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 .
Response to Amendment
This office action is in response to the Amendment filed on 01/29/2026.
Claims 1, 3, 5 and 9-20 are presently pending; claims 2, 4 and 6-8 are canceled; claims 13-20 are withdrawn; claims 1, 3, 9, 11-12, 15-16 and 18-20 are amended; claims 1, 3, 5 and 9-12 are under examination.
The objections to claims 9 and 11-12 are withdrawn in light of the amendments to the claims; the objection to claim 7 is moot as this claim has been canceled.
The rejection of claim 9 under 35 U.S.C 112(b) is withdrawn in light of the amendments to the claims; the rejection of claim 7 is moot as this claim has been canceled.
The nonstatutory double patenting rejections of claims 1 and 10-12 over claims 1-2, 4 and 6 of U.S. Pat. No. 12,258,293-B2 (“-293”) and of claims 3, 5 and 9 over claims 1 and 5 of -293 in view of BARROW are withdrawn in light of the amendments to the claims; the rejections of claims 2, 4 and 6-8 are moot as these claims have been canceled. It is noted that Applicant’s Remarks indicate that a terminal disclaimer has been filed, however no terminal disclaimer has been received.
The 35 U.S.C. 103 rejections of claims 1, 3, 5, 9 and 11-12 over BARROW and of claim 10 over BARROW in view of TURPIN are maintained; the rejection of claims 2, 4 and 6-8 is moot as these claims have been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
Claim Objections
Applicant is advised that should claim 3 be found allowable, claims 5 and 12 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1, 3, 5 and 9-12 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 1 recites the limitation “wherein the hybrid additive has a shape comprising one or more vertices and a diameter selected from 0.02 mm to 0.125 mm, 0.125 mm to 0.25 mm, 0.25 mm to 0.5 mm, or any combination thereof” (see claim 1 at lines 10-12); it is not clear from this language to what “or any combination thereof” is meant to refer, i.e., it is not clear whether this is meant to indicate that the claim was intended to recite a shape comprising one or more vertices or a diameter within the range or any combination thereof, or whether “or any combination thereof” is meant to refer to the different ranges of diameters, which is unclear as the claim as written seems to indicate that the limitation is directed to a single diameter, not multiple diameters.
For purposes of examination, Examiner treated claim 1 as though it recites wherein the hybrid additive has a shape comprising one or more vertices and a diameter of 0.02 mm to 0.5 mm (i.e., the vertices are a required limitation, and a single diameter within the claimed range is required). Clarification is requested.
Claim 5 recites the limitation “The hybrid additive of claim 4” (see claim 5 at line 1); claim 4 is canceled, so the scope of claim 5 cannot be determined and the claim is indefinite.
For purposes of examination, Examiner treated claim 5 as though it is dependent on claim 1. Clarification is requested.
Claim 9 recites the limitation “The hybrid additive of claim 8” (see claim 9 at line 1); claim 8 is canceled, so the scope of claim 5 cannot be determined and the claim is indefinite.
For purposes of examination, Examiner treated claim 9 as though it is dependent on claim 1. Clarification is requested.
Claims 3 and 10-12 are included herein as each depends from a claim which is indefinite for reasons set forth above.
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 5 and 9 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.
Claim 5 depends from claim 4, which is canceled, and claim 9 depends from claim 8, which is canceled. Claims 5 and 9 are therefore of improper dependent form as they cannot include all limitations of or further limit a canceled claim.
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
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, 3, 5, 9 and 11-12 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 claims 3, 5 and 12, 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]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 5 and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4 and 6 of U.S. Patent No. 12,258,293-B2 (hereinafter, “-293”) in view of BARROW.
In regard to present claim 1, -293 claims a hybrid additive for use in construction materials, the hybrid additive comprising: 95 wt.% to 99.9 wt.% of a plastic or polymeric material; and 0.1 wt.% to 5 wt.% of an additional material, 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 (-293 at claim 1, lines 1-9), wherein the additional material is stably incorporated with the plastic or polymeric material (see -293 at claim 1, lines 1-2, reciting that the hybrid additive comprises pellets formed of the recited materials; the additional material would have to be stably incorporated within the plastic or polymeric material to be in the form of pellets). It is noted that the recitation of “either before or during a grinding process” in the present claim 1 is considered product-by-process claim language which is not given patentable weight; see MPEP § 2113.
However, -293 does not claim a hybrid additive according to having a shape comprising one or more vertices a diameter of 0.02 mm to 0.5 mm.
BARROW discloses a plastic aggregate containing additives, which is used to make concrete products (i.e., a hybrid additive) (see BARROW at Abstract and paragraphs [0044]-[0045]), having a shape comprising one or more vertices (see BARROW at Fig. 9 and paragraphs [0062], [0109]-[0111] and [0116]). BARROW teaches that using a non-regular shape including a number of vertices, e.g., a star shape, may act to minimize crack propagation in concrete (see BARROW at paragraphs [0115]-[0116]). BARROW further teaches that the plastic aggregates may have a small diameter of less than 5 mm, and that the size of the plastic aggregates affects the compression strength of the resulting concrete (see BARROW at paragraphs [0095], [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).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to make the hybrid additive of -293 having a shape comprising one or more vertices and a diameter of less than 5 mm, which encompasses and therefore renders obvious the claimed range. 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)). One of ordinary skill in the art would have been motivated to use a shape comprising one or more vertices, e.g., a star shape, for the benefit of minimizing crack propagation in concrete as taught by BARROW (see BARROW at paragraphs [0115]-[0116]). Further, it would have been obvious to one of ordinary skill in the art to select a diameter within the claimed range through routine experimentation and optimization as set forth above.
In regard to present claims 3, 5 and 12, as applied above, -293 in view of BARROW claims a hybrid additive according to the present claim 1, coated with a cementitious material that includes one or more of calcium carbonate, graphene, hydrated lime, and pozzolanic materials (see -293 at claim 1, lines 1-9, and at claim 2, lines 1-4).
In regard to present claim 9, as applied above, -293 in view of BARROW claims a hybrid additive according to the present claim 1.
However, -293 does not claim a hybrid additive according to claim 1 comprising dimples, indentations, or inclusions on a surface that contain a cementitious material that includes one or more of calcium carbonate, graphene, hydrated lime, and pozzolanic materials.
BARROW discloses a plastic aggregate containing additives, which is used to make concrete products (i.e., a hybrid additive) (see BARROW at Abstract and paragraphs [0044]-[0045]) wherein the surface is roughened/texturized and has surface irregularities (i.e., the surface comprises indentations) (see BARROW at paragraphs [0010], [0016], [0096], [0106] and [0169]-[0171]) that contain pozzolanic materials, as the outer surface is coated in pozzolanic materials (see BARROW at paragraphs [0038] and [0147]-[0149]). BARROW teaches that a roughened/irregular surface texture has a high surface area to promote mechanical and/or molecular bonding (see BARROW at paragraphs [0010] and [0163]), and that adding a coating of pozzolanic materials allows for controlled cooling, increases the surface area of the aggregate leaving a larger surface for the cement paste to bond, and adds hydrophilic properties to the aggregate (see BARROW at paragraphs [0147]-[0149]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to make the hybrid additive of -293 having a roughened/texturized surface (i.e., a surface having indentations) and a coating of pozzolanic material as taught by BARROW. One of ordinary skill in the art would have been motivated to make these modifications for the benefits of increasing surface area to promote mechanical and/or molecular bonding and enabling controlled cooling, increasing the surface area of the aggregate leaving a larger surface for cement paste to bond, and/or adding hydrophilic properties to the aggregate as taught by BARROW (see BARROW at paragraphs [0010], [0147]-[0149] and [0163]).
In regard to present claim 10, as applied above, -293 in view of BARROW claims a hybrid additive according to claim 1, wherein the plastic or polymeric material is in a gas-expanded form (see -293 at claim 1, lines 1-9, and at claim 4, lines 1-5, reciting plastic or polymeric materials in gas-expanded form).
In regard to present claim 11, as applied above, -293 in view of BARROW claims a hybrid additive according to claim 1, wherein the plastic or polymeric material comprises a melting temperature of 95 °C to 140 °C (see -293 at claim 1, lines 1-9, and at claim 6, lines 1-3, reciting an identical range of melting temperatures for the pellets of the hybrid additive, i.e., the plastic or polymeric material would also have a melting temperature within this range as it is a component of the pellets).
Response to Arguments
Applicant's arguments filed 01/29/2026 and the Declaration under 37 C.F.R. 1.132 filed 01/29/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(b) for claims 1, 3, 5 and 9-12 and under 35 U.S.C. 112(d) for claims for claims 5 and 9, as well as new grounds of nonstatutory double patenting rejection for claims 1, 3, 5 and 9-20 over claims 1-2, 4 and 6 of -293 in view of BARROW as set forth above.
Applicant argues:
“The cited prior art does not teach or suggest the claimed size of the hybrid additive… Barrow describes… a plastic aggregate having a size of 1 mm to 30 mm… claim 1 recites a hybrid additive having a diameter of 0.02 mm to 0.5 mm, a range far smaller than that taught by Barrow… although the reference broadly states a particle size range of 1-30 mm, it neither teaches nor enables the routine production or use of polymeric aggregates at the lower end of that range. As explained in the Declaration, standard extrusion practice for polymer pellets employs die sizes of approximately 2-6 mm… Barrow only illustrates extrudates and die openings of at least 2 mm and 5 mm, respectively” (see Remarks at pg. 6-7 and Declaration at paragraphs 10-12).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because BARROW does not teach or suggest the claimed size of the hybrid additive, the Examiner respectfully disagrees. As set forth in the rejection above, BARROW explicitly teaches a size of 5 mm or less, which fully encompasses and thereby renders obvious the claimed range. 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, as discussed above, BARROW also explicitly teaches that the size of the plastic aggregates is a result-effective variable which affects the compression strength of the resulting concrete (see BARROW at paragraphs [0264] and [0267]) and 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).
Further, 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). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP § 2123.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“The cited prior art does not teach or suggest stable incorporation of the additional material during a grinding process… there is precedent supporting the principle that similar materials having different physical characteristics… resulting from a different manufacturing process may not be considered the same material… As such, Applicant respectfully submits that the presently claimed hybrid additive has different physical characteristics… resulting from a different manufacturing process…” (see Remarks at pg. 7-8).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the claimed additive is nonobvious because BARROW does not teach incorporating the additional material before or during a grinding process, the Examiner respectfully disagrees. As set forth in the rejection above, BARROW explicitly teaches stably incorporated additional material (see BARROW at e.g. paragraph [0044] and claim 3), which is the claimed structural limitation, and a limitation regarding at what point during a manufacturing process, which is not part of the claimed invention, the material is incorporated is product-by-process claim language which does not hold 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.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“The claimed hybrid additive provides unexpected advantages as a replacement for aggregate, and in particular, sand… Barrow describes a plastic aggregate that may be combined with sand… In contrast, the presently claimed hybrid additive is not used with sand, but rather replaces sand entirely in construction mixtures… The hybrid additive’s fine particle size (0.02-0.5 mm) allows it to perform the functional role of sand, i.e., providing volume, strength, and surface area for bonding, while imparting the unique advantages of a polymer-based component, such as reduced weight, enhanced flexibility, improved crack resistance, and moisture resistance. This functional replacement of sand represents a non-obvious and unexpected result. Nothing in Barrow… suggests that a polymer-based material could effectively substitute for sand in construction applications, nor that such substitution would yield stable, high-performance composites… This property arises directly from the claimed fine particle size… Importantly, experimental data presented in the instant application and discussed in the Declaration demonstrates that the claimed hybrid additive provides unexpected performance improvements… FIG. 12A of the application is discussed. The data presented therein clearly demonstrate that replacement of sand and/or aggregate with the claimed hybrid additive, particularly at approximately 20 wt.% replacement levels, results in improved compressive strength across all tested curing times. The data also demonstrates that the claimed hybrid additive provides a slight but consistent improvement in compressive strength relative to hybrid additives of larger sizes used to replace aggregate” (see Remarks at pg. 8-9 and Declaration at paragraphs 3-9).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because the claimed additive having a particle size of 0.02-0.5 mm produces unexpected results, the Examiner respectfully disagrees. Arguments regarding allegations of unexpected results are discussed in MPEP § 716.02. As set forth above, the disclosure of BARROW renders obvious the claimed invention, and an intended use of the additive as a replacement for sand does not make the claimed additive nonobvious. Further, BARROW explicitly states that the plastic aggregate is to be used as a replacement for aggregate in construction materials to form stable, high-performance composites such as concrete, and that its use as a replacement for aggregate increases the compressive strength of concrete (see BARROW at e.g. paragraphs [0001], [0181]-[0184], [0191] and [0252]). Sand is an aggregate; use of the additive as an aggregate in construction material is not an “unexpected result”. BARROW also explicitly teaches that the plastic aggregate provides benefits which Applicant states are unexpected, such as providing volume, strength, and surface area for bonding, reduced weight, improved crack resistance, etc. (see BARROW at e.g. paragraphs [0001], [0003]-[0004], [0010], [0092], [0131]-[0132], [0147], [0155], [0166], [0181], [0183], [00185], [0268]-[0269], [0272], etc.), therefore these benefits are clearly expected from the prior art. The plastic aggregate of BARROW clearly provides the “unique advantages of a polymer-based component” as it includes a polymer-based component.
Further, although as discussed above the Examiner does not agree that the results have been shown to be unexpected, the results also do not appear to be commiserate in scope with the claimed additive. Applicant states that the improvements are a direct result of a particle size of 0.02-0.5 mm, however the Examiner could only find evidence that the results showed the difference between not including the additive at all and including it in a given weight percentage in a composite composition (which is not the claimed invention). No evidence could be located that the results mentioned by Applicant, e.g., in Fig. 12A, are for an additive having a size of 0.02-0.5 mm; 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. It is not clear in what way the data is meant to show that the claimed size range produces unexpected results as compared to a size of above 0.5 mm or below 0.02 mm.
It is also noted that while Applicant states Fig. 12A shows “improved compressive strength across all tested curing times” for 20 wt.% replacement with the claimed additive, Fig. 12A actually shows that the “Control” sample has a higher strength for all curing times as compared to every example other than “10% Grey” and “20% Grey-Sand”, and also has higher strength at curing times of 1 day, 7 days and 28 days than the “10% Grey” sample and at 1 day and 7 days than the “20% Grey-Sand” sample. Its strength at 28 days also appears to be only slightly lower than then “20% Grey-Sand” sample, and paragraph [0137] of the present specification states that the strength of all of the examples increases at similar rates to the control mixture, and that the 28-day strength of the 20% Grey Sand sample is very similar to the strength of the control mix.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731