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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/27/2026 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 03/27/2026.
Claims 16-36 are presently pending; claims 1-15 are canceled; claims 20-36 are withdrawn; claim 16 is amended; claims 16-19 are under examination.
The 35 U.S.C. 103 rejection of claims 16-19 over DEVENNEY in view of DIENEMANN is maintained.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
For purposes of claim interpretation, “m(CaO)”, “m(SiO2)”, “m(MgO)”, m(Al2O3) and m(Fe2O3) as recited in claim 16 (see claim 16 at lines 9-18) are interpreted as meaning the mass of CaO, SiO2, MgO, Al2O3 and Fe2O3 respectively, as this would appear most in keeping with Applicant’s intent as discussed in the Specification at paragraph [004].
For purposes of claim interpretation, “k1” and “k2” as recited in claim 16 (see claim 16 at lines 12 and 15) are interpreted as representing correction factors, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraph [0035].
Claim Rejections - 35 USC § 112
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 16-19 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 16 recites several formulas, B1 to B4, which include the masses of CaO, SiO2, Fe2O3, MgO, and Al2O3 (see claim 16 at lines 9-19), then recites “determined from amounts of the oxides CaO, SiO2, and Fe2O3 measured by X-ray fluorescence (XRF)” (see claim 16 at lines 19-20). This renders the scope of the claim indefinite as is not clear how all of these basicity values could be determined only from the amounts of CaO, SiO2, and Fe2O3, when some of the formulas also include MgO and Al2O3; the claim also does not mention how k1 and k2 are determined, which are also required for the calculation of some of the basicity values. Clarification is requested.
Claims 17-19 are included herein as each depends from a claim which is indefinite for the reasons set forth above.
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.
Claims 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over of Devenney, et al. (U.S. 2015/0307400-A1) (hereinafter, “DEVENNEY”) in view of Dienemann, et al. (EP-3656750-A2) (hereinafter, “DIENEMANN”), with evidence from Federal Highway Administration, "Blast Furnace Slag", User Guidelines for Waste and Byproduct Materials in Pavement Construction (hereinafter, “FHA”) as to the rejection of claim 16.
Regarding claim 16, DEVENNEY teaches a supplementary cementitious material (SCM) (see DEVENNEY generally at Abstract and paragraphs [0025] and [0055]-[0057]),
comprising Si, Ca, Mg, Al, and Fe (see DEVENNEY at paragraphs [0024], [0043], [0055], [0057], [0102], teaching that the SCM comprises Si, Ca, Mg and Fe, and that it is obtained from air cooled blast furnace slag, which comprises all of the recited elements as evidenced by FHA; see FHA at pg. 2, “Air-Cooled Blast Furnace Slag”, and at Table 3.2),
having an X-ray amorphous portion (see DEVENNEY at paragraphs [0103] and [0128], teaching that amorphous calcium carbonate may be present in the precipitation material and that the amount of amorphous precipitation material can be controlled by altering the pH, as increasing the pH results in more rapid precipitation which increases the amount of amorphous precipitation material; see also DEVENNEY at paragraphs [0013], [0024], [0043], [0048], [0055] and [0057], teaching that the SCM is obtained from carbonating a slag precursor (e.g., air cooled blast furnace slag, which is lump slag) comprising dicalcium silicate, which has been treated with, e.g., ammonium salt aqueous solution, in order to solubilize the calcium from the dicalcium silicate which produces amorphous silica, and teaching that the solids other than calcium carbonate may comprise up to 40% by weight of the SCM),
wherein a sum of an amount of carbonated calcium and magnesium is at least 15 % by weight based on the total weight of the supplementary cementitious material (see DEVENNEY at paragraphs [0013], [0055], [0057], [0102] and [0140], teaching that the SCM comprises precipitated Ca and/or Mg carbonates and up to 40% of other solids, and that it comprises at least 20% w/w of stable vaterite, reactive vaterite or PCC (precipitated calcium carbonate), all of which are calcium carbonate),
obtained by carbonatization of a precursor material, wherein the precursor material is a lump slag having an X-ray amorphous portion of less than 66 % (see DEVENNEY at paragraphs [0013], [0024], [0034]-[0035], [0037], [0043] and [0055], teaching using air cooled blast furnace slag (i.e., lump slag) as the precursor material which is treated to form an aqueous solution and is then contacted with carbon dioxide to carbonatize the solution; as evidenced by FHA, air cooled (lump) blast furnace slag has a crystalline structure; see FHA at pg. 2, “Air-Cooled Blast Furnace Slag”),
a particle size distribution with a D90 of ≤ 500 μm determined by laser granulometry (see DEVENNEY at paragraphs [0043] and [0216], teaching that the size of the grain in the slag may vary between 1 and 500 μm, e.g., between 1 and 100 μm, and that particle size is measured with static light scattering using an analyzer with a dual wavelength/laser configuration, i.e., laser granulometry),
a basicity B1 = m(CaO)/m(SiO2) in a range overlapping with and thereby rendering obvious the claimed range of from 0.60 to 1.25 (see DEVENNEY at paragraph [0043], teaching air cooled blast furnace slag containing between about 35-45 wt% CaO; as evidenced by FHA, blast furnace slag has an SiO2 content of about 27-45 wt%, with the average being 36%, and an average CaO content of 40% (see FHA at Table 3-2); this results in a range of B1 as claimed of 0.78 to 1.67, with the average being 1.11),
and a basicity B4 = m(CaO/m(Fe2O3) overlapping with and thereby rendering obvious the claimed range of from 20 to 350 determined from amounts of the oxides CaO, SiO2, and Fe2O3 measured by X-ray fluoresece (XRF) (see DEVENNEY at paragraph [0043], teaching air cooled blast furnace slag containing between about 35-45 wt% CaO; as evidenced by FHA, blast furnace slag has an Fe2O3 content of about 0.1-1.6 wt%, with the average being 0.5%, and an average CaO content of 40% (see FHA at Table 3-2); this results in a range of CaO/Fe2O3 as claimed of 22 to 450, with the average being 80).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)).
Regarding basicity B2 and B3, DEVENNEY does not explicitly mention a “k1” or “k2” value used in these formulas. However, DEVENNEY teaches air cooled blast furnace slag (i.e., lump slag) containing between about 35-45 wt% CaO; as evidenced by FHA, blast furnace slag has an SiO2 content of about 27-45 wt%, with the average being 36%; an MgO content of about 1-19 wt%, with the average being about 9%; and an Al2O3 content of about 7-20 wt%, with the average being 12%; and an average CaO content of 40% (see DEVENNEY at paragraph [0043]; see FHA at Table 3-2). The slag used in the present application comprises, by weight, 41.51% CaO, 34.84% SiO2, 5.93% MgO, and 11.12% Al2O3 (see Table 1 of the present specification). Therefore, the lump slag of DEVENNEY would be expected to have the same or overlapping properties as the claimed lump slag, including calculated basicity values. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of DEVENNEY have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
As discussed above, DEVENNEY teaches that the amount amorphous precipitation material can be controlled by adjusting the pH, and that an increase in pH and resulting precipitation speed increases the amount of amorphous material in the product (see DEVENNEY at paragraphs [0103] and [0128]), and teaches that the SCM comprises 1 to 40% by weight of solids which include silica resulting from the solubilization of calcium from the dicalcium silicate in the slag (see DEVENNEY at paragraphs [0013], [0024], [0043], [0048], [0055] and [0057]). DEVENNEY therefore teaches that the amorphous portion of the SCM can be controlled by varying both the pH/precipitation rate and the amount of solids content in the SCM product.
However, DEVENNEY fails to explicitly teach that an X-ray amorphous portion of the SCM is at least 15 % by weight based on a total weight of the SCM.
DIENEMANN teaches a supplementary cementitious material obtained by carbonating a slag precursor material such as slag from iron production, i.e., blast furnace slag (see DIENEMANN at Abstract and paragraph [0084]). DIENEMANN further teaches that the slag is transformed into mainly calcium carbonate and reactive amorphous silica and alumina gels, which have high pozzolanic and/or latent-hydraulic reactivity and allow to make use of the synergies between calcium carbonate and silica and alumina rich cementitious material, increasing cement strength during hydration (see DIENEMANN at paragraphs [0018] and [0024]).
Therefore, DIENEMANN explicitly teaches that the amorphous portion of the SCM is a result-effective variable which may be optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to vary the amorphous portion of the SCM of DEVENNEY (e.g., by varying amount of solid content other than calcium content (containing silica) within a range of up to 40%, and/or by varying the pH and resulting precipitation rate and amorphous calcium carbonate content; see DEVENNEY at paragraphs [0013], [0024], [0043], [0048], [0055], [0057], [0103] and [0128]), including X-ray amorphous portions of at least 15 % by weight based on a total weight of the SCM, through routine experimentation and optimization, in order to achieve the desired pozzolanic and/or latent-hydraulic reactivity of the SCM and increase the resulting strength of the cement when hydrated, as taught by DIENEMANN (see DIENEMANN at paragraphs [0018] and [0024]).
Regarding claim 18, as applied to claim 16 above, DEVENNEY in view of DIENEMANN teaches a supplementary cementitious material according to claim 16, wherein the precursor material is an air-cooled blast-furnace slag (see DEVENNEY at paragraph [0043]).
Regarding claims 17 and 19, as applied to claims 16 and 18 above, DEVENNEY in view of DIENEMANN teaches a supplementary cementitious material according to claims 16 and 18, having a particle size distribution with a D90 of ≤ 500 μm, as required by claim 17, and a D90 of ≤ 200 μm, as required by claim 19, determined by laser granulometry (see DEVENNEY at paragraphs [0010], [0043], [0079], [0146] and [0216], teaching a slag precursor grain size of 1-100 μm, a calcium carbonate particle size of, e.g., 0.001-5 μm, and an overall precipitation material (i.e., SCM) average particle size of 0.1-100 μm, wherein the composition may include several different sizes of particles, all of which may be within 0.1-10 μm, 10-50 μm or 50-100 μm, and teaching that particle size is measured with static light scattering using an analyzer with a dual wavelength/laser configuration, i.e., laser granulometry)
Response to Arguments
Applicant's arguments filed 03/27/2026 and the Declaration under 37 CFR 1.132 filed 03/27/2026 have been fully considered but they are not persuasive.
Applicant argues:
“None of the cited prior art… discloses B4 in the range of 20 to 350, as steel slags are typically in the range from 0.65 to 20.27 as disclosed in [004] and used in Devenney” (see Remarks at pg. 11).
“the basic oxygen furnace slag used in example 8 of Devenney… and Ca-depleted steel slag used in example 9… not suitable for the preparation of SCM according to claim 16… The sole examples using slag are examples 8 and 9” (see Remarks at pg. 11-12 and 15).
“Devenney is directed to calcium carbonate as a carbonation product, not to an SCM comprising Si, Ca, Mg, Al, and Fe… one of the starting materials, carbide lime, contains almost no Si and neither Al or Fe… The specific components of the SCM according to claim 16 are not taught or suggested by any of the cited references” (see Remarks at pg. 13).
“the indicated amounts of Si, Al and Fe exclude carbide lime as the precursor material… steel slag contains much more iron… basic oxygen furnace slag used in examples 8 and 9 is a steel slag and is shown to be very problematic as pozzolan” (see Remarks at pg. 16).
“Devenney fails to teach an SCM having the specific components with corresponding B1 to B4 as shown in claim 16… Devenney fails to use the term SCM as defined in the present application” (see Remarks at pg. 12-13).
“The solids separated from the solubilized calcium in Devenney are said to be useful as a pozzolan… Table 3 shows that the “extracted solids”… contain something interfering with hydration… This discourages a POSA from using the extracted solids as pozzolan” (see Remarks at pg. 14 and 16).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the prior art does not disclose an SCM comprising the claimed components and basicity values because steel slags, basic oxygen furnace slag, and carbide lime precursor materials are disclosed and used in examples and have different properties, the Examiner respectfully disagrees. As set forth in the rejection above, DEVENNEY explicitly teaches air-cooled blast furnace slag, which is a lump slag as claimed, and which is not a steel slag, basic oxygen furnace slag, or carbide lime. DEVENNEY also disclosing the use of other options as precursor materials does not negate the explicit teaching of air-cooled blast furnace slag. As set forth in MPEP § 2123, "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). It is also noted that DEVENNEY does explicitly use the term “supplementary cementitious material”, and also describes that the product (vaterite, the solids, or a mixture of both) may be used as supplementary cementitious material; see, e.g., paragraphs [0025], [0055]-[0057] and [0097].
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“A high amount of calcium in crystalline and/or amorphous form as required by Devenney is not necessary or beneficial… a prior treatment with base is not needed and not beneficial. Filtering of the suspension resulting from treatment with a base as is preferred by Devenney would be detrimental” (see Remarks at pg. 11).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is novel and nonobvious because a high amount of calcium, a prior treatment with base, and filtering as is “preferred” by DEVENNEY is “not necessary or beneficial”, the Examiner respectfully disagrees. The present invention is a SCM product, not a method of producing an SCM. The method of production is not relevant to the present claims, no kind of pre-treatment is excluded (and Applicant states that this treatment is “preferred” by Devenney, i.e., not even required), and the calcium content of DEVENNEY meets the limitations of claim 16 that are actually claimed. As set forth in the rejection above, the prior art discloses or renders obvious the claimed limitations of the SCM product.
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“for the claimed SCM the content of all X-ray amorphous components including amorphous silicium and aluminum minerals is important, not that of an amorphous calcium carbonate which is crystalline in the SCM according to the present invention” (see Remarks at pg. 12).
“it clearly follows from Devenney that the amorphous phases referred to are part of the precipitated calcium carbonate… Thus, a POSA would not contemplate any optimization of the amorphous silica and alumina content in Devenney… there is no X-ray amorphous content in the solids filtered off by Devenney to be optimized” (see Remarks at pg. 13 and 16-17).
“the content of X-ray amorphous silicium and aluminum is crucial in the claimed SCM but not that of amorphous calcium carbonate” (see Remarks at pg. pg. 17).
“when an air-cooled blast furnace slag is carbonated, the X-ray amorphous material formed is mainly amorphous siliceous and aluminous material” (see Remarks at pg. 16).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a specific amorphous content of silicium and aluminum and not of calcium carbonate, crystalline calcium carbonate in the SCM, etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The limitation that is actually claimed is “A supplementary cementitious material comprising Si, Ca, Mg, Al, and Fe, wherein an X-ray amorphous portion is at least 15% by weight based on a total weight of the supplementary cementitious material”. There is no limitation regarding an X-ray amorphous portion of silicium and aluminum, or regarding the calcium carbonate being crystalline. Additionally, as noted above, Applicant explicitly states that “when an air-cooled blast furnace slag is carbonated, the X-ray amorphous material formed is mainly amorphous siliceous and aluminous material”; carbonation of an air-cooled blast-furnace slag is explicitly disclosed in DEVENNEY, as discussed above, therefore per Applicant’s statement, this would form amorphous siliceous and aluminous materials.
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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