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 .
The amendment dated 5 September 2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 2 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant has added the limitation “depositing…on a sterile mine bottom” to claim 2. There is no disclosure of “sterile” mine bottom in the original disclosure and Applicant’s argument that figure 2 shows a sterile mine bottom is not supported by the text in the figure—moreover figure 2 does not illustrate the depositing the mixture on the mine bottom at all as it shows intervening tailings; therefore this clearly is new matter.
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.
Claim(s) 1, 2, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xue et al. (Applicant’s Cite No. 6) in view of WO2021/180689 (“Norsk”).
Xue described a method for reusing (i.e. revegetation) of ore concentrate waste (i.e. red mud) including the stages of generating a solid or pasty residue (third page col. 2) enriching with binders (table 5 binders including gypsum, compost, vermicompost, manure, sewage sludge) and fertilizer (table 5 ) mixing with pre-existing mine tailings (sand1, seventh page col. 2) depositing on terrain (not explicitly “mined “ terrain) .
Xue describes several binders and fertilizer, but lacks explicit disclosure of the at least two binders and fertilizer together and also differs from the claimed invention in the features of the depositing on mined terrain and depositing the topsoil layer.
Regarding the at least two binders and fertilizer: Examiner finds that modifying Xue to arrive at the claimed “enriching with at least two binders and fertilizer” amounts to an obvious combination2. For example, one would have found it obvious to have used gypsum, sewage sludge, and compost (binders) and inorganic fertilizer together—therefore arriving at the claimed enriching with at least two binders and fertilizer.
Norsk—in the same filed of endeavor—described a process of reusing ore concentrate waste including the steps of depositing on mined terrain (fig. 5 3rd step ) and depositing topsoil on top ( fig 5 4th step) and Norsk describes this as advantageous in order to return the tailings back to their original location (page 1 last paragraph)
It would therefore have been obvious to one of ordinary skill in the art to have further modified Xue to have included the steps of depositing on mined terrain and depositing topsoil on top as called for in claim 1.
Regarding claim 2: as noted above, this claim includes new matter; however depositing enriched tailings on the sterile mine bottom is illustrated by Norsk because one of ordinary skill in the art would understand that below the bauxite/overburden in the drawings would be bedrock or undisturbed earth—i.e. the “sterile mine bottom”
Regarding claim 5 (see references cited in the footnotes which show inherency) the proposed combination (i.e. including sewage sludge3 and compost4) would inherently include distinct sources of labile and recalcitrant C and the inorganic fertilizer of Xue is essentially a mineral fertilizer as claimed.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xue et al. (Applicant’s Cite No. 6) in view of WO2021/180689 (“Norsk”) as applied to claim 1 above, and further in view of Swisher US11952319.
The proposed combination of Xue and Norsk lacks the “corrected” soil.
Swisher is analogous art because it is concerned with the problem of treating soil to improve plant growth.
Swisher described amending soil to achieve a corrected soil for growing plants. One of ordinary skill in the art would have found it obvious to have further modified Xue to have amened the topsoil and made it a corrected soil as claimed, in order to improve growing of plants.
Response to Arguments
Applicant's arguments filed 5 September 2025 have been fully considered but they are not persuasive.
Applicant argues (page 5 of remarks) that “the art still fails to disclose or suggest the claimed method of: (1) enriching a bauxite concentration residue coproduct (RCO) with at least two binders used together and a fertilizer, (2) depositing that enriched RCO as a subsoil layer on mined land, and (3) overlying it with a topsoil layer to construct a functional Technosol (WRB/FAO sense)” however many of these features are not claimed. 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).
Applicant argues that Examiner has not articulated motivation to make the combination. Examiner points out the proposed combination of binders and fertilizer is supported by In re Kerkhoven because they are all taught as being used for the same purpose. The motivation to deposit the resulting mixture is implicit in the advantages identified by Examiner in Norsk: “advantageous in order to return the tailings back to their original location (page 1 last paragraph)”
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant also argues that ”Xue focuses exclusively on red mud, which represents a completely different category of industrial waste from Applicant's bauxite concentration residue” this is not persuasive because Applicant explicitly claims the “generating a solid or pasty residue from the ore concentrate” and one of ordinary skill in the art would recognize that red mud is generated from ore concentrate. Applicant implicitly recognizes this “Red mud constitutes the highly alkaline byproduct of the Bayer process used for alumina refining” because the Bayer process is practiced on ore concentrate. That is, one of ordinary skill in the art would understand that the bauxite is mined, then concentrated, and then subjected to the Bayer process—resulting in red mud.
Applicant’s arguments that the Xue treatments would be inappropriate or counterproductive if applied to Applicant’s materials are not persuasive because Applicant has not claimed any particular materials which are not disclosed by Xue.
Applicant alleges several “known risks” associated with sawdust, biochar, and gypsum but provides no evidence in support; and the allegation that this amounts to “teaching away” is without merit because there is no citation to the references at issue .
Applicant’s allegations of unexpected results are not persuasive because Xue also teaches the treatment methods improve plant growth.
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 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 Janine M KRECK whose telephone number is (571)272-7042. The examiner can normally be reached telework: M-F 0600-1530 EST.
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, Nicole Coy can be reached at 5712725405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Janine M Kreck/Primary Examiner, Art Unit 3672
1 “co-disposal of residue mud and sand”---Examiner finds that “residue…sand” amounts to mine tailings, broadly speaking.
2 “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)
3 Kinetics and mineralization fraction of organic matter from sewage sludge mixed with soil under controlled laboratory conditions DiogoAndré Pinheiro da Silva
4 Effect of compost application rate on carbon degradation and retention in soils Adani Fabrizio