DETAILED ACTION
Notice of Pre-AIA or AIA Status
This Office action is based on the 18/405,970 application filed 5 January 2024, which is being examined under the first inventor to file provisions of the AIA .
Claims 1-28 are pending and have been fully considered.
Claim Interpretation
Applicant is reminded that “[u]nder a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms.” Phillips v. AWH Corp., 415 F.3d 1303, 1315, 75 USPQ2d 1321, 1327. In the instant case, an organic adsorption ingredient has been interpreted as “dry activated carbon (‘AC’) picked from either granulated AC (‘GAC’) or powdered AC (‘PAC’)”; non-organic silica carrier ingredient may be “a semi-slurry sand”; an organic polymer delivery ingredient may be “selected from the group consisting of guar gum and analogues, xanthan gums and analogues, zen gums and analogues, and polydopamine (PDA)” [see paragraph 0020 of the published application; see, also, paragraph 0021 of the same]; and an integrated blending and delivery apparatus has been interpreted as depicted by reference element 40 “within the broken lines in the figure,” that is, figure 2 [see paragraph 0042 of the published application]. Therefore, the integrated blending and delivery apparatus comprises at least intake chute 21, output hopper 38, and intake bin 43 [see aforementioned figure].
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Such claim limitation(s) is/are: delivery means in claims 1, 10, 18, and 28. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 2-9, 11-16, and 18-28 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.
With respect to claims 2, 4, 7, 11, 13, 16, 18, 25, and 26, said claims recite semi-slurry. It is noted that semi- means “to some extent; partly, incompletely.” Therefore, semi- is a relative term which renders the claim indefinite. The term semi- is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 8 and 9 recite the limitation "the integrated blending and delivery apparatus" in line 3 and lines 4-5, respectively. There is insufficient antecedent basis for this limitation in the claims.
The term “fine” in claim 21 is a relative term which renders the claim indefinite. The term “fine” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Fine may mean very small, where small means having comparatively little size. It is not clear what is being compared to; therefore, the metes and bounds of the claimed invention cannot be determined.
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.
Claim(s) 1-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hornaday (US 2012/0121334) in view of Buhr et al (US 2009/0304447), which is the pre-grant publication of Buhr et al (US 7,695,215), cited by applicant.
With respect to claims 1-2, 5, 11, and 14, Hornaday discloses “suspensions and methods…to provide a new and improved contaminant-reactive composition that can be deployed under water, remains underwater and includes a powdered or granular contaminant-reactant material in the suspension that can be pumped or poured in place, over a contaminated waterway bottom soil or sediment material, for treatment and/or confinement of the contaminant(s)” [paragraph 0008]. More specifically, the “suspension was prepared by mixing for 20 minutes in a Branbury high-shear mixer 14.4 grams of guar gum; 55 grams of activated carbon; and 45 grams of sand in 1 liter of water having a hardness of 445. The suspension had a Brookfield viscosity of 500 centipoises and there was no visible settling of solids after three days” [paragraph 0041]. The activated carbon corresponds to the organic adsorption ingredient; the guar gum corresponds to the organic polymer delivery ingredient; and the sand in water corresponds to the non-organic silica carrier ingredient. The suspension formed by mixing in the high-shear mixer corresponds to the capping composition layer mixture. The suspension 10 may be delivered to a hopper 16 [paragraph 0036], which hopper corresponds to the delivery means of the instant application. The reference then teaches “the suspensions described herein [may be] pumped onto a surface of water, whereby the suspensions sink through the water depth to a waterway bottom or floor and are then overcoated with a weighting material, such as sand” [paragraph 0018 & figure 6].
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Reference element 22 above corresponds to the overcoat of sand [see, e.g., paragraph 0037: “[a]fter placing the suspension over and/or into the contaminants contained in the waterway bottom or floor 12, the suspension may be overcoated with a cover material, such as sand 22 dropped over the suspension 10 from sand hopper 24 carried by the ship 14, as shown in FIGS. 1, 5 and 6”].
Hornaday does not appear to disclose distribution of the suspension throughout a distribution pool.
However, Buhr et al, which is concerned with covering a sub-aquatic sediment with capping material [abstract], discloses a “sediment capping system 10…[that] includes spreader barge 12, template barge 14, and capping material providing means 16. Spreader barge 12 includes capping material receiving means 18, capping material shaker 20, slurry water output 22, capping material spreading means 24, control center 26, distribution pool 28, capping material reservoir 29 and at least one positioning means 30. Template barge 14 is releasably engaged with spreader barge 12 while the capping material is being distributed by spreader barge 12. Barge 14 includes at least one positioning means 30, fuel tank 32, and barge movement means 34. Spreader barge 12 and template barge 14 float on waterway surface 35. The slurry enters the spreading barge 12 through the providing means 16 and is received by the receiving means 18, which can be a hopper or alternative structure designed to receive capping material slurry. The shaker 20 separates the capping material from the water contained within the slurry. The water is evacuated through the slurry water output 22 and the capping material is distributed within the pool 28 by the spreading means 24. While the barges 12, 14 are floating on the waterway, the positioning means 30, when deployed, prevents the barges 12, 14 from laterally moving across the waterway. In at least one embodiment of the invention, the slurry water output 22 is a discharge pipe integrally connected to a liquid diffuser. As shown in FIGS. 1 and 2, the positioning means 30 are positioning spuds” [paragraph 0019].
At the time of the effective filing date of the instant application, it would have been obvious to one of ordinary skill in the art to modify the method placing the suspension over and/or into the contaminants contained in the waterway bottom or floor of Hornaday with the method and apparatus of Buhr et al because said method and apparatus is an improvement to the method of Hornaday as noted in paragraph 0006 of Buhr et al: “[a]n alternative known capping method involves the open water slurry discharge method [i.e., the method of Hornaday—Examiner’s insertion—wherein “the suspensions described herein [may be] pumped onto a surface of water, whereby the suspensions sink through the water depth to a waterway bottom or floor”]. Due to the large volume of water needed to transport the sand or gravel material this method also tends to displace the soft underlying material needing to be capped. Another problem with this method [i.e., the method of Hornaday—Examiner’s insertion] is that it requires sand or gravel slurry to be directly placed in water which raises turbidity levels. It would be advantageous for a sediment capping process to provide delivery of granular material from shallow draft vessels at relatively high rates of production with minimal disturbance of the sub-aquatic sediment.” Consequently, the invention as a whole would have been prima facie obvious.
With respect to claims 3-4, 6, 12-13, and 15, Hornaday discloses “the buoyant material-containing suspension acts to control contaminants in soil, sediment, and/or water that allow the passage of essentially non-contaminated water therethrough. The slurry or suspension includes a powdered or granular contaminant-reactive material, contaminant-sorptive material, or a contaminant-neutralizing material (hereinafter collectively referred to as "contaminant-reactant material" or "contaminant-reactive material"). The powdered or granular contaminant-reactive material is suspended together with a biodegradable polymer and, optionally, a weighting material, such as sand to increase the specific gravity of the suspension to a level greater than 1.0” [paragraph 0005] and “[s]uitable powdered or granular contaminant-reactive materials include organophilic clay, carbon,…” [paragraph 0006] and “said suspension having a specific gravity greater than 1.0, comprising: (a) about 0.5% to about 30% by weight of a contaminant-reactive material; (b) about 0.5% to about 30% by weight of biodegradable polymer; and (c) about 40% to about 99% by weight water” [claim 1]. Since the contaminant-reactive material is powdered or granular activated carbon [see paragraph 0007: “suspension includes a contaminant-reactant material, such as activated carbon”], the concentration thereof recited in claim 1 overlaps the range required in instant claim 3 and renders such obvious. Additionally, the sum of ranges of (a) and (b) in claim 1 is 1 to 60 wt %. Thus, the balance sand concentration may be 40 to 99 wt %, which is subsumed by the range of instant claim 4. The biodegradable polymer corresponds to the organic polymer delivery ingredient of instant claim 6.
With respect to claims 7 and 16, while Hornaday does not appear to explicitly disclose the particle size of any of the activated carbon, guar gum (biodegradable polymer), or sand, applicant is reminded that “where 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” unless there is evidence indicating such ranges are critical. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
With respect to claim 8, at least the receiving means 18, capping material shaker 20, reservoir 29, and distribution means 24 corresponds to the recited integrated blending and delivery apparatus of the instant application. Note that Buhr et al discloses “capping material conveyor 36 is provided for metering and distribution of capping material to spreader barge 12 through pipeline 16. The conveyor 36 includes a metered hopper 38 into which capping material is loaded and a conveying means 39 configured for metered transportation of capping material to a slurry hopper. The capping material flows from the hopper 38 onto the conveying means 39, which is situated beneath the hopper 38. Loading the capping material into the conveyor 36 can be manual or through an automated conveyor means (not shown). Conveyor 36 then transfers capping material into a slurry hopper (not shown). The slurry hopper is a reservoir [e.g., reservoir 29—Examiner’s insertion] that has a water intake, a water overflow, and a slurry pump connected to slurry line 16. The water intake receives water from a water source and combines the water and capping material within the slurry hopper to form a slurry. A combination of the water and dumping of capping material into the hopper from the conveyor 36 provides a mixing action which allows slurry formation” [paragraph 0023].
With respect to claims 9 and 17, applicant is reminded that the “selection of any order of mixing ingredients is prima facie obvious.” In re Gibson, 39 F.2d 975, 5 USPQ 230. Therefore, it would have been obvious to mix some ingredients of the suspension off-site (e.g., the dry ingredients) and then prepare the final suspension at or near the area in need of remediation.
With respect to claim 10, the teaching of Hornaday of a “contaminated waterway bottom soil or sediment material, for treatment and/or confinement of the contaminant(s)” [see discussion above] renders obvious step (a.). Buhr et al discloses “[a] method for capping a sub-aquatic sediment, comprising:
[i.] identifying a sub-aquatic sediment region for distributing a layer of capping material;
[ii.] providing a source of capping material to a capping system comprising, a template barge, a spreader barge, and a broadcast spreader means positioned on the spreader barge;
[iii.] positioning the spreader barge and the template barge proximal to the sub-aquatic region;…” [claim 13]. Steps (i.)-(iii.) correspond to steps (a)-(c) of the instant claim. Additionally, Buhr et al teaches “[t]he capping material is collected within a reservoir 29 and then distributed within the [distribution] pool 28 by the distribution means 24. Spreading means 24 can be a broadcast spreader and alternatively can be selected from a variety of spreader mechanisms. (See FIGS. 5 and 6). Distribution pool 28 is an open area configured to contain capping material as it is being distributed by the spreading means 24 in order to efficiently and accurately control capping material distribution to sediment layer 37” [paragraph 0021]. The capping material of Hornaday collected within the reservoir, which reservoir may contain the aforementioned slurry hopper that assists in slurry formation, corresponds to the blending step (d) of the instant claim.
With respect to claims 18-20, 22, and 24-28, said claims recite the same limitations as addressed above albeit in different order(s) and/or groupings. Therefore, reference is made to the preceding discussion(s) of the references.
With respect to claim 21, it is well known in the art that powdered activated carbon may be derived from bituminous coal.
With respect to claim 23, Hornaday discloses “guar gum and derivatives thereof” [paragraph 0033], which renders 2-hydroxypropyl guar gum obvious.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Summers et al (US 6,395,678), which discloses “[t]he activated carbon to be used in the present invention is preferably a powdered bituminous coal-based activated carbon (PAC)” [column 2, lines 60-62]; Ravikumar et al (GB 2390987), which discloses “[t]he PAC is preferably selected from bituminous coal…” [page 5, line 3].
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/BRIAN A MCCAIG/Primary Examiner, Art Unit 1772
6 July 2026
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