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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/27/2026 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 07/27/2026.
Claims 1, 3, 9-11 and 13-20 are presently pending; claims 2, 4-8 and 12 are canceled; claims 13-20 are withdrawn; claims 1 and 9 are amended; claims 1, 3 and 9-11 are under examination.
The rejections of claims 1, 3 and 9-11 under 35 U.S.C 112(b) and the 112(d) rejection of claim 9 are withdrawn in light of the amendments to the claims; the rejections of claims 5 and 12 are moot as these claims have been canceled.
The nonstatutory double patenting rejection of claims 1, 3 and 9-11 over claims 1-2, 4 and 6 of U.S. Pat. No. 12,258,293-B2 in view of BARROW is withdrawn in light of the terminal disclaimer filed 07/27/2026; the rejection of claims 5 and 12 is moot as these claims have been canceled.
The 35 U.S.C. 103 rejections of claims 1, 3, 9 and 11 over BARROW and of claim 10 over BARROW in view of TURPIN are maintained; the rejection of claims 5 and 12 is moot as these claims have been canceled.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable Barrow, et al. (WO-2016/084007-A1) (hereinafter, “BARROW”), with evidence from Park, et al., Interface Science and Technology, Volume 18, pp. 475-476 (hereinafter, “PARK”) as to the rejection of claim 11.
Regarding claim 1, BARROW teaches a hybrid additive (see BARROW generally at Abstract, teaching a plastic aggregate containing additives, used to make concrete products, i.e., a hybrid additive; although “for use in construction materials” is considered intended use language which does not limit the present product claim, BARROW teaches that the aggregate is used in concrete products), the hybrid additive comprising:
a plastic or polymeric material in an amount overlapping with and thereby rendering obvious the claimed range of 5 wt.% to 99.9 wt.% (see BARROW at paragraphs [0006]-[0007], [0044]-[0045] and [0066]-[0067] and claim 3, teaching an extruded plastic aggregate comprising granulated waste plastic and at least about 1% by weight of one or more additives, i.e., comprising up to 99% by weight of the plastic material);
an additional material in an amount overlapping with and thereby rendering obvious the claimed range of 0.1 wt.% to 5 wt.% (see BARROW at paragraphs [0006]-[0007] and [0045] and claim 3, teaching an extruded plastic aggregate comprising granulated waste plastic and at least about 1% by weight of one or more additives),
wherein the additional material comprises one or more of fibers, pozzolans, nano-carbon tubes, glass, recycled asphalt shingles (RAS), liquid anti-strip, hydrated lime, calcium carbonate, graphene, rejuvenators, cementitious material, and ground tire rubber (see BARROW at paragraph [0044] and claim 4, teaching that the one or more additives is selected from pozzolanic materials, calcium carbonate and glass),
wherein the additional material is stably incorporated with the plastic or polymeric material (see BARROW at paragraph [0044] and claim 3, teaching that the one or more additives are mixed with the granulated waste plastics used to form the extruded aggregates), and
wherein the hybrid additive has a shape comprising one or more vertices and a diameter overlapping with and thereby rendering obvious the claimed range of 0.02 mm to 0.5 mm (BARROW at Fig. 9 and paragraphs [0062], [0095], [0109]-[0116], teaching various aggregate shapes including a number of vertices, which may have a diameter of 5 mm or less).
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)). Additionally, BARROW teaches that the size of the plastic aggregates affects the compression strength of the resulting concrete (see BARROW at paragraphs [0264] and [0267]). BARROW therefore explicitly teaches that the diameter of the aggregate is a result-effective variable that may 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).
BARROW does not explicitly mention that the additional material is stably incorporated with the plastic or polymeric material either before or during a grinding process; however, this is considered product-by-process claim language and is not given patentable weight. “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 claim 3, as applied to claim 1 above, BARROW teaches a hybrid additive according to claim 1, coated with a cementitious material that includes one or more of calcium carbonate, graphene, hydrated lime, and pozzolanic materials (see BARROW at paragraphs [0038] and [0147]-[0149], teaching that the aggregate is coated in a layer of pozzolanic material).
Regarding claim 9, as applied to claim 1 above, BARROW teaches a hybrid additive according to claim 1, comprising dimples, indentations, or inclusions on a surface (see BARROW at paragraphs [0010], [0016], [0096], [0106] and [0169]-[0171], teaching that the aggregates have a roughened, texturized surface having surface irregularities rather than a smooth surface; i.e., the aggregate surface has indentations)
that contain a cementitious material that includes one or more of calcium carbonate, graphene, hydrated lime, and pozzolanic materials (see BARROW at paragraphs [0038] and [0147]-[0149], teaching that the aggregate is coated in a layer of pozzolanic material; i.e., indentations in the textured surface contain pozzolanic material).
Regarding claim 11, as applied to claim 1 above, BARROW teaches a hybrid additive according to claim 1, wherein the plastic or polymeric material comprises a melting temperature of 95 °C to 140 °C (see BARROW at paragraph [0067], teaching that the waste plastic material may be, e.g., high, medium or low density polyethylene, which has a typical melting point of 105 to 130 °C, as evidenced by PARK; see PARK at Section 6.3.1.2.1).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over BARROW in view of Turpin (U.S. Pub. No. 2016/0332911-A1) (hereinafter, “TURPIN”).
Regarding claim 10, as applied to claim 1 above, BARROW a hybrid additive according to claim 1, wherein the plastic or polymeric material may be, e.g., polystyrene (see BARROW at paragraph [0067]).
However, BARROW fails to explicitly teach that the plastic or polymeric material is in a gas-expanded form.
TURPIN teaches a lightweight aggregate for use in forming concrete which comprises polymer particles and cementitious materials with an outer pozzolanic coating (see TURPIN at Abstract and paragraphs [0030] and [0033]-[0034]), wherein the polymer particles are recycled expanded polystyrene particles (i.e., gas-expanded polystyrene particles; EPS) (see TURPIN at Abstract and paragraphs [0040]). TURPIN teaches that waste EPS is a low-cost, zero-cost or even negative-cost material (see TURPIN at paragraph [0042]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the hybrid additive of BARROW by simply substituting the unspecified form of waste polystyrene (see BARROW at paragraph [0067]) with waste expanded (i.e., gas-expanded) polystyrene particles as taught by TURPIN (see TURPIN at Abstract and paragraphs [0040]). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing a waste polymer material suitable for forming aggregates (see BARROW at Abstract and paragraph [0067]; see TURPIN at Abstract and paragraphs [0040] and [0042]). Further, one of ordinary skill in the art would have been motivated to use waste EPS as it is a low-cost, zero-cost or even negative-cost material, as taught by TURPIN (see TURPIN at paragraph [0042]).
Response to Arguments
Applicant's arguments filed 07/27/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Barrow does not recognize aggregate diameter as a results effective variable… Barrow teaches that modifying the concrete formulation, including aggregate size together with other formulation parameters, may alter compressive strength. However, Barrow does not identify particle diameter as the parameter responsible for the resulting compressive strength, nor does it disclose that optimizing particle diameter, independent of the other formulation variables, would predictably improve concrete properties” (see Remarks at pg. 7-8).
“the Action does not identify evidence demonstrating why a person of ordinary skill in the art would have reasonably expected that merely optimizing aggregate diameter… would predictably achieve the claimed compressive strength” (see Remarks at pg. 10).
“the Action identifies no evidence that one of ordinary skill would reasonably have expected that reducing Barrow’s millimeter-scale aggregates to Applicant’s claimed sub-millimeter particle sizes would produce the claimed invention” (see Remarks at pg. 11).
“Barrow does not teach or suggest the claimed size of the hybrid additive. Barrow describes granulated waste plastic particles having a size of 1 mm to 15 mm… to which an additional material is added… The resulting mixture is extruded to form a plastic aggregate having a size of 1 mm to 30 mm… Barrow further discloses a ‘pea plastics aggregate die shape [that] may have a diameter of 5 mm or less’… illustrates an extrudate having a diameter of approximately 2 mm… an extrudate having a diameter of approximately 8 mm… and depicts a die having a minimum opening of approximately 5 mm’” (see Remarks at pg. 10).
“even assuming… that the phrase “5 mm or less” encompasses particle sizes as small as those now claimed, mere inclusion of the claimed range within a broad open-ended disclosure does not establish obviousness” (see Remarks at pg. 11).
“the rejection begins with Applicant’s claimed particle size and works backward to identify an isolated disclosure broad enough to encompass it. Such hindsight reconstruction is improper… Because Barrow provides no teaching, suggestion, or motivation to select Applicant’s claimed particle size, the Action has not established a prima facie case of obviousness” (see Remarks at pg. 12).
“Applicant’s Experimental Data Refute the Examiner’s Results-Effective Variable Theory… the Grey-Sand compositions include hybrid additives having particle sizes within the claimed range (0.02 mm to 0.5 mm)… whereas the larger Grey compositions include hybrid additives having particle sizes outside the claimed range (>0.5 mm…)… Applicant’s own data demonstrate that reducing hybrid additive particle diameter does not predictably improve compressive strength” (see Remarks at pg. 12-13).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that BARROW does not recognize aggregate diameter as a result-effective variable because it also recognizes other parameters as result-effective variables which may affect compressive strength, the Examiner respectfully disagrees. As acknowledged by Applicant and as discussed in the rejection above, BARROW states that “by adjusting the size of the plastic aggregates and the quantities of other ingredients in the concrete mixture, the compression strength of the resulting concrete can be tailored for different applications”. BARROW explicitly recognizes that aggregate size is a result-effective variable which should be varied and optimized in order to achieve desired compression strength for a given application. Also recognizing quantities of other ingredients as being a result-effective variable which may be optimized and will affect compression strength does not negate BARROW’s explicit teaching that aggregate size is a result-effective variable affecting compression strength. If BARROW was not recognizing aggregate size as a result-effective variable affecting compression strength, it would not say that adjusting the size of the plastic aggregates allows the compression strength to be tailored for different applications. This is explicit encouragement for one of ordinary skill to vary and optimize the aggregate size to achieve a desired compression strength. 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). MPEP also states that “if the prior art does recognize that the variable affects the relevant property or result, then the variable is result-effective. Id. (‘A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.’)”. See MPEP § 2144.05 (III).
In response to Applicant’s argument that reducing BARROW’s aggregate diameter to within the claimed range would not achieve the claimed compressive strength or produce the claimed invention, the Examiner respectfully disagrees. Using an aggregate diameter which is within the range disclosed by BARROW and is within the range claimed by Applicant would necessarily produce the claimed invention as the hybrid additive would meet all of the claimed limitations. Regarding Applicant’s argument that this would not achieve the “claimed compressive strength”, it is noted that there is not a claimed compressive strength. No compressive strength is recited in the rejected claims.
In response to Applicant’s argument that BARROW does not teach or suggest the claimed particle size because it provides examples outside of the claimed range and because “5 mm or less” is a broad open-ended disclosure, the Examiner respectfully disagrees. As acknowledged by Applicant, BARROW explicitly discloses a range of 5 mm or less, which encompasses the claimed range. A range of “5 mm or less” is not open-ended and is not excessively broad; it is a range of between 0 and 5 mm. Applicant also points out that BARROW discloses a range of 1 to 30 mm; 1 mm is not significantly different from the claimed 0.5 mm. Additionally, as set forth in MPEP § 2123, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
In response to Applicant’s argument that the rejection is based on hindsight reconstruction because a range explicitly disclosed by BARROW was identified and therefore a prima facie case of obviousness has not been established, the Examiner respectfully disagrees. It is not clear to what “reconstruction” Applicant is referring; as acknowledged by Applicant, the range is explicitly disclosed in BARROW. Identifying a range disclosed by the prior art which overlaps with or encompasses the claimed range is not a hindsight reconstruction. 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)). The claimed range lies inside a range disclosed by the prior art, therefore a prima facie case of obviousness exists.
In response to Applicant’s argument that BARROW cannot identify the particle diameter as a result-effective variable because Applicant’s experimental data shows that decreasing the particle diameter to the claimed range does not predictably increase compressive strength, the Examiner respectfully disagrees. The prior art rejection is based on the disclosure of BARROW, not on Applicant’s experimental data. As discussed above, BARROW explicitly recognizes that aggregate size is a result-effective variable which should be varied and optimized in order to achieve desired compression strength for a given application, therefore, based on the disclosure of BARROW, one of ordinary skill in the art would understand aggregate size to be a result-effective variable. Further, the Examiner could not locate anything in the specification showing that the “Grey-Sand” is within the claimed particle size range; the specification merely states that the examples show results for the “hybrid additive according to the present disclosure”, which could include any diameter from 0.02 mm up to 75 mm, with the “sand” referring to a diameter of up to 2.0 mm (see paragraphs [0024], [0118] and [0133] of the present specification). Information regarding the actual size of the samples tested could not be located in the disclosure. Additionally, Applicant appears to be explicitly arguing that the claimed range is not critical and that using a particle size within the claimed range does not produce improved results, which is evidence supporting the obviousness of the claimed range. As discussed in MPEP § 2144.05 (III), “Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)”.
Consequently, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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