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 .
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions/groups there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/6/2025
Applicant's election with traverse of Group I claims 1-10 in the reply filed on 10/6/2025 is acknowledged. The traversal is on the ground(s) that there is no burden as any art found for one group would overlap art for the other. This is not found persuasive because: applicant has not expressly indicated that the groups are obvious variants The groups possess separate classification and/or subclassification establishing recognition in the art as separate fields of endeavor and require the use of different search queries as more fully set forth in the restriction action not likely to find art pertinent to the other (i.e. mix, mold, cure as the composition does not require same).
The requirement is still deemed proper and is therefore made FINAL.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/28/2023 has been considered by the examiner.
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al US 2021/0061714 (published 3/4/2021 more than one year prior to the effective filing date of the instant application of 4/12/22)
Regarding Claims 1-10:
Tan et al US 2021/0061714 (published 3/4/2021 more than one year prior to the effective filing date of the instant application of 4/12/22) discloses a brick comprising cement, sand and pyrolysis char where the mass ratio of sand replaced by pyrolysis char was 30, 40 and 50 wt. % [0109]
Tan discloses building material a mixture of 10-40 % cement and pyrolysis char 60-90 wt.% [0010]
A char brick is fabricated with char sand and cement [0075] (meeting the limitation for sand cement pyrolysis char composition of claim 1) Fig 120 The pyrolysis char is in ranges of 20-70 wt.% or 30 to 60 wt.% [0076](within the range of claim 1 meeting the limitation for pyrolysis char) the sand the cement is in a range of 10-35 wt.% [0077] (meeting the limitation of claim 1 for cement overlapping the claimed range) The bricks may be cured [0154]
[0142] In order to investigate the particle-size (PZ) impact on the textural properties of the example char bricks, two different particle sizes of the pyrolysis chars were obtained by sieving. The particle sizes of the pyrolysis char are (a) below about 0.6 mm (i.e. claimed range is 0.05 millimeters to 0.5 millimeters) and (b) between about 0.6 mm and about 1.18 mm. These two pyrolysis chars of different particles sizes were utilized to prepare char bricks, CB-0.6 and CB-1.18, as shown in FIG. 12. (overlapping the claimed particle size of 50-500 microns) See Figs 3B. 6 overlapping BET of claim 2
The composition brick has a bulk density of less than 2gcm3 [0081] (overlapping claim 7)a thermal conductivity of less than about 1 Wm/K1 [0082] (overlapping claim 8) a compressive strength of 6 MPa or more or 30 Mpa [0083] (overlapping claim 6) a moisture absorption coefficient of about 0.2 to about 0.3 for 40 mm thick sample [0085] [0150] In the moisture absorption test, the increased weight percentage was measured as a function of time at relative humidity (RH) values of 30%, 50%, and 75%. As shown in FIG. 14A and FIG. 14B, the example char brick displays a more significant moisture absorption behavior (overlapping the range of claim 4)
Pore channel size of 1nm or more[0061] Fig 6 and 7 showing pores The BET specific surface area of the pyrolysis char samples, has certain benefits, such as porosity to provide high surface area to volume ratios, which can be deployed to improve, e.g., thermal conductivity, abate noise, and reduce weight. Further these pyrolysis chars have a high degree of purity, e.g., containing little or no heavy metals or impurities such as sulfur compounds.
See Fig 10 A and B See Figures for BET/XRD/FTIR/SEM, etc. of char and brick. Table 4 shows char clay plaster BET within the claimed range.
The char is made by the same/similar process to that of the instant claims by pyrolyzing coal and possess the same/overlapping properties to that of the instant invention
Reference:
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Instant application:
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The pyrolysis char of the reference includes one that is the same as that of the instant application.
See generally instant Fig 2 to reference 3A 5B regarding intensity Fig 3 and 4 instant to reference 3B instant Fig 5 vs reference Fig 7
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Further regarding the claimed properties:
Pyrolyzed char of reference being the same / similar to that of the instant application possessing properties as below set forth when mixed with concrete in ranges which meet and/or overlap the claimed ranges to form a brick will necessarily possess the claimed properties of the instantly claimed brick in ranges which will overlap the instantly claimed ranges including but not limited to BET pore volume, water absorption, flame spread index, compressive strength, density, thermal conductivity, thermal resistance and thermal transmittance. 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) “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) “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
See MPEP 2144.05(I): "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)"
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of copending Application No. 18412016 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a composition comprising pyrolysis char and cement in ranges which overlap and which possess overlapping ranges of property values such as density, thermal conductivity, moisture absorption, pore channels, etc.. While the co-pending application does not recite particle size distribution, one of ordinary skill in the art would be able to optimize same to ensure optimal void space and compressive strength overlapping the claimed range.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure See PTO 892 accompanying this office action for art teaching cement char and sand compositions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 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, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732