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
Claims 1-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/13/2026
Applicant's election with traverse of Group II and Species “cement fines” in the reply filed on 7/13/2026 is acknowledged. The traversal is on the ground(s) that the species are not mutually exclusive as to Group II. This is not found persuasive because the species possess separate classification and/or subclassification as set forth in the restriction mailed 6/1/2026 establishing recognition in the art as separate fields of endeavor and require the use of different search terms/databases etc. Applicants have elected cement fines as such the species of mortar, asphalt mix, and cement paste are non-elected. As such claims 23-25 should have been designated as withdrawn as non-elected; however, the examiner had below examined these dependent claims as below interpreted.
Applicant indicates claim 21 is a linking claim as to Group II.
The requirement is still deemed proper and is therefore made FINAL.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/24/2024 and 7/15/2024 have been considered by the examiner.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it exceeds 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 22-29 are objected to because of the following informalities: Claims 22-29 should be amended to recite “the cement-based mix” rather than “the cement mix”. This correction will keep the claims uniform. Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Introduction/Claim Interpretation:
The following introduction/claim interpretation is expressly incorporated into each and every rejection below as though fully set forth therein.
Claim 21 possesses product by process limitations “reclaimed particles derived by crushing cement containing waste material …” "[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) "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983) The prior art as below cited teaches cement containing waste material which is comminuted meeting and/or rendering obvious the instantly claimed product by process limitations. The examiner notes that reclaimed cement waste is not a uniform composition having defined compositional components and amounts thereof.
The prior art sets for ranges which overlap and/or encompass the instantly claimed ranges. See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art"… a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)" 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)
Claims 23-24 recite an intended use or function of the cement-based mix material and do not further limit said cement-based mix material by adding any additional chemical components but rather sets forth the intended use or function of the composition mix. The examiner maintains that since the prior art teaches the claimed cement-based mix material, it is capable of said intended use. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997)
The examiner notes the applicant did not formally elect the species of cement paste or mortar or bitumen containing.
The examiner in the alternative maintains that one of ordinary skill in the art at the time of filing the invention would try to add water to the cement mix to create various final products having a broad range of viscosity including that of paste and mortar as cement mix are well known in the art for use for these purposes.
Claim(s) 21-24 and claims 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tam et al (WO 2021/127728A1) (published 7/01/2021 more than one year prior to the instant effective filing date)
Regarding Claims 21-24 and 26-29:
Tam et al (WO 2021/127728A1) (published 7/01/2021 more than one year prior to the instant effective filing date) discloses entrainment of carbon dioxide with a concrete mix comprising carbon dioxide entrained recycled aggregate (Abstract) (meeting claim 27)
The composition comprises recycled aggregate with cement, fine aggregate and water [0006] (meeting the limitations for aggregate fine aggregate and water)
The recycled aggrege comprises comminuted hardened concrete [0016] (meeting the limitation for derived by crushing cement containing waste material)
The recycled aggregate comprises comminuted construction waste including hardened concrete and at least one of non-concrete masonry material, tile and organic material [0017] (further meeting limitations for reclaimed and waste) the comminuted construction waste has a nominal particle size of less than approx.. 20 mm [0018]. The nominal particle size may be approx.. 10 mm [0019] (overlapping the sizes of claims 21, 26 and 29)See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
the concrete mix comprising cement, coarse aggregate comprising at least carbon dioxide entrained recycled aggregate, fine aggregate, and water,[0027]
The composition comprises fine aggregate and the fine aggregate may comprise sand [0034] (meeting the limitations for sand)
The mix comprises virgin aggregate such as gravel crushed stone and/or slag [0038] (meeting limitation for virgin cement)
The reference having taught a composition comprising sand virgin cement water and reclaimed cementitious fines meets the limitations of claim 21 for a cement-based mix material.
The hardened concrete portion of the recycled aggregated comprises hardened cement which includes calcium hydroxide which is formed by a chemical reaction between water and calcium oxide in virgin cement mix used to form the hardened concrete [0039]
[0062-0063]
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See Table 1 and 2 showing compositions comprising recycled aggregate in various % of the composition, cement, water, water: cement ratios, sand virgin aggregate of various particle sizes
The examples in table one show amounts of the recycled aggregate/fines in ranges which overlap the instant ranges of claim 22 and shows using two different particle sizes further rending claims 26 and 29 obvious where larger particles are recited.
Claim(s) 23-24 are alternatively rejected is/are rejected under 35 U.S.C. 103 as being unpatentable over Tam et al (WO 2021/127728A1) (published 7/01/2021 more than one year prior to the instant effective filing date) as applied to claims 21-24 and claims 27-29 above further in view of Anderson et al (US 5,695,811)
Regarding Claims 23-24:
Tam et al (WO 2021/127728A1) (published 7/01/2021 more than one year prior to the instant effective filing date) discloses entrainment of carbon dioxide with a concrete mix comprising carbon dioxide entrained recycled aggregate (Abstract) (meeting claim 27)
Tam discloses the limitations above set forth. As above set forth the use of the mix is a mortar material and paste material is obvious to try, the composition is capable of said intended use/function.
Assuming arguendo, paste, and mortar art not obvious to try
Anderson et al (US 5,695,811) which is also directed to cement-based compositions comprising cement, water teaches:
Cement paste includes a fluid mixture of cement and water with a water to cement ratio of 0.1 to about 1 (also within the ranges taught by Tam further supporting that Tam can be used as a paste) (C1 L62-C2 L6) The composition comprises fine aggregates such as sand (C17 L50-55)
The cement-based material may be used to repair existing highways road and other structures as a cement mortar concrete, etc.
More particularly, the present invention is directed to processes and compositions for obtaining a strong integral bond between existing cement-based substrates requiring repair (such as cement, mortar, concrete, aggregate rock, geological materials) and new hydrating cement-based overlay. The present invention is particularly applicable to the resurfacing and repair of existing concrete highways, roads, and other structures (C4 L37-50) the composition is made as a cement paste (C6 L17-30)(C12 L18-38) and mortar and/or concrete (C13 L66-68)
It would have been obvious to one of ordinary skill in the art to form the mix of Tam into a mortar or paste as taught by Anderson as cement and concrete mixes are used for these purposes.
Claim(s) 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tam et al (WO 2021/127728A1) (published 7/01/2021 more than one year prior to the instant effective filing date) as applied to claims 21-24 and claims 27-29 above further in view of Yokogawa (JP H0768236) (1995)
Regarding Claims 25-26:
Tam discloses the limitations above set forth.
Tam et al (WO 2021/127728A1) (published 7/01/2021 more than one year prior to the instant effective filing date) discloses entrainment of carbon dioxide with a concrete mix comprising carbon dioxide entrained recycled aggregate (Abstract)
(meeting claim 27)
[0067] Advantageously, the concrete mix produced using the carbon dioxide entrained recycled aggregate utilizes recycled construction waste to form new concrete, which reduces the amount of waste being added to landfill. In addition, the carbon dioxide entrainment of the recycled construction waste increases the compressive strength of concrete formed from the recycled construction waste.
[0068] Further, the methods of formulating the concrete mix and of determining a compressive strength of concrete formed from the concrete mix provide means for the user to obtain concrete mix variables for a particular desired compressive strength of concrete to be formed from the concrete mix and to determine the compressive strength of a concrete sample made from a concrete mix, where its concrete mix variables are known, without requiring physical testing. Decreasing the amount of concrete being formed for testing by using these methods also decreases the amount of material contributing to landfill.
Tam does not expressly disclose the mix to comprise bitumen (though it teaches various aggregate as more fully above set forth) however, the analogous prior art
Yokogawa (JP H0768236) discloses a recycled material of cement concrete waste used as a filler for an asphalt blend for road pavement (Abstract) comprising sand gravel or crushed stone and cement [0008-0010] with crushed waste of cement concrete and with sand and water (See examples) See reference claims 1 for recycled cement concrete waste material and claim 6 of reference for said material n an asphalt mixture for road pavement and road bed(i.e. bitumen) The composition affords increased strength [0020] [0044] and reduces environmental pollution [0007]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add the mix of Tam to an asphalt road pavement material as it will provide a product with good compressive strength and further reduces environmental impact.
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 21-29 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/672,172 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim compositions including the instantly claimed sand virgin cement water and reclaimed cement fines which may further comprise bitumen and be a paste etc. The instant application is directed to a composition comprising a product by process reclaimed particles and the co-pending claims a process of forming the same reclaimed particles. The co-pending application claims a step of making particles of the reclaimed concrete in ranges which overlap the instantly claimed ranges and that one may make a desired particle size etc. which would render obvious the instantly claimed particle sizes (see co-pending claims 13-14
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action. For example:
Aggregates for Concrete Developed by ACI committee E-701 (2007)
It is desirable to maximize the amount of coarse aggregates produced when concrete is recycled. Recycled fine aggregate normally accounts for approximately 25% of the finished recycled material. New concrete mixtures can contain both fine and coarse recycled aggregate. While up to 100% of the coarse aggregate can be recycled material, the percentage of fine aggregate is usually limited to 10 to 20%, with the remainder being virgin material. This is because of the high absorption of recycled fine aggregates, (E1-23)
When concrete pavements, structures, sidewalks, curbs, and gutters are removed, they become waste or can be processed for reuse. The resulting concrete must either be disposed of in landfills or crushed for subsequent use as aggregate base material or as aggregate in new concrete. Crushing the material and using it as coarse aggregate in new concrete makes sense because it reduces waste and reduces the need for virgin aggregate. Recycled aggregates may be of better quality than some virgin aggregates. While recycled aggregate is handled similarly to new aggregate, some differences between new and recycled aggregate must be addressed.
Because of the high absorption rate of recycled fine aggregates, explained further in the following. 7.1.2 Properties— Gradation and surface condition of recycled aggregate— Almost any gradation can be achieved with recycled aggregate. Crushing may leave some residual dust on the aggregate surfaces. While this does not normally pose a problem, the aggregate must sometimes be washed before use. Specific gravity of recycled aggregate—The specific gravity of crushed recycled aggregate is lower than that of otherwise identical virgin aggregate, usually approximately 2.2 to 2.5 in the saturated surface-dry (SSD) condition. As particle size decreases, so does specific gravity. Recycled sand has a specific gravity of approximately 2.0 to 2.3 (SSD). Absorption of recycled aggregates—Due to the cement mortar attached to the particles, the absorption of recycled aggregates is much higher than that of otherwise identical virgin aggregates, typically 2 to 6% for coarse aggregate and higher for fine aggregate. This high absorption can make the resulting fresh concrete less workable. To offset this, recycled aggregate should be sprinkled with water before the concrete is mixed, or extra water should be added to the mixture. Because fine aggregate made by crushing concrete is very angular and has a high absorption, it is generally necessary to limit it to approximately 10 to 20% of the total amount of fine aggregate in the mixture. Durability of recycled aggregates—Abrasion loss and sulfate soundness are usually not of concern for recycled aggregates. Residual chlorides in a mixture, as from application of deicing salts to a pavement, are usually below threshold values for both fine and coarse aggregates and are not a concern either. Recycled aggregates made from concrete exposed to salt water, however, should receive further chemical and physical testing for their suitability for use in concrete.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
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