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 Preliminary Amendment
The preliminary amendment submitted on 20 May 2024 has been entered. After entry of the amendment claims 1-3, 7, 9, 12, 14-15, 17-20, 24, 30, 34, 39-40, 43, 47, 57, 59, 75, 78, 84, 86, 91, 105, 119, 121, 129 are currently pending in the application.
Claim Rejections - 35 USC § 112(b)
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 1-3, 7, 9, 12, 14-15, 17-20, 24, 30, 34, 39-40, 43, 47, 57, 59, 75, 78, 84, 86, 91, 105, 119, 121, 129 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.
In claim 1, the term “high” in the phrase “high salinity brine” and the term “reduced” in the phrase “reduced salinity brine” are relative terms which renders the claim indefinite. The term “high” and the term “reduced” 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. The specification fails to provide clear guidance as to what is meant by “high” and “reduced” as according to the specification the salt concentration of the high salinity brine is greater than or about equal to the salt concentration of seawater and in embodiments, the salt concentration of the reduced salinity water component is less than or about equal to the salt concentration of seawater. Therefore as both the “high” and the “reduced” can have the salt concentration of seawater it is unclear as to the exact scope of the claim. Also the phrase “permitting the combination obtained in step (a)….component” is vague and indefinite because the step of permitting fails to denote any active, positive steps delimiting how this is actually practiced. The attempt to claim a process without setting forth any steps involved in the process raises an issue of indefiniteness under 35 USC 112(b). See MPEP 2173.05(q).
Claim 9 s confusing as written and therefore vague and indefinite as both the reduced salinity water component and the high salinity brine can have the same salinity (i.e. equal to seawater) and accordingly there is not a clear distinction between the two of them.
Claim 12 is confusing as written and therefore vague and indefinite with respect to the phrase “selected from sodium, lithium or potassium salt or hydroxide and any alkali or alkali earth metal ions”. This is confusing as sodium, lithium and potassium are alkali metals. Accordingly it is unclear as to what the activator is supposed to be selected from. Clarification is requested.
Claim 24 is confusing and therefore vague and indefinite as it is unclear as to how the method can both permit production by a desalination facility of a brine having a higher salt concentration and permit production of more fresh water. That is, how can both of these totally different processes be performed? Clarification is requested.
In claim 40, the term “e.g.” renders the claim indefinite because it is unclear whether the limitation following the term are part of the claimed invention. See MPEP § 2173.05(d).
In claim 105, the use of the phrase “(which may be any sodium, lithium or potassium salt or hydroxide and any alkali or alkali earth metal ions and including Mg(OH)₂, MgO, Ca(OH)₂, CaCO₃, Al₂(SO₄)₃, and/or CaO)” renders the claim vague and indefinite as it is (1) unclear as to whether this is a required limitation as it suggests that it may or may not be selected from the listed items (i.e. not a positive claim limitation) and (2) the phrase “selected from sodium, lithium or potassium salt or hydroxide and any alkali or alkali earth metal ions” is confusing and therefore vague and indefinite as sodium, lithium and potassium are alkali metals.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements. Claim 14 recites “Al(SO4)3” which does not fall within the scope of claim 12 as not sulfates are recited.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 (or as subject to pre-AIA 35 U.S.C. 102) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 7, 9, 12, 24, 39, 43, 47, 57, 59, 75, 86, 91, 105, 119, and 121 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Constanz et al (US Patent Application Publication No. US2010/0144521 A1).
The reference teaches, in Example 4, an aggregate from seawater, gaseous CO2, NaOH, Indian River fly ash and water. With CO2 sparging the fly ash water mixture was added to the reaction mixture and stirred. The reaction mixture was transferred to a settling tank and allowed to settle. The reaction product was then filtered, spray dried and used to prepared aggregate as described in Example 2 including the optional step of drying the aggregate on a drying rack in a 110 OC oven for 16 hours. Example 2 teaches the use of a mold.
The instant claims are met by the reference.
As for claim 1, the reference teaches the reaction of seawater, CO2, fly ash and NaOH. The seawater meets the high salinity brine as claim 7 recites natural seawater as an example. The components are mixed, reacted, subjected to settling and then subjected to a molding step as well as an optional drying step. As for the step of permitting the combination….reduced salinity water component” this appears to be an inherent result as the reference teaches the same steps recited in claim 2 which results in the recited limitation. Note that claim 2 recites time, applied pressure or heat and the process of the reference teaches settling which meets time limitation, molding which meets the applied pressure and drying which meets the heat limitation. If the composition is physically the same, it must have the same properties. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971) and also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See also MPEP 2112.01 [R-3] I and II.
As for claim 2, the reference teaches settling which meets time limitation, molding which meets the applied pressure and drying which meets the heat limitation.
As for claim 3, the reference teaches sequentially.
As for claim 7, the reference teaches seawater.
As for claim 9, as the reference teaches the same components and process steps it would inherently possess the claimed limitations absent evidence showing otherwise.
As for claim 12, the reference teaches NaOH which would meet the activator component.
As for claim 24, as the reference teaches the same components and process steps it would inherently possess the claimed limitations absent evidence showing otherwise.
As for claim 39, the reference teaches Indian River fly ash which is a man made pozzolan.
As for claim 43, as the reference teaches the same components and process steps it would inherently possess the claimed limitation absent evidence showing otherwise.
As for claim 47, the reference teaches industrial waste as one of the sources.
As for claim 57, as the reference teaches the same components and process steps it would inherently possess the claimed limitation absent evidence showing otherwise.
As for claim 59, as the reference teaches the same components and process steps it would inherently possess the claimed limitation absent evidence showing otherwise.
As for claim 75, no MgO is required in the process.
As for claim 86, this claim is met as the latently hydraulic material does not need to be selected, just that, if it is, it be selected from slag.
As for claim 91, the reference teaches that it can be molded. The limitation of “which permits attachment by flora and/or fauna” is met as this is an intended use limitation and the material is capable of doing said function.
As for claim 105, the reference meets some of the claimed combination such as “(1) brine, (2) CO2, and (3) a man made pozzolan” and “(1) brine, (2) CO2, and (3) a man made pozzolan, and (4) an activator”.
As for claim 119, the reference teaches the formation of a cementitious aggregate.
As for claim 121, the reference teaches that it can be molded.
Allowable Subject Matter
Claims 15, 17-20, 30, 34, 40, 78, 84 and 129 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
ajg
June 30, 2026
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