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 .
Election/Restrictions
Claim 1 is directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(b), claim 9, directed to the process of making or using the allowable product, previously withdrawn from consideration as a result of a restriction requirement, is hereby rejoined and fully examined for patentability under 37 CFR 1.104. Claims 10–20, directed to a method of making an artificial soil composition, do not require all the limitations of an allowable product claim, and are NOT been rejoined.
Because a claimed invention previously withdrawn from consideration under 37 CFR 1.142 has been rejoined, the restriction requirement between groups I and II as set forth in the Office action mailed on 25 June 2025 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Response to Amendment
The amendments filed 17 November 2025 have been entered. Claims 1–20 remain pending, wherein claims 10–20 stand withdrawn without traverse. The amendment to claim 1 overcomes the previous grounds of rejection under 35 U.S.C. 102. The 102 rejections of claim 1 are therefore withdrawn.
Claim Interpretation
Claim 1 has been amended to recite the limitations, “…a mixture including an iron oxide-containing industrial byproduct at a proportion of about 15%–25% by weight of the mixture, [and] a sulfur-containing industrial byproduct at a proportion of about 5%–10% by weight of the mixture”. For clarity of the record, the Examiner notes that the recited weight percentages refer to the amounts of industrial byproduct, not the amounts of iron oxide or sulfur. Applicants are consistent with this verbiage in their specification as well; paragraph 0026 refers to bauxite residue as an iron oxide-containing industrial byproduct, wherein bauxite is a mineral comprising only 20–60% iron oxide. Claim 1 does not require 15–25% by weight of iron oxide; it requires 15–25% by weight of some industrial byproduct that comprises iron oxide. The same is true for the sulfur-containing industrial byproduct.
Claim Rejections - 35 USC § 112
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.
Claim 8 is 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 8 recites the limitation “wherein the mixture includes at least one of the following proportions of components”, but the first two proportions listed are already required by claim 1 (about 15%–25% by weight of the iron oxide-containing byproduct; about 5%–10% by weight of the sulfur-containing industrial byproduct). This means that claim 8 is introducing limitations that are already inherently met by the requirements of its parent claim. Claim 8 therefore fails to limit parent claim 1. The Examiner recommends deleting the proportions of iron oxide- and sulfur-containing industrial byproducts, since these proportions are already required by the parent 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.
Allowable Subject Matter
Claims 1–7 and 9 are allowed.
The following is an examiner’s statement of reasons for allowance:
Claim 1 has been amended to now require iron oxide- and sulfur-containing industrial byproducts in specific weight proportions. Previously, claim 1 was rejected under 35 U.S.C. 102(a)(1) separately over Kim (KR 101257448 B1), Yoo (KR 20070066468 A), and Kay (GB 2505588 A). Kim teaches a composition comprising iron oxide, but not sulfur, and so Kim no longer anticipates claim 1. Kay teaches a composition that comprises neither iron oxide nor sulfur, and so Kay no longer anticipates claim 1. Yoo teaches a composition that does comprise both an iron oxide- and a sulfur-containing industrial byproduct, but the industrial byproduct containing both of these components is sewage sludge, used in an amount of 60–70 parts by weight (see paragraph 0025 and Table 1), which falls outside the claimed proportions. So none of the previously cited references anticipate amended claim 1, nor can they be combined to adequately render claim 1 obvious.
Additional searches of prior art were conducted, but there is no art that can sufficiently anticipate or render obvious claim 1. The inclusion of iron oxide and sulfur in artificial soils is known, but sourcing these components from industrial by-products in the recited amounts is a novel advancement over the current state of the art. Accordingly claim 1 is determined to be allowable over the prior art of record.
Claims 2–7, being dependent on claim 1, are similarly allowable. Claim 8 is currently rejected under 35 U.S.C. 112(d), but would be allowable if amended to overcome the rejection. Claim 9 recites a method of growing plants in an artificial soil composition, the method comprising planting a plant or seed in the artificial soil of claim 1. Claim 9 is therefore similarly allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Examiner’s Suggestions
Claims 10–20 stand withdrawn as reciting a method of making an artificial soil composition. Claim 10 does not require each and every limitation of amended claim 1, and is therefore ineligible for rejoinder at this time. However, if claim 10 were to be amended to require all limitations of claim 1, claims 10–20 would be eligible for rejoinder. The Examiner notes, however, that under MPEP 821.04(b), if an amendment after final rejection that otherwise complies with the requirements of 37 CFR 1.116 would place all the elected product claim(s) in condition for allowance and thereby require rejoinder of process claims that raise new issues requiring further consideration (e.g., issues under 35 U.S.C. 112), the amendment could be denied entry. Applicants are encouraged to look closely over the withdrawn claims to ensure they all fully comply with 35 U.S.C. 112. If claim 10 is amended to require the limitations of claim 1, but rejoinder of claims 10–20 would introduce new issues, the amendments to claim 10 will not be entered.
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 Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, T, Th, F 6:30-4:30.
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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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/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731