DETAILED ACTION
This is in response to communication received on 8/1/24.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 5/26/26.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 8/1/24 is acknowledged. The traversal is on the ground(s) that the claims differ as the claimed method does not involve a second substrate and thus is not an adhesive bonding process. This is not found persuasive because Examiner notes that the language of the claim is open-ended. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). As such, the fact that GERBER recites an element the claim is silent on does not mean that it does not teach the elements of the claim. If the Applicant wishes the claim to be interpreted as being exclusive of unrecited elements, then they must amend the claim to do so.
For now, this argument is not persuasive as it is not germane with the scope of the claim.
The requirement is still deemed proper and is therefore made FINAL.
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:
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.
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.
Claim(s) 1-3 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Gisel CA2,295,561 hereinafter GISEL in view of Mayer et al. WO2020249741A1 hereinafter MAYER.
As for claim 1, GISEL teaches “The invention relates to a method for manufacturing a composite element comprising at least one wooden layer which is bound to a concrete or mortar layer, as well as to a composite element manufactured accordingly” (abstract, lines 1-5), i.e. A method of producing a laminate.
GISEL teaches “characterized in that an adhesive of paste-like consistency is applied to a free surface of the wooden layer (12) to form an adhesive layer (16) covering the whole surface, that fresh hydraulic concrete or mortar is spread on to the adhesive layer (16)… and that the adhesive layer (16) and the concrete or mortar layer (14) are caused to set in a common setting phase,” (claim 1, lines 3-11), i.e. providing a wood body, applying a curable composition in a liquid state thereto and curing composition.
GISEL silent on wherein the composition contains at least one organic binder and at least 80% by weight of mineral fillers, based on the overall composition.
GISEL does teach “The adhesive used is preferably a glue with two components from the epoxy resin or polyurethane resin group” (page 4, lines 16-18).
MAYER teaches “The present invention relates to a two-component epoxy resin composition, consisting of - a first component Kl comprising at least one epoxy resin A that contains on average more than one epoxy group per molecule; and - a second component K2 comprising a hardener B for epoxy resins” (abstract, lines 1-3).
MAYER teaches “the two-component composition preferably comprises 20 between 0 and 80 wt.-%... based on the total weight of the two-component composition, of at least one filler in either one or both of components K1 and K2” (page 28, lines 19-23) i.e. a range that overlaps with wherein the composition contains at least one organic binder and at least 80% by weight of mineral fillers, based on the overall composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
MAYER teaches “The use of fillers is advantageous in that they improve the aging resistance of the adhesive and advantageously influence the mechanical properties and/or application properties” (paragraph 28, lines 25-27).
It would have been obvious to one of ordinary skill in the art before to include wherein the composition contains at least one organic binder and at least 80% by weight of mineral fillers, based on the overall composition in the adhesive of GISEL because MAYER teaches that such fillers improve the aging resistance and mechanical/application properties of the adhesive.
As for claim 2, GISEL does teach “The adhesive used is preferably a glue with two components from the epoxy resin or polyurethane resin group” (page 4, lines 16-18), i.e. wherein the curable composition comprises at least two separately packed components that are mixed before or during the applying of the liquid composition as the two components must be mixed at some point to form a two-component mixture.
As for claim 3, GISEL does teach “The adhesive used is preferably a glue with two components from the epoxy resin or polyurethane resin group” (page 4, lines 16-18), i.e. wherein the curable component is free of cement.
As for claim 8, GISEL is silent on wherein the composition is cured at ambient temperature, optionally under the action of moisture.
MAYER teaches “Curing takes place at elevated temperature, for example between 20 and 180°C, in particular between 30 and 100°C, preferably between 50 and 80°C, or in other embodiments at ambient temperature, especially room temperature” (page 33, lines 23-25), i.e. wherein the composition is cured at ambient temperature, optionally under the action of moisture.
MAYER teaches “Additionally, it is desirable to have such a two-component epoxy composition with the above mentioned improved impact strength and toughness that however can be cured at room temperature” (page 3, lines 2-5).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include wherein the composition is cured at ambient temperature, optionally under the action of moisture in the process of GISEL because MAYER teaches that such a composition has improved impact strength and toughness.
As for claim 9, GISEL does teach “The adhesive used is preferably a glue with two components from the epoxy resin or polyurethane resin group” (page 4, lines 16-18), i.e. organic binder of the curable composition is selected from a) epoxy resins and curing agents for epoxy resins.
As for claim 10, GISEL does teach “The adhesive used is preferably a glue with two components from the epoxy resin or polyurethane resin group” (page 4, lines 16-18), i.e. curable composition comprises a first component comprising at least one epoxy resin.
GISEL is silent on a second component comprising the curing agent for epoxy resins, containing at least one polyamine having aliphatically bonded amino groups and at least 3 amine hydrogens, and the mineral filler is present as a constituent of the first and/or second component and/or as a further component.
MAYER further teaches “Hardener B may be any hardener suitable for epoxy resins, including aliphatic polyamines, aromatic polyamines” (page 11, lines 27-28) and “Examples of suitable hardeners B include, for example aliphatic, cycloaliphatic or arylaliphatic primary diamines, e.g., ethylenediamine” (page 12, lines 5-7), i.e. a second component comprising the curing agent for epoxy resins, containing at least one polyamine having aliphatically bonded amino groups and at least 3 amine hydrogens.
MAYER teaches “the two-component composition preferably comprises 20 between 0 and 80 wt.-%... based on the total weight of the two-component composition, of at least one filler in either one or both of components K1 and K2” (page 28, lines 19-23), i.e. the mineral filler is present as a constituent of the first and/or second component and/or as a further component.
MAYER teaches “Additionally, it is desirable to have such a two-component epoxy composition with the above mentioned improved impact strength and toughness that however can be cured at room temperature” (page 3, lines 2-5).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include a second component comprising the curing agent for epoxy resins, containing at least one polyamine having aliphatically bonded amino groups and at least 3 amine hydrogens, and the mineral filler is present as a constituent of the first and/or second component and/or as a further component in the process of GISEL because MAYER teaches that such a composition has improved impact strength and toughness.
As for claim 11, GISEL is silent on a first component comprising a crosslinker for polyisocyanates, containing at least one polyol having an average molecular weight of 250 to 2000 g/mol and an average OH functionality of 1.7 to 6 and a second component comprising at least one polyisocyanate, and the mineral filler is present as a constituent of the first and/or second component and/or as a further component.
MAYER teaches “Particular preference is further given to polybutadiene dials with an average OH functionality in the range of 1.5 to 2.5, preferably 1.8 to 2.3, and an average molar mass in the range of 300 to 15'000 g/mol” (page 23, lines 16-18), i.e. a range that overlaps with first component comprising a crosslinker for polyisocyanates, containing at least one polyol having an average molecular weight of 250 to 2000 g/mol and an average OH functionality of 1.7 to 6. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
MAYER teaches “In the process for preparing prepolymer that is endcapped by cardanol to
produce impact modifier I, at least one polyisocyanate, preferably diisocyanate is used” (paragraph 24, lines 22-24), i.e. a second component comprising at least one polyisocyanate.
MAYER teaches “the two-component composition preferably comprises 20 between 0 and 80 wt.-%... based on the total weight of the two-component composition, of at least one filler in either one or both of components K1 and K2” (page 28, lines 19-23), i.e. the mineral filler is present as a constituent of the first and/or second component and/or as a further component.
MAYER teaches “Additionally, it is desirable to have such a two-component epoxy composition with the above mentioned improved impact strength and toughness that however can be cured at room temperature” (page 3, lines 2-5).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include first component comprising a crosslinker for polyisocyanates, containing in a range that overlaps with at least one polyol having an average molecular weight of 250 to 2000 g/mol and an average OH functionality of 1.7 to 6 and a second component comprising at least one polyisocyanate, and the mineral filler is present as a constituent of the first and/or second component and/or as a further component in the process of GISEL because MAYER teaches that such a composition has improved impact strength and toughness.
As for claim 12, GISEL silent on the filler thereby silent the curable composition contains at least 50% by weight of mineral fillers selected from quartz and slag, based on the overall composition.
GISEL does teach “The adhesive used is preferably a glue with two components from the epoxy resin or polyurethane resin group” (page 4, lines 16-18).
MAYER teaches “The present invention relates to a two-component epoxy resin composition, consisting of - a first component Kl comprising at least one epoxy resin A that contains on average more than one epoxy group per molecule; and - a second component K2 comprising a hardener B for epoxy resins” (abstract, lines 1-3).
MAYER teaches “the two-component composition preferably comprises 20 between 0 and 80 wt.-%... based on the total weight of the two-component composition, of at least one filler in either one or both of components K1 and K2” (page 28, lines 19-23) and “Suitable as filler are inorganic and organic fillers, for example… quartz flours, quartz sands” (page 28, lines 28-30), i.e. a range that overlaps with the curable composition contains at least 50% by weight of mineral fillers selected from quartz and slag, based on the overall composition. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
MAYER teaches “The use of fillers is advantageous in that they improve the aging resistance of the adhesive and advantageously influence the mechanical properties and/or application properties” (paragraph 28, lines 25-27).
It would have been obvious to one of ordinary skill in the art before to include a range that overlaps with the curable composition contains at least 50% by weight of mineral fillers selected from quartz and slag, based on the overall composition in the adhesive of GISEL because MAYER teaches that such fillers improve the aging resistance and mechanical/application properties of the adhesive.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Gisel CA2,295,561 hereinafter GISEL in view of Mayer et al. WO2020249741A1 hereinafter MAYER as applied to claim 1 above, and further in view of Tingley US Patent Number 5,747,151 hereinafter TINGLEY.
As for claim 4, GISEL is silent on the wood body consists of glued and/or interdigitated laminated wood consisting of laminas or square rods.
TINGLEY teaches “A method of manufacturing a glue laminated structural wood member (10) for bearing a structural load (16) includes bonding together multiple elongate wood segments (12) and a synthetic fiber reinforcement (24, 30) with their lengths generally aligned with the length of the member. The synthetic fiber reinforcement includes multiple synthetic fiber strands (52. 54) held within a resin matrix (56) and low cost fiber edges” (abstract), i.e. the wood body consists of glued and/or interdigitated laminated wood consisting of laminas or square rods.
TINGLEY further teaches “Therefore. the low cost fiber edges substantially reduce cost. reduce machinery wear. and improve overall manufacturing ease” (column 2, lines 40-42).
It would have been obvious to one of ordinary skill in the art to have the wood body consists of glued and/or interdigitated laminated wood consisting of laminas or square rods in the process of GISEL because TINGLEY teaches that such wood provides low cost substantially reduce cost.
Claim(s) 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Gisel CA2,295,561 hereinafter GISEL in view of Mayer et al. WO2020249741A1 hereinafter MAYER as applied to claim 1 above, and further in view of Timber-concrete-composite with an adhesive connector (wet on wet process) by Brunner et al. hereinafter BRUNNER.
As for claim 5, GISEL is silent on wherein the wood body has a thickness in the range from 10 to 300mm.
In fact, GISEL is silent on any thickness.
BRUNNER teaches “In timber-concrete-composite structures the connection is traditionally achieved with mechanical means” (abstract, lines 1-3).
BRUNNER teaches “Many timber-concrete-composite slabs with different thickness of the timber and concrete members were cast and tested in bending” (page 120, column 1, lines 4-7) and “3-ply timber slab, 30 mm The following parameters were variables… Concrete thickness: 8 cm, 16 cm or 24 cm” (page 121, column 1, lines 3-9), i.e. a range that overlaps with wherein the wood body has a thickness in the range from 10 to 300mm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It is a prima facie case of obviousness to combine prior art elements according to known methods to yield predictable results. In this case, it would have been obvious to combine the thickness of BRUNNER with the wood layer of GISEL to obtain the predictable result of a composite with a wood component with that thickness. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
As for claim 7, GISEL is silent on the curable composition is applied in a layer thickness in the range from 10 to 300mm.
In fact, GISEL is silent on any thickness.
BRUNNER teaches “In timber-concrete-composite structures the connection is traditionally achieved with mechanical means” (abstract, lines 1-3).
BRUNNER teaches “Many timber-concrete-composite slabs with different thickness of the timber and concrete members were cast and tested in bending” (page 120, column 1, lines 4-7) and “3-ply timber slab, 30 mm. The following parameters were variables… Concrete thickness: 8 cm, 16 cm or 24 cm” (page 121, column 1, lines 3-9), i.e. a range that overlaps with the curable composition is applied in a layer thickness in the range from 10 to 300mm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
It is a prima facie case of obviousness to combine prior art elements according to known methods to yield predictable results. In this case, it would have been obvious to combine the thickness of BRUNNER with the concrete layer of GISEL to obtain the predictable result of a composite with a concrete component with that thickness. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Gisel CA2,295,561 hereinafter GISEL in view of Mayer et al. WO2020249741A1 hereinafter MAYER as applied to claim 1 above, and further in view of Martin US Patent Number 3,625,808 hereinafter MARTIN.
As for claim 6, GISEL is silent on the wood body on application of the liquid curable composition has been provided with form work elements on the outer sides, such that the composition remains on the wood body after the application and cannot flow away.
MARTIN teaches “A composite laminated concrete and cement-wood fiber plank consisting of a peripheral metal frame defining a substantially rectangular solid and having two edges with tongues and two edges with grooves, concrete in said frame, a cement-wood fiber plank portion having a first face extending slightly into said frame and a second face facing away from said frame and a border proximate the first face on which said frame rests, said concrete penetrating voids in the cement-wood fiber plank portion to effect a bond between the concrete and the cement-wood fiber portion, with the portion of the metal frame adjacent the cement-wood fiber plank portion being of a slightly smaller perimeter than the perimeter of the cement-wood fiber plank portion and the perimeter of the portion of the frame above the tongues and the grooves” (abstract), i.e. wood body on application of the liquid curable composition has been provided with form work elements on the outer sides, such that the composition remains on the wood body after the application and cannot flow away.
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the wood body on application of the liquid curable composition has been provided with form work elements on the outer sides, such that the composition remains on the wood body after the application and cannot flow away in the process of GISEL because MARTIN teaches that such a process keeps the concrete bound to the wood surface during curing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTEN A DAGENAIS whose telephone number is (571)270-1114. The examiner can normally be reached 8-12 and 1-5.
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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717
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