DETAILED ACTION
Claims 1-15 and 20-21 were rejected in Office Action mailed on 10/17/2025.
Applicant filed a response, amended claims 1, 3-15 and 20-22, canceled claim 2 and added claim 22 on 01/20/2026.
Claims 1 and 3-22 are pending, and claims 16-19 are withdrawn.
Claims 1, 3-15 and 20-22 are rejected.
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 § 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.
Claims 13-14 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 13, is amended to recite “the catalyst is selected based on operation at a pH of 6.5 to 8.5”. However, the specification (page 3, 3rd paragraph) does not provide support for how the catalyst is selected.
Claim 14, is amended to recite “the catalyst is selected based on operation at a temperature up to 50 ˚C”. However, the specification (page 3, 3rd paragraph) does not provide support for how the catalyst is selected.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13, is amended to recite a phrase “the catalyst is selected based on operation at a pH of 6.5 to 8.5”. However, it is unclear what the phrase refers to, as it is unclear based on what criteria from operation at a pH of 6.5 to 8.5 that the catalyst is selected.
The examiner interprets that claim 13 is drawn to an intended use of the self-healing construction material compound of claim 1 and does not require modification of the self-healing construction material compound of claim 1. Interpretation is speculative. Clarification is requested.
Claim 14, is amended to recite a phrase “the catalyst is selected based on operation at a temperature up to 50 ˚C”. However, it is unclear what the phrase refers to, as it is unclear based on what criteria from operation at a temperature up to 50 ˚C that the catalyst is selected.
The examiner interprets that claim 14 is drawn to an intended use of the self-healing construction material compound of claim 1 and does not require modification of the self-healing construction material compound of claim 1. Interpretation is speculative. Clarification is requested.
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.
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.
Claim(s) 1, 3, 7-14 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Vorderbruggen et al., US 2019/0264091 A1 (Vorderbruggen) in view of Licht, Co-production of cement and carbon nanotubes with a carbon negative footprint, Journal of CO2 Utilization, 2017 (Licht).
Regarding claim 1, Vorderbruggen teaches self-healing cemented structure (Vorderbruggen, Abstract); the method of forming comprising injecting a treatment composition comprising an aggregate, a cementitious material (reading upon a scaffolding material), and a self-healing composition comprising an enzyme (reading upon a catalyst) (Vorderbruggen, [0006]).
The carbonate precipitate is formed in the presence of a cation source, and a calcium ion source is septically mentioned (Vorderbruggen, [0022]).
Further regarding claim 1, Vorderbruggen does not explicitly disclose wherein the compound is a carbon negative compound.
With respect to the difference, Licht teaches cement plants (Licht, Abstract). Licht specifically teaches production of cement with a carbon negative footprint (Licht, Abstract).
As Licht expressly teaches, climate change is causing species extinction, harming the planet and humanity (Licht, Abstract); carbon dioxide to carbon nanotube cement plant provides a significant economic incentive to eliminate the massive CO2 greenhouse gas emissions of current plants and serves as a template for carbon mitigation in other industrial manufacturing process (Licht, page 388, Abstract).
Licht is analogous art as Licht is drawn to cement plants.
In light of the motivation of carbon dioxide to carbon nanotube cement plant with negative carbon footprint, as taught by Licht, it therefore would have been obvious to a person of ordinary skill in the art to produce with the cementious material of Vorderbruggen in a carbon dioxide to carbon nanotube cement plant with a negative carbon negative footprint (therefore the produced self-healing cemented structure would be carbon negative), in order to mitigate climate change with significant economic incentive, and thereby arrive at the claimed invention.
Regarding claim 7, as applied to claim 1, Vorderbruggen in view of Licht further discloses in an embodiment, the treatment compositions further comprise carbonic anhydrase (Vorderbruggen, [0029]).
Regarding claim 8, as applied to claim 1, Vorderbruggen in view of Licht further discloses it is believed that the precipitation of carbonates by microbes or enzymes is a multistep process where the first step is the breakdown of urea into carbon dioxide by microbes or enzymes (reading upon a source of carbon dioxide) (Vorderbruggen, [0008]).
Regarding claim 9, as applied to claim 1, however, the recitation in the claims that “the compound sequesters atmospheric carbon dioxide” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Vorderbruggen discloses the self-healing cemented structure as presently claimed, it is clear that the self-healing cemented structure of Vorderbruggen would be capable of performing the intended use, i.e. sequester atmospheric carbon dioxide, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 11, as applied to claim 1, although Vorderbruggen in view of Licht does not explicitly teach that the compound is prepared by at least one of: a light source, a heat source, a laser source and a magnetic field application source as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Vorderbruggen meets the requirements of the claimed product, Vorderbruggen clearly meets the requirements of the present claim.
Regarding claim 12, as applied to claim 1, Vorderbruggen in view of Licht teaches downhole operations involve the consolidation of particles, wherein sand grains are cemented or bonded together using a cementitious material (reading upon the compound is configured to form mineral bridges between the aggregate matter to obtain a dense mass) (Vorderbruggen, [0003]).
Regarding claims 13-14, as applied to claim 1, the recitation in the claims that the wherein the catalyst is selected based on operation at a pH of 6.5 to 8.5 and wherein the catalyst is selected based on operation at a temperature up to 50 °C are merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Vorderbruggen in view of Licht teaches the self-healing cemented structure as presently claimed, it is clear that the self-healing cemented structure of Vorderbruggen in view of Licht would be capable of performing the intended use, i.e. the wherein the catalyst is selected based on operation at a pH of 6.5 to 8.5 and wherein the catalyst is selected based on operation at a temperature up to 50 °C, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Vorderbruggen in view of Licht as applied to claim 1 above, and further in view of Shinji et al., JP H0859322A (Shinji).
Regarding claim 4, as applied to claim 1, Vorderbruggen in view of Licht does not explicitly disclose wherein the scaffolding material further comprises a crossinglinking agent including glutaraldehyde.
With respect to the difference, Shinji teaches a cement additive (Shinji, Abstract). Shinji specifically teaches the cement additive is obtained by adding dialdehydes to polycarboxylate, and the dialdehyde is for example preferably to be glutaraldehyde (Shinji, Abstract).
As Shinji expressly teaches, the cement additive improves the compressive strength of concrete (Shinji, page 2, [0002]); the additive obtained by adding a dialdehyde to a water-reducing agent has an effect of remarkably improving the strength of concrete without lowering the workability (Shinji, page 2, [0005]).
Shinji is analogous art as Shinji is drawn to a cement additive.
In light of the motivation of using the cement additive obtained by adding glutaraldehyde to polycarboxylate, it therefore would have been obvious to a person of ordinary skill in the art, to use the cement additive, obtained by glutaraldehyde to polycarboxylate, as taught by Shinji, in the cementitious material of Vorderbruggen in view of Licht, in order to improve the strength without lowering the workability, and thereby arrive at the claimed invention.
Claims 5-6, 15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Vorderbruggen in view of Licht as applied to claim 1 above, and further in view of Michel, EP 0542888B1 (Michel).
The examiner has provided a machine translation of Michel, EP 0542888B1. The citation of the prior art set forth below refers to the machine translation.
Regarding claims 5-6 and 22, as applied to claim 1, Vorderbruggen in view of Licht does not explicitly disclose wherein the scaffolding material comprises a polymer or wherein the scaffolding material is gelatin, or wherein the scaffolding defines bridges responsive to ambient carbon dioxide and calcium sources for recombining in a self-healing manner for rebonding fractures.
With respect to the difference, Michel specifically teaches an adhesion agent such as gelatin (Michel, page 5, 4th paragraph).
As Michel expressly teaches, such an agent increases the adhesion to the support the cement is applied on (Michel, page 5, 5th paragraph).
In light of the motivation of including an adhesion agent when producing a cement, as taught by Michel, it therefore would have been obvious to a person of ordinary skill in the art to include an adhesion agent, such as gelatine, when producing the self-healing cemented structure of Vorderbruggen, in order to increase the adhesion to the support, and thereby arrive at the claimed invention.
Further regarding claim 22, given that Vorderbruggen in view of Licht and Michel teaches an identical or substantially identical composition, i.e., gelatin (reading upon scaffolding material) in a cementitious material for a self-healing cemented structure, further comprising calcium ion source, with that of the presently claimed (claim 1, claim 6; specification, page 3, bottom paragraph), therefore, it is clear that the gelatin would necessarily and inherently defines bridges responsive to ambient carbon dioxide and calcium sources for recombining in a self-healing manner for rebonding fractures.
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). See MPEP 2112.01 (I).
Regarding claim 15, as applied to claim 1, Vorderbruggen in view of Licht does not explicitly disclose further comprising a quantity of nanoparticles.
With respect to the difference, Michel specifically teaches an adjuvant such as colloid alumina (reading upon a quantity of nanoparticles) (Michel, page 4, 8th paragraph).
As Michel expressly teaches, such an adjuvant contributes to stabilizing the fluidizing agent / swelling agent combination, and therefore to preserving and prolonging its activity; this increases the working time of the fresh mortar, during which the characteristics aforementioned self-leveling and self-leveling are effective (Michel, page 5, 5th paragraph).
In light of the motivation of including an adjuvant such as colloid alumina when producing a cement, as taught by Michel, it therefore would have been obvious to a person of ordinary skill in the art to include adjuvant such as colloid alumina, when producing the self-healing cemented structure of Vorderbruggen in view of Licht, in order to stabilize the fluidizing agent / swelling agent combination, and therefore to preserving and prolonging its activity and increasing the working time of the fresh mortar, and thereby arrive at the claimed invention.
Claims 5-6, 10 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Vorderbruggen in view of Licht as applied to claim 1 above, and further in view of Biji et al., Effect of added gelatin on the properties of calcium phosphate cement, Biomaterials, 2004 (Biji).
Regarding claims 5-6, 10 and 22, Vorderbruggen in view of Licht does not explicitly disclose wherein the scaffolding material comprises a polymer, wherein the scaffolding material is gelatin, or wherein the compound has a mechanical strength from at least l0MPa to at least 16 MPa.
With respect to the difference, Biji teaches effect of gelatin on a cement (Biji, Abstract). Biji specifically teaches cement prepared with gelatine, and the compressive strength increases with the setting reaction up to 10.7-14.0 MPa for the gelatin cements (Biji, Abstract).
As Biji expressly teaches, the incorporation of gelatin in the cement improves its setting properties, including a more compact microstructure, reduced porosity and significantly improved mechanical properties (Biji, page 6, Conclusions).
Biji is analogous art as Biji is drawn to effect of gelatin on a cement.
In light of the motivation of incorporating gelatin when producing a cement, as taught by Biji, it therefore would have been obvious to a person of ordinary skill in the art to incorporate gelatin when preparing the self-healing cemented structure of Vorderbruggen in view of Licht, in order to improves its setting properties, including a more compact microstructure, reduced porosity and significantly improved mechanical properties, such as with a compressive strength up to 10.7-14.0 MPa, which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Further regarding claim 22, given that Vorderbruggen in view of Licht and Biji teaches an identical or substantially identical composition, i.e., gelatin (reading upon scaffolding material) in a cementitious material for a self-healing cemented structure, further comprising calcium ion source, with that of the presently claimed (claim 1, claim 6; specification, page 3, bottom paragraph), therefore, it is clear that the gelatin would necessarily and inherently defines bridges responsive to ambient carbon dioxide and calcium sources for recombining in a self-healing manner for rebonding fractures.
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). See MPEP 2112.01 (I).
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Vorderbruggen and further in view of Licht, Biji and Kiamahalleh et al., Iron oxide nanoparticle incorporated cement mortar composite: correlation between physicochemical and physico-mechanical properties, Mater. Adv., 2020 (Kiamahalleh).
Regarding claim 20, Vorderbruggen teaches self-healing cemented structure (Vorderbruggen, Abstract); the method of forming comprising injecting a treatment composition comprising an aggregate, a cementitious material (reading upon a scaffolding material), and a self-healing composition comprising an enzyme (reading upon a catalyst) (Vorderbruggen, [0006]).
The carbonate precipitate is formed in the presence of a cation source, and a calcium ion source is septically mentioned (Vorderbruggen, [0022]);
the treatment composition can further comprise an aqueous carrier fluid (Vorderbruggen, [0025]); in the event that a liquid carrier contains sufficient amount of the cation source (e.g., the calcium ion), no additional cation source needs to be separately added (i.e., the calcium ion is in a form of a calcium solution) (Vorderbruggen, [0024]).
Vorderbruggen further discloses in an embodiment, the treatment compositions further comprise carbonic anhydrase (Vorderbruggen, [0029]).
Vorderbruggen further teaches the aggregate is, e.g., sand (Vorderbruggen, [0030]).
Given that Vorderbruggen discloses the self-healing cemented structure that overlaps the presently claimed self-healing construction material compound, including sand, it therefore would be obvious to one of ordinary skill in the art, to use the self-healing cemented structure, which is both disclosed by Vorderbruggen and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Vorderbruggen does not explicitly disclose (a) the self-healing cemented structure is carbon negative; (b) comprising a gelatin scaffolding material or (c) comprising a quantity of iron oxide nanoparticles.
With respect to the difference (a), Licht teaches cement plants (Licht, Abstract). Licht specifically teaches production of cement with a carbon negative footprint (Licht, Abstract).
As Licht expressly teaches, climate change is causing species extinction, harming the planet and humanity (Licht, Abstract); carbon dioxide to carbon nanotube cement plant provides a significant economic incentive to eliminate the massive CO2 greenhouse gas emissions of current plants and serves as a template for carbon mitigation in other industrial manufacturing process (Licht, page 388, Abstract).
Licht is analogous art as Licht is drawn to cement plants.
In light of the motivation of carbon dioxide to carbon nanotube cement plant with negative carbon footprint, as taught by Licht, it therefore would have been obvious to a person of ordinary skill in the art to produce with the cementious material of Vorderbruggen in a carbon dioxide to carbon nanotube cement plant with a negative carbon negative footprint (therefore the produced self-healing cemented structure would be carbon negative), in order to mitigate climate change with significant economic incentive, and thereby arrive at the claimed invention.
With respect to the difference (b), Biji teaches effect of gelatin on a cement (Biji, Abstract). Biji specifically teaches cement prepared with gelatine (Biji, Abstract).
As Biji expressly teaches, the incorporation of gelatin in the cement improves its setting properties, including a more compact microstructure, reduced porosity and significantly improved mechanical properties (Biji, page 6, Conclusions).
Biji is analogous art as Biji is drawn to effect of gelatin on a cement.
In light of the motivation of incorporating gelatin when producing a cement, as taught by Biji, it therefore would have been obvious to a person of ordinary skill in the art to incorporate gelatin when preparing the self-healing cemented structure of Vorderbruggen, in order to improves its setting properties, including a more compact microstructure, reduced porosity and significantly improved mechanical properties, and thereby arrive at the claimed limitation.
With respect to the difference (c), Kiamahalleh teaches incorporation of nanoparticles on properties of cement (Kiamahalleh, Abstract). Kiamahalleh specifically teaches cement mortar composite containing iron oxide nanoparticles (Kiamahalleh, Abstract).
As Kiamahalleh expressly teaches, increasing the iron oxide nanoparticles up to 2.5wt% results in an increase in the compressive and flexural strengths of the cement mortar composite (Kiamahalleh, page 8, Conclusion).
Kiamahalleh is analogous art as Kiamahalleh is drawn to incorporation of nanoparticles on properties of cement.
In light of the motivation of incorporating iron oxide nanoparticles in cement, as taught by Kiamahalleh, it therefore would have been obvious to a person of ordinary skill in the art to incorporate iron oxide nanoparticles when preparing the self-healing cemented structure of Vorderbruggen, in order to further improve the compressive and flexural strengths of the self-healing cemented structure, and thereby arrive at the claimed invention.
Regarding claim 21, as applied to claim 20, although Vorderbruggen in view of Licht, Biji and Kiamahalleh does not explicitly teach the self-healing cemented structure is cured by laser source or a light source as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Vorderbruggen in view of Licht, Biji and Kiamahalleh meets the requirements of the claimed product, Vorderbruggen in view of Licht, Biji and Kiamahalleh clearly meets the requirements of the present claim.
Response to Arguments
In response to the amended claims, the previous claim objections and 35 U.S.C. 112(b) rejections are withdrawn. However, the amended necessitates a new set of 35 U.S.C. 112(a) and 35 U.S.C. 112(b) rejection(s) as set forth above.
In response to the amended claim 4, which recites, “a crosslinking agent including glutaraldehyde”. It is noted that the referenced teaching from Vorderbruggen in view of Licht and Michel would not meet claim 4. Therefore, the previous 35 U.S.C. 103 rejections over Vorderbruggen in view of Licht and Michel are withdrawn from the record. However, the amendments necessitate a new set of rejections over Vorderbruggen in view of Licht and Shinji as set forth above.
Applicant primarily argues:
“The Office Action (OA) rejects claim 1 based on the assertion that Vorderbruggen '091 teaches the claimed Enzymatic Construction Material (ECM) as a substitute for structural concrete and related Portland cement based materials. This is not what Vorderbruggen teaches. Vorderbruggen '091 discloses a downhole treatment for particle consolidation in earthborne evacuated structures for oil and gas industries. [0003-0006]. Vorderbruggen '091 suggests a "cemented" result, but not for any structural usage or usage where lateral support is not provided from surrounding walls of the bored subterranean formation. [0041].”
Remarks, p. 7
The Examiner respectfully traverses as follows:
Firstly, the present claim does not require “Enzymatic Construction Material”. Therefore, it is not required for the present prior to meet this phrase.
Secondly, for the claimed limitation “self-healing construction material”, Vorderbruggen teaches self-healing cemented structure (Vorderbruggen, Abstract), which reads upon this limitation.
Applicant further argues:
“The Vorderbruggen '091 approach seeks enzymatic activity for production of CO2, not carbon negative activities or CO2 reduction, as disclosed in the specification (substitute) as filed at page 1, line 29-page 2 line 11. Further, Vorderbruggen '091 consumes urea [0008], and seeks cations, not necessarily calcium. [0022]. One of skill in the art would not look to Vorderbruggen '091 for achieving a calcium sourced reaction or product.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
Firstly, the present claim does not require the enzymatic activity for carbon negative activities. The preset claim only requires the self-healing construction material compound to form a carbon negative compound, which is met by Vorderbruggen in view of Licht, on pages 5-6, as set forth above.
Secondly, One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Vorderbruggen does not expressly teach the claimed forming a carbon negative compound. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103, which admits that Vorderbruggen does not disclose the entire claimed invention. Rather, Licht is relied upon to teach claimed elements missing from Vorderbruggen, with proper motivation to combine, namely, carbon dioxide to carbon nanotube cement plant provides a significant economic incentive to eliminate the massive CO2 greenhouse gas emissions of current plants and serves as a template for carbon mitigation in other industrial manufacturing process (Licht, page 388, Abstract). See pages 5-6 of the Office Action set forth above.
Thirdly, Vorderbruggen teaches the carbonate precipitate is formed in the presence of a cation source, and a calcium ion source is specifically mentioned (Vorderbruggen, [0022]), absent evidence to the contrary.
Applicant further argues:
“Licht 2017, however, does not teach a carbon negative material, but rather seeks to convert CO2 emissionsfrom existing cement processes into carbon nanotubes (CNTs) as a reuse and mitigation measure, not a prevention. Licht, Abstract, p 381, col. 2, paragraph 2. Licht 2017 merely reduces carbon dioxide that has already occurred form cement production, not as a carbon negative (consumer) in an entirely separate ECM material. By definition, since Licht starts with a volume of waste CO2, the optimal result assuming complete elimination (a tall order) could be a net zero process, but not a carbon negative (net-negative) result. Further, the associated heating and electrolysis require additional energy inputs, likely incurring additional carbon burdens either locally or remotely. P. 378, col. 2, para. 3- p. 379, col. 2, para. 1.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
Contrary to applicant’s comments above, Licht teaches the global C2CNT cement process is carbon negative as the cement produced absorbs atmospheric CO2 (i.e., CO2 surrounding the cement) over rate; over time, cement ages and absorbs CO2 as the simplified and generalized spontaneous process:
CaO+CO2[Wingdings font/0xE0]CaCO3+Qheat (Licht, page 384, right column, 2nd paragraph).
Applicant further argues:
“Still further, Since Licht 2017 generates CNTs from cement production, there is little correspondence to the downhole operations of Vorderbruggen'091, as Vorderbruggen'091 cannot benefit or use the cement of Licht 2017 and has little use for CNTs. One of skill in the art would not seek the proposed combination, nor could any outputs of Vorderbruggen'091 be channeled to a Licht 2017 recovery.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
Firstly, Vorderbruggen and Licht are related art, as Vorderbruggen is drawn to cemented structure and Licht is drawn to cement plants.
Licht provides proper motivation to combine, namely carbon dioxide to carbon nanotube cement plant provides a significant economic incentive to eliminate the massive CO2 greenhouse gas emissions of current plants and serves as a template for carbon mitigation in other industrial manufacturing process (Licht, page 388, Abstract).
Therefore, it is the examiner’s position that it would be obvious to one of ordinary skill in the art to combine Vorderbruggen and Licht, in order to mitigate climate change with significant economic incentive, absent evidence to contrary.
Secondly, the motivation does not require the direct application of carbon nanotube in the cemented structure of Vorderbruggen. Licht teaches carbon nanotubes have great potential as a material resource, with applications ranging from reinforced composites, capacitors, Li-ion batteries, nanoelectronics and catalysts (Licht, page 378, right column, 2nd paragraph).
Applicant further argues:
“Claim 22 has been added, to further emphasize that the scaffolding defines bridges responsive to ambient carbon dioxide and calcium sources for recombining in a self-healing manner for rebonding fractures, as disclosed at page 20, line 5 - page 21 line 25.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
Given that Vorderbruggen in view of Licht and Michel teaches an identical or substantially identical composition, i.e., gelatin (reading upon scaffolding material) in a cementitious material for a self-healing cemented structure, further comprising calcium ion source, with that of the presently claimed (claim 1, claim 6; specification, page 3, bottom paragraph), therefore, it is clear that the gelatin would necessarily and inherently defines bridges responsive to ambient carbon dioxide and calcium sources for recombining in a self-healing manner for rebonding fractures.
Alternatively, given that Vorderbruggen in view of Licht and Biji teaches an identical or substantially identical composition, i.e., gelatin (reading upon scaffolding material) in a cementitious material for a self-healing cemented structure, further comprising calcium ion source, with that of the presently claimed (claim 1, claim 6; specification, page 3, bottom paragraph), therefore, it is clear that the gelatin would necessarily and inherently defines bridges responsive to ambient carbon dioxide and calcium sources for recombining in a self-healing manner for rebonding fractures.
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). See MPEP 2112.01 (I).
Therefore, the Examiner has fully considered Applicant' s arguments, but they are found unpersuasive.
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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/KELING ZHANG/
Primary Examiner
Art Unit 1732