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 .
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.
Claim(s) 1-5, 7, 9-12 and 16-19 is/are rejected under 35 U.S.C. 103 as obvious over US 20090104349 (US’349), further in view of US20170274318A1(US’318).
Regarding claims 1-5, 9 – 11, 12 and 16, US’349 discloses a process for the preparation of aggregates comprising tumbling carbonatable fines, or inert fines and a carbonatable binder, in the presence of moisture and carbon dioxide such that the carbonatable materials and the carbon dioxide react as the tumbling proceeds to form successive layers of hardened carbonates around core particles. The carbonatable fines are limestone rock crusher fines. The water is present at a weight ratio to solids of not more than 0.5:1. The materials are tumbled in an atmosphere consisting predominantly of carbon dioxide. The materials are tumbled in a cylindrical drum. The cylindrical drum rotates about a horizontal axis and materials are processed batchwise. See claims 1 – 8; [0005] and [0043].
Water is present at a weight ratio to solids of not more than 0.5:1. Thus the content of the solid is above 66.7%. US’349 is silent about the content of the limestone. However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Thus, the content of the limestone can be over 33.35%. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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, 105 USPQ 233, 235 (CCPA 1955)
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping " or “close” ranges, and overlapping or close ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Washing step is not needed for the claim 9 step b).
But it is silent that a CO2 sequestering process is applied.
US’318 discloses methods of sequestering carbon dioxide (CO2) include contacting an aqueous capture ammonia with a gaseous source of CO2 under conditions sufficient to produce an aqueous ammonium carbonate. The aqueous ammonium carbonate is then combined with a cation source under conditions sufficient to produce a solid CO2 sequestering carbonate. See abstract; [0041] and [0042].
Thus, it would have been obvious to one of ordinary skill in the art to apply the CO2 sequestering process into the teaching of US’349, motivated by the fact that US’318, also drawn to making aggregates, discloses that such CO2 sequeststering process can address concerns over anthropogenic climate change and ocean acidification and the process is a scalable, cost effective, method of carbon capture and sequestration (CCS). See [0053] and [0005].
Regarding claims 7, and 17-18, the water is present at a weight ratio to solids of not more than 0.5:1. The Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 19, the water is present at a weight ratio to solids of not more than 0.5:1. The controlled addition of materials and moisture content at which carbonation occurs, are important factors in the production of aggregates by accelerated carbonation. See [0022], Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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, 105 USPQ 233, 235 (CCPA 1955)
Response to Arguments
Applicant's arguments filed 10/28/2025 have been fully considered but they are not persuasive.
The Applicant argues that a person of ordinary skill in the art would not be motivated to substitute a carbonate slurry prepared using a CO2 sequestering process instead of Hill's solid waste fines, since the purpose of Hills is to recycle solid waste materials.
The Examiner respectfully submit that US’318, also drawn to making aggregates, discloses that such CO2 sequeststering process can address concerns over anthropogenic climate change and ocean acidification and the process is a scalable, cost effective method of carbon capture and sequestration (CCS). See [0053] and [0005]. US’318 discloses methods of sequestering carbon dioxide (CO2) include contacting an aqueous capture ammonia with a gaseous source of CO2 under conditions sufficient to produce an aqueous ammonium carbonate. The aqueous ammonium carbonate is then combined with a cation source under conditions sufficient to produce a solid CO2 sequestering carbonate. See abstract; [0041] and [0042]
The Applicant argues that Hills fails to teach a carbonate slurry comprising 40% to 60% carbonate solids.
The Examiner respectfully submits that water is present at a weight ratio to solids of not more than 0.5:1. Thus the content of the solid is above 66.7%. US’349 is silent about the content of the limestone. However, when faced with a mixture (limestone and carbonatable binder), one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Thus, the content of the limestone can be over 33.35%. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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, 105 USPQ 233, 235 (CCPA 1955). The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
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 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.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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