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 .
Election/Restrictions
Applicant's election of Group I, claims 1-16, in the reply filed on 02/03/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim(s) 17-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/03/2026.
Claim Interpretation
Claim 2 recites the limitation “wherein the water temperature ranges between about 45°C to about 75°C”; this is interpreted as meaning that during the process of making the sealant, the water is within this temperature range, as this would appear most in keeping with Applicant’s intent as discussed in the specification at pg. 8, lines 11-19. This is considered product-by-process claim language and is not given patentable weight in the present product claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
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.
Claims 5 and 7-8 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 5 recites the limitation "The sealant of claim 4, wherein the sodium silicate is selected from the group consisting of sodium orthosilicate, sodium metasilicate, and sodium pyrosilicate" (see claim 5 at lines 1-2); however, the sodium silicate is an option in claim 4 and is not required, and claim 5 does not specify whether or not the sodium silicate is actually required, rendering the metes and bounds of the claim indefinite. It is not clear from this language whether claim 4 actually requires sodium silicate, or whether sodium silicate is not required to meet the limitations of claim 4 but, if present, it must be selected from one of the recited sodium silicates.
For purposes of examination, Examiner treated claim 4 as meaning the sealant of claim 4, wherein the metal silicate is sodium silicate. Clarification is requested.
Claim 7 recites the limitation “wherein the resin is derived from acrylic acid, methacrylic acid and acrylate monomers, and combinations thereof” (see claim 7 at lines 1-2); this indicates that the resin must be derived from all the components including acrylic acid, methacrylic acid and acrylate monomers, and combinations of these, but if all are required the use of “combinations thereof” does not make sense. It is not clear from this language whether the claim is actually meant to require all of the recited components, or at least one of the recited components, or combinations thereof.
For purposes of examination, Examiner treated claim 7 as though it recites “or combinations thereof” instead of “and combinations thereof”. Clarification is requested.
Claim 8 recites the limitation “wherein a ratio of metal silicate to polymer resin is in the range of 100:1 to 1:100” (see claim 8 at lines 1-2), but does not specify whether this is a weight ratio or volumetric ratio, rendering the metes and bounds of the claim indefinite. No clarification could be located in the specification regarding whether this is a ratio by weight or volume.
For purposes of examination, Examiner treated the ratio recited in claim 8 as being a ratio by weight. Clarification is requested.
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.
Claim 8 is 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.
Claim 8 is dependent on claim 1, which recites the limitation “A sealant comprising: 8-45%wt/wt of an aqueous metal silicate solution comprising: 8-45%wt/wt of a metal silicate; … and 55-92%wt/wt of a polymer resin” (see claim 1 at lines 1-5). Claim 8 recites the further limitation “wherein a ratio of metal silicate to polymer resin is in the range of 100:1 to 1:100” (see claim 8 at lines 1-2), which is interpreted as being a weight ratio as discussed above. The range recited by claim 8 is broader than the range of ratios possible given the ranges of silicate and resin recited in claim 1; e.g., the maximum ratio would be for a sealant comprising 45% metal silicate solution, of which 45% is metal silicate (i.e., the sealant is 20% metal silicate), and 55% polymer resin, which would be a maximum ratio as claimed of 0.37:1. Therefore, claim 8 is of improper dependent form as it fails to include all the limitations of claim 1 on which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 (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.
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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Aprin (U.S. Pat. No. 4,380,595-A) (hereinafter, “APRIN”).
Regarding claim 1, APRIN teaches a sealant (see APRIN at Abstract) comprising:
an aqueous metal silicate solution (see APRIN at col. 2, line 43) comprising:
8-45% by weight metal silicate (see APRIN at col. 2, lines 45-47, teaching 20-40%) and 55-92% by weight water (see APRIN at col. 2, line 50, teaching 60-80%); and
a polymer resin (see APRIN at col. 2, lines 51-65 and col. 6, lines 30-35);
wherein the aqueous metal silicate solution and the polymer resin are present in amounts overlapping with and thereby rendering obvious the claimed ranges of 8-45% by weight aqueous metal silicate solution and 55-92% by weight polymer resin (see APRIN at col. 2, lines 43-65, teaching using a polymer dispersion component (Part II) comprising 45 to 65 weight percent of an acrylic polymer latex having a solids content of 40 to 65 weight percent, and teaching combining Part I (the aqueous silicate solution) and Part II in a ratio such that the blended composition has a solids content between 20 and 65 weight percent). As set forth in MPEP § 2144.05, 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)). Further, APRIN teaches varying the ratio of Parts I and II to obtain a certain solids content, and teaches adjusting each of the two parts to adjust the viscosity of the sealant composition, e.g., to obtain a desired viscosity so a readily brushable mixture can be obtained (see APRIN at col. 2, lines 62-65 and col. 6, lines 30-35). APRIN therefore explicitly teaches that the concentrations of Part I and Part II are result-effective variables which can be optimized by one of ordinary skill in the art.
MPEP states that “[W]here 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.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to vary the ratio of Part I to Part II (i.e., the weight percentage of the silicate solution and the polymer resin), including concentrations within the claimed ranges, in order to obtain the desired solids content and viscosity of the composition as taught by APRIN (see APRIN at col. 2, lines 62-65 and col. 6, lines 30-35).
Regarding claim 2, as applied to claim 1 above, APRIN teaches a sealant according to claim 1. As discussed above, the claim 2 recitation of “wherein the water temperature ranges between about 45°C to about 75°C” is interpreted as referring to the process of making the sealant and is considered product-by-process claim language and is not given patentable weight in the present product claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Regarding claims 3-5, as applied to claim 1 above, APRIN teaches a sealant according to claim 1, wherein the metal silicate is sodium silicate or potassium silicate, and wherein the metal silicate is sodium orthosilicate or sodium metasilicate (see APRIN at col. 4, lines 19-24).
Regarding claims 6-7, as applied to claim 1 above, APRIN teaches a sealant according to claim 1, wherein the polymer resin is an acrylic polymer derived from acrylic acid, methacrylic acid and acrylate monomers, or combinations thereof (see APRIN at Abstract and col. 2, lines 51-59).
Regarding claim 8, as applied to claim 1 above, APRIN teaches a sealant according to claim 1, wherein a ratio of metal silicate to polymer resin overlaps with and thereby renders obvious the range of 100:1 to 1:100 (see APRIN at col. 2, lines 43-65, teaching using a polymer dispersion component (Part II) comprising 45 to 65 weight percent of an acrylic polymer latex having a solids content of 40 to 65 weight percent, and teaching combining Part I (the aqueous silicate solution) and Part II in a ratio such that the blended composition has a solids content between 20 and 65 weight percent). As set forth in MPEP § 2144.05, 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)). Further, APRIN teaches varying the ratio of Parts I and II to obtain a certain solids content, and teaches adjusting each of the two parts to adjust the viscosity of the sealant composition, e.g., to obtain a desired viscosity so a readily brushable mixture can be obtained (see APRIN at col. 2, lines 62-65 and col. 6, lines 30-35). APRIN therefore explicitly teaches that the ratio of Part I to Part II is a result-effective variable which can be optimized by one of ordinary skill in the art.
MPEP states that “[W]here 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.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to vary the ratio of Part I to Part II, including ratios of 100:1 to 1:100, in order to obtain the desired solids content and viscosity of the composition as taught by APRIN (see APRIN at col. 2, lines 62-65 and col. 6, lines 30-35).
Regarding claim 9, as applied to claim 1 above, APRIN teaches a sealant according to claim 1. The claim 9 recitation of “wherein the sealant is prepared prior to use in-situ and/or ex-situ” is considered product-by-process claim language and is not given patentable weight in the present product claim. The present claims are directed toward a sealant, not toward a method of making or using a sealant, and limitations directed to when the sealant is prepared do not limit the present product claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); see MPEP § 2113.
Regarding claims 10-16, each of these claims are directed toward an intended use of the sealant, rather than actually being directed toward the sealant itself, and are therefore not treated as further limiting the claimed sealant. As set forth above, APRIN teaches a sealant which is identical or substantially identical to the claimed sealant, and would therefore be expected to have the same or overlapping properties as the claimed sealant, to be able to perform the intended uses recited by claims 10-16, and to behave in the same way as the claimed sealant when, e.g., exposed to air or carbon dioxide. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Therefore, the sealant of APRIN would be expected to be able to perform the intended use of being stored in a closed container, would be expected to harden on exposure to air (although not required to meet the limitations of the present claim, see APRIN at col. 6, lines 54-58, disclosing the sealant curing/drying when exposed to ambient conditions), and to harden on exposure to atmospheric carbon dioxide, wherein the carbon dioxide would be expected to behave the same way and diffuse through the sealant, and would be expected to be able to perform the intended uses of being applied in a thin layer, in a thickness of between about 40 g/m2 to about 70 g/m2, and as a protective layer, as recited by claims 10-16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731