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
In response to the amendment received on 11/25/2024:
claims 1-2, 4-10 and 12-16 are currently pending;
claims 9-10 and 13-15 are withdrawn;
the objection to claims 9-10 are not withdrawn as appropriate correction is still required; and
all prior art grounds of rejection are maintained for at least the reasons as set forth herein. Additionally, a new ground of rejection based on Kumar in view of Becker, Bichler and Wang for independent claim 1 is outlined below.
Claim Objections
Claims 9-10 are objected to because of the following informalities: both dependent claims 9 and 10 were members of non-elected Species B drawn to the polycarboxylate ether. Both dependent claims 9 and 10 are withdrawn; however, both claims’ status identifiers indicate said claims are “Previously Presented”, not “Withdrawn”. Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-8, 12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar et al. (US. 2008/0022903 A1)(“Kumar” hereinafter) in view of Becker (Stirred Balls Mills, Ceramic Engineering & Science Proceedings)(“Becker” hereinafter), Bichler et al. (US 2012/0270970 A1) (“Bichler” hereinafter), and Filio et al. (Dry Fine Grinding of Granulated Blast Furnace Slag Quenched by Water and its Reactivity during Grinding)(“Filio” hereinafter).
Regarding claim 1, Kumar teaches a process for the wet milling of slag (see Kumar at [0022] teaching wet milling of granulated blast furnace slag), and the weight ratio of slag to water is 0.05-4:1 (see Kumar at [0022] teaching slag to water ratio of 1:1 to 1:2). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP § 2144.05 I).
Kumar does not explicitly teach i) wherein more than 210 kWh of milling energy are introduced per metric ton of slag, ii) wherein from 0.005 to 2% by weight, based on the slag, of a milling auxiliary which comprises at least one compound selected from the group consisting of polycarboxylate ether, phosphated polycondensation product, lignosulfonate, melamine-formaldehyde sulfonate, naphthalene-formaldehyde sulfonate, monoglycols, diglycols, triglycols, polyglycols, polyalcohols, amino acids, and molasses, and iii) wherein milling media are used in the wet milling with the weight ratio of the slag to the milling media of 1-15:1.
Regarding i), like Kumar, Becker teaches attrition mill (see Becker at page 1827, paragraph 1 teaching the stirred ball mill, also referred to as an attrition mill or attritor, is a grinding mill containing internally agitated media).
Becker also teaches a key to the efficiency of stirred ball mill grinding is that the power input is used directly for agitating media for grinding and is not used for rotating or vibrating a large, heavy vessel in addition to the media charge (see Becker at page 1827, paragraph 2)… and to more clearly illustrate the efficiency of the stirred ball mill, Fig. 1 (also shown below) shows the relative effectiveness of the attritor vs the vibratory ball mill and conventional ball mill for the ultrafine grinding (see Becker at page 1827, paragraph 3).
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Becker further teaches that at a specific energy input above 200 kWh/t, the attritor continued to grind into the submicron range, while the other machines can no longer efficiently produce the smaller, submicron particles… therefore the time required for grinding submicron particles with the attritor is much shorter (see Becker at page 1827, paragraph 3). The energy input above 200 kWh/t overlaps with the claimed wherein more than 210 kWh of milling energy are introduced per metric ton of slag.
Additionally, it has been held 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", and “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” (see MPEP § 2144.05.II.A).
As such, one of ordinary skill in the art would appreciate that Becker teaches that attrition mill is most efficient in fine grinding compared to other grinding equipment and at energy input above 200 kWh/t, the attritor can continuously grind to the submicron range, and seek those advantages by using an energy input above 200 kWh/t in the milling of the blast furnace slag as taught by Kumar. Additionally, it would have been obvious to one of ordinary skill in the art to have selected an energy input above 200 kWh/t as taught by Becker because there is a reasonable expectation of success that the disclosed energy input above 200 kWh/t would be suitable.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use an energy input of above 200 kWh/t in the attrition mill as taught by Becker in the milling of the blast furnace slag as taught by Kumar because the attrition mill can continuously grind to the submicron range and there is a reasonable expectation of success that the disclosed energy input above 200 kWh/t would be suitable.
Regarding ii), like Kumar, Bichler teaches milling of slag (see Bichler at [0003] teaching provided are compositions which can be obtained from the present process, see Bichler at [0090] teaching also provided are processes of using the present compositions as grinding aids in the production of cement, such as in the grinding of the clinker or clinker blend to form the cement… by clinker blend is meant preferably a mixture of clinker and substitutes such as… slag… in this case the process products may be used in amounts of from 0.001% by weight to 5% by weight… based in each case on the clinker or clinker blend to be ground… it is possible to use the present process products as grinding aids in ball mills or vertical mills… may be used alone or in combination with other grinding aids, such as, for example mono-, di-, tri- and polyglycols, polyalcohols…amino acids… residues from sugar production (e.g., molasses)… it has been found that the early strengths… of the cement thus produced may be improved). 0.001% by weight to 5% by weight and the product composition as taught by Bichler in combination with the grinding aids mono-, di-, tri- and polyglycols, polyalcohols, amino acids and molasses are taken to meet the claimed range of 0.005 to 2% by weight, based on the slag, and milling auxiliary which comprises at least one compound selected from the group consisting of… monoglycols, diglycols, triglycols, polyglycols, polyalcohols, amino acids, and molasses.
Alternatively, and as mentioned, Bichler teaches provided are compositions which can be obtained from the present process (see Bichler at [0003]), and Bichler teaches also provided are processes of using the present compositions as grinding aids in the production of cement, such as in the grinding of the clinker or clinker blend to form the cement… by clinker blend is meant preferably a mixture of clinker and substitutes such as… slag… in this case the process products may be used in amounts of from 0.001% by weight to 5% by weight… based in each case on the clinker or clinker blend to be ground… it is possible to use the present process products as grinding aids in ball mills or vertical mills… may be used alone… it has been found that the early strengths… of the cement thus produced may be improved (see Bichler at [0090]). Bichler teaches polymers may be polycondensation products which comprise… (I) at least one structural unit consisting of an aromatic or heteroaromatic radical containing a polyether side chain… and (II) at least one structural unit consisting of an aromatic or heteroaromatic radical containing at least one phosphoric ester group (see Bichler at [0028]-[0031]). 0.001% by weight to 5% by weight of the polycondensation product containing polyether side chain and at least one phosphoric ester group as a grinding aid is taken to meet the claimed wherein from 0.005 to 2% by weight, based on the slag, of a milling auxiliary which comprises at least one compound selected from the group consisting of… phosphated polycondensation product.
As such, one of ordinary skill in the art would appreciate that Bichler teaches 0.001% by weight to 5% by weight grinding aids as outlined above, so as to improve the early strengths of the cement thus produced, and seek those advantages by adding 0.001% by weight to 5% by weight grinding aids in the milling of the slag as taught by Kumar.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add 0.001% by weight to 5% by weight grinding aids as taught by Bichler in the milling of the slag as taught by Kumar so as to improve the early strengths of the cement thus produced.
Regarding iii), Kumar teaches blast furnace slag to grinding ball ratio in the range of 1:5 to 1:15 (see Kumar at [0022]).
Like Kumar, Filio teaches grinding of slag (see Filio at page 795, right column, paragraph 1 teaching the main purpose of the disclosure is to establish an effective technique for fine grinding the granulated slag from the viewpoint of grinding aids and size of grinding media using tumbling and vibrating ball mills).
Filio also teaches that the granulated slag quenched by water are also being used in cement and concrete as well as fine ceramics industries… in such special usages, it can be noticed that the granulated slag further undergoes size reduction into finer powder state prior to utilization and such process progresses the strength of slag cements… this growing technological importance of slags has led an increasing need for developing an effective technique for fine grinding slag… the actual characteristic of the ground slag samples depends heavily on the processes of grinding in a mill and the conditions of water quenching… grinding process wherein a material is broken by impact, compression and shearing forces is known to induce somewhat of changes in the state of solids because of its creation of new surfaces (see Filio at page 795, right column, sentences 4-8).
Filio further teaches that the amount of slag under 3 µm in the double ball-size system is slightly less than that in the single ball-size system using the balls of 5 mm diameter, which is about quarter of the ball-sized calculated by Bond’s equation given by Eq. 1… this trend was also observed in the experimental results using the vibrating ball mill with 5 and 10 mm diameter balls (see Filio at page 797, right column to page 798, left column, bridging paragraph), wherein the ball is taken to meet the claimed milling media.
Moreover, Filio teaches Bond’s equation was applied for determining the biggest size of balls in single and double ball-size systems:
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where B is the biggest size of balls, CS the ratio of milling speed to the critical speed, D the mill diameter, K the constant, Sg the gravity of the sample, Wi the work index of the feed material (or slag), x1 the size in 80% of the feed passes (see Filio at page 796, left to right column, bridging paragraph). And, the alumina balls of 5 and 30 mm in diameter were charged into the mill and the apparent packing ratio of the balls to the mill volume was kept constant at about 30%… the weight of the feed of granulated slag in the alumina mill was kept constant (see Filio at page 796, left column, paragraph 2, sentences 2-3)…. Steel balls used to charge the mill are 12.7, 24.5, 36.5 mm… and the apparent packing ratio was kept constant at about 40%... the feed weight of the granulated slag in the stainless mill was kept constant at 2.0 kg (see Filio at page 796, left column, paragraph 2, sentences 5-6).
In summary, the type and size of balls and the amount of slag is calculated based on the Bond’s equation and are used to optimize the grinding conditions as taught by Filio, and the smaller size of media (or ball) provides larger contact surface between media and granulated blast furnace slag as taught by Kumar. Additionally, optimizing the grinding conditions is important because the actual characteristic of the ground slag samples depends heavily on the processes of grinding in a mill, and the grinding process is known to induce somewhat of changes in the state of solids because of its creation of new surfaces as taught by Filio.
One of ordinary skill in the art would appreciate that the ratio of the slag to milling media (or ball) would be affected by the type and size of milling media (or ball) as demonstrated by Filio teaching that alumina balls (sizes 5 and 30 mm in diameters) has an apparent packing ratio of the balls to the mill volume at about 30% and steel balls (sizes 12.7, 24.5, 36.5 mm) has an apparent packing ratio at about 40%.
As such, one of ordinary skill in the art would appreciate that the ratio of the slag to milling media is a result-effective variable in the optimization of the grinding conditions because the type and size of balls (or grinding media) is calculated based on the Bond’s equation that affects the apparent packing ratio of the balls to the mill volume as taught by Filio, and the smaller size of ball (or grinding media) provides larger contact surface between media and granulated blast furnace slag as taught by Kumar. And, it would have been obvious to optimize the grinding conditions (i.e., ratio of the slag to milling media) as taught by Kumar and Filio because the actual characteristic of the ground slag samples depend heavily on the processes of grinding in a mill and the grinding process is known to induce somewhat of changes in the state of solids because of its creation of new surfaces.
Regarding claim 2, Kumar in view of Becker, Bichler and Filio teaches the limitations as applied to claim 1 above, and Kumar further teaches wherein the slag is blast furnace slag (see Kumar at [0022] teaching granulated blast furnace slag).
Regarding claim 4, Kumar in view of Becker, Bichler and Filio teaches the limitations as applied to claim 1 above, and Kumar further teaches wherein the slag has the following composition (see Kumar at [0029] and table, shown below).
Claim 4 limitations
Kumar at [0029] and table (wt. %)
from 20 to 50% by weight of SiO2
20-40 SiO2 (see MPEP 2144.05(I))
from 5 to 40% by weight of A12O3
20-40 A12O3 (see MPEP 2144.05(I))
from 0 to 3% by weight of Fe2O3
0-2 Fe2O3 (see MPEP 2144.05(I))
from 20 to 50% by weight of CaO
20-40 CaO (see MPEP 2144.05(I))
from 0 to 20% by weight of MgO
5-17 MgO (see MPEP 2144.05(I))
from 0 to 5% by weight of MnO
0-5 MnO (see MPEP 2144.05(I))
from 0 to 2% by weight of SO3
SO3 (see MPEP 2144.05(I))
> 80% by weight of glass content
> 85 (see MPEP 2144.05(I))
Regarding claim 5, Kumar in view of Becker, Bichler and Filio teaches the limitations as applied to claim 1 above, and Bichler further teaches wherein the milling auxiliary is at least one polymer comprising acid groups selected from the group consisting of… phosphated polycondensation product, wherein the milling auxiliary comprises a structural unit (I),
*-U-(C(O))k-X-(AlkO)-W (I)
where * indicates the point of bonding to the polymer comprising acid groups, U is a chemical bond or an alkylene group having from 1 to 8 carbon atoms, X is oxygen, sulfur or an NR' group, k is 0 or 1, n is an integer having an average in the range from 1 to 300, Alk is C2-C4-alkylene, where Alk can be identical or different within the group (Alk-O)n, W is a hydrogen radical, a C1-C6-alkyl radical or an aryl radical or the group Y-F, where Y is a linear or branched alkylene group which has from 2 to 8 carbon atoms and may optionally bear a phenyl ring, F is a 5- to 10-membered nitrogen heterocycle which is bound via nitrogen and may optionally have, apart from the nitrogen atom and apart from carbon atoms, 1, 2 or 3 additional heteroatoms selected from oxygen, nitrogen and sulfur as ring members, where the nitrogen ring members may optionally bear an R2 group and 1 or 2 carbon ring members may optionally be present as carbonyl group, R1 is hydrogen, C1-C4-alkyl or benzyl and R2 is hydrogen, C1-C4-alkyl or benzyl (see Bichler at [0031]-[0055] teaching structural units (I) and (II) may be defined by the following general formula (shown below with Examiner annotation illustrating how the structural formula meets structural formula (I))).
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The general formula (I) meets the claimed structural unit (I) when k is 0, thus there is no carbonyl or (C(O))0 unit, as shown below. And, the general formula (II) meets the claimed phosphated polycondensation product.
Regarding claim 6, Kumar in view of Becker, Bichler and Filio teaches the limitations as applied to claims 1 and 5 above, and Bichler further teaches wherein the phosphated polycondensation product comprises (II) at least one structural unit having an aromatic and a structural unit (I) (see Bichler at [0056] teaching group A… in the general formula (I) of a polycondensate are preferably represented by… wherein 4-methoxyphenyl is featured in the list), wherein phenyl is an aromatic structural unit), and
(III) at least one phosphated structural unit having an heteroaromatic group (see Bichler at [0044]-[0045] teaching formula (II)… where D… represented by a heteroaromatic compound).
Regarding claim 7, Kumar in view of Becker, Bichler and Filio teaches the limitations as applied to claims 1 and 5-6 above, and Bichler further teaches wherein the structural units (II) and (III) are represented by the following general formulae
(II)
A-U-(C(O))k-X-(AlkO)n-W
where the radicals A are identical or different and are represented by a substituted or unsubstituted aromatic or heteroaromatic compound having from 5 to 10 carbon atoms in the aromatic system, where the further radicals have the meanings indicated for structural unit (I) (see Bichler at [0056] teaching group A… in the general formula (I) of a polycondensate are preferably represented by… wherein 4-methoxyphenyl is featured in the list). 4-methoxyphenyl meets the claimed formula (II) when k is 0 and thus there is no carbonyl or (C(O))0 unit, as shown below:
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(III)
A-U-(C(O))k-X-(AlkO)n-P(O)(OMa)2
where the radicals A are identical or different and are represented by a substituted or unsubstituted aromatic or heteroaromatic compound having from 5 to 10 carbon atoms in the aromatic system, where the further radicals have the meanings indicated for structural unit (I) M is hydrogen, a monovalent, divalent or trivalent metal cation, an ammonium ion or an organic amine radical, a is 1/3, 1/2 or 1 (see Bichler at [0044]-[0055], specifically structural unit (II) shown below), meeting the claimed general formula when k is 0 and thus there is no carbonyl or (C(O))0 unit
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Regarding claim 8 and 16, Kumar in view of Becker, Bichler and Filio teaches the limitations as applied to claims 1, 5 and 6 (claim 8), and claims 1, 5-7 (claim 16), respectively above, and Bichler further teaches wherein the polycondensation product comprises a further structural unit (IV) which is represented by the following formula
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where the radicals Y are, independently of one another, identical or different and are represented by (II), (III) or further constituents of the polycondensation product (see Bichler at [0061]-[0063] teaching in one embodiment, the polycondensation product may comprise in the reactants… a further structural unit (III) which is presented by the following formula
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where Y, independently of one another, identical or different and are represented by (I), (II) or further constituents of the polycondensate).
Regarding claim 12, Kumar in view of Becker, Bichler and Filio teaches the limitations as applied to claim 1 above, and Kumar further teaches wherein the wet milling is carried out in a stirred ball mill (see Kumar at [0022] teaching attrition mill and ball), which is also called a stirred ball mill as evidenced by Becker (see Becker at page 1827, paragraph 1 evidencing the stirred ball mill, also referred to as an attrition mill or attritor, is a grinding mill containing internally agitated media).
Claims 1-2, 4-8, 12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kumar in view of Becker, Bichler and Wang et al. (CN 104529312 A, with reference to the machine translation) (“Wang” hereinafter).
Regarding claim 1, Kumar in view of Becker and Bichler teach a process for the wet milling of slag, wherein more than 210 kWh of milling energy are introduced per metric ton of slag, and the weight ratio of slag to water is 0.05-4:1; and wherein from 0.005 to 2% by weight, based on the slag, of a milling auxiliary which comprises at least one compound selected from the group consisting of… phosphated polycondensation product… monoglycols, diglycols, triglycols, polyglycols, polyalcohols, amino acids, and molasses, is added to the material being milled before or during the wet milling (please see claim 1 rejection, bullet 9 above based on Kumar in view of Becker and Bichler as it applies here as well).
Kumar in view of Becker and Bichler do not explicitly teach wherein milling media are used in the wet milling with the weight ratio of the slag to the milling media of 1-15:1.
Like Kumar, Wang teaches ball milling a slag (see Wang at [0024] teaching ball milling of water-quenched nickel slag… control the mass ratio of nickel slag to grinding balls to 1:1). Grinding balls is taken to meet the claimed milling media. Mass ratio of slag to grinding balls of 1:1 is taken to meet the claimed wherein milling media are used in the wet milling with the weight ratio of the slag to the milling media of 1…:1 (see MPEP 2144.05(I)).
Additionally, 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", and “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” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected a mass ratio of 1:1 slag to grinding balls as taught by Wang in the production of slag as taught by Kumar because there is a reasonable expectation of success that the disclosed mass ratio would be suitable.
Regarding claims 2, 4 and 12, Kumar in view of Becker, Bichler and Wang teach these claim limitations (see claims 2, 4 and 12 rejection, bullets 10-11 and 16, based on Kumar as it applies here as well).
Regarding claims 5-8 and 16, Kumar in view of Becker, Bichler and Wang teaches these claim limitations (see claims 5-8 and 16 rejection, bullets 12-15, based on Bichler as it applies here as well).
Response to Arguments
Applicant's arguments filed 11/25/2024 have been fully considered but they are not persuasive.
Applicant argued that Filio cannot be combined with Kumar and Becker because the self-hydraulic hardening effect that would render the blast furnace slag less effective as a hydraulic binder in a concrete composition with cement binder and water as taught by Filio would inform one of ordinary skill in the art that there is greater formation of CaCO3 using grinding additives diluted with water and away from wet grinding/milling process (see Applicant’s arguments at page 9, paragraph 4 to page 11, paragraph 1), and it teaches away from the a wet grinding process (see Applicant’s summary of interview with examiner submitted on 10/16/2025, page 1 bullet (E)).
Examiner acknowledges the arguments and respectfully notes that “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art” (see MPEP 2123.I). In this instance, Filio is used to reject the claimed “wherein milling media are used in the wet milling with the weight ratio of the slag to the milling media of 1-15:1” based on evidence that the ratio of the slag to milling media is a result-effective variable in the optimization of the grinding conditions. As mentioned above, one of ordinary skill in the art would appreciate that the type and size of balls (or grinding media) is calculated based on the Bond’s equation that affects the apparent packing ratio of the balls to the mill volume, and the smaller size of ball (or grinding media) provides larger contact surface between media and granulated blast furnace slag. It would have been obvious to optimize the grinding conditions (i.e., ratio of the slag to milling media) as taught by Kumar and Filio because the actual characteristic of the ground slag samples depend heavily on the processes of grinding in a mill and the grinding process, which is known to induce somewhat of changes in the state of solids due to its creation of new surfaces. As outlined in the rejection above, there is sufficient motivation and substantial evidence to combine the references Kumar and Filio because both references teach milling of blast furnace slag using attrition or ball mill and recognized milling media (or balls) and slag as result-effective variables, which can be varied to have a predictable effect on the milling of blast furnace slag; and Kumar does not contain an express teaching away from the proposed modification (see MPEP 2143.I.D.Example 3). Additionally, a new ground of rejection based on Kumar and Wang in bullets 17-18 is outlined above, wherein Wang is used to meet the claimed “wherein milling media are used in the wet milling with the weight ratio of the slag to the milling media of 1- 15:1”. As such, the rejection to independent claim 1 is maintained.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731