DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election of group I, claims 1-15 in the reply filed on 15/08/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Objections
Claim 8 is objected to because of the following informalities: Please change “ the first second” to “ the first, second”. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: Please change “ third powder” to “ the third powder”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: Please change “ the first second” to “ the first, second”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: Please change “ third powder” to “ the third powder”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: Please change “ third powder” to “ the third powder”. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: Please change “ the first second” to “ the first, second”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: Please change “the first second” to “the first, second”. Appropriate correction is required.
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 1-15 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 1 recites the limitation "the feedstock" in line 3. There is insufficient antecedent basis for this limitation in the claim.
It is not clear that “the pretreating” is selected from “iron/steel recovery, recovery of at least one non-ferrous material, sieving, crushing, milling, aging, and thermal treatment” or “the feedstock” is selected from “iron/steel recovery, recovery of at least one non-ferrous material, sieving, crushing, milling, aging, and thermal treatment”. The Examiner treats the claim 1 as “the pretreating” is selected from “iron/steel recovery, recovery of at least one non-ferrous material, sieving, crushing, milling, aging, and thermal treatment”.
Regarding claim 2, the term “UCRM” in the parenthesis is indefinite. It is not clear that the limitations in the parathesis is meant to be a part of the claim or not.
Regarding claims 2 and 7, acronyms used in the claims are indefinite because their broadest reasonable interpretation can change with time.
Regarding claim 13, there is insufficient antecedent basis for “third powder” in the claim.
Regarding claim 12, it is not clear the weight percent of each component. The Examiner treats the Unfired Raw Ceramic Material powder, sand, steelmaking dust and glass waste have relative weights of 50%, 15%, 5% and 30% respectively, each with weight variations of +/- 5 percent of those weights.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2016051053A1
Regarding claim 1, WO2016051053A1 discloses a method for manufacturing a solid element made of ceramic material, suitable for use in particular for storing heat. Clay is crushed and then sieved with a sieve. Ashes are sieved with a sieve. A base mixture is carried out by mixing fly ash from a coal-fired power plant, coal-fired hearth furnace ashes and clay. At least one liquid such as water is added, the mixture obtained is shaped so as to form a green, solid element; said green element obtained is optionally dried; said green element, optionally dried, is subjected to a maximum cooking temperature substantially equal to or greater than 1110 ° C. and substantially equal to or lower than 1200 ° C. so as to consolidate said element; and said element obtained is allowed to cool to room temperature. The shaping can be obtained, for example, by molding, casting, pounding, extrusion, pressing or any other known technique. See abstract and pages 4-6.
Regarding claim 2, clay is read on unfired raw ceramic material and fly ash is read on refractory waste.
Regarding claim 4, WO2016051053A1 discloses that said mixture contains a quantity of clay equal to 10% of the sum of the masses of said ashes and clay. Thus, said mixture contains a quantity of ashes equal to 90% of the sum of the masses of said ashes and clay. See abstract and pages 4-6.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 7-8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US2021/0198151.
The applied reference has a common joint inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, US2021/0198151 discloses a method of producing a ceramic product comprising:
receiving as a first component material a first feedstock;
receiving as a second component material a second feedstock;
combining the first and second component materials with water to form at least one of (1) an extrudable paste and (2) a granulated mixture;
forming a green body from the at least one of (1) the extrudable paste after extrusion and (2) the granulated mixture;
drying the green body;
firing the green body to form the ceramic product; and
cooling the ceramic product. See claim 1.
FIG. 1 is flowchart showing a number of repeatable pre-treatment steps that may be applied to feed stocks
PNG
media_image1.png
594
773
media_image1.png
Greyscale
Regarding claims 2-4, and 7-8, US2021/0198151 (1) URCM comprises about 40 to about 80 wt. % of the mixture weight, (2) Fired Ceramic Materials or Sand comprises about 10 to about 50 wt. % of the mixture weight, and (3) one feedstock comprises about 10 to about 50 wt. % of the mixture weight included in the following feedstocks list: MSWIBA, Glass Waste, Steelmaking dusts, Rock Dust, and Fired Ceramic Materials (if not selected as second powder). Some disclosed construction and technical ceramics are produced wherein an optional fourth feedstock comprises about 3 to about 40 wt. % of the mixture weight selected from the group consisting of: MSWIFA, Alumina Red Mud, Aluminum Dross, Steelmaking dusts, and Biomass Ash. See [0115].
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.
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2016051053A1as applied to claims 1 and 2 above, and further in view of US-20020066233
Regarding claims 13-14, WO2016051053A1 discloses a method for manufacturing a solid element made of ceramic material, suitable for use in particular for storing heath set forth above.
But it is silent about using the ceramic pigment as applicant sets forth in the claim 13.
US-20020066233 discloses that pigment can be used in ceramic substrate. The pigments are typically inorganic materials that tend to affect ceramic aggregate particle properties, such as, for example, color, whiteness, or opacity. Exemplary useful pigments include iron oxides, cobalt oxide, manganese dioxide, titanium oxides. Other exemplary useful pigments include compounds of rare-earth, nickel, cadmium, chromium, and copper elements. The amounts of pigment is selected to provide the desired properties. SEE [0032] and [0115].
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use refractory pigments in WO2016051053 process, motived by the fact that US-20020066233 discloses that pigments can be used in ceramic substrate. The pigments are typically inorganic materials that tend to affect ceramic aggregate particle properties, such as, for example, color, whiteness, or opacity. Exemplary useful pigments include iron oxides, cobalt oxide, manganese dioxide, titanium oxides. Other exemplary useful pigments include compounds of rare-earth, nickel, cadmium, chromium, and copper elements. The amounts of pigment is selected to provide the desired properties. See [0032] and [0115]. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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, 105 USPQ 233, 235 (CCPA 1955)
Claim(s) 1-5, 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Development of a Thermal Energy Storage Pressed Plate Ceramic Based on Municipal Waste Incinerator Bottom Ash and Waste Clay” to Ferber et al, further in view of WO2016051053A.
Regarding claim 1, Ferber et al. discloses municipal waste incinerator bottom
ashes (MWIBA) and waste clay as starting materials to make ceramics.
MWIBA consists in a mixture of ashes, sand, glassy material, metallic
and ceramic fragments and residual unburnt organic compounds.
Milled MWIBA and waste Clay are used to make a mixture. Adding water to the mixture and shaping the green bodies. The added clay represents 20, 30, 40 or 70% of the dry mixture weight. After being dried at 105 °C for 12 h, green bodies have been fired in electrical furnaces, with a heating rate of 5°C/min from room temperature to 500 °C, then 2°C/min from 500 °C to the maximum temperature, with isothermal firing duration of 2 h. The furnaces are not equipped with an active cooling system, implying cooling durations of about 10 h. See abstract; Materials and Methods;
But they are silent about sieving the clay.
However, WO2016051053A disclose sieving clay to get the prefeed size.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to sieving the clay in Ferber et al. process, motived by the fact that WO2016051053A, also drawn to ceramic material, disclose sieving clay to get the prefeed size. See page 6.
Regarding claim 2, clay is read on unfired raw ceramic material and ash is read on refractory waste.
Regarding claims 3-4, the added clay represents 20, 30, 40 or 70% of the dry mixture weight.
Regarding claim 5, the added clay represents 70% of the dry mixture weight.
Regarding claim 7, MWIBA consists in a mixture of ashes, sand, glassy material, metallic and ceramic fragments and residual unburnt organic compounds. See sampling.
Regarding claim 8, the added clay represents 70% of the dry mixture weight. Thus, MWIBA content is 30%. MWIBA consists in a mixture of ashes, sand, glassy material, metallic and ceramic fragments and residual unburnt organic compounds. Thus,
Claims 5-7, and 9-12 is/are rejected under 35 U.S.C. 103 as being obvious over US2021/0198151.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding claims 5-7, and 9-12, US’151 discloses a method of producing a ceramic product comprising:
receiving as a first component material a first feedstock;
receiving as a second component material a second feedstock;
combining the first and second component materials with water to form at least one of (1) an extrudable paste and (2) a granulated mixture;
forming a green body from the at least one of (1) the extrudable paste after extrusion and (2) the granulated mixture;
drying the green body;
firing the green body to form the ceramic product; and
cooling the ceramic product. See claim 1.
(1) URCM comprises about 40 to about 80 wt. % of the mixture weight, (2) Fired Ceramic Materials or Sand comprises about 10 to about 50 wt. % of the mixture weight, and (3) one feedstock comprises about 10 to about 50 wt. % of the mixture weight included in the following feedstocks list: MSWIBA, Glass Waste, Steelmaking dusts, Rock Dust, and Fired Ceramic Materials (if not selected as second powder). Some disclosed construction and technical ceramics are produced wherein an optional fourth feedstock comprises about 3 to about 40 wt. % of the mixture weight selected from the group consisting of: MSWIFA, Alumina Red Mud, Aluminum Dross, Steelmaking dusts, and Biomass Ash. See [0115].
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
FIG. 1 is flowchart showing a number of repeatable pre-treatment steps that may be applied to feed stocks
PNG
media_image1.png
594
773
media_image1.png
Greyscale
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18044602.
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18044602(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications disclose a similar process of making a ceramic product by receiving as a first pretreated component material a first feedstock; receiving as a pretreated second component material a second feedstock; combining the first and second component materials with water to form at least one of (1) an extrudable paste and (2) a granulated mixture; forming a green body from the at least one of (1) the extrudable paste after extrusion and (2) the granulated mixture; drying the green body; firing the green body to form the ceramic product; and cooling the ceramic product, wherein the first component material and the second component material can be treated as the recovered material without organic substance.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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.
/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
Prosecution Insights