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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07 November 2025 has been entered.
Disposition of Claims
Claims 1–20 and 23–25 remain pending in this application. No claim amendments or cancellations have been introduced with the Request for Continued Examination.
Oath/Declaration
The second Declaration filed 07 November 2025 is acknowledged, but does not overcome the enablement rejection of claim 1 under 112(a). The data provided in the first and second Declarations attempts to overcome the enablement rejection by showing that a cooling rate of >10 °C is possible, but as the Examiner pointed out in the Advisory Action filed 24 October 2025, the data shows only one point within the claimed cooling rate range, and one point outside the range. This is not sufficient to enable the entire claimed range of 10–100 °C/second. This will be discussed in the below “Response to Arguments” section.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The factors considered to support a rejection based on a lack of enablement and undue experimentation, also known as The Wand factors, see In re Wands, 858 F. 2d 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) include, but are not limited to: the breadth of the claims; the nature of the invention; the state of the prior art; the level of one of ordinary skill in the art; the level of predictability in the art; the amount of direction provided by applicants; the existence of working examples; and the quantity of experimentation needed to make or use the invention based on the content of the disclosure. See MPEP 2164.01.
Claims 1–20 and 23–25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Specifically, claim 1 recites the limitation wherein the supplementary cementitious material is cooled “at a cooling rate with an average temperature change in the range of 10 to 100 degrees Celsius/second”. It is noted that this cooling rate is exceptionally fast, especially for the cyclone cooler that applicants claim to use with ambient air (see Specification, page 3, ll. 8–11 teaching the use of ambient air in cyclone coolers). As a comparative example, Bullard (“Effect of Cooling Rates on Mineralization in Portland Cement Clinker”, M.S. Thesis, University of Missouri-Kansas City, 2015) teaches a maximum cooling rate of 550 °C/min, or ~9.17 °C/sec using ambient air for cement clinker (see page 22, Figure 6), which has similar specific heat capacity to natural pozzolans (the material that’s being cooled in the instant application).
Furthermore, Bullard notes that such a fast cooling rate is faster than cooling rates at a plant (see page 21, final sentence). The Specification of the instant application provides no data to support the cooling rate, and thus a person of ordinary skill in the art would not be able to replicate this aspect of the claimed invention without undue experimentation, as the cooling rate far exceeds what is known in the art. However, a cooling rate of 10–100 °C per minute (not per second) is much more reasonable and aligns with typical cooling rates for cyclone coolers (see, for example, Wang et al. [previously cited] teaching clinker cooling from 1450 °C to 225 °C over 28 minutes, or a cooling rate of 43.75 °C/min; also see, for example, AGICO Cement “Grate Cooler” [previously cited] teaching clinker cooling from up to 1400 °C to 100 °C over 25–35 minutes, or a maximum cooling rate of 52 °C/min; finally, see AGICO Cement “Clinker Cooler” [previously cited] teaching clinker cooling from up to 1400 °C to as low as 60 °C in 5–10 minutes, or a maximum cooling rate of 268 °C/min, which is equivalent to 4.47 °C/second).
The Wands factors analyses are as follows:
Regarding (A), the breadth of the claims, Applicants recite a cooling rate in the range of 10–100 °C per second.
Regarding (B), the nature of the invention, Applicants recite the use of coolers, like those used in cement clinker production plants, to cool calcined clay.
Regarding (C), the state of the prior art, the fastest cooling rate that could be identified for cooling using ambient air is the Bullard reference, wherein a cooling rate of approximately 9.17 °C/second was attained. No reference could be located to support a cooling rate in the claimed range of 10–100 °C/second, which, for a temperature change of ~700 °C as claimed, would mean the cooling is complete after just 7 seconds. The references discussed above suggest that cooling typically takes place over 5–30 minutes, with average temperature changes reflecting a cooling rate of about 50–270 °C/min. These rates fall far below the claimed range, yet they represent the state of the prior art, indicating that state of the art is not yet capable of achieving the claimed cooling rate.
Regarding (D), the level of one of ordinary skill in the art, this rejection is founded moreso on the limitations of the technology used in the art, not the skill of the user. As such, skill level is not expected to influence the maximum attainable cooling rate.
Regarding (E), the level of predictability in the art, the prior art discussed above would suggest that the claimed range is not predictable using the claimed coolers and ambient air, as the present cooling technology is simply not capable of achieving this rate using ambient air as claimed.
Regarding (F), the amount of direction provided by Applicants, there is very little. The Specification recites the cooling rate, but fails to provide any data supporting this cooling rate. Applicants report the calcined material as being cooled from as high as 1000 °C to as low as 300 °C at a rate of 10–100 °C/second, which would mean the temperature drops by 700 °C in 7–70 seconds, far faster than what is supported by prior art. Furthermore, there are no examples provided in the instant specification, and no guidance given as to how one would achieve a cooling rate as claimed using a cyclone cooler. Applicants have provided two Declarations (dated 10 October 2025 and 07 November 2025), which both provide a table of operational data, wherein the cooling takes place in two stages. The first cooling rate is reported as 282 °C/second, which far exceeds the claimed cooling rate, and the second cooling rate is reported as 85 °C/second, which falls within the claimed range. Applicants state that the cooling rate is linked to the ratio of air to product, but the Examiner notes that there are several other references cited herein that have the same or similar air ratios, and which all fail to achieve the claimed cooling rate.
Regarding (G), the existence of working examples, there don’t seem to be any working examples within the claimed cooling rate range. The closest example that could be found was the Bullard reference, which notes that the maximum cooling rate of ~9.17 °C/second is faster than what could be achieved on a large scale.
Regarding (H), the quantity of experimentation needed to make or use the invention based on the content of the disclosure, the Examiner believes it would take considerable effort and experimentation to achieve the claimed cooling rate, if it’s even possible to do so.
Claims 2–20 and 23–25 are dependent on claim 1, and fail to overcome its deficiencies, and are thus rejected on the same grounds as claim 1.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Since Applicants did not amend or put forth any new substantive arguments, the following rejections are identical to those originally put forth in the Final Rejection dated 27 August 2025.
Claims 1–6, 11, 13, 15–20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable in view of Honma et al. (JP-2009114011-A, hereinafter “Honma”). Evidentiary support of the compositional overlap of shales and clays is provided by the Australasian Pozzolan Association (“Clay and Shale”, 2025, hereinafter “APozA”), and is applied to claims 15–19.
Regarding claim 1, Honma teaches a method for producing a supplementary cementitious material for use in a cement product or concrete (see paragraph 0001), the method comprising:
activating clay to the supplementary cementitious material at between 600 to 1000 degrees Celsius (see paragraph 0012, l. 189 teaching clay; also see paragraph 0015 teaching the firing temperature as being 1000 to 1400 °C; also see MPEP 2144.05(I) regarding the obviousness of ranges with overlapping endpoints);
treating the activated supplementary cementitious material, after the activation of clay at a temperature of between 600 to 1000 degrees Celsius, under reducing conditions to form a reduced product (see paragraph 0015 teaching the firing process as taking place in a reducing atmosphere to prevent oxidation, i.e., to form a reduced product); and
cooling the reduced product to a temperature in a range of 300 to 500 degrees Celsius, at a cooling rate with an average temperature change in the range of 10 to 100 degrees Celsius/second (see paragraph 0018 teaching the product as being cooled to 400 °C or less at a cooling rate of 100 °C/min or more; also see the above 112(a) rejection regarding the enablement of the claimed cooling rate), by a quenching process under oxidizing conditions to rapidly slow and stop reaction kinetics of iron compounds that can re-oxidize to Iron (III) species (see paragraph 0019 teaching the use of an air quenching cooler; ambient air contains oxygen, meaning the air quenching cooler constitutes oxidizing conditions; also see paragraph 0018 teaching the cooling process as limiting the oxidation of chromium; presumably, by controlling the oxidizing conditions to limit the oxidation of chromium, the conditions will further limit the oxidation of iron species).
It is noted that Honma fails to explicitly teach the limitation wherein the reduced product is cooled at a cooling rate of 10 to 100 degrees Celsius/second (see paragraph 0018 teaching a cooling rate of 100 °C per minute, not per second). However, as discussed in the above enablement rejection, there is insufficient support for such a cooling rate, either in the disclosure or in prior art. That being said, if the cooling rate is attainable, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the cooling rate to fall within the claimed range, as this ensures the product is quenched to more rapidly slow and stop reaction kinetics of iron compounds that can re-oxidize to Iron (III) species.
Regarding claims 2 and 3, Honma teaches the method for producing a supplementary cementitious material according to claim 1, and further teaches the limitation wherein the reduced product is cooled to 300–400 °C by the quenching process under oxidizing conditions (see paragraph 0018 teaching the cooling of the reduced product to 400 °C or less; also see paragraph 0018 teaching oxygen as being present in the air, meaning the cooling takes place under oxidizing conditions). Regarding claim 3, Honma is silent as to whether the cooling is performed with a single- or multi-step quench cooling (see paragraph 0019 teaching the use of a quench cooler), however the claim specifically says “single step quench cooling or multi step quench cooling,” meaning that either embodiment meets the claim limitations. Therefore, although Honma is silent as to this limitation, it is inherently met by the fact that Honma teaches a quench cooler, which could be single-step or multi-step.
Regarding claims 4–6, Honma teaches the limitations wherein the quenching process is performed in the oxidizing conditions using an oxygen source, using ambient atmospheric air, and using an oxygen source having a concentration of more than 10 vol.% oxygen (see paragraph 0019 teaching the use of an air quenching cooler; ambient atmospheric air, like what is used in air coolers, inherently contains about 21 vol.% oxygen, meaning it meets the limitations of all three claims).
Regarding claims 11, 13, 20 and 23, Honma teaches the limitation wherein the supplementary cementitious material is blended with a cement or concrete product to form a blended cement composition (see paragraph 0023). Honma fails to explicitly teach the perception of color for these blended cement compositions (see the above 112(b) rejection of these claims regarding the subjectivity of color perception), however because the composition disclosed by Honma is substantially similar to what is claimed, it is reasonable to presume that the color of the blended composition would inherently match what is claimed as well. Honma teaches the limitations wherein the blended cement product comprises 5% to 90% by weight of the reduced product (as recited in claims 11 and 23), or 0.5% to 30% by weight of the reduced product (as recited in claim 13; see paragraph 0023 teaching 5–30 wt.% as being the most preferred amount).
Regarding claims 15–19, Honma teaches the limitation wherein the supplementary cementitious material is activated clay (see paragraph 0012, l. 189 teaching the use of clay as the raw material to be activated). While Honma fails to explicitly teach the use of multiple types of clays, or the use of shales or mixtures thereof, such substitutions would have been obvious, as APozA teaches shales to be sedimentary rocks composed of clay minerals. They undergo the same processes in order to be activated to be used as supplementary cementitious materials, and are comprised of the same minerals. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the composition of Honma to use clays, shales, or a mixture thereof, because they are functionally equivalent, and it is prima facie obvious to substitute equivalents known for the same purpose (see MPEP 2144.06(II)).
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Honma as applied to claim 6 above, and further in view of Ballan et al. (US-20120160135-A1, hereinafter “Ballan”).
Regarding claim 7, Honma teaches the method for producing a supplementary cementitious material according to claim 6, but fails to explicitly teach the limitation wherein the oxygen becomes pre-heated within a single- or multi-stage cyclone cooler, fluid bed cooler, or a combination thereof, for performance of the quenching process. Ballan teaches the manufacture of clay-based pozzolan materials as a substitute for cement clinker (see paragraph 0002), and further teaches the cooling of the pozzolanic material in a cyclone cooling system wherein the preheated gases [including oxygen] may optionally be directed to the calciner as hot tertiary air (see paragraph 0010). Furthermore, because Honma and Ballan both teach methods of producing pozzolanic material using similar apparatuses, it is prima facie obvious to combine the teachings of Honma and Ballan by introducing a step of reclaiming and redirecting pre-heated air from the cooler to the calciner (see MPEP 2144.06(I)).
Regarding claim 10, Honma fails to explicitly teach the limitation wherein the recuperated heated quenching air has an oxygen concentration of more than 10 vol.% oxygen as combustion air in a pyroprocess and/or as drying air for raw material drying. Ballan teaches the manufacture of clay-based pozzolan materials as a substitute for cement clinker (see paragraph 0002), and further teaches the cooling of the pozzolanic material in a cyclone cooling system wherein the preheated gases [including oxygen] may optionally be directed to the calciner as hot tertiary air (see paragraph 0010). Ballan is also silent as to the concentration of this recuperated air, however both Honma and Ballan teach the importance of cooling under controlled conditions to limit re-oxidation of species (see Honma at paragraph 0018 teaching the importance of not letting chromium oxidize with oxygen in the air during cooling; see Ballan at paragraph 0010 teaching the maintenance of a low-oxygen environment). Given these controlled conditions, the amount of oxygen in the air is not expected to decrease by a significant amount due to the maintenance of non-oxidizing conditions. If the initial concentration of oxygen in ambient air is about 21 vol.% (see the above 103 rejections of claims 4–6), then the final concentration is expected to still be close to 21 vol.%. Furthermore, because Honma and Ballan both teach methods of producing pozzolanic material using similar apparatuses, it is prima facie obvious to combine the teachings of Honma and Ballan by introducing a step of reclaiming and redirecting pre-heated air from the cooler to the calciner (see MPEP 2144.06(I)).
Claims 8, 9 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Honma as applied to claim 1 above, and further in view of Rohloff et al. (US-20160304395-A1, hereinafter “Rohloff”). Evidentiary support of the grate cooler process is provided by Steuch (“Everything you need to know about Clinker Coolers”, 2022, hereinafter “Steuch”), and is applied to claims 8, 9 and 24.
Regarding claims 8, 9 and 24, Honma teaches the method for producing a supplementary cementitious material according to claim 1, but fails to explicitly teach limitations regarding the air ratio. Rohloff teaches a method of producing pozzolanic material as a cement substitute (see generally abstract), and further teaches the use of a grate cooler (see paragraph 0026). Rohloff does not explicitly teach the air ratios used, but by knowing the type of cooler, industry-standard operating procedures for grate coolers can be referenced. Steuch discloses a typical air ratio as being 2.8 kg air per kg supplementary cementitious material for grate coolers (see page 11, Table 3.8.1, column “Grate”). Although Rohloff does not teach any cooling parameters and absent any evidence to the contrary, presumably Rohloff followed industry-standard practices like those outlined in Steuch. Thus, by using a grate cooler, Rohloff inherently teaches the limitations wherein the air ratio is 0.01 to 20 (as recited in claims 8 and 9) or 0.25 to 4 (as recited in claim 24) kg air per kg material. Further regarding claims 8 and 9, Honma teaches the cooling process as continuing until the material is 400 °C or less (see paragraph 0018). Furthermore, there is motivation to modify Honma by replacing the generic “air quenching cooler” (as recited in paragraph 0019) with a grate cooler as taught by Rohloff. Both Honma and Rohloff teach methods of producing pozzolanic supplementary cementitious materials using similar apparatuses, and it is prima facie obvious to combine two equivalents known for the same purpose (see MPEP 2144.06(I)).
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Honma as applied to claim 1 above, and further in view of Friedrich et al. (US-20070266899-A1, hereinafter “Friedrich”).
Regarding claims 12 and 14, Honma teaches the method for producing a supplementary cementitious material according to claim 1, wherein the supplementary cementitious material is blended with concrete (see paragraph 0023). Honma fails to explicitly teach the perception of color for these blended cement compositions (see the above 112(b) rejection of these claims regarding the subjectivity of color perception), however because the composition disclosed by Honma is substantially similar to what is claimed, it is reasonable to presume that the color of the blended composition would inherently match what is claimed as well. Honma teaches the limitations wherein the blended cement product comprises 5% to 90% by weight of the reduced product (as recited in claim 12), or 0.5% to 30% by weight of the reduced product (as recited in claim 14; see paragraph 0023 teaching 5–30 wt.% as being the most preferred amount). Honma fails to explicitly teach the limitation wherein the blended cement compositions further comprise the addition of dark color giving material or magnetite. Friedrich teaches iron oxide pigments for coloring cements and concretes (see paragraphs 0057 and 0058), wherein magnetite is noted to be used as an iron oxide pigment (paragraph 0046). Magnetite is a well-known mineral, and has a dark gray or black color. Because Friedrich teaches iron oxide pigments to adjust the color of cement products, there is sufficient motivation to combine the teachings of Honma and Friedrich. It would have been obvious to one of ordinary skill in the art before the effective filing date to adjust the color of the composition taught by Honma by adding magnetite as a dark-color-giving material as taught by Friedrich, thus arriving at the claimed invention.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Honma and Ballan as applied to claim 7 above, and further in view of Rohloff. Evidentiary support of the grate cooler process is provided by Steuch.
Regarding claim 25, Honma and Ballan together teach the method for producing a supplementary cementitious material according to claim 7, but fails to explicitly teach limitations regarding the air ratio. Rohloff teaches a method of producing pozzolanic material as a cement substitute (see generally abstract), and further teaches the use of a grate cooler (see paragraph 0026). Rohloff does not explicitly teach the air ratios used, but by knowing the type of cooler, industry-standard operating procedures for grate coolers can be referenced. Steuch discloses a typical air ratio as being 2.8 kg air per kg supplementary cementitious material for grate coolers (see page 11, Table 3.8.1, column “Grate”). Although Rohloff does not teach any cooling parameters and absent any evidence to the contrary, presumably Rohloff followed industry-standard practices like those outlined in Steuch. Furthermore, there is motivation to modify Honma by replacing the generic “air quenching cooler” (as recited in paragraph 0019) with a grate cooler as taught by Rohloff. Both Honma and Rohloff teach methods of producing pozzolanic supplementary cementitious materials using similar apparatuses, and it is prima facie obvious to combine two equivalents known for the same purpose (see MPEP 2144.06(I)).
Response to Arguments
In the Request for Continued Examination filed 07 November 2025, Applicants provide a second Declaration to challenge the 112(a)-enablement rejection of claim 1. This Declaration does not overcome the enablement rejection as it provides the same data as the Declaration filed 10 October 2025 (compare page 5 of the first Declaration to page 7 of the second Declaration; the data tables are the same). Applicants have included more information about the operating conditions of the apparatus used to achieve the claimed method, but the added information fails to provide support for the claimed cooling rate.
Applicants claim a cooling rate of 10–100 °C/second. The Examiner has rejected this under 35 U.S.C. 112(a) as lacking enablement, because Applicants’ disclosure fails to provide any data supporting this range, and the state of the prior art suggests that such a fast cooling rate (e.g., a 700-degree drop in temperature over only 7 seconds) is not possible. Applicants have now twice submitted a Declaration showing a single data point within the claimed range (85 °C/second), which does indicate that the cooling rate is possible, but does not enable one of ordinary skill in the art to achieve such a cooling rate. The Examiner maintains that a single data point does not enable the entire claimed range. Applicants have shown that a cooling rate of 85 °C/second is possible, but this does not enable the entire claimed range of 10–100 °C/second. MPEP 2164.08 states, “When a range is claimed, there must be reasonable enablement of the scope of the range”. A single data point within the claimed range, plus another data point outside the range, is not sufficient to support a showing of enablement.
Furthermore, Applicants argue that the cooling rate is a result of the air ratio used in the cooling process (see paragraph 0010 of the Declaration filed 10 Oct, and paragraph 0010 of the Declaration filed 07 Nov). However, the Examiner has cited to several references that utilize the same air ratios as claimed, which all have cooling rates far below what is claimed (see Final Rejection filed 27 August 2025 and Advisory Action filed 24 October 2025, wherein evidentiary references are cited to rebut this argument). Therefore, arguments that the cooling rate is achieved due to the air ratio are not compelling.
Applicants have presented several arguments in their Request for Continued Examination. These arguments have already been addressed in the Final Rejection dated 27 August 2025, and again in the Advisory Action dated 24 October 2025, and in both cases were determined to be unpersuasive. The Examiner will summarize the arguments and their previous responses below:
Response to Enablement Rejection. Applicants argue that Bullard, which was cited to show the fastest cooling rate taught in the prior art, fails to teach or suggest the claimed cooling rate, noting that Bullard cools using ambient air, and not a cyclone cooler. The Examiner reiterates that Bullard is merely cited to show what is known in the art, and that Bullard explicitly states the achieved cooling rate to be faster than cooling rates at a plant. The USPTO lacks the resources to collect experimental data, and so the Examiner must rely on public disclosures to support factual arguments; Applicants may disagree with Bullard’s assertions, but disagreement and a single data point are not sufficient to overcome the Examiner’s reliance on publicly disclosed data.
The Office Action Fails to Meet Its Burden of Proof. Applicants argue that the Examiner’s position is “clearly wrong and there is no support for such a position”. Applicants further argue that the Examiner has inaccurately characterized Bullard as showing cooling via cyclone or fluidized bed. This is incorrect. The Examiner’s position has been made clear in both the Final Rejection and the Advisory Action: Wang and the two AGICO references were cited as evidence of cooling rates in industrial settings; Bullard was cited to exemplify the fastest achievable cooling rate. The Examiner has twice provided the same four references to support the enablement rejection, but Applicants have only argued against the applicability of the Bullard reference. The Office Actions have each met their burden of proof in supporting the enablement rejection of claim 1, and Applicants have failed to provide any arguments to overcome this rejection. The Examiner acknowledges that Bullard is not a perfect parallel to the claimed invention; the specific heat capacity of Bullard’s clinker ball and the claimed activated clay is expected to be similar, but the cooling conditions are different. However, the Examiner has made it clear that Bullard is cited to show the highest cooling rate reported in prior art. Bullard is a comparative example, cited to show that a person of ordinary skill in the art would not reasonably be expected to achieve the claimed cooling rate without undue experimentation, thus supporting an enablement rejection of the claimed cooling rate.
The Wands Factors Show The Claims Are Enabled. Applicants argue that the Wands Factors support a showing of enablement. The Examiner disagrees, as Applicants have yet to provide any data to support the claimed cooling rate range. They have offered one single data point that falls within the claimed range, as well as one point that falls outside the claimed range, and have argued that the cooling rate is achievable due to the air ratio. Applicants have ignored the Examiner’s arguments regarding Steuch, Wang, and the two AGICO references, which show the same or similar air ratios, and which all fail to reach the claimed cooling rate. The Wands Factors do not support a showing of enablement as claimed. Applicants further argue that the Specification supports their claimed cooling rate, specifically citing to Figures 1 and 2. Figure 1 is a schematic of the apparatus used to carry out the claimed method, and offers no information about the claimed cooling rate. Figure 2 is a step-by-step flowchart of the claimed method, but also does not offer any information about the claimed cooling rate, with only one step reciting “Quenching in oxidizing atmosphere”, which does not support the claimed cooling rate in any way.
The First And Second Declarations of Rasmus Franklin Momme Support Allowance. Applicants argue that the two Declarations support allowance of the application. This is not found to be compelling. In addition to the enablement rejection of claim 1, the pending claims are also rejected under 35 U.S.C. 103 over Honma, Ballan, Rohloff, and Friedrich which have not been addressed. While the Declarations fail to overcome the enablement rejection of claim 1, even if claim 1 were enabled, the claimed invention is not currently allowable over the applied prior art. The first and second Declarations of Mr. Momme do not place the application in condition for allowance.
Dependent Claims 8, 9 and 24–25 Are Independently Allowable. Applicants argue that Claims 8, 9 and 24–25 are allowable because they each recite an air ratio of mass air to mass supplementary cementitious material (SCM). They argue that “This further criteria for cooling via the quenching process shows these claims are enabled by providing a ratio of air/SCM that facilitates the enhanced quick quenching, consistent with the disclosure of the exemplary embodiments discussed in the Specification”. The Examiner does not find this argument compelling. As an initial argument, the Examiner clarifies that the above-named claims are rejected under 112(a) solely due to their dependence on rejected claim 1. The enablement of these claims is contingent on the enablement of the parent claim, which is incorporated into these claims by dependency. The subject matter of claims 8, 9, 24 and 25 is independently enabled, but the claims stand rejected under 35 U.S.C. 103 as obvious over Honma, Rohloff, and Ballan, with evidentiary support from Steuch.
Dependent Claim 7 Is Independently Allowable. Applicants argue that Claim 7 is independently allowable because it recites that quenching can be performed via a cyclone or fluid bed cooler or a combination thereof, and go on to argue that the Specification supports enablement of this claim. The Examiner reiterates that claim 7 lacks enablement solely due to its dependence on claim 1; the subject matter of claim 7 is independently enabled, but is not independently allowable as claimed, because claim 7 is further rejected as obvious over Honma and Ballan, as initially stated in the Final Rejection dated 27 August 2025.
Response to Obviousness Rejection.
The Office Action Improperly Relied Upon Documents That Are Not Prior Art. All The Pending Claims Are Therefore Allowable. Applicants argue that Steuch and APozA are not prior art. The present application has a priority filing date of 27 April 2021, while Steuch was published in 2022 and APozA was published in 2025. Applicants specifically cite MPEP 2144, which states “Each reference to be applied as a basis for an obviousness rejection must qualify as prior art.” This argument is not found to be compelling. MPEP 2144 clearly refers only to references applied as a basis for an obviousness rejection. The at-issue references are explicitly cited as evidentiary support, not as a basis for the rejection (see Non-Final Rejection dated 09 July 2025, paragraph 18: “Evidentiary support of the compositional overlap of shales and clays is provided by the Australasian Pozzolan Association [APozA]”; also see paragraph 27: “Evidentiary support of the grate cooler process is provided by Steuch”). Applicants have presented this argument in their response to the Non-Final rejection, the Final Rejection, and now again in their Request for Continued Examination. The Examiner maintains that these references are proper, as they are being cited as evidentiary factual references, not as the basis for an obviousness rejection. The Examiner again cites MPEP 2124, which states, “In certain circumstances, references cited to show a universal fact need not be available as prior art before the effective filing date of applicant’s claimed invention. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism,” and “References which do not qualify as prior art because they post date the claimed invention may be relied upon to show the level of ordinary skill in the art at or around the relevant time.” The APozA and Steuch references were explicitly labeled as evidentiary support, and were relied upon to demonstrate a scientific truism (in the case of APozA), and the level of ordinary skill in the art around the relevant time (in the case of Steuch). Neither reference was cited to render obvious the claims; they were cited to support the rejection which was made using prior art that properly antedates the filing date. The rejections are proper in view of MPEP 2124, and arguments that they are improper based on the publication dates of APozA and Steuch are not found to be persuasive.
3. All The Claims Are Allowable. Applicants further argue that “The Office Action contended that a person of skill in the art would not know how to obtain a quenching process that provides a cooling rate of 10°C–100°C/second, but also contended that Honma suggests such a cooling rate at paragraph 18”. The Examiner disagrees with this assessment. The Non-Final Rejection states that Honma teaches 100 °C per minute, not per second. In the Final Rejection dated 27 August 2025, the Examiner clarified this rejection in view of Applicants’ arguments, stating that Honma fails to explicitly teach the claimed cooling rate; the claimed cooling rate lacks enablement, and there is no support in the disclosure or prior art to suggest that such a cooling rate is possible. However, the Examiner also noted that “if the cooling rate is attainable, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to adjust the cooling rate to fall within the claimed range, as this ensures the product is quenched to more rapidly slow and stop reaction kinetics of iron compounds that can re-oxidize to Iron (III) species.” The maximum cooling rate of a cyclone cooler or grate cooler is a limitation of the cooling apparatus, a parameter determined by the instrumentation, not by the person using the instrumentation. Although Honma does not explicitly teach the claimed cooling rate, if the instrumentation allows for such a fast cooling rate, a person of ordinary skill in the art would be sufficiently motivated to cool at the maximum attainable rate, for the reasons discussed above.
a. The Office Action’s Rejection Fails to Provide a Rational Underpinning. Applicants argue that there is no rational underpinning for the modification of Honma to provide a quenching process that has a cooling rate of 10–100 °C/second. The Examiner responded to this argument previously (see Final Rejection dated 27 August 2025) by pointing out that the Office Action is not proposing a modification to Honma to meet this limitation, and so a rational underpinning is not required. Applicants argue that “A conclusory rationale is utilized that is not supported by paragraph 18 of Honma”, but no conclusory rationale was used because there is no suggestion to explicitly modify Honma. The Examiner has consistently taken the position that the claimed cooling rate is not supported by prior art, and is not enabled by Applicant’s disclosure. Accordingly, that specific limitation of claim 1 cannot be met by prior art. However, as the Examiner explained in the Final Rejection, a person of ordinary skill in the art would know to use the fastest possible cooling rate, because it minimizes re-oxidation of iron species. If the claimed cooling rate is attainable, then a person of ordinary skill in the art would find it obvious to use such a cooling rate.
An Interview Is Requested. Applicants have requested an interview “in the event that the Examiner believes that the evidence provided herein is not found to sufficiently address the request for testing data included in the Office Action”. The Examiner is amenable to conducting an interview with Applicants, however Applicants have now presented the same arguments three times (response to non-final rejection, 06 August 2025; response to final rejection, 10 October 2025; request for continued examination, 07 November 2025) without making any substantive amendments or properly responding to the Examiner’s counter arguments. As interviews are intended to be substantive and advance the application towards allowance, the Examiner first requests that Applicants review the responses in this Office Action in their entirety, to avoid an interview in which the Examiner is merely verbally restating the same arguments that have already been made. Applicants can then request an interview using the Automated Interview Request tool (link in the below Conclusion section).
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.P.L./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731