DETAILED ACTION
Response to Preliminary Amendment
The preliminary amendment submitted on 10 September 2024 has been entered. After entry of the amendment claims 1-19 are currently pending in the application.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7 is confusing and therefore vague and indefinite as it is unclear as to whether or not the pozzolanic material is in addition to the silica source of claim 1 which is an alkali silicate material.
Claim 19 is confusing and therefore vague and indefinite as it is unclear as to whether or not these materials are in addition to the pozzolanic material recited in claim 7.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
Claim 7 fails to further limit claim 1 as claim 1 recites that the silica source is an alkali silicate material.
Claim 19 fails to further limit claim 7 and ultimately claim 1 as claim 7 recites that the silica source is silica fumes, fly ash, metakaolin or mixtures thereof and claim 1 recites that the silica source is an alkali silicate material.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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, 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 1-6 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Japan Patent Specification No. JP 2020001969 A.
The reference teaches, in the abstract and the claims, a mortar/concrete admixture comprises 0-45 %mass early-strength Portland cement, 30-65 %mass gypsum comprising at least one of hemihydrate gypsum and anhydrous gypsum, 0-10 %mass sodium silicate, 0-10 %mass aluminum sulfate, and 20-70 %mass silica fume.
The instant claims are obvious over the reference.
As for claim 1, the reference teaches amounts of cement, hemihydrate gypsum and sodium silicate that overlaps the claimed range of amounts and 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claim 2, the sodium silicate would meet this limitation.
As for claim 3, the reference teaches sodium silicate.
As for claim 4, while the reference does not recite the modulus it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). Applicant has not shown that a particular modulus produces unexpected results.
As for claim 5, the reference teaches amounts of cement, hemihydrate gypsum and sodium silicate that overlaps the claimed range of amounts and overlapping ranges are deemed to be obvious.
As for claim 6, the reference teaches amounts of cement, hemihydrate gypsum and sodium silicate that overlaps the claimed range of amounts and overlapping ranges are deemed to be obvious.
As for claims 14-16, the sodium silicate would meet this limitation.
As for claim 17, the reference teaches sodium silicate.
As for claim 18, while the reference does not recite the modulus it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). Applicant has not shown that a particular modulus produces unexpected results.
Allowable Subject Matter
Claims 8-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach or render obvious all of the claimed limitations.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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September 9, 2026
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