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 . 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without knowing what the 1st & 2nd solutions are, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). The specification does not disclose, describe nor set forth what is in the solutions such that a ceramic coating is formed on a roadbed, nor how the solutions cause carbon dioxide to be captured.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: a “ceramic sol-gel coating” is not defined, described nor disclosed by the specification.
Response to Amendment
Applicant’s amendment filed 8/31/2026 voluntarily withdraws claims 4, 13, 17 from consideration. The withdrawal is noted by the Examiner and the rejection of claims 4, 13, 17 is held in abeyance until which time said claims are rejoined or otherwise re-presented for examination.
Response to Arguments
Applicant's arguments filed 8/31/2026 have been fully considered but they are not persuasive. Applicant argues against the 35 USC 112(a) suggesting the case law In re Mayhew is misused by the Examiner and should be withdrawn because “the solutions claimed by the present invention are non-specific and would be reasonably known by a person of ordinary skill in the art, specifically road construction”.
Applicant further argues “The present invention does not rely on a specific composition of the constituent solutions to operate, and the optional solutions would be known to a person of ordinary skill in the art without undue experimentation or requiring expert knowledge”.
However, the Examiner does not concur. The claims are directed to a method for ceramic sol-gel coating, including the steps of applying 1st and 2nd solutions to a road bed and combining said solutions in a chemical reaction after rolling/compacting the roadbed to which the solutions were applied. Without knowing what the 1st & 2nd solutions are, one of ordinary skill would not be enabled by the claims nor the specification to perform the claimed method steps. Further how the method step of combining the 1st & 2nd solutions is performed after the roadbed has been rolled is not enabled by the claims.
Further, many different types of materials can be used in sol-gel process including polymers, SiO2, TiO2, SrTiO3, (UO2 and ThO2 which are radioactive). Nanomaterials, aerogels, xerogels are known to be made of colloidal silica which can be modified with metal and metal oxides form very stable coatings.
Hence without knowing what solutions are being used in the method, the method cannot be performed for at least the reason that the solutions themselves are unknown by Applicant or unclaimed.
Therefore, the arguments are not persuasive and the rejection is maintained.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND W ADDIE whose telephone number is (571)272-6986. The examiner can normally be reached on m-f 7:30-12:30, then 6-9pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Sebesta can be reached on 571-272-0547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you need help from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RAYMOND W ADDIE/Primary Examiner, Art Unit 3671 9/8/2026
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