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 .
Specification
The substitute specification filed 04/28/26 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 14, 15, 17, 18, 21-23, 26-32, 34 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over KR 101491589 B1 (‘189 herein – cited previously - all citations are to previously provided English translation) in view of Kang (KR 102273480 B1 – cited and provided previously).
With respect to independent claim 14, ‘589 discloses a biological cement comprising dry matter and water (p. 10, [Experiment], first paragraph, wherein the compositions are disclosed as prepared by mixing with water), wherein the dry matter comprises:
algal biomatter per dry matter comprising (p. 3, middle paragraphs, wherein seaweed is disclosed); and
cement (p. 3, top paragraphs, wherein various forms of cement are disclosed).
‘189 discloses wherein any seaweed may be used, noting wherein about 8,000 species exist, with 500 species living in the sea of Korea and all of them can used, but it is preferable to use green algae, brown algae including seaweed and kelp, red algae or the like (p. 2). The reference, however, fails to explicitly identify such as at least one of a Saccharina sp. or an Ulva sp. as claimed. Kang teaches seaweeds found in the sea of Korea to include large brown algae, as well as many additional species including seaweed, algae and kelp; the brown algae typically include kelp of the Saccharina sp. (p. 2 and 4).
Since ‘189 discloses wherein all species of seaweed living in the sea of Korea, such as brown algae in the form of kelp, can be used to promote binding of constituents of the biolgocial cement and prevent cracks therein and Kang teaches kelp found in the sea of Korea to include that of a Saccharina sp., it would have been obvious to one having ordinary skill in the art to try kelp of the Saccharina sp. in the biological cement of ‘189 since such is known source of brown algae kelp present in the sea of Korea, and thus would be recognized as a suitable form thereof to try in the biological cement of ‘189 in order to yield the predictable result of promoting binding of constituents of the biological cement and thereby preventing the formation of cracks therein.
‘189 discloses wherein the amount of algae is preferably between 2-40 parts by weight based on 100 parts by weight of the cement (p. 3, middle paragraphs). Although silent to specifically providing for any amount thereof of 0.5-15 wt%, given the overlap of the near entirety of the instantly claimed range disclosed by ‘189, wherein it is further suggested the algae is provided for the purpose of preventing the concrete block formed therefrom from being easily broken due to a large shrinkage during drying and curing (p. 3, middle paragraphs), it would have been obvious to one having ordinary skill in the art to include an amount of algal biomatter as instantly claimed in the biological cement of ‘189 since it has been held wherein 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed weight percent for the algal biomatter as critical and it is unclear if any unexpected results are achieved by using the instantly claimed weight percents therefor. Since the algal matter of ‘189 promotes the binding of the constituents of the concrete block and prevents cracks, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent thereof, and, as such, the determination of optimal weight percent of algal matter in the biological cement of ‘189 would be achievable through routine experimentation in the art.
With respect to dependent claim 15, ‘189 discloses the biological cement made by a method comprising:
forming a biological cement paste by mixing dry matter and water (p. 10, [Experiment], first paragraph, wherein the compositions are disclosed as prepared by mixing with water), wherein the dry matter comprises 0.5 wt% to 15 wt% (see explanation above in the rejection of claim 14 with regard to the weight percent) algal biomatter per dry matter and cement;
pouring the biological cement paste into a mold (p. 2, last paragraph-p. 3, first two lines); and
curing the biological cement paste, thereby forming the biological cement (p. 2, last paragraph-p. 3, first two lines).
The Examiner notes, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
With respect to dependent claim 17, ‘189 discloses example compositions and properties thereof, wherein it is shown the blocks produced showed sufficient compressive strength and no deformability (p. 10, [Experiment]). Although silent to such as within 5-110% of a same mechanical property of “conventional” cement, given the compositions are disclosed to provide, for example, sufficient compressive strength, it is the position of the Office that one having ordinary skill in the art would recognize, at least, the optimal compressive strength to impart to the biological cement so that it is sufficient for use in the purposes intended therefor and thus within a range of 5-110% of the compressive strength of a “conventional” cement used for the same purposes since it has been held "[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). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). Given the absence of evidence of criticality of percent within which the mechanical property is to fall, as exemplified by the extensiveness of the range claimed therefor, as well as ‘189’s disclosure of the biological cement as providing a concrete block having high strength and durability, it does not appear that providing for a mechanical property within 5-110% of a conventional cement would be considered an unexpected result, and, as such, the determination of optimal percent range within which to provide a mechanical property to the biological cement as compared to a conventional cement would be achievable through routine experimentation in the art.
With respect to dependent claim 18, ‘189 discloses a building product of a mortar or a concrete (Abstract; p. 10, Experiment).
With respect to dependent claim 21, ‘189 discloses wherein the biological cement paste comprises between 2-40 parts by weight based on 100 parts by weight of the cement (p. 3, middle paragraphs). Although silent to specifically providing for any amount thereof of 3-15 wt%, given the overlap of the near entirety of the instantly claimed range disclosed by ‘189, wherein it is further suggested the algae is provided for the purpose of preventing the concrete block formed therefrom from being easily broken due to a large shrinkage during drying and curing (p. 3, middle paragraphs), it would have been obvious to one having ordinary skill in the art to include an amount of algal biomatter as instantly claimed in the biological cement of ‘189 since it has been held wherein 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed weight percent for the algal biomatter as critical and it is unclear if any unexpected results are achieved by using the instantly claimed weight percents therefor. Since the algal matter of ‘189 promotes the binding of the constituents of the concrete block and prevents cracks, it does not appear that such would be considered an unexpected result of using the presently claimed weight percent thereof, and, as such, the determination of optimal weight percent of algal matter in the biological cement of ‘189 would be achievable through routine experimentation in the art.
With respect to dependent claim 22, ‘189 discloses wherein the biological cement paste is mixed with water to prepare the concrete blocks (p. 10, [Experiment]). The reference further discloses wherein the cement paste comprises a cement conventionally used in the art (p. 3, 3rd paragraph), and, further wherein the content of the remaining components other than cement in the concrete block composition is based on 100 parts by weight of cement (p. 3, 5th paragraph). Although silent to the water to cement ratio thereof, since ‘189 discloses water is indeed added to the cement so as to form the cement paste, and, further, wherein such is poured into a mold and dried to cure to form the concrete block, it is the position of the Office that one having ordinary skill in the art would recognize the optimal water to cement ratio to employ in order to form a paste capable of being poured into a mold and cured therein, since it has been held wherein 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). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed water to cement ratio as critical and it is unclear if any unexpected results are achieved by using a ratio within the range that is instantly claimed. Since the concrete block formed by ‘189 exhibits sufficient compressive strength and no deformability (p. 10, [Experiment]), and further is not easily aged by physical or chemical influences (Abstract) it does not appear that such would be considered an unexpected result of providing for a water to cement ratio within the range instantly claimed, and, as such, the determination of optimal water to cement ratio to employ in forming the biological cement of ‘189 would be achievable through routine experimentation in the art.
With respect to dependent claim 23, ‘189 discloses wherein the biological cement paste comprises a cement conventionally used in the art (p. 3, 3rd paragraph), and, further wherein the content of the remaining components other than cement in the concrete block composition is based on 100 parts by weight of cement (p. 3, 5th paragraph). Although silent to the weight percent of cement as within the range of 55-80 wt% as claimed in the broader range, based on the amounts of additional components further disclosed as present in the composition (Abstract), it is the position of the Office that given the disclosure of ‘189, one having ordinary skill in the art would recognize the optimal amount of cement to include when forming the concrete block in order to create the intended eco-concrete block therewith since it has been held wherein 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed weight percent for the cement as critical and it is unclear if any unexpected results are achieved by using the instantly claimed weight percents therefor. Since the concrete block formed by ‘189 exhibits sufficient compressive strength and no deformability (p. 10, [Experiment], it does not appear that such would be considered an unexpected result of using the presently claimed weight percent thereof, and, as such, the determination of optimal weight percent of cement in the biological cement of ‘189 would be achievable through routine experimentation in the art.
With respect to dependent claim 26, ‘189 discloses wherein the dry matter further comprises one as claimed (p. 10-11, Claims).
With respect to dependent claim 27, ‘189 discloses wherein the curing comprises drying (p. 3, wherein the seaweed prevents the concrete block from being easily broken due to a large shrinkage during drying and curing).
With respect to dependent claims 28-31, ‘189 discloses the biological cement made by a method corresponding to that of claim 15, as set forth above in the rejection thereof. Although silent to wherein the curing comprises one or more of incubating at a relative humidity and/or ambient conditions as claimed by claims 28-30, or by applying additional water to the biological cement paste as claimed by claim 31, the Examiner notes, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). ‘189 discloses a biological cement comprising the same dry matter as instantly claimed and required by claim 14, upon which claim 15 depends; ‘189 further suggests wherein the concrete block is cured after the pouring step is completed and further suggests wherein the compositions are prepared at standard conditions (p. 10 [Experiment]). As such, it is the position of the Office the product of ‘189 provides for that which is instantly claimed by the product-by-process limitations of dependent claims 28-31. See United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made.").
With respect to dependent claim 32, ‘189 discloses wherein at least apportion of the algal biomatter is dried (p. 3, “…seaweeds…may be used in the form of dried seaweeds”).
With respect to dependent claim 34, ‘189 discloses wherein at least a portion of the algal biomatter is formulated as a bioplastic (p. 3, middle, wherein the seaweed is in the form of powders or concentrates and, therefore, formulated as a bioplastic as claimed).
With respect to dependent claim 35, ‘189 discloses wherein at least a portion of the algal biomatter is a powder (p. 3, “…seaweeds…may be used in the form of dried seaweeds, seaweeds in the form of powders…it is advisable to use a solid form of dried powder after being dried).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over ‘189 in view of Kang, as applied to claim 14, above, and further in view of Remmereit et al. (US 2021/0171990).
With respect to dependent claim 16, Kang further suggests wherein seaweed in the sea of Korea includes kelp, such as Saccharina japonica (p. 2). The reference, however, fails to suggest Saccharina latissima as instantly claimed. Remmereit et al. teaches seaweed including brown algae kelps, wherein such include various forms of the Saccharina sp. including Saccharina japonica or Saccharina latissima ([0062]). Since ‘189 discloses wherein all species of seaweed living in the sea of Korea, such as brown algae in the form of kelp, can be used to promote binding of constituents of the biological cement and prevent cracks therein, and Remmereit et al. suggests Saccharina latissima as an alternative form of brown kelp to Saccharina japonica, a brown kelp taught by Kang as present in the sea of Korea, it would have been obvious to one having ordinary skill in the art to try a brown algae/kelp of Saccharina latissima in the cement of ‘189 in order to yield the predictable result of promoting binding of constituents therein since brown algae kelps are known to exist in the sea of Korea and thus would be expected to yield predictable results.
Claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over ‘189 in view of Kang as applied to claims 15 and 14, respectively, above, and further in view of Kim (KR 101079705 B1 – cited and provided previously).
With respect to dependent claims 24 and 25, ‘189 discloses the biological cement, as set forth above with respect to claims 15 and 14, wherein the cement is preferably Portland cement; the contents of components of the composition are disclosed as based on 100 parts by weight of cement (p. 3, 3rd-5th paragraph). The reference additionally suggests wherein gypsum may be included therein (p. 10, Claims). ‘189, however, is silent to wherein the cement comprises tricalcium silicate, dicalcium silicate, tricalcium aluminate and tetracalcium aluminoferrite therewith as claimed. Kim discloses eco-friendly cements wherein Portland cement is used therein; the Portland cement is defined as tricalcium silicate, dicalcium silicate, tricalcium aluminate and tetracalcium alumino ferrite, wherein it is noted such compounds account for more than 90% of the total constituents thereof (p. 5, under (5) cement). Since ‘189 discloses wherein the biological cement comprises Portland cement and gypsum may be used therewith and Kim teaches wherein Portland cement includes tricalcium silicate, dicalcium silicate, tricalcium aluminate and tetracalcium aluminoferrite, it would have been obvious to one having ordinary skill in the art to try a combination of tricalcium silicate, dicalcium silicate, tricalcium aluminate and tetracalcium aluminoferrite with gypsum in the biological cement of ‘189 in order to yield the predictable result of forming an environmentally friendly concrete block therewith. ‘189 clearly discloses Portland cement as from a list of finite options for cement in the composition, along with gypsum as from a finite list of additives to include therewith. Kim discloses wherein Portland cement indeed includes a combination of Applicant’s instantly claimed elements of tricalcium silicate, dicalcium silicate, tricalcium aluminate and tetracalcium aluminoferrite. As such, the combination of such, as present from the Portland cement of ‘189, with the further inclusion of gypsum as is disclosed by ‘189 would be obvious to one having ordinary skill in the art. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.
With respect to the further elements of weight percents for each of the above identified compounds recited by claim 25, as noted above, Kim teaches wherein the above compounds account for more than 90% of the total constituents of Portland cement, wherein amounts of each component can vary based on the color of the cement; for example, additional tricalcium silicate may be present for the purpose of increasing the whiteness of the cement (p. 5, (5) cement). Since ‘189 suggests Portland cement and/or white cement as suitable options for the cement of the biological cement composition, it would have been obvious to one having ordinary skill in the art to provide for an amount of each of the aforenoted compounds as claimed as based on the form of Portland cement used to form the environmentally friendly concrete block of ‘189 since
it has been held wherein 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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). (“A simple case in the predictable arts that does not require expertise to find that the claimed range of “less than 6 lbs/ft3” and the prior art range of “between 6lbs/ft3 and 25 lbs/ft3” are so mathematically close that the examiner properly rejected the claims as prima facie obvious.”). The instant specification fails to explicitly establish the instantly claimed weight percents for each component of the cement as critical and it is unclear if any unexpected results are achieved by providing for such; since ‘189 in view of Kim provides for wherein Portland cement indeed comprises each of the instantly claimed components in ana mount of more than 90 wt% thereof, and ‘189 further provides for wherein gypsum may be used in combination therewith, wherein such a combination provides for a concrete block exhibiting sufficient compressive strength and no deformability (p. 10, [Experiment], it does not appear that such would be considered an unexpected result of providing for a Portland cement having weight percents of each component as claimed, and, as such, the determination of optimal weight percents for each component thereof would be achievable through routine experimentation in the art.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over ‘189 in view of Kang as applied to claim 14 above, and further in view of Kim (KR 102256238 B1 – cited and provided previously).
‘189 discloses the biological cement as set forth above with respect to claim 14; the reference additionally suggests wherein the seaweeds are in the form of dried seaweeds, powders or concentrates in concentrated form, but it is advisable to use a solid form of dried powder after being drier out (p. 3, middle to bottom paragraphs). The reference, however, fails to disclose wherein at least a portion of the algal biomatter has been preprocessed by hot water extraction, cold water extraction, and/or self-bonding as claimed by claim 33.
Kim et al. teaches green production methods to produce a seaweed containing powder additive of Sargassum sp. for inclusion in a concrete structure for enhancing the performance thereof (Abstract) wherein a dried powder of the seaweed is formed by preprocessing such in a process that includes extracting with an alkali solution at a temperature of 75oC (Example 1). As such, it would have been obvious to one having ordinary skill in the art to try producing the solid form of dried powder seaweed in ‘189 by preprocessing with hot/cold water extraction in order to yield the predictable result of providing a powder form of the seaweed suitable for use in enhancing the properties of a concrete formed therewith.
Response to Arguments
Applicant’s arguments and amendments with respect to the 35 USC 112, second paragraph, rejections, as set forth in the previous office action, have been fully considered and are persuasive. The 35 USC 112 rejections, as set forth therein, have been withdrawn.
Applicant's arguments with respect to the rejections of claims as unpatentable over Baek in view of Kang have been fully considered but they are not persuasive.
Applicant notes the Office acknowledges that Baek fails to explicitly identify at least one of Saccharina sp. or Ulva sp. and then turns to Kang to teach brown algae include kelp of Saccharina sp.
Applicant asserts it would not have been obvious to use the kelp of Kang in the cement of Baek as Kang is directed to a seaweed transplantation structure for restoring a marine forest and are not disclosed as a component of a biological cement, and, as such, the combination of Baek and Kang fails to teach or suggest a biological cement comprising algal biomatter comprising at least one of a Saccharina sp. or an Ulva sp..
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).
Baek clearly discloses wherein all species of seaweed living in the sea of Korea, such as brown algae in the form of kelp, can be used to promote binding of constituents of the biolgocial cement and prevent cracks; Kang teaches brown algae in the form of kelp found in the sea of Korea to include a Saccharina sp.. As such, the Office maintains, when choosing a species of seaweed living in the sea of Korea, as is clearly disclosed by Baek, one of ordinary skill would clearly try known species of brown algae in the form of kelp therein, which, as taught by Kang, include a Saccharina sp..
Applicant further asserts Baek treats all seaweeds as interchangeable and discloses wherein 8000 species of seaweeds exist in the world with about 500 species in the sea of Korea. The Examiner notes, such a number of species in the sea of Korea is a finite number, and, thus, it would be obvious to try known species of seaweed in the sea of Korea to form the biological cement as claimed.
Applicant asserts the instant application discloses specific experimentally demonstrated results showing the concentration and species of the biomatter has critical and nonobvious effects on mechanical properties of the biological cement such as that which is disclosed in [0036] of the instant application.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the mechanical properties achieved, the specific amounts of algal matter associated therewith, i.e., 2-5 weight percent, and exclusively Ulva as the biomatter) are not recited in the rejected claim(s). 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).
The Examiner notes, whether 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).
The instant claims recite a range of biomatter weight percent that extends beyond that which Applicant points out as achieving unexpected results in [0036]. Furthermore, the instant claims also recite the biomatter as comprising Saccharina sp. or Ulva sp., and, as such, it is the position of the Office that Applicant has not established unexpected results over the entirety of the scope of claim 14.
Furthermore, the claims as presented do not instantly require any particular performance and/or achievement of a particular mechanical property. Baek discloses wherein the provision of the brown algae/kelp can be used to promote binding of constituents of the biological cement and prevent cracks, and, therefore, one of ordinary skill in the art would recognize an optimal amount thereof to include for at least promotion of the binding of constituents and prevention of cracks in the biological cement.
Should Applicant consider unexpected results to be achieved with Ulva sp., Applicant may consider limiting the claims to require the biological cement indeed comprise the Ulva sp..
Conclusion
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 Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
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/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
05/20/26
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