable over Greenwood ‘814 (US 2003/0103814) as applied to claim 1 above, and further in view of Roddy et al (US 2010/0016183).
Regarding claim 2, Greenwood ‘814 discloses the invention substantially as applied above but does not explicitly disclose that the composition further comprises a polymer. 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 polymer (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 add a polymer as taught by Roddy to the composition of Greenwood ‘814 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. Further, the polymer would provide the expected benefit of aiding with mixing and bulk transfer (e.g. Roddy, paragraph 0039).
Regarding claim 12, the combination of Greenwood ‘814 and Roddy 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. Roddy, polycarbonate, claim 19, paragraph 0039).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STACY N LAWSON whose telephone number is (571)270-7515. The examiner can normally be reached Mon-Fri 9am-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at 571-270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.N.L./Examiner, Art Unit 3678
/AMBER R ANDERSON/Supervisory Patent Examiner, Art Unit 3678
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