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 .
Election/Restrictions
Applicant’s election without traverse of Group II, Claims 6-12 in the reply filed on 04/17/2026 is acknowledged.
Claims 1-5 and 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/17/2026.
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.
Claims 6-7, 9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sinha (WO 2021/087606 A1) (“Sinha” hereinafter); as evidenced by Hoffmann et al. (EP 3909682 A1) (“Hoffmann” hereinafter).
Regarding claim 6, Sinha teaches a method for producing a mechanochemically carbonated clay, said method comprising the following steps (see Sinha at [0011] teaching a mechanochemically carboxylated mineral filler obtainable by a method comprising the following steps). Mechanochemically carboxylated mineral filler is taken to meet the claimed mechanochemically carbonated clay, as outlined below:
a) providing a feedstock comprising a clay precursor (see Sinha at [0011] teaching a) providing a solid feedstock comprising a silicate mineral, see Sinha at [0032] teaching in the embodiments… the solid feedstock comprises a material selected from the group consisting of… serpentines). Serpentines is taken to meet the claimed “clay precursor”, as evidenced by Hoffmann (see Hoffmann at [0020] evidencing clay mixtures consisting of quartz-containing clays with varying proportions of phyllosilicates and accompanying minerals, see Hoffman at [0016] evidencing the phyllosilicates are two-layer silicates, such as… the serpentine group);
b) providing a gas comprising at least 0.5 vol% CO2 (see Sinha at [0011] teaching b) providing an oxidizing gas comprising CO2, see Sinha at [0040] teaching in some embodiments… the oxidizing gas provided in step (b) comprises more than 90 mol% CO2). In this instance, mol% is taken to meet the claimed vol% because the both units are similar for the gas (see MPEP 2144.05(I));
c) introducing said feedstock and said gas into a mechanical agitation unit (see Sinha at [0011] teaching c) introducing said solid feedstock and said oxidizing gas into a mechanical agitation unit); and
d) subjecting the material of said feedstock to a mechanical agitation operation in the presence of said gas in said mechanical agitation unit (see Sinha at [0011] teaching d) subjecting the material of said solid feedstock in the presence of said oxidizing gas… to a mechanical agitation operation in said mechanical agitation unit).
Regarding claim 7, Sinha teaches the limitations as applied to claim 6 above, and Sinha further teaches wherein the clay precursor is a particulate material which has a specific surface area of less than 20 m2/g (see Sinha at [0011] teaching the solid feedstock is a particulate material which has a BET surface area of more than 0.01 m2/g) (see MPEP 2144.05(I)).
Regarding claim 9, Sinha teaches the limitations as applied to claim 6 above, and Sinha further teaches wherein the step (d) is performed… at a pressure of less than 10000 kPa (see Sinha at [0041] teaching in embodiments… step (d) is performed at a pressure of more than 3 atm (or 304 kPa) (see MPEP 2144.05(I)); and
at a temperature of less than 150oC (see Sinha at [0041] teaching in embodiments… step (d) is performed at a temperature of less than 100oC) (see MPEP 2144.05(I)).
Regarding claims 11-12, Sinha teaches the limitations as applied to claim 6 above, and Sinha further teaches wherein carbonation, size reduction and/or surface area increase are effected during step (d) such that the ratio of the total carbon content of the mechanochemically carbonated clay obtained in step (d) to the total carbon content of the clay precursor of step (a) is at least 1.3:1, and such that the method has… one… of the following characteristics… the ratio of the CO2 content of the mechanochemically carbonated clay obtained in step (d) to the CO2 content of the clay precursor of step (a) is at least 1.1:1, wherein the CO2 content is determined as the mass loss above 450°C measured by TGA employing a temperature trajectory wherein the temperature was increased from room temperature to 800°C at a rate of 10 °C/min… the ratio of the D50 of the mechanochemically carbonated clay obtained in step (d) to the D50 of the clay precursor of step (a) is less than 0.9:1… the ratio of the specific surface area of the mechanochemically carbonated clay to the specific of the clay precursor is at least 1.15:1 (claim 11), and wherein the mechanochemically carbonated clay obtained in step (d) has a water demand determined according to ASTM C311/C311M-22 which is less than 93% (claim 12) (these recitations are not steps in the claimed “method for producing a mechanochemically carbonated clay”, and are being treated as being taught by Sinha because there is no evidence indicating that the claimed recitations are critical, absent new and unexpected results. Additionally, it is within the ability of one skilled in the art, with the benefit of the teachings of Sinha to choose appropriate comparative analyses that determines the carbonation, size reduction and/or surface area of the feedstock clay and the resulting mechanochemically carbonated clay).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sinha as applied to claim 6 above, and further in view of Ahmed et al. (CA 2255287 A1) (“Ahmed” hereinafter).
Regarding claim 8, Sinha teaches the limitations as applied to claim 6 above, and Sinha does not explicitly teach wherein the gas provided in step (b) is a combustion flue gas.
However, Sinha teaches that there remains a need to develop affordable filler technology which can combine both the CO2 emission reduction achieved by reduced cement production and the CO2 emission reduction achieved by carbon capture technology and which does not detrimentally affect the properties of concrete (see Sinha at [0006]). Sinha also teaches that the production of said mechanochemically carboxylated mineral filler relies on a cheap CO2 conversion technology platform, such that a filler is provided which can be produced in an economically viable manner and which combines both the CO2 emission reduction achieved by reduced cement production and the CO2 emission reduction achieved by carbon capture technology (see Sinha at [0013]).
Like Sinha, Ahmed teaches CO2 emission reduction achieved by carbon capture (see Ahmed at page 3 paragraph 1 teaching the disclosure… relates to a… method of capturing carbon dioxide at source from flue gas streams and of utilizing the captured carbon dioxide by transforming it into economically viable and environmentally friendly commodity), which is taken to meet the claimed “wherein the gas provided in step (b) is a combustion flue gas”.
Ahmed further teaches that the possibility of reduction of CO2 emission by capture and storage of CO2 from flue gases is also receiving considerable attention… according to this process, after the combustion of fossil fuels (for power generation, etc.), CO2 is to be separated and recovered (see Ahmed at page 4 paragraph 3)… the most preferred route to mitigate CO2 emissions into the atmosphere is to utilize the captured CO2 to make chemical products in which there is a net reduction of CO2 during the product formation and utilization (see Ahmed at page 5 paragraph 5).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that capture and utilization of CO2 from flue gases is suitable to mitigate CO2 emissions into the atmosphere.
As such, one of ordinary skill in the art would appreciate that Ahmed teaches that capture and utilization of CO2 from flue gases is suitable to mitigate CO2 emissions into the atmosphere, and seek those advantages by using CO2 from flue gases in the method as taught by Sinha because the filler produced combines both the CO2 emission reduction achieved by reduced cement production and the CO2 emission reduction achieved by carbon capture technology.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use CO2 from flue gases as taught Ahmed in the method as taught by Sinha because capture and utilization of CO2 from flue gases is suitable to mitigate CO2 emissions into the atmosphere, and the filler produced combines both the CO2 emission reduction achieved by reduced cement production and the CO2 emission reduction achieved by carbon capture technology.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sinha as applied to claim 6 above, and further in view of Hoffman.
Regarding claim 10, Sinha teaches the limitations as applied to claim 6 above, and Sinha does not explicitly teach wherein the feedstock provided in step (a) is a solid feedstock having a moisture content of less than 20 wt.% (by total weight of the solid feedstock).
However, as mentioned, Sinha teaches a) providing a solid feedstock comprising a silicate mineral (see Sinha at [0011])… in the embodiments… the solid feedstock comprises a material selected from the group consisting of… serpentines (see Sinha at [0032]). Sinha further teaches that there remains a need to develop affordable filler technology which can combine both the CO2 emission reduction achieved by reduced cement production and the CO2 emission reduction achieved by carbon capture technology and which does not detrimentally affect the properties of concrete (see Sinha at [0006]). Sinha also teaches it was found that when such a mechanochemically carboxylated mineral filler is used as a filler in a binder (such as cement) the compressive strength of the resulting concrete is surprisingly increased beyond the values obtained when pure cement is employed… in addition, the set time for the strength development is decreased… furthermore, a much higher amount of this mechanochemically carboxylated mineral filler can be used as a filler in a binder (such as cement) while still resulting in acceptable concrete properties (see Sinha at [0012])… additionally, the production of said mechanochemically carboxylated mineral filler relies on a cheap CO2 conversion technology platform, such that a filler is provided which can be produced in an economically viable manner and which combines both the CO2 emission reduction achieved by reduced cement production and the CO2 emission reduction achieved by carbon capture technology (see Sinha at [0013]).
Like Sinha, Hoffmann teaches a method for mechanochemical activation of a clay mixture (see Hoffmann at [0001], [0016] and [0020] teaching a method for the mechanochemical activation of a clay mixture… clay mixtures consisting of quartz-containing clays with varying proportions of phyllosilicates and accompanying minerals… the phyllosilicates are two-layer silicates, such as… serpentine). Hoffmann further teaches the clay mixture undergoes a thermally supported mechanochemical activation, making it more susceptible to pozzolanic reactions when used as a cement additive or cement clinker substitute (see Hoffmann at [0009]).
Hoffmann also teaches the layered silicates of the clay mixture can contain approximately 13 to 19 percent water of crystallization by mass before activation (see Hoffmann at [0027]), which is taken to meet the claimed “wherein the feedstock provided in step (a) is a solid feedstock having a moisture content of less than 20 wt.% (by total weight of the solid feedstock” (see MPEP 2144.05(I)).
Additionally, MPEP states that "[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", and “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” (see MPEP § 2144.05.II.A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected a feedstock clay containing approximately 13 to 19 percent water of crystallization by mass before activation as taught by Hoffmann as the silicate feedstock material in the method as taught by Sinha because there is a reasonable expectation of success that the disclosed amount of water would be suitable, and the method of making a mechanochemical carbonated mineral filler as taught by Sinha in view of Hoffman is an affordable filler technology which can combine both the CO2 emission reduction achieved by reduced cement production and the CO2 emission reduction achieved by carbon capture technology and which does not detrimentally affect the properties of concrete.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 6 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of copending Application No. 18/411122 (reference application), as evidenced by Hoffmann. Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending and copending applications claim a method for producing a mechanochemically carbonated clay, said method comprising the following steps: a) providing a feedstock comprising a clay precursor; b) providing a gas comprising at least 0.5 vol% CO2; c) introducing said feedstock and said gas into a mechanical agitation unit; and d) subjecting the material of said feedstock to a mechanical agitation operation in the presence of said gas in said mechanical agitation unit, as evidenced by Hoffmann (see Hoffmann at [0020] evidencing clay mixtures consisting of quartz-containing clays with varying proportions of phyllosilicates and accompanying minerals, see Hoffman at [0016] evidencing the phyllosilicates are two-layer silicates).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/411133 (reference application), as evidenced by Hoffmann. Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending and copending applications claim a method for producing a mechanochemically carbonated clay, said method comprising the following steps: a) providing a feedstock comprising a clay precursor; b) providing a gas comprising at least 0.5 vol% CO2; c) introducing said feedstock and said gas into a mechanical agitation unit; and d) subjecting the material of said feedstock to a mechanical agitation operation in the presence of said gas in said mechanical agitation unit, as evidenced by Hoffmann (see Hoffmann at [0020] evidencing clay mixtures consisting of quartz-containing clays with varying proportions of phyllosilicates and accompanying minerals, see Hoffman at [0016] evidencing the phyllosilicates are two-layer silicates).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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