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 .
DETAILED ACTION
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 2, 4 - 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Tintelnot et al. (EP 2706147) in view of SONG WEILONG ET AL: "Synthesis and characterization of eco-friendly alkali- activated industrial solid waste-based two-component backfilling grouts for shield tunnelling", JOURNAL OF CLEANER PRODUCTION, ELSEVIER, AMSTERDAM, NL, vol. 266, 11 May 2020, XP086194530, ISSN: 0959-6526, DOI: 10.1016/J.JCLEPRO.2020.121974 (hereinafter "Song").
Regarding claims 1 and 9, Tintelnot discloses a method for the construction of a trafficway tunnel, a conduit shaft or a pressurized-water shaft by tubbing construction, wherein segment components (tubbings) assembled in a machine-generated bore (the machine comprises a tunnel boring machine) in a rock or soil to form a closed lining in the form of a segment tube, and an annular gap between the bore and the outer wall of the segment tube is filled with a composition which comprises polymerization-curing reactive resin based on silicate resin or based on polyurethane (silicate resin or polyurethane resin) and filler (pea gravel), where the filler, before or during conveying into the annular gap, is supplied with the polymerization-curing reactive resin (see page 2 of the attached translation), which is mixed with the filler and is dispersed therein, wherein the composition is cement-free and the filler consists of a non-water-reactive inorganic material (pea gravel) (Figs. 1 - 3; abstract; pages 1 - 3 of that attached translation). Tintelnot fails to disclose the filler has an average particle size ≤ 500 µm. Song teaches a filler consisting of a non-water-reactive inorganic material (glass powder; fly ash, FA) (second to last paragraph of the Introduction section of the description) having a particle size ≤ 500 µm (mean particle size of FA is 11.3 µm) (section 3.1; Table 1) to provide a filling material with good stability, controllable setting time, high hardening strength, and good durability using pollution-free raw materials. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the non-water-reactive inorganic filler having a particle size ≤ 500 µm as taught by Song for the non-water-reactive inorganic filler as disclosed by Tintelnot to provide a filling material with good stability, controllable setting time, high hardening strength, and good durability using pollution- free raw materials. Examiner notes that the specification of the present application explicitly teaches fly ash in a non-water-reactive inorganic material (page 4, lines 3 - 5) and, therefore, the inorganic filler material consisting of fly ash as taught by Song reads on the claim limitation.
Regarding claim 2, Tintelnot fails to disclose the non-water-reactive inorganic material has an average particle size of 0.5 to 300 µm. Song teaches the non-water-reactive inorganic material has an average particle size of 0.5 to 300 µm (mean particle size of FA is 11.3 µm) (section 3.1; Table 1). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the non-water-reactive inorganic filler having an average particle size of 0.5 to 300 µm as taught by Song for the non-water-reactive inorganic filler as disclosed by Tintelnot to provide a filling material with good stability, controllable setting time, high hardening strength, and good durability using pollution-free raw materials.
Regarding claim 4, Tintelnot discloses all of the claim limitation(s) except the non-water-reactive inorganic material comprises or consists of calcium carbonate. Song teaches the non-water-reactive inorganic material comprises calcium carbonate (calcite) (section 3.1). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the non-water-reactive inorganic material comprising calcium carbonate as taught by Song for the non-water-reactive inorganic material comprising pea gravel as disclosed by Tintelnot to provide a filling material with good stability, controllable setting time, high hardening strength, and good durability using pollution-free raw materials. Additionally, the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 5, Tintelnot discloses all of the claim limitation(s) except the non-water-reactive inorganic material is selected from calcite, silts, clays, quartz flour, fly ash, dusts or flours or mixtures thereof. Song teaches the non-water-reactive inorganic material is selected from calcite, glass powder, or fly ash (Introduction; section 3.1) to provide a filling material with good stability, controllable setting time, high hardening strength, and good durability using pollution-free raw materials. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the non-water-reactive inorganic material comprising calcite or fly ash as taught by Song for the non-water-reactive inorganic material comprising pea gravel as disclosed by Tintelnot to provide a filling material with good stability, controllable setting time, high hardening strength, and good durability using pollution-free raw materials. Additionally, the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art. In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 6, Tintelnot fails to disclose the non-water-reactive inorganic material come from a recycling process. Song teaches the non-water-reactive inorganic material (fly ash) comes from a recycling process (reuse of industrial solid wastes) (Introduction) to realize their residual economic value. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the recycled non-water-reactive inorganic material as taught by Song for the non-water-reactive inorganic material as disclosed by Tintelnot to realize the residual economic value of the non-water-reactive inorganic material.
Regarding claim 7, Tintelnot fails to disclose the filler is used as an aqueous suspension. Song teaches the filler (FA) is used as an aqueous suspension (section 3.3). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the filler used as an aqueous suspension as taught by Song for the filler as disclosed by Tintelnot to improve the ease with which the filler is inserted into and fills the entire annular gap.
Regarding claim 8, Tintelnot further discloses a reactive curing resin (silicate resin or polyurethane resin) curing by polyaddition is used as the polymerization-curing reactive resin (page 2).
Regarding claim 10, Tintelnot in view of Song discloses all of the claim limitation(s) except the composition comprises 5% to 50% by volume of reactive resin. Examiner takes the position that the percent by volume of reactive resin lacks criticality in the claims. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the composition as disclosed above such that the composition comprises 5% to 50% by volume of reactive resin as a design consideration within the skill of the art.
Regarding claim 11, Tintelnot in view of Song discloses all of the claim limitation(s) except the composition comprises 20% to 90% by volume of filler. Examiner takes the position that the percent by volume of filler lacks criticality in the claims. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the composition as disclosed above such that the composition comprises 20% to 90% by volume of filler as a design consideration within the skill of the art.
Regarding claim 12, Tintelnot fails to disclose the composition consists of reactive resin, non- water-reactive inorganic material, and water. Song teaches the composition consists of compositions that do not include any additives (section 3.3; Table 3). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the composition as disclosed above such that the composition consists of reactive resin, non-water-reactive inorganic material, and water as a design consideration within the skill of the art to provide the desired properties of the composition, such as the curing rate and the flowability of the composition.
Regarding claim 13, Tintelnot further discloses the filler (pea gravel) is admixed with a polymerization-curing reactive resin (silicate resin or polyurethane resin) before the mixture is inserted into the annular gap (page 2). Tintelnot in view of Song fails to explicitly teach the admixing occurs before the polymerization. Given the method and composition as disclosed above, the time at which the admixing occurs would have been obvious design choice for one of ordinary skill in the art.
Regarding claim 15, Tintelnot discloses a method for filling an annular gap between a bore and an outer wall of a segment tube (formed by tubbings), comprising filling the annular gap with a composition which comprises polymerization-curing reactive resin (silicate resin or polyurethane resin) and filler, the filler being cement-free and comprising a non-water-reactive inorganic material (pea gravel) (Figs. 1 - 3; abstract; pages 1 - 3 of that attached translation). Tintelnot fails to disclose the filler has a particle size ≤ 500 µm. Song teaches a filler comprising a non-water-reactive inorganic material (fly ash, FA) (second to last paragraph of the Introduction section of the description) having a particle size ≤ 500 µm (mean particle size of FA is 11.3 µm) (section 3.1; Table 1) to provide a filling material with good stability, controllable setting time, high hardening strength, and good durability using pollution-free raw materials. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the non-water-reactive inorganic filler having a particle size ≤ 500 µm as taught by Song for the non-water-reactive inorganic filler as disclosed by Tintelnot to provide a filling material with good stability, controllable setting time, high hardening strength, and good durability using pollution-free raw materials.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tintelnot et al. in view of Song as applied to claim 1 above, and further in view of Smith et al. (US 2010/0322719). As discussed above, the composition as taught by Song includes a resin (silicate resin or polyurethane resin), a non- water-reactive inorganic material (pea gravel) and does not include any additives (section 3.3; Fig. 3), but Song fails to explicitly teach the composition consists of reactive resin, non-water-reactive inorganic material, and water. Smith explicitly teaches the composition for filling and sealing underground voids consists of reactive resin (polymeric resin such as polyurethane resin), non-water-reactive inorganic material (aggregate), and water (abstract; paragraphs 0001, 0010, and 0013). It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have substituted the composition as taught by Smith for the composition as disclosed above to reduce the number of components and, therefore, the costs associated with creating a composition to fill the annular gap between the bore and the outer wall of the segment tube.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tintelnot et al. in view of Song as applied to claim 1 above, and further in view of Stephens (US 5,645,375). Tintelnot further discloses the filler (pea gravel) is mixed with the polymerization-curing reactive resin (silicate resin or polyurethane resin) and dispersed therein by mixing (page 2 of Tintelnot teaches mixing the pea gravel and the reaction resin together). Tintelnot in view of Song fails to disclose the mixing occurs after the combining of the reactive resin and the filler; and mixing using a mixing device. Examiner takes the position that the order in which the reactive resin and the filler are mixed and combined lacks criticality in the claims and is a design consideration within the skill of the art. Stephens teaches a mixing machine (static mixer 122) for mixing the components of a grout (Fig. 7; col. 4, lines 35 - 43; col. 5, lines 20 - 23). Tintelnot in view of Song is silent regarding how the filler and reactive resin are mixed. It would have been considered obvious to one of ordinary skill in the art, prior to the effective filing date of the invention, to have modified the method as disclosed above with using a mixing device as taught by Stephens to provide a means for mixing the filler and reactive resin together.
Response to Arguments
Applicant's arguments filed 12 June 2026 have been fully considered but they are not persuasive.
Applicant argues that the GGBS and fly ash according to Song are not non-water reactive inorganic materials. Examiner replies that the specification of the present application explicitly teaches fly ash in a non-water-reactive inorganic material (“As a non-reactive inorganic material, for example, calcite, silts, clays, quartz flour, fly ash, dusts, or flours or mixtures thereof may be used.”; see page 4, lines 3 - 5). Since the specification of the present application discloses fly ash is a non-water reactive inorganic material, the inorganic filler material consisting of fly ash and glass powder as taught by Song reads on the claim limitation.
Applicant argues that Song teaches a two-component composition in which liquid A comprises fly ash and slag and liquid B comprises sodium silicate and sodium hydroxide and the use of sodium silicate and sodium hydroxide activates the GGBS and fly ash for reaction with water. Examiner replies that Song teaches liquid A comprises two non-water reactive precursors (fly ash and glass powder) and liquid B comprises liquid B comprises an alkaline activator. Examiner notes that alkaline activators are water soluble rather than non-water reactive. Since both liquid A and liquid B are non-water reactive, Song teaches a filler consisting of non-water-reactive material.
Applicant argues that Song does not teach or suggest a filler that consists of a non-water-reactive inorganic material which has an average particle size of ≤ 500 µm. As discussed above, the present application discloses a non-water reactive inorganic material comprising fly ash and Song teaches an inorganic filler material consisting of fly ash, which has a mean particle size of FA is 11.3 µm (section 3.1; Table 1). Since the specification of the present application discloses fly ash is a non-water reactive inorganic material, the inorganic filler material consisting of fly ash as taught by Song reads on the claim limitation.
Applicant argues that Song does not teach or suggest a non-water-reactive filler consisting of calcite. Examiner replies that claim 4 does not require the non-water reactive filler to consist of calcite. Claim for recites the non-water reactive filler “comprises or consists of” calcium carbonate. Since the non-water reactive filler material as taught by Song comprises fly ash and calcite, the material as taught by Song reads on the limitations recited in claim 4.
Applicant argues that since Tintlenot and Song fail to provide the necessary reason or rationale for one of ordinary skill in the art to have combined the references to arrive at the claimed invention because Song has no teaching related to such non-water reactive filler materials. Examiner replies that, as discussed above, the present application discloses a non-water reactive inorganic material comprising fly ash and Song teaches an inorganic filler material consisting of fly ash (section 3.1; Table 1). Examiner maintains that it would have been considered obvious to one of ordinary skill in the art to have substituted the non-water-reactive inorganic filler having a particle size ≤ 500 µm as taught by Song for the non-water-reactive inorganic filler as disclosed by Tintelnot to provide a filling material with good stability, controllable setting time, high hardening strength, and good durability using pollution- free raw materials.
Applicant argues that the fact that Tintlenot and Song do not disclose or suggest the benefit that the claimed features provide is further evidence of non-obviousness of the claimed invention over the cited references. Examiner maintains that it would have been considered obvious to one of ordinary skill in the art to have substituted the non-water-reactive inorganic filler having a particle size ≤ 500 µm as taught by Song for the non-water-reactive inorganic filler as disclosed by Tintelnot to provide the benefit of a filling material with good stability, controllable setting time, high hardening strength, and good durability using pollution- free raw materials.
Conclusion
THIS ACTION IS MADE FINAL. 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 SEAN D ANDRISH whose telephone number is (571)270-3098. The examiner can normally be reached Mon-Fri: 6:30 AM - 4:00 PM.
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/SEAN D ANDRISH/Primary Examiner, Art Unit 3678
SA
6/30/2026
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