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 .
The applicant has amended the claims adding limitations not previously considered. No new matter is submitted.
New and Amended grounds of rejection are below set forth addressing the new claim limitations.
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 1-13 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation slag a tenth of a percent to around eighty three percent… and the claim also recites in an amount of about 10 % to about 40 % which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
INTRODUCTION AND/OR CLAIM INTERPRETATION
The following introduction/claim interpretation is expressly incorporated into each and every rejection below as though fully set forth therein.
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: The appellate court held that "about" should instead be given its plain and ordinary meaning of "approximately."). MPEP 2111
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)"
While the exact ranges are not expressly taught by the cited prior art, the prior art is directed to photocatalytic building material such as cement/mortar/concrete as are the instantly claimed invention; one of ordinary skill in the art at the time of filing the invention would recognize the claimed ranges as obvious. Further: 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)
The prior art as below cited teaches ranges overlapping and/or encompassing the instantly claimed ranges. The prior art teaches points in various examples from which one of skill in the art would recognize those points as further establishing a ranges. The instant claims reciting ranges as “around” indicates a variation may be present. The prior art renders obvious the claimed ranges in the absence of evidence of criticality of ranges.
The prior art teaching the claimed composition with overlapping ranges and expressly recognizing the photocatalytic properties thereof will necessarily result in at least some product having the claimed UNI 11259 requirements. 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)
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) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Modification of CO2 capture and pore structure of hardened cement paste made with nano-TiO2 addition: Influence of water-to-cement ratio and CO2 exposure age Carlos Moro Vito Francioso Mirian Velay Lizancos publixhed March 2021 Construction and Building Materials Vol 275 15 Mach 2021 122131
(effective filing date of instant application is 9/30/22 as such this article is published more than one year prior)
Further in view of
Influence of Titanium Dioxide Nanoparticles on the Sulfate Attack upon Ordinary Portland Cement and Slag-Blended Mortars by Atta-ur-Rehman Abdul Qudoos Hong Gi Ki and Jae-Suk Ryou Department of Civil and Environmental Engineering, Hanyang University, 222, Wangsimni-ro, Seongdong-gu, Seoul 04763, Korea Materials 2018, 11(3), 356; https://doi.org/10.3390/ma11030356
Submission received: 30 January 2018 / Revised: 24 February 2018 / Accepted: 27 February 2018 / Published: 28 February 2018 (This article belongs to the Special Issue Application of Photoactive Nanomaterials in Degradation of Pollutants)
Regarding Claims 1-13:
Moro et al Modification teaches:
Carbon dioxide sequestration (i.e. this is a photocatalytic effect) of cement comprising nano-TiO.sub.2 and water to cement ratio and pore structure measured with different percentages of nano-TiO.sub.2, 0, 0.5, 1, and 2 % and three w/c ratios, 0.45, 0.5, and 0.55. curing with the carbon dioxide environment (Abstract)(meeting the limitation for photocatalytic material of nano-TiO.sub.2 overlapping the range of 0.5 % to about 3 % of amended claim 1)
The reference teaches nano TiO.sub.2 in cement hardened/cured with CO.sub.2 Four different percentages of nano-TiO2 (0%, 0.5%, 1%, 2%) (meeting the limitation for nano-TiO.sub.2 and photocatalytic material of claim 1 and claim 6-7)(rendering obvious a range of 0-2 % TiO.sub.2) and three w/c (0.45, 0.50, 0.55) (Abstract) (and meeting claims 8-9 for “around” 1 % and claim 9 for “around” 1.3 percent)
The cement includes Portland cement (see section 2.1) below meeting claim 8 for 1.3 % TiO.sub.2 and showing an example with 31% water 1.3 % TiO.sub.2 and 67.5 % cement
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Water is added (meeting claim 2)
Many researchers have examined the potential applicability of curing fresh cement composites with CO2. The chemistry beyond that process is the carbonation of the dicalcium silicate (C2S) and tricalcium silicate (C3S) . This mechanism would promote CO2 sequestration of cementitious materials, for both OPC concrete and concrete with supplementary cementitious materials . Besides, it may increase concrete durability without steel reinforcement and the compressive strength compared to specimens with standard curing . Rostami et al. showed an increase in either the sulfate and freeze-thaw resistance or the electrical resistivity after the early carbonation. They suggest that this result could be related to the modification of the microstructure of cement pastes. Another study found that the chloride penetration was reduced after the carbonation curing . Therefore, this would help to prevent issues in cementitious composites exposed to marine environments. See Fig 1 for a curing process including carbonation / CO.sub.2 exposure and (Introduction) rendering obvious CO.sub.2 curing.
While Moro Modification teaches supplementary cement materials are known to be used, Moro Modification does not teach the composition comprising a supplementary material of cement slag
(“Influence”) teaches a composition similar to that of Moro Modification.
Influence teaches titanium dioxide nanoparticles improve resistance of Ordinary Portland Cement and slag blended mortars having OPC:slag blend such as 50:50 made with water to binder ratio of 0.4 and binder to sand ratio of 1:3 having nano TiO2 added at 0, 3, 6, 9 and 12% of the binder weight (meeting the limitation for nano-TiO.sub.2 and Portland cement and slag)(meeting the limitation for slag cement overlapping the range of the amended claim)
The composition is a photo catalytic concrete (Section 1.2)
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Slag being in the composite at 8 % (750 + 750 +45 + 4500= 6045 750/6045 x 100= 12.4 % within the claimed range of claim 1.
Meeting the range of cement at 50% and range of slag at 50% of claim 1
750 cement 750 slag and 45 TiO.sub.2 for the binder 48.5 % cement, 48.5 % slag and 2.9 % TiO.sub.2
Rendering obvious the range of cement of claim 4
With 0.4 w/c makes 618 grams water or 29%
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Meeting the limitation 0.1- 5% photocatalytic material of claim 1
Meeting the limitation for photocatalytic material to be TIO.sub.2 and nanostructured of claims 6-7
Meeting the range of claim 8 for around 1 % to around 3%
Rendering obvious around 1.3 % of claim 9 by showing a range of 0-12% TiO.sub.2
Influence teaches a blend of Portland cement and slag with nano titanium dioxide prevents deteriorate sue to sulfate attack on the mortar used in concrete structures, possess lower expansion and reduced cracking with the slab blend (Conclusion)
TiO2 can clean the surface of concrete by degrading certain pollutants deposited on its surface in the presence of sunlight and can also convert harmful gases like nitrous oxides and volatile organic compounds (VOCs) to less harmful products (Background) (photocatalytic activity)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add cement slag to the composition of “Moro Modification” in ranges taught therein and additional ranges in order to impart improved resistance to deterioration and cracking to the composition and products of Moro Modification.
The prior art as above set forth teaches the claimed composition with the claimed compositional components in amounts and/or ranges which meet and/or overlap the claimed ranges. As such it should necessarily possess the claimed function and properties including but not limited to photocatalytic activity at nano-TiO.sub.2 loading of 3 % or less. 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)
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kevern et al (WO 2019/079731) further in view of Kawanaka Yotaro (JP 2001181065A)
Regarding claims 1-13:
WO 2019/079371 discloses a composition comprising:
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Slag overlapping the range of claim 1 and the titanium dioxide photocatalytic overlapping the range of claim 1 (noting it includes nano-TiO.sub.2)
The photocatalytic TiO.sub.2 is a small species and will encompass nano-TiO.sub.2 The material is photocatalytic titanium dioxide (See reference claim 9)
Kevern et al teaches an overlapping range of TiO.sub.2 of 0-10 % which includes any value or range there between (P7 L10-15)
The composition may be cured P10 L10-15 See reference Page 17 11 and 13 (Lines 15-25)
The reference does not expressly disclose the curing by carbon dioxide.
JP 2001181065 discloses a water purifying block produced from cement including Portland cement and cured with carbon dioxide and may comprise slag to harden the aggregate.
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to cure the product of WO by carbon dioxide curing as it is a suitable means of ensuring hardness of the product for a filter agglomerate.
The prior art as above set forth teaches the claimed composition with the claimed compositional components in amounts and/or ranges which meet and/or overlap the claimed ranges. As such it should necessarily possess the claimed function and properties including but not limited to photocatalytic activity at nano-TiO.sub.2 loading of 3 % or less. 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)
Response to Arguments
Applicant's arguments filed 6/17/2026 have been fully considered but they are not persuasive.
Applicant argues impermissible hindsight. This is not persuasive. As above set forth motivation to combine the reference is established (i.e. the species of supplementary cement, types of curing, both contemplated by the primary reference, etc.) In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that photocatalytic activity will occur with the claimed combination, the fact that the inventor 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).
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 argues criticality of ranges of the nano titanium dioxide and asserts optimization is not routine and also traverses asserting unexpected and superior results. This is not persuasive.
RANGES and COMBINATION:
The exact amount of nano titanium dioxide is taught in Moro as above set forth, not just overlapping ranges thereby establishing a prima facie showing of obviousness.. Moro et al Modification teaches an amount of TiO.sub.2 within the claimed range in certain recitations as above set forth, not just an overlapping range.
The ranges taught by Kevern overlap the claimed range thereby establishing a prima facie showing of obviousness. Kevern et al teaches an overlapping range of TiO.sub.2 of 0-10 % which includes any value or range there between (P7 L10-15)
As more fully above set forth the prior art individually and/or as combined teaches the claimed combination including curing.
See Keven: Keven teaches the claimed compositional components in combination as above set forth. The composition may be cured P10 L10-15 See reference Page 17 11 and 13 (Lines 15-25) and in combination teaches the curing to be CO.sub.2 curing.
See Moro Modification: nano-TiO.sub.2, 0, 0.5, 1, and 2 % and three w/c ratios, 0.45, 0.5, and 0.55. curing with the carbon dioxide environment Many researchers have examined the potential applicability of curing fresh cement composites with CO2. .. This mechanism would promote CO2 sequestration of cementitious materials, for both OPC concrete and concrete with supplementary cementitious materials …. Where the supplementary cement materials species is taught by the secondary reference.
The prior art having taught photocatalytic activity and compositional components in amounts within the claimed range as well as overlapping ranges need not be optimized.
EXPECTED PHOTOCATALYTIC
The photocatalytic properties/function at the claimed ranges is not unexpected. The above references recognize the photocatalytic properties of nano titanium dioxide and the compositions as more fully above set forth. For example: Kevern: The material is photocatalytic titanium dioxide (See reference claim 9) Influence: The composition is a photo catalytic concrete (Section 1.2) Modification Carbon dioxide sequestration (i.e. this is a photocatalytic effect – see instant spec. where depollution and self-cleaning are photocatalytic properties instant spec for example [0005-0006][0055-0056]) of cement comprising nano-TiO.sub.2 … (Abstract)
"Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967)
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986)
SUPERIOR RESULTS AND CRITICALITY OF RANGE:
"[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).(emphasis added by examiner)
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)(emphasis added by examiner)
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).(emphasis added by examiner)
Applicant has not compared any examples or provided data in support of the argument of unexpected and superior results. The information in the specification having been considered does not provide evidence commensurate with the scope of the claims (see range of Portland cement of 0.1-83 %; photocatalytic material 0.1-5 % where only 0.5-3% is nano titanium dioxide and remaining material is not claimed/identified; slag cement which includes a broad number of material and chemical components is not a uniform material in ranges of 0.1 to 83 % or 10-40%) The figures and examples of the instant application use only zero or 2 % nano titanium dioxide with and without slag and does not show evidence commensurate in scope with the claimed ranges or to establish criticality of said claimed ranges.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980)
"In order to establish that the claimed intermediate is a ‘contributing cause’ of the unexpectedly superior activity or property of an end product, an applicant must identify the cause of the unexpectedly superior activity or property (compared to the prior art) in the end product and establish a nexus for that cause between the intermediate and the end product." Id. at 479
The examiner has considered the evidence in the original filing and no new evidence is provided or explained by the applicant in support of secondary considerations of unexpected results and has weighed same against the showing of obviousness and finds it insufficient to overcome same. Evidence of unexpected results must be weighed against evidence supporting prima facie obviousness in making a final determination of the obviousness of the claimed invention. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992)
Where the unexpected properties of a claimed invention are not shown to have a significance equal to or greater than the expected properties, the evidence of unexpected properties may not be sufficient to rebut the evidence of obviousness. In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977) MPEP 716.02(c)
MPEP 2144.01 "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (A process for catalytically producing carbon disulfide by reacting sulfur vapor and methane in the presence of charcoal at a temperature of "about 750-830°C" was found to be met by a reference which expressly taught the same process at 700°C because the reference recognized the possibility of using temperatures greater than 750°C. The reference disclosed that catalytic processes for converting methane with sulfur vapors into carbon disulfide at temperatures greater than 750°C (albeit without charcoal) was known, and that 700°C was "much lower than had previously proved feasible."); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (Reference disclosure of a compound where the R-S-R' portion has "at least one methylene group attached to the sulfur atom" implies that the other R group attached to the sulfur atom can be other than methylene and therefore suggests asymmetric dialkyl moieties.).
For the above reasons the rejections are maintained and made final.
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 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
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