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 04/28/2026.
Claims 1-8 are presently pending and under examination; claims 1-8 are amended.
The objections to the drawings are withdrawn in light of the amendments to the specification.
The objections to claims 1-8 are withdrawn in light of the amendments to the claims; new objections to claims 1-3 and 5 are present herein in light of the amendments to the claims.
The rejections of claims 1-8 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejection of claims 1-8 over OYTUN is maintained.
New grounds of rejection are present herein in light of the amendments to the claims.
Claim Objections
Claims 1-3 and 5 are objected to because of the following informalities:
In claim 1, “45μm” should read “45 μm” (see claim 1 at line 27).
In claims 1 and 2, “particles passed through” should read “particles pass through” (see claim 1 at line 11 and claim 2 at line 12).
In claims 1 and 2, “particles retained” should read “particles are retained” (see claims 1 and 2 each at lines 23 and 24 (two occurrences each)).
In claim 3, “has 4 or more” should read “have 4 or more” (see claim 3 at line 4).
In claim 5, “steps (b) and/or (c)” should read “steps b) and/or c)” (see claim 5 at line 2), as this is the format of the steps in claim 1 (and all other claims).
Appropriate correction is required.
Claim Interpretation
For purposes of claim interpretation, “fresh feed” as recited in claims 1-2 and 4-7 is interpreted as meaning a material that has not yet entered the ball mill.
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 2-5 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 2 recites “adding a first grinding agent system and a second grinding agent system, which is different from the first grinding agent system, to the fresh feed to produce a second treated feed” (see claim 2 at lines 8-10) and recites “the second treated feed” (see claim 2 at line 19); this language renders the metes and bounds of the claim indefinite as it is not clear how there would be a “second treated feed” when there is no first treated feed recited. It is not clear whether the method is supposed to include some unrecited first treated feed. It is noted that a “first treated feed” is recited in claim 1, but this has nothing to do with independent claim 2, which recites no first treated feed.
For purposes of examination, Examiner treated claim 2 as though it just recites a treated feed rather than a second treated feed, i.e., as though no unrecited first treated feed is required. Clarification is requested.
Claim 3 recites “wherein one or more grinding agents that comprise the first grinding agent system… has 4 or more heteroatoms, wherein at least one of the heteroatoms is the oxygen atom” (see claim 3 at lines 1-5); the only oxygen atom positively recited in claim 1 which has proper antecedent basis is the oxygen atom that is part of the second grinding agent system, so reciting “the oxygen atom” would refer to that same oxygen atom, which does not make sense as that is part of the second grinding agent system, not the first. There is insufficient antecedent basis for “the oxygen atom” of claim 3 which is part of the first grinding agent system.
For purposes of examination, Examiner treated claim 3 as though it recites “an oxygen atom” instead of “the oxygen atom”. Clarification is requested.
Claim 4 recites “The method according to claim 1, wherein the first and second grinding agent systems are added in step b) in a dosage between 0.01% and 0.5% by weight of the fresh feed particles” (see claim 4 at lines 1-3). It is not clear from this language whether the first and second grinding agent systems are each individually added in a dosage between 0.01% and 0.5% by weight or are added so the total dosage of both is between 0.01% and 0.5% by weight. Additionally, claim 1 only recites adding the second grinding agent system in step c), not in step b), so it is not clear where or to what the second grinding agent system is meant to be added in step b) as no addition in step b) is recited. It is noted that both the first and second grinding agent systems are added in step b) in claim 2, but not in claim 1, from which claim 4 depends.
For purposes of examination, Examiner treated claim 4 as meaning that the total dosage of the first and second grinding systems added in step b) is between 0.01% and 0.5% by weight and the addition of the second grinding agent system in step b) is optional; e.g., if 0 wt.% of the second grinding agent system is added in step b) then the amount of the first grinding agent system added would be between 0.01% and 0.5% by weight. Clarification is requested.
Claim 5 recites “The method according to claim 1, wherein the first and second grinding agent systems are added in steps (b) and/or (c) in a dosage between 0.01% and 0.5% by weight of the fresh feed particles” (see claim 5 at lines 1-3). It is not clear from this language whether the first and second grinding agent systems are each individually added in a dosage between 0.01% and 0.5% by weight or are added so the total dosage of both is between 0.01% and 0.5% by weight, or whether the dosage added in each step is between 0.01% and 0.5% or the dosage added in both steps, in total, is between 0.01% and 0.5%. Additionally, claim 1 only recites adding the second grinding agent system in step c), not in step b), and only recites adding the first grinding agent system in step b), not in step c), so it is not clear where or to what the second grinding agent system is meant to be added in step b) as no addition in step b) is recited, or where or to what the first grinding agent system is meant to be added in step c) as no addition in step c) is recited. It is also unclear from this language whether or not addition of the first grinding agent in step b) and the second grinding agent in step c) is actually required or is optional, as claim 1 indicates that these are required limitations but claim 5 recites “the first and second grinding agents are added in steps (b) and/or (c)” which seems to indicate that grinding agents only need to be added in one step b) or c), and not in both, i.e., that addition of the first grinding agent system in step b) and the second grinding agent system in step c) is optional.
For purposes of examination, Examiner treated claim 5 as meaning that the total dosage of the first and second grinding systems added in step b) is between 0.01% and 0.5% by weight, and/or the total dosage of the first and second grinding systems added in step c) is between 0.01% and 0.5% by weight, and the addition of the second grinding agent system in step b) and/or of the first grinding agent in step c) is optional; e.g., if 0 wt.% of the second grinding agent system is added in step b) then the amount of the first grinding agent system added would be between 0.01% and 0.5% by weight. Clarification is requested.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Oytun, et al. (U.S. 2022/0162130-A1) (hereinafter, “OYTUN”).
Regarding claim 1, OYTUN teaches a method to increase grinding efficiency of a fresh feed in a cement grinding system (see OYTUN generally at Abstract and paragraphs [0067]-[0071]), the system comprising a multi-chamber cement ball mill, a separator, and a grits return line configured to pass return grits from the separator to the ball mill (see OYTUN at Fig. 1 and paragraphs [0017], [0062] and [0109]-[0113]), during a cement manufacturing process (see OYTUN generally at Abstract and paragraphs [0067]-[0071]), the method comprising:
providing a fresh feed comprising fresh feed particles to a multi-chamber cement ball mill (see OYTUN at Abstract and paragraph [0017], teaching introducing a hydraulic binder into a first chamber of a multi-chamber horizontal grinder including a first and last chamber, wherein the grinder is a ball mill);
adding a first grinding agent system to the fresh feed to produce a first treated feed (see OYTUN at Abstract, teaching that grinding aid B is added to the hydraulic binder which is then introduced to the first chamber of the grinder);
adding a second grinding agent system, which is different from the first grinding agent system, to the return grits in the grits return line (see OYTUN at Abstract, paragraphs [0052]-[0053], [0072], [0074] and [0160], and Fig. 8, teaching adding grinding aid A, which is different from grinding aid B, at the outlet of the second chamber of the grinder, after which the material comprising grinding aid A is sent to a separator, then separator rejects (i.e., return grits) comprising grinding aid A are returned (i.e., in a grits return line) and added to the feed comprising the hydraulic binder to be re-ground);
wherein the grinding agents that comprise the second grinding agent system are characterized in that they have a molecular weight between 45 g/mol and 110 g/mol and they have a maximum of 3 heteroatoms, wherein at least one of the heteroatoms is an oxygen atom (see OYTUN at Abstract and paragraph [0048], teaching grinding aid A comprising an aminoalcohol, wherein the aminoalcohol comprises 2-8 carbon atoms and 1, 2 or 3 alcohol functions, which includes compounds falling within the claimed ranges; e.g., an aminoalcohol with 2 carbon atoms and 1 alcohol function is ethanolamine, which has a molecular weight of 61.08 g/mol and two heteroatoms, one nitrogen and one oxygen; 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)).);
grinding the first treated feed obtained in step b) and a material obtained in step c) together in the multi-chamber cement ball mill until the material reaches a desired fineness to produce a first ground material (see OYTUN at Abstract and paragraphs [0015] and [0184], teaching grinding in the first chamber until it reaches a desired fineness which is of sufficient reduced size for finer grinding in the following chamber); and
further grinding the first ground material obtained in step d) until the material reaches a desired fineness to obtain a final ground material (see OYTUN at Abstract and paragraphs [0073] and [0174], teaching further grinding the material in the last chamber to obtain ground composition C having a desired fineness).
OYTUN fails to explicitly mention (i) that the particles of the fresh feed have a fineness characterized in that 50% or less of said particles pass through a 1 mm sieve; (ii) that the material obtained in step d) has a fineness characterized in that not more than 1 wt.% of the particles are retained on a 1 mm sieve and not more than 50 wt.% of the particles are retained on a 90 μm sieve; or (iii) that the material obtained in step d) is further ground until the material reaches a fineness of 40 wt.% retained on a 45 μm sieve.
Regarding (i)-(iii) above, OYTUN teaches that the hydraulic binder provided to the first chamber has a large particle size, and teaches that the particles in the first chamber are ground to a Blaine fineness of, e.g., 1,100 to 1,200 cm2/g, and that the particles in the second chamber are ground to a Blaine fineness of, e.g., 2,200 cm2/g (see OYTUN at paragraphs [0015], [0035], [0107] and [0155] and Fig. 7). Applicant’s specification discloses that the particle size obtained in step d) having a fineness characterized in that not more than 1 wt.% of the particles are retained on a 1 mm sieve and not more than 50 wt.% of the particles are retained on a 90 μm sieve corresponds to a Blaine fineness of 800 to 3,200 cm2/g (see Applicant’s specification at pg. 21, lines 12-17 and Table 5), and discloses that the particle size obtained in step e) having a fineness of 40 wt.% retained on a 45 μm sieve corresponds to a Blaine fineness of approximately 2,200 g/cm2 (see Applicant’s specification at pg. 3, lines 23-25); therefore, the particles of OYTUN would be expected to have fineness lying within or overlapping with the claimed ranges in (ii)-(iii) above as they can have the same corresponding Blaine fineness values for steps d) and e) as those disclosed in Applicant’s specification, and the particles of step (i) above would be expected to overlap with the claimed range as these particles must be larger than the particles of steps d) and e). 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). 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)).
Further regarding (i)-(iii) above, OYTUN teaches that that the particle size of the hydraulic binder affects reactivity and rheological properties, that the specific surface area of the cement particles and hence their particle size governs the interactions between the grinding aids and the cement, that particles in the first chamber must be ground until they are of sufficient reduced size for finer grinding in the following chamber, and that the parameters of the grinder should be optimized to reach the desired fineness (see OYTUN at paragraphs [0002], [0007], [0015], [0035], [0043], [0144] and [0184]). OYTUN therefore explicitly teaches that the particle sizes at each stage (including the particle size of the feed to the grinder, the particle size after the first stage of grinding, and the particle size after the second stage of grinding, corresponding to (i)-(iii) above) are result-effective variables which should 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 to vary, through routine experimentation and optimization, the particle sizes of the fresh feed material, the material of step d), and the material of step e), including particle sizes meeting the limitations of (i)-(iii) above, in order to optimize process parameters, such as amount of grinding aid needed and interactions between the grinding aids and the binder, extent of grinding required in each stage to achieve the desired product, amount of separator rejects returned to the feed, etc., and to obtain desired hydraulic binder characteristics including improved quality, increased reactivity and desired rheological properties as taught by OYTUN (see OYTUN at paragraphs [0002], [0007], [0015], [0035], [0043], [0144] and [0184]).
Regarding claim 2, OYTUN teaches a method to increase grinding efficiency of a fresh feed in a cement grinding system (see OYTUN generally at Abstract and paragraphs [0067]-[0071]), the system comprising a multi-chamber cement ball mill, a separator, and a grits return line configured to pass return grits from the separator to the ball mill (see OYTUN at Fig. 1 and paragraphs [0017], [0062] and [0109]-[0113]), during a cement manufacturing process (see OYTUN generally at Abstract and paragraphs [0067]-[0071]), the method comprising:
providing a fresh feed comprising fresh feed particles to a multi-chamber cement ball mill (see OYTUN at Abstract and paragraph [0017], teaching introducing a hydraulic binder into a first chamber of a multi-chamber horizontal grinder including a first and last chamber, wherein the grinder is a ball mill);
adding a first grinding agent system (see OYTUN at Abstract, teaching that grinding aid B is added to the hydraulic binder which is then introduced to the first chamber of the grinder) and a second grinding agent system, which is different from the first grinding agent system, to the fresh feed to produce a treated feed (see OYTUN at Abstract and paragraphs [0052]-[0053] and [0074], teaching adding separator rejects comprising grinding aid A, which is different than grinding aid B, to the hydraulic binder feed comprising grinding aid B);
wherein the grinding agents that comprise the second grinding agent system are characterized in that they have a molecular weight between 45 g/mol and 110 g/mol (see OYTUN at Abstract and paragraph [0048], teaching grinding aid A comprising an aminoalcohol, wherein the aminoalcohol comprises 2-8 carbon atoms and 1, 2 or 3 alcohol functions, which includes compounds falling within the claimed range; e.g., an aminoalcohol with 2 carbon atoms and 1 alcohol function is ethanolamine, which has a molecular weight of 61.08 g/mol; 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)).);
grinding the treated feed obtained in step b) in the multi-chamber cement ball mill until the material reaches a desired fineness to produce a first ground material (see OYTUN at Abstract and paragraphs [0015] and [0184], teaching grinding in the first chamber until it reaches a desired fineness which is of sufficient reduced size for finer grinding in the following chamber); and
further grinding the first ground material obtained in step d) until the material reaches a desired fineness to produce a final ground material (see OYTUN at Abstract and paragraphs [0073] and [0174], teaching further grinding the material in the last chamber to obtain ground composition C having a desired fineness).
OYTUN fails to explicitly mention (i) that the particles of the fresh feed have a fineness characterized in that 50% or less of said particles pass through a 1 mm sieve; (ii) that the material obtained in step d) has a fineness characterized in that not more than 1 wt.% of the particles are retained on a 1 mm sieve and not more than 50 wt.% of the particles are retained on a 90 μm sieve; or (iii) that the material obtained in step d) is further ground until the material reaches a fineness of 40 wt.% retained on a 45 μm sieve.
Regarding (i)-(iii) above, OYTUN teaches that the hydraulic binder provided to the first chamber has a large particle size, and teaches that the particles in the first chamber are ground to a Blaine fineness of, e.g., 1,100 to 1,200 cm2/g, and that the particles in the second chamber are ground to a Blaine fineness of, e.g., 2,200 cm2/g (see OYTUN at paragraphs [0015], [0035], [0107] and [0155] and Fig. 7). Applicant’s specification discloses that the particle size obtained in step d) having a fineness characterized in that not more than 1 wt.% of the particles are retained on a 1 mm sieve and not more than 50 wt.% of the particles are retained on a 90 μm sieve corresponds to a Blaine fineness of 800 to 3,200 cm2/g (see Applicant’s specification at pg. 21, lines 12-17 and Table 5), and discloses that the particle size obtained in step e) having a fineness of 40 wt.% retained on a 45 μm sieve corresponds to a Blaine fineness of approximately 2,200 g/cm2 (see Applicant’s specification at pg. 3, lines 23-25); therefore, the particles of OYTUN would be expected to have fineness lying within or overlapping with the claimed ranges in (ii)-(iii) above as they can have the same corresponding Blaine fineness values for steps d) and e) as those disclosed in Applicant’s specification, and the particles of step (i) above would be expected to overlap with the claimed range as these particles must be larger than the particles of steps d) and e). 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). 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)).
Further regarding (i)-(iii) above, OYTUN teaches that that the particle size of the hydraulic binder affects reactivity and rheological properties, that the specific surface area of the cement particles and hence their particle size governs the interactions between the grinding aids and the cement, that particles in the first chamber must be ground until they are of sufficient reduced size for finer grinding in the following chamber, and that the parameters of the grinder should be optimized to reach the desired fineness (see OYTUN at paragraphs [0002], [0007], [0015], [0035], [0043], [0144] and [0184]). OYTUN therefore explicitly teaches that the particle sizes at each stage (including the particle size of the feed to the grinder, the particle size after the first stage of grinding, and the particle size after the second stage of grinding, corresponding to (i)-(iii) above) are result-effective variables which should 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 to vary, through routine experimentation and optimization, the particle sizes of the fresh feed material, the material of step d), and the material of step e), including particle sizes meeting the limitations of (i)-(iii) above, in order to optimize process parameters, such as amount of grinding aid needed and interactions between the grinding aids and the binder, extent of grinding required in each stage to achieve the desired product, amount of separator rejects returned to the feed, etc., and to obtain desired hydraulic binder characteristics including improved quality, increased reactivity and desired rheological properties as taught by OYTUN (see OYTUN at paragraphs [0002], [0007], [0015], [0035], [0043], [0144] and [0184]).
Regarding claim 3, as applied to claim 1 above, OYTUN teaches a method according to claim 1, wherein one or more grinding agents that comprise the first grinding agent system added in step b) have a molecular weight above 110 g/mol and have 4 or more heteroatoms, wherein at least one of the heteroatoms is an oxygen atom (see OYTUN at paragraphs [0021]-[0028], teaching that grinding aid B may comprise an aminoalcohol or salt thereof, e.g., triethanolamine (TEA), which has a molecular weight of 149.19 g/mol and has 4 heteroatoms, one nitrogen and 3 oxygens).
Regarding claim 4, as applied to claim 1 above, OYTUN teaches a method according to claim 1, wherein the first and second grinding agent systems are added in step b) in a dosage overlapping with and thereby rendering obvious the claimed range of between 0.01% and 0.5% by weight, based on the weight of the particles of the fresh feed (see OYTUN at paragraph [0033], teaching introducing grinding aid B into the first chamber in a proportion of 50 to 2,500 grams per tonne of hydraulic binder, i.e., 0.005% to 0.25% by weight). 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 claim 5, as applied to claim 1 above, OYTUN teaches a method according to claim 1, wherein the first and second grinding agent systems are added in steps b) and/or c) a dosage overlapping with and thereby rendering obvious the claimed range of between 0.01 % and 0.5% by weight, based on the weight of the particles of the fresh feed (see OYTUN at paragraph [0056], teaching adding grinding aid A in a proportion of 50 to 2,500 grams per tonne of hydraulic binder, i.e., 0.005% to 0.25% by weight). 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 claim 6, as applied to claim 1 above, OYTUN teaches a method according to claim 1, wherein the adding of the first grinding agent system to the fresh feed in step b) is performed in at least one of a weight feeder/conveyor belt and/or in a mill fresh feed chute (see OYTUN at paragraph [0109] and Figs. 1 and 8, teaching adding grinding aid B to the fresh feed inlet line to the cement ball mill grinder, i.e., the feed chute).
Regarding claim 7, as applied to claim 1 above, OYTUN teaches a method according to claim 1, wherein the total weight % of the first and second grinding agent systems overlaps with and thereby renders obvious the claimed range of between 0.02% and 1.0% by weight, based on the weight of the particles of the fresh feed (see OYTUN at paragraphs [0033] and [0056], teaching adding grinding aids A and B each in a proportion of 50 to 2,500 grams per tonne of hydraulic binder, i.e., 0.005% to 0.25% by weight, i.e., the total amount of both grinding agent systems added is 0.01% to 0.5% by weight). 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 claim 8, as applied to claim 1 above, OYTUN teaches a method according to claim 1, wherein the multi-chamber cement ball mill is a two-chamber cement ball mill comprising a first and second chamber, and wherein the grinding of step d) and further grinding of step e) are carried out in the first and second chamber, respectively (see OYTUN at Abstract and paragraphs [0086]-[0087]).
Response to Arguments
Applicant's arguments filed 04/28/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(b) for claims 2-5 as set forth above.
Applicant argues:
“Oytun Yazan fails to teach or suggest adding the second grinding agent to the return grits in the grits return line… Oytun Yazan repeatedly and explicitly teaches adding the second grinding aid into the last chamber of the grinder, before the material is sent to the separator” (see Remarks at pg. 8).
“Oytun Yazan fails to teach or suggest adding both grinding agent systems to a fresh feed… Oytun Yazan repeatedly and explicitly teaches adding the second grinding aid into the last chamber of the grinder, before the material is sent to the separator” (see Remarks at pg. 8).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because OYTUN does not teach or suggest adding the second grinding agent to the return grits in the return grits line, the Examiner respectfully disagrees. The limitation recited by claim 1 is “adding a second grinding agent system… to the return grits in the grits return line”. As discussed in the rejection above, this limitation is explicitly taught by OYTUN. Via the separator, the second grinding agent system is added to the return grits in the grits return line. Although the specific injection point for the second grinding agent is after the second chamber of the grinder, the second grinding agent system is still added to the return grits in the grits return line. The return grits in the grits return line comprise the second grinding agent system, therefore the second grinding agent system has been added to the return grits in the grits return line. The claim does not require that a fresh feed consisting of only the second grinding agent system is individually injected at the grits return line; it only requires that the second grinding agent system is added to the return grits in the grits return line. This claimed limitation is explicitly disclosed by the prior art. Similarly, as set forth in the rejection of claim 2 above, OYTUN explicitly teaches the claimed limitation of adding both grinding agent systems to the fresh feed. 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).
Additionally, MPEP § 2144.04(IV)(C) states that selection of any order of mixing ingredients and of any order of performing process steps is prima facie obvious. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“Oytun Yazan fails to teach or suggest a fineness wherein not more than 1 wt.% of the particles retained on a 1 mm sieve and not more than 50 wt.% of the particles retained on a 90 μm sieve… The Office Action argues that… the Blaine fineness values disclosed by Oytun Yazan… allegedly overlap with or are analogous to the fineness values disclosed in Applicant’s specification. The Office Action concludes it would be obvious for a person skilled in the art to optimize the process to arrive at the claimed fineness ranges through “routine experimentation”… the processes are fundamentally different… these values define the specific state of the material at key points in a novel process. The argument of “routine optimization” is weakened when the variable being optimized is part of a non-obvious combination of steps” (see Remarks at pg. 9 and 12-13).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the claimed particle sizes cannot be obvious because the combination of process steps is non-obvious, the Examiner respectfully disagrees. As discussed above, OYTUN explicitly teaches the process steps as claimed, and further, MPEP § 2144.04(IV)(C) states that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. Additionally, as set forth in the rejections above, OYTUN teaches grinding in the first chamber until it reaches a desired fineness which is of sufficient reduced size for finer grinding in the following chamber (see OYTUN at Abstract and paragraphs [0015] and [0184]). OYTUN teaches that the particles in the first chamber are ground to a Blaine fineness of, e.g., 1,100 to 1,200 cm2/g (see OYTUN at paragraphs [0015], [0035], [0107] and [0155] and Fig. 7). Applicant’s specification discloses that the particle size obtained in step d) having a fineness characterized in that not more than 1 wt.% of the particles are retained on a 1 mm sieve and not more than 50 wt.% of the particles are retained on a 90 μm sieve corresponds to a Blaine fineness of 800 to 3,200 cm2/g (see Applicant’s specification at pg. 21, lines 12-17 and Table 5); therefore, the particles of OYTUN would be expected to have fineness lying within or overlapping with the claimed ranges. 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). 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)). OYTUN also explicitly teaches that the particle sizes at each stage are result-effective variables which should be optimized by one of ordinary skill in the art (see OYTUN at paragraphs [0002], [0007], [0015], [0035], [0043], [0144] and [0184]). 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). These are explicit teachings of OYTUN regarding the particle size of the material at each step which render the claimed ranges obvious, regardless of any sequence of adding the grinding aids.
Therefore, for at least these reasons the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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 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
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