DETAILED ACTION
Claims 27-30, 32-34 and 36-46 were rejected in Office Action mailed on 08/06/2025.
Claim(s) 27-46 are pending, and claim(s) 31 and 35 are withdrawn.
Claim(s) 27-30, 32-34 and 36-46 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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/06/2026 has been entered.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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.
Claims 27-30, 32-34 and 36-46 are rejected under 35 U.S.C. 103 as being unpatentable over Devenney et al., US9,902,652 B2 (Devenney) (provided in IDS received on 12/06/2022) in view of Eloneva et al., Preliminary assessment of a method utilizing carbon dioxide and steelmaking slags to produce precipitated calcium carbonate, Applied Energy, 2012, 90, 329-334 (Eloneva) (provided in IDS received on 12/06/2022) and Hassibi, An overview of lime slaking and factors that affect the process, Chemoco Systems, 2009 (Hassibi).
Regarding claims 27-30, Devenney discloses method comprising treating a slag solid or carbide lime suspension with an ammonium salt in water (i.e., an aqueous N-containing inorganic salt solution) to produce an aqueous solution comprising calcium salt, ammonium salt, and solids; contacting the aqueous solution with carbon dioxide from an industrial process under one or more precipitation conditions to produce a precipitation material comprising calcium carbonate (Devenney, Abstract).
Devenney further discloses the ammonium salt is ammonium chloride (Devenney, column 1, bottom paragraph; column 10, bottom paragraph).
Devenney further discloses the slag solid comprises 20-60 wt.% calcium oxide (i.e., CaO source to produce CaCO3) (Devenney, column 1, bottom paragraph).
Devenney further discloses contacting the aqueous solution (i.e., produced after treating a slag solid or carbide lime suspension with an ammonium salt in water) with carbon dioxide from an industrial process (Devenney, column 1, lines 45-46), a source of carbon dioxide such as exhaust from a coal-fired power plant or exhaust from a cement kiln (carbon dioxide is recycled from an industrial process) (Devenney, column 11, lines 54-56).
Further regarding claims 27 and 39, Devenney further teaches in some embodiments of the foregoing aspect and embodiments, the calcium carbonate produced comprises reactive vaterite (Devenney, column 2, bottom paragraph).
Further regarding claim 27, Devenney does not explicitly disclose (a) calcining limestone to form lime and a gaseous stream comprising carbon dioxide; dissolving lime in an aqueous solution comprising N-containing salt; wherein the temperature is set to form any amount of dead burnt lime; or (b) calcining the limestone at a temperature high enough to form soft burnt lime.
With respect to the difference (a), Eloneva teaches production of calcium carbonate by using ammonium salts as a solvent (Eloneva, page 329, right column, bottom paragraph).
Eloneva specifically teaches limestone is converted to CaO (i.e., lime) after a lime kiln (i.e., calcined), as an alternative to slag processing; in order to provide a CaO source to produce CaCO3 (Eloneva, page 333, Fig.6.).
Eloneva is analogous art as Eloneva is drawn to production of calcium carbonate by using ammonium salts as a solvent.
In light of the disclosure of Eloneva of the equivalence and interchangeability of using slag as disclosed in Devenney (Devenney, Abstract and column 1, lines 58-59), with lime from calcining limestone as presently claimed, to provide a source of CaO for CaCO3 formation (Eloneva, page 333, Fig.6.), it would therefore been obvious to one of ordinary skill in the art to use lime from calcining limestone instead of slag in Devenney (also reading upon wherein the temperature is set to form any amount of dead burnt lime), and thereby arrive at the claimed limitation.
With respect to the difference (b), Hassibi teaches process regarding lime. Hassibi specifically teaches kiln temperature affects the quality of CaO produced, large specific surfaces are desirable end product from calcium oxide (Hassibi, page 9, 1st paragraph); Figure 6 shows relation of surface area to calcination temperature, also shown below, (Hassibi, page 9, Figure 6); soft burned lime (Hassibi, page 9, 2nd paragraph); a soft-burned lime is full of small hair-like cracks where CO2 has escaped from the limestone during the calcination process; when the lime is exposed to water, the water penetrates the cracks and the hydration take place quickly (Hassibi, page 8, bottom paragraph).
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Figure 6 of Hassibi
As Hassibi expressly teaches, soft burned lime is highly-reactive (Hassibi, page 9, 2nd paragraph).
Hassibi is analogous art as Hassibi is drawn to a process regarding lime.
In light of the motivation of using soft burned lime, as taught by Hassibi, it therefore would have been obvious to a person of ordinary skill in the art calcine limestone at a temperature high enough to obtain CaO that is soft burned lime, in Devenney in view of Eloneva, in order to obtain CaO with small hair-like cracks and high-activity, and thereby arrive at the claimed invention.
Regarding claim 32, as applied to claim 27, Devenney in view of in view of Eloneva and Hassibi further teaches NH3 in the aqueous phase (i.e., dissolved ammonia) upon the reaction of lime with aqueous NH4Cl (Devenney, column 11, line 15).
Regarding claim 33, as applied to claim 27, Devenney in view of in view of Eloneva and Hassibi further discloses recovering a gas exhaust stream comprising ammonia during the treating step (i.e., during treating a slag solid or carbide lime suspension with an ammonium salt in water, and therefore reading upon wherein the dissolving step further produces a gaseous stream comprising ammonia) (Devenney, column 1, lines 52-54); in some embodiments, the treating step further comprises adding ammonia; in some embodiments of the foregoing aspect and embodiments, the added ammonia is the ammonia recovered in the treating step (i..e, adding the recovered exhaust stream comprising ammonia to the treating step) (Devenney, column 2, 1st paragraph), and therefore reading upon “the treating step further comprises treating the aqueous solution comprising calcium salt with the gaseous stream comprising ammonia”.
Regarding claim 34, as applied to claim 27, Devenney in view of in view of Eloneva and Hassibi further teaches an aqueous solution comprising calcium salt, ammonium salt, and solids (Devenney, Abstract).
Regarding claim 36, as applied to claim 34, Devenney in view of in view of Eloneva and Hassibi further teaches in some embodiments, the solids are not separated from the aqueous solution and the aqueous solution is contacted with the carbon dioxide to produce the precipitation material further comprising the solids (Devenney, column 4, 5th paragraph).
Regarding claim 37, as applied to claim 27, Devenney in view of in view of Eloneva and Hassibi further discloses the step (iii) of removing and optionally recovering the residual ammonium salt from the precipitation material comprises heating the precipitation material between between about 300-360° C, to evaporate the ammonium salt from the precipitation material with optional recovery by condensation of the ammonium salt (Devenney, column 2, bottom paragraph).
Further regarding claim 38, as applied to claim 27, Devenney in view of in view of Eloneva and Hassibi further discloses recovering the residual ammonium salt from the supernatant aqueous solution (Devenney, column 1, 4th paragraph); in some embodiments, the method further comprises recovering the residual ammonium salt from the supernatant aqueous solution using recovery process selected from the group consisting of thermal decomposition, pH adjustment, reverse osmosis, multi-stage flash, multi-effect distillation, vapor recompression, distillation, and combinations thereof (Devenney, column 2, 1st paragraph).
Regarding claim 40, as applied to claim 39, Devenney in view of in view of Eloneva and Hassibi further teaches the method further comprises after step (iii) adding water to the precipitation material comprising reactive vaterite and transforming the vaterite to aragonite wherein the aragonite sets and hardens to form cement or cementitious product (Devenney, column 2, 2nd paragraph).
Regarding claim 41, as applied to claim 40, Devenney in view of in view of Eloneva and Hassibi further teaches the cementitious product is a formed building material selected from masonry unit, construction panel, conduit, basin, beam, column, slab, acoustic barrier, insulation material, and combinations thereof (Devenney, column 2, 3rd paragraph).
Regarding claim 42, as applied to claim 27, Devenney in view of in view of Eloneva and Hassibi further teaches the method further comprises adding an additive to the aqueous solution at the contacting step wherein the additive is a fatty acid ester (Devenney, column 4, 4th paragraph); some examples of inorganic additive or organic additive in the compositions provided herein, include, but not limited to, sodium decyl sulfate, lauric acid, sodium salt of lauric acid, urea, citric acid, sodium salt of citric acid, phthalic acid, sodium salt of phthalic acid, taurine, creatine, dextrose, poly(n-vinyl-1-pyrrolidone), aspartic acid, sodium salt of aspartic acid, magnesium chloride, acetic acid, sodium salt of acetic acid, glutamic acid, sodium salt of glutamic acid, strontium chloride, gypsum, lithium chloride, sodium chloride, glycine, sodium citrate dehydrate, sodium bicarbonate, magnesium sulfate, magnesium acetate, sodium polystyrene, sodium dodecylsulfonate, poly-vinyl alcohol, or combination thereof (Devenney, column 31, 3rd paragraph).
Regarding claim 43, as applied to claim 27, Devenney in view of in view of Eloneva and Hassibi further teaches the precipitation material comprising vaterite is a particulate composition with an average particle size of 0.1-100 microns; in certain embodiments, unimodel or multimodal, e.g., bimodal or other, distributions are present (Devenney, column 34, bottom paragraph).
Regarding claim 44, as applied to claim 27, Devenney in view of in view of Eloneva and Hassibi further teaches the composition may further include Ordinary Portland Cement (OPC) (reading upon Portland cement) (Devenney, column 35, 2nd paragraph); in certain embodiments, the composition may further include an aggregate (Devenney, column 35, bottom paragraph).
Regarding claim 45, as applied to claim 27, Devenney in view of in view of Eloneva and Hassibi further teaches in some embodiments, the precipitation material in wet or dried form, may be mixed with one or more admixtures to impart one or more properties to the product, examples of the admixtures include, but not limited to, set accelerators, set retarders, air-entraining agents, foaming agents, defoamers, alkali-reactivity reducers, bonding admixtures, dispersants, coloring admixtures, corrosion inhibitors, damp-proofing admixtures, gas formers, permeability reducers, pumping aids, shrinkage compensation admixtures, fungicidal admixtures, germicidal admixtures, insecticidal admixtures, rheology modifying agents, finely divided mineral admixtures, pozzolans, aggregates, wetting agents, strength enhancing agents, water repellents, reinforced material such as fibers, and any other admixture (Devenney, column 37, 2nd paragraph).
Regarding claim 46, as applied to claim 45, Devenney in view of in view of Eloneva and Hassibi further teaches the compositions of the invention are employed with reinforced material such as fibers, e.g., where fiber-reinforced product is desirable; fibers can be made of zirconia containing materials, aluminum, glass, steel, carbon, ceramic, grass, bamboo, wood, fiberglass, or synthetic materials (Devenney, column 39, 2nd paragraph).
Response to Arguments
Upon further consideration of the term “reduce forming” of claim 27, and applicant’s remarks on pages 6-7 regarding this term, the 35 U.S.C. 112b rejection is withdrawn from the record.
Applicant primarily argues:
“Devenney does not teach or suggest that one should calcine limestone themselves at controlled temperatures to produce soft burnt lime.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
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 Devenney does not expressly teach the claimed calcining limestone at a temperature high enough to form soft burnt lime. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103, which admits that Devenney does not disclose the entire claimed invention. Rather, Eloneva and Hassibi are relied upon to teach claimed elements missing from Devenney, with proper motivation to combine, namely, to provide a source of CaO for CaCO3 formation (Eloneva, page 333, Fig.6.) and to obtain CaO with small hair-like cracks and high-activity (Hassibi, page 8, bottom paragraph). See pages 6-7 of the Office Action mailed 08/06/2025.
Applicant further argues:
“Eloneva similarly uses steelmaking slag that has already been processed at high temperatures during steel production. Like Devenney, Eloneva focuses on waste utilization and does not teach or suggest the calcination step of claim 27.”
Remarks, p. 7
The Examiner respectfully traverses as follows:
Eloneva teaches limestone is converted to CaO (i.e., lime) after a lime kiln (i.e., calcined), as an alternative to slag processing; in order to provide a CaO source to produce CaCO3 (Eloneva, page 333, Fig.6.), as set forth on page 6 of the Office Action mailed 08/06/2025.
Applicant further argues:
“However, Hassibi teaches an entirely different process with a different end product. Hassibi is directed to "lime slaking"-hydrating calcium oxide with water to produce calcium hydroxide slurry for water treatment and air pollution control. Hassibi does not mention nitrogen-containing salts, ammonium chloride, or carbonation to produce calcium carbonate precipitates. Hassibi's focus is making Ca(OH)2 slurry by adding water to CaO, not making CaCO3 precipitates by adding nitrogen-containing salts and CO2.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
It is noted that while Hassibi does not disclose all the features of the present claimed invention, Hassibi is used as teaching reference, namely calcining the limestone at a temperature high enough to form soft burnt lime, in order to obtain CaO with small hair-like cracks and high-activity, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant further argues:
“There is no motivation to combine these references. Devenney and Eloneva are motivated by waste utilization-using already available by-products from other processes. A skilled artisan reading these references would understand them to teach obtaining starting materials from external sources, not producing fresh lime through calcination. There is no teaching or suggestion to look to Hassibi.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
Firstly, Devenney and Eloneva are related art, as Devenney is drawn to production of calcium carbonate and Eloneva is drawn to production of calcium carbonate by using ammonium salts as a solvent.
Eloneva provides proper motivation to combine, namely limestone is converted to CaO (i.e., lime) after a lime kiln (i.e., calcined), as an alternative to slag processing; in order to provide a CaO source to produce CaCO3 (Eloneva, page 333, Fig.6.).
Therefore, it is the examiner’s position that it would be obvious to one of ordinary skill in the art to combine Devenney with Eloneva, in order to provide a source of CaO for CaCO3 formation, absent evidence to contrary.
Secondly, Devenney and Hassibi are related art, as Devenney is drawn to production of calcium carbonate and Hassibi is drawn to lime (i.e., CaO).
Hassibi provides proper motivation to combine, namely a soft-burned lime is full of small hair-like cracks where CO2 has escaped from the limestone during the calcination process; when the lime is exposed to water, the water penetrates the cracks and the hydration take place quickly (Hassibi, page 8, bottom paragraph).
Therefore, it is the examiner’s position that it would be obvious to one of ordinary skill in the art to combine Devenney with Hassibi, in order to calcine limestone at a temperature high enough to obtain CaO that is soft burned lime, in order to obtain CaO with small hair-like cracks and high-activity, absent evidence to contrary.
Applicant further argues:
“Even if a skilled artisan consulted Hassibi, that reference points in a different direction toward traditional slaking with water to make Ca(OH)2, not toward nitrogen-salt dissolution and carbonation to make CaCO3.”
Remarks, p. 8
The Examiner respectfully traverses as follows:
Hassibi is only used as teaching reference in order to teach calcining the limestone at a temperature high enough to form soft burnt lime. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference Devenney. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Applicant further argues:
“Moreover, as the Inventor Declaration explains: "Dissolving soft-burnt lime in an
ammonium salt has many benefits by producing a calcium salt through efficient dissolution and lower amounts of residue which we have found to be crucial in the operation of the Redding green cement plant." (Inventor Declaration, 8). Further: "The advantage of the dissolution of soft-burnt lime in a nitrogen containing salt is clearly seen in the figure, which makes for more efficient and quicker separation of solid impurities followed by more efficient precipitation process." (Inventor Declaration, 9, Fig. 2).
This recognition-that lime quality from calcination affects downstream process
efficiency-is a breakthrough. The prior art does not recognize or address this integrated approach. Devenney and Eloneva focus on waste utilization with no control over feedstock quality. Hassibi focuses on traditional slaking, not nitrogen-salt dissolution and carbonation.
The Inventor Declaration establishes further unexpected results, including:
. Efficient dissolution with low residue from using soft burnt lime (Inventor Declaration, 8- 9), which was not predicted by Devenney's use of carbide lime or Eloneva's use of slag.
. Integrated CO2 capture of approximately 60% mineralized back into the cement product
(Inventor Declaration, 5, Fig. 1)-a level not predicted by the non-integrated processes of
the prior art.
. High-purity vaterite production suitable for green cement applications. (Inventor
Declaration, 10-11).”
Remarks, p. 8-9;
Affidavit, items 5, 8-11
The Examiner respectfully traverses as follows:
The data to show advantageous effects by the method comprising calcining limestone at a temperature high enough to form soft burnt lime in the present invention is not persuasive for the following reasons.
Firstly, the data is not commensurate in scope with the scope of the claims. The data in the specification only provides support for a method, lime is directly added to a specific N-containing salt, with specific ratios, at a specific temperature, to produce a clear filtrate, specific amount of CO2 is passed to the clear filtrate at a specific temperature and producing vaterite slurry;
while the specification broadly recites a method, comprising: calcining any limestone at any temperature high enough to form soft burnt lime and a gaseous stream comprising carbon dioxide, wherein the temperature is set to reduce forming of dead burnt lime; dissolving the soft burnt lime in any aqueous solution comprising N-containing salt, of any amount, at any temperature, to produce an aqueous solution comprising calcium salt; and treating the aqueous solution comprising calcium salt with any gaseous stream comprising carbon dioxide, of any amount, at any temperature, to form a precipitation material comprising calcium carbonate, wherein the calcium carbonate comprises vaterite, aragonite, calcite, precipitated calcium carbonate (PCC), or combination thereof.
Secondly, the FIG.2 referenced in item 5 of Affidavit does not provide a proper comparison, as FIG.2 does not provide any details on how the two processes are conducted. Therefore, it is unclear what contributes to the observed process performance difference.
Thirdly, items 8-9 of Affidavit are only conclusory statements, and does not provide sufficient support, i.e., data for any unexpected results associated with the method of the presently claimed.
Lastly, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Given the method in Devenney in view of Eloneva and Hassibi is substantially identical to the method used in the present invention, as set forth on pages 4-7 of Office Action mailed 08/06/2025, it is clear that the method in Devenney in view of Eloneva and Hassibi would intrinsically have the substantially identical advantages as the present invention.
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
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELING ZHANG whose telephone number is (571)272-8043. The examiner can normally be reached Monday - Friday: 9:00am-5:00pm EST.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732