DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/13/2026 has been entered.
Response to Amendment
In response to the amendment received on 03/13/2026:
claims 1-8, 10, 12-13 and 16-26 are currently pending
claims 4-8, 10 and 18-22 are withdrawn from consideration
claim 1 is amended
claim 26 is added
previously presented prior art grounds of rejection are withdrawn in light of the amendment to the claim
double patenting grounds of rejection are presented herein
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, 12 and 25-26 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 12 of U.S. Patent No. 12515987 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2, 12 and 22 of U.S. Patent No. 12515987 B2 recite:
1. A composition comprising a mechanochemically carboxylated mineral filler and a binder; wherein the binder is selected from the group consisting of cement, asphalt, and combinations thereof; and wherein the mechanochemically carboxylated mineral filler is obtained by a method comprising the following steps: a) providing a solid feedstock comprising a silicate mineral, wherein the solid feedstock is a particulate material which has a BET surface area of more than 0.01 m.sup.2/g and a D50 within the range of 0.1-5000 μm; b) providing an oxidizing gas comprising CO2; c) introducing said solid feedstock and said oxidizing gas into a mechanical agitation unit; and d) subjecting the material of said solid feedstock to a mechanical agitation operation in the presence of said oxidizing gas at an oxidizing gas pressure of more than 1 atm to obtain the mechanochemically carboxylated mineral filler; wherein the CO2 content of the mechanochemically carboxylated mineral filler is more than 1 wt. %, based on a total weight of the mechanochemically carboxylated mineral filler, wherein the CO2 content is determined as a mass loss above 120° C. measured by TGA-MS employing a temperature trajectory comprising increasing the temperature from room temperature to 800° C. at a rate of 10° C./min and then decreasing the temperature to room temperature at a rate of 15° C./min; wherein step (d) comprises grinding or milling; and wherein the mechanochemically carboxylated mineral filler has a D90 within a range of 20-100 μm and/or a D50 within a range of 0.5-50 μm.
2. The composition according to claim 1, wherein the solid feedstock comprises or consists of a material selected from the group consisting of pyroxenes, hydrous magnesium silicates, talc, serpentines, olivine, fly ash, bottom ash and combinations thereof.
12. The composition according to claim 1, wherein the binder is a cement.
22. The composition according to claim 1, wherein a BET surface area of the mechanochemically carboxylated mineral filler is at least 110% of the BET surface area of the solid feedstock.
Claims 1-2 and 12 of U.S. Patent No. 12515987 B2 describe the cementitious composition comprising the mechanochemically carboxylated fly ash identical to the composition containing fly ash of the present claims 1, 12 and 26, therefore, one of ordinary skill in the art would have anticipated the properties of the resulting concrete, i.e., increased compressing strength and decreased set time as set forth in present claim 26, to be inherent.
Allowable Subject Matter
Claims 2-3, 13, 16-17 and 23-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments, see Remarks, filed on 03/13/2026, with respect to claims 1-4, 12-13 and 16-17 and 23-25 have been fully considered and are persuasive. The rejection of claims as being unpatentable over JI in view of MONKMAN, JI L and KRISHNARAJ has been withdrawn.
Conclusion
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/A.A.K./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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