Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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) 18-29, 31-38 and 41-43 is/are rejected under pre-AIA 35 U.S.C. 102 (a)or 102(e) as anticipated by or, in the alternative, under pre-AIA 35 U.S.C. 103(a) as obvious over US20120082839(US’839).
Regarding claims 18,19, and 25 - 26, US’839 discloses formed building materials comprising a sequestered CO2. The building materials include a composition comprising a carbonate/bicarbonate component. The carbonate compound compositions include precipitated crystalline and/or amorphous carbonate compounds See abstract and [0096].US’898 discloses the making of sequestered-CO2 components [0095-0097] in application 12/344,019 (0022-0028) which discloses a carbon dioxide gas contacted with carbonic acid that yields a bicarbonate rich product with a pH of 8-9 followed by a reaction with metal cations yielding a sequestered carbon dioxide carbonate. As for reflective microcrystalline/amorphous material having a visible light reflectance ranging from 50% to 99%. it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the alternative, 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 20, as for the crystalline size, it has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claims 21-22, the sequestered-CO2 component further comprises calcium, magnesium, or a combination thereof. See [0009].
Regarding claims 23-24, the sequestered-CO2 component may be combined with water and other additional components, which may include, but are not limited to clay, shale, soft slate, calcium silicate, quarried stone, Portland cement, fly ash, slag, metakaolin, cement, aggregate (e.g., blast furnace slag, bottom ash, gravel, limestone, granite, sand, etc.), silica fume and pozzolans. See [0038].
Regarding claim 27, US’839 disclosure of the preparation of sequestered-CO2 components [0095-0097] is described in application 12/344,019 (0022-0028).The disclosures do not expressly disclose the specific bicarbonate rich product that comprises droplets of a liquid condensed phase (LCP) in a bulk liquid. However, the LCP is an inherent function of an identical method and conditions of the reaction. where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 28-29, US’839 disclosure of the preparation of sequestered-CO2 components [0095-0097] is described in application 12/344,019 (0022-0028). The limitations of the claim are inherent, US’839 disclosure of the preparation of sequestered-CO2 components [0095-0097] is described in application 12/344,019 (0022-0028). where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claims 31-32, US’839 discloses TiO2 pigment. See [0051].
Regarding claims 33-34, 38 and 42, US’839 discloses cementation material (reads on solid and granular). See [0035].
Regarding 35-37, US '839 discloses the process of forming building materials comprising sequestered CO2 carbonate. The building material is in the form of tiles,] fiber-cement sidings, which are then applied to the surface of roofs and to exterior structures. The sequestered carbonate is applied to the tile/sidings formation. The formation includes a homogenous mixture that would inherently yield at least a portion of the carbonate on the surface of the tile/siding. The sequestered carbonate material is used to reduce carbon emission via reduced lighting demands due to the high albedo of the material, See abstract; [0003]; [0043]; [0058]; and [0007].
Regarding claim 41, US '839 discloses the composition comprising silicon. See [0126].
Regarding claim 43, US '839 discloses the process of forming building materials comprising sequestered CO2 carbonate. The building material is in the form of tiles,] fiber-cement sidings, which are then applied to the surface of roofs and to exterior structures. The sequestered carbonate is applied to the tile/sidings formation. The formation includes a homogenous mixture that would inherently yield at least a portion of the carbonate on the surface of the tile/siding. The sequestered carbonate material is used to reduce carbon emission via reduced lighting demands due to the high albedo of the material, See abstract; [0003]; [0043]; [0058]; and [0007].
Response to Arguments
Applicant's arguments filed 03/30/2026 have been fully considered but they are not persuasive.
The applicant argues that cited paragraph 95 of Ha refers to "a variety" of different methods that can be used to synthesize the cited CO2-sequestering components. Skilled artisans would recognize that a variety of methods could different in several important parameters, such at time, temperature, concentrations, particle sizes, and other features. Therefore, simply referring to "various" procedures does not necessarily indicate that the claimed 50% to 99% visible light reflectance would also necessarily occur in the methods of Ha.
The Examiner respectfully submits that US’839 disclosure of the preparation of sequestered-CO2 components [0095-0097] is described in application 12/344,019 (0022-0028). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Furthermore, a reference is not limited to the teaching in its preferred embodiment (A reference is good not only for what it teaches but also for what one of ordinary skill might reasonably infer from the teachings. In re Opprecht 12 USPQ 2d 1235, 1236 (CAFC 1989); In re Bode USPQ 12; In re Lamberti 192 USPQ 278; In re Bozek 163 USPQ 545, 549 (CCPA 1969); In re Van Mater 144 USPQ 421; In re Jacoby 135 USPQ 317; In re LeGrice 133 USPQ 365; In re Preda 159 USPQ 342 (CCPA 1968). In addition, "A reference can be used for all it realistically teaches and is not limited to the disclosure in its preferred embodiments" See In re Van Marter, 144 USPQ 421).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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