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 .
Response to Amendment
This office action is in response to the Amendment filed on 10/17/2025.
Claims 16-36 are presently pending; claims 1-15 are canceled; claims 20-36 are withdrawn; claims 16 and 19 are amended; claims 16-19 are under examination.
The objection to the drawings is withdrawn in light of the amendments to the drawings.
The objections to claims 16 and 19 are withdrawn in light of the amendments to the claims.
The rejection of claims 16-19 under 35 U.S.C 112(b) is withdrawn in light of the amendments to the claims.
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)” and “m(SiO2)” as recited in claim 16 (see claim 16 at line 9) are interpreted as meaning the mass of CaO and SiO2, respectively, as this would appear most in keeping with Applicant’s intent as discussed in the Specification at paragraph [004].
Claim Rejections - 35 USC § 103
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.
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 weight ratio CaO/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)).
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 10/17/2025 have been fully considered but they are not persuasive.
Applicant argues:
“Assessing Devenney in more detail, it becomes clear that the X-ray amorphous content is not only not mentioned therein but irrelevant. The product aimed at in Devenney is the precipitating calcium carbonate, especially in the form of reactive vaterite to be used as carbonate cement. This carbonate cement does not harden by hydration, but by a solvation-precipitation process of the vaterite. According to Devenney, the solid remains of the carbide lime or slag after solvation of calcium with base can be filtered off, see [0013]… Thus, Devenney teaches to make calcium carbonate and not a supplementary cementitious material (SCM) comprising carbonated Ca and Mg as well as Si, Al, and Fe, wherein a minimum amount of X-ray amorphous silica and alumina phases take part in the hydraulic reaction responsible for strength development. It is unclear whether “amorphous” in [0103] refers to X-ray amorphous phases, but it definitely refers to the precipitated calcium carbonate. The undissolved solids cannot precipitate in amorphous form; they remain solid. In contrast, for the claimed SCM the content of X-ray amorphous silica (and alumina) is important, not that of amorphous calcium carbonate” (see Remarks at pg. 11-12).
“Although the solids remaining after the calcium has been solvated from the lime or slag are not the product aimed at by Devenney, their use as cement substitute/pozzolan is mentioned, e.g. in [0056] and [0097]. But it is not correct to say Devenney uses lump slag; according to [0043] the slag can be one of basic oxygen furnace slag, electric arc furnace slag, granulated blast furnace slag, or lump slag. In example 8, the slag is basic oxygen furnace slag… In example 9, the slag is designated steel slag. An expert would not use the term steel slag for blast furnace slag, as this term usually refers to basic oxygen furnace slag or electric arc furnace slag. The solid residues are not used in example 8, only the solvated calcium. Example 9 compares the SCM activity of the steel slag with the activity of the solids remaining after extraction of the calcium, wherein neither the slag nor the solids are carbonated. The measured strength values in Table 3 show that the steel slag contained something impairing the hydraulic hardening… One of ordinary skill in the art would be dissuaded from a use of solids remaining after extraction as SCM by these test results. The results show a uselessness of the steel slag as SCM, and not that extraction “improved the cementitious and/or pozzolanic properties” as stated by Devenney.” (see Remarks at pg. 12-13).
“Devenney aims at calcium carbonate as carbonation product, not at an SCM comprising Si, Ca, Mg, Al and Fe… because one of the starting materials, carbide lime, contains almost no Si and neither Al or Fe… Using lump slag… necessitates a selection of slag over carbide lime and another selection of lump slag from the list in [0043]” (see Remarks at pg. 14).
“The main amount of the claimed SCM, i.e., the X-ray amorphous silica and alumina phases, can be absent from Devenney’s product and are definitely not present or only contained in trace amounts when carbide lime is used. Consequently, despite the knowledge that X-ray amorphous content should be high for SCM there is no X-ray amorphous content in the solids filtered off by Devenney to be optimized. One of ordinary skill in the art has no motivation for such an optimization in a calcium carbonate product” (see Remarks at pg. 14-15).
“Devenney fails to use the term SCM as defined in the present application, namely as material taking part in the hydraulic reaction responsible for strength formation. Instead, the term is used in the sense of mineral addition and includes unreactive fillers as shown by [0097]” (see Remarks at pg. 15).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that DEVENNEY only teaches calcium carbonate (e.g., vaterite) and does not teach a SCM, the Examiner respectfully disagrees. Claim 16 claims a SCM comprising at least 15% calcium carbonate and/or magnesium carbonate (e.g., at least 25%, as discussed in paragraph [0046] of the present specification), wherein the SCM is formed by carbonatization of a lump slag, e.g., air-cooled blast-furnace slag as recited by claim 18; the present specification states that carbonatization of such slag forms reactive supplementary cementitious material as claimed (see paragraphs [0018]-[0019] and [0030] of the present specification). As set forth in the rejection of claim 16 above, DEVENNEY clearly teaches a reactive supplementary cementitious material composition formed by carbonating a lump slag as claimed, e.g., air cooled blast furnace slag (see DEVENNEY at Abstract and paragraphs [0013], [0024]-[0025], [0043], [0055]-[0057] and [0141]). The SCM composition of DEVENNEY formed from carbonating the slag comprises, e.g., at least 20% of calcium carbonate (see DEVENNEY at paragraph [0140]), meeting the calcium carbonate content required by the present claim, and, e.g., up to 40% of other slag solids comprising silica which have undergone carbonation (see DEVENNEY at paragraphs [0013] and [0055]-[0057]).
Regarding Applicant’s argument that there is no motivation to optimize amorphous content of a product that is only calcium carbonate, as discussed above, DEVENNEY teaches a supplementary cementitious material composition, not just calcium carbonate. As set forth in the rejection of claim 16 above, DIENEMANN explicitly teaches that the amorphous portion of SCM is a result-effective variable which may be optimized by one of ordinary skill in the art, therefore it would be obvious to one of ordinary skill to optimize the amorphous portion of the SCM through routine experimentation and optimization in order to achieve desired SCM properties and cement properties. See MPEP § 2144.05 (II).
In response to Applicant’s argument that DEVENNEY does not mention an amorphous content, the Examiner respectfully disagrees; as set forth in the rejection of claim 16 above and as acknowledged by Applicant on pg. 12-13 of Remarks, DEVENNEY teaches that the SCM has an amorphous content.
In response to Applicant’s argument that DEVENNEY does not use lump slag because it teaches that other types of slag may also be used and includes two examples using different types, the Examiner respectfully disagrees; MPEP § 2131.02(II) states that “when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. The Board compared the facts to the situation in which the compound was found in the Merck Index, saying that "the tenth edition of the Merck Index lists ten thousand compounds. In our view, each and every one of those compounds is ‘described’ as that term is used in [pre-AIA ] 35 U.S.C. 102(a), in that publication."). Id. at 1718. See also In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (The claims were directed to polycarbonate containing cadmium laurate as an additive. The court upheld the Board’s finding that a reference specifically naming cadmium laurate as an additive amongst a list of many suitable salts in polycarbonate resin anticipated the claims.” As set forth in the rejection of claim 16 above, DEVENNEY explicitly teaches the use of air-cooled blast furnace slag. Including other types of slag materials and examples of embodiments using those slag materials in various processes (e.g., Examples 8 and 9 referenced by Applicant, which do not use lump slag and are not mentioned in the present rejection) does not negate the teaching of air-cooled blast furnace slag as the slag or the teaching that the slag is used as a precursor material which is carbonated to form a supplementary cementitious material composition comprising calcium carbonate and other solids. Similarly, the Examiner respectfully disagrees with Applicant’s argument regarding carbide lime, as DEVENNEY also teaches using lump slag, and carbide lime is not relevant to the present rejection.
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 minimum amount of X-ray amorphous silica and alumina phases” and “The main amount of the claimed SCM, i.e., the X-ray amorphous silica and alumina phases”) 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 present claim does not recite any content of amorphous silica and alumina; it recites an amorphous portion of the SCM as a whole. As set forth in the rejection of claim 16 above, DEVENNEY teaches controlling the amount amorphous precipitation material and teaches that the SCM includes silica solids resulting from solubilization of calcium from the dicalcium silicate in the slag (i.e., amorphous silica), and DIENEMANN teaches that the content of amorphous is a result-effective variable which can be optimized by one of ordinary skill in the art.
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“the precursor material must be a solid material according to the present invention, because claim 16 recites a particle size distribution. This implies that the main step of Devenney, the extraction into a slurry, is not and cannot be part of the claimed method” (see Remarks at pg. 14).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the precursor material of DEVENNEY cannot be solid because a solid material has a particle size distribution and DEVENNEY teaches a step of extraction into a slurry, the Examiner respectfully disagrees. Method steps are irrelevant to the form of the precursor material and to the present product claims. As set forth in the rejection of claim 16 above, DEVENNEY clearly teaches the use of lump slag, which is the claimed solid precursor material, having a particle size, which means it is solid according to Applicant’s remarks.
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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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/S.C.C./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731