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 . 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.
Response to Amendment
The Amendment filed 03/04/2026 has been entered. Claims 1-19 remain pending in the application.
Response to Amendment
The Amendment filed 09/02/2025 has been entered. Claims 1-18 remain pending in the application.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-4, 7, 9-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perrino (EP3842400A1 - corresponding U.S PG Pub 20230015398A1 used for citations) and Cook (U.S Patent 5413633) .
Regarding claim 1, Perrino, drawn also to the art of a dry mortar composition and a dry cementitious tile adhesive (Abstract), discloses a dry mortar composition wherein 10-50 wt.% of cementitious binder is present and 20-75 wt. % aggregate, and wherein the binder is Portland cement and may comprise a pozzolanic binder especially slag and fly ash (claims 1 & 7). Perrino also discloses the slag and fly ash to be present in a range of 0.5-20 wt.%. [0039]. Perrino has not explicitly disclosed a biomass ash in the range as claimed, however, this is known from Cook.
Cook, drawn also to the art of a cement mixture (Abstract), discloses cement and biomass ash (sewage sludge ash) (Column 1, lines 20-28), and discloses the cement and ash to be in a 1:1 ratio (Column 1, lines 45-50), and further the ash being 15 to 35 wt.%. of the composition (Column 1, lines 26-28). Thus, the combination of Perrino and Cook, disclose a cement to ash ratio as initially claimed and also disclose a cement and ash to aggregate wt.%. as claimed (see above of Perrino).
It would have been obvious to an ordinarily skilled artisan to have modified the mixture of Perrino, with the biomass ash in the range as claimed, as disclosed by Cook, to arrive at the instant invention, in order to obtain a reduced cost concrete (Column 1, lines 32-34).
Regarding claims 2, 4, 9, 17-18, the combination of Perrino and Cook have disclosed the weight ranges and ratios for the biomass ashes and cement and the biomass ashes and cement weight range as part of the whole concrete mixture as claimed (see claim 1 rejection above).
Regarding claims 3 & 16, Perrino discloses slag or fly ash being present in the claimed range [0039].
Regarding claim 5, Perrino discloses the cement being CEM 1 [0034].
Regarding claim 10, Perrino discloses the aggregates being dolomitic [0049].
Regarding claims 11-12, Perrino discloses an accelerator and redispersible polymer powder being a part of the composition [0067].
Regarding claims 13-15, Perrino discloses the composition in use as a tile adhesive and discloses the steps of applying water to form a paste and then applying the paste to a substrate and then applying a tile (Title; [0094-0097 & 0109-0110].
Regarding claim 19, while Cook has not explicitly disclosed the biomass ashes having a D50, based on volume distribution, of 10um to 30um, it is noted that such a limitation merely amounts to a change in size limitation and that a change in size is obvious to an ordinarily skilled artisan in the absence of new or unexpected results (MPEP 2144.04 IV (A)).
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perrino (EP3842400A1 - corresponding U.S PG Pub 20230015398A1 used for citations) and Cook (U.S Patent 5413633) and Dodgen (U.S Patent 5968254A).
Regarding claims 5-6, Perrino and Cook have not explicitly disclosed a wood ash and wood ash obtained by combustion of wood, however, this limitation is known from Dodgen.
Dodgen, drawn also to the art of composition for concrete (Abstract), discloses wood ash being a part of the composition and discloses the wood ash being obtained by a fired boiler of a paper mill (Column 8, lines 30-36). It is also noted that the method of obtaining the wood ash is an intended use recitation or a material or article worked upon recitation, and as does not patentably limit the product (MPEP 2114 & 2115).
It would have been obvious to an ordinarily skilled artisan to have modified the composition of Perrino and Cook, with the biomass ash being wood ash, as disclosed by Dodgen, to arrive at the instant invention, since as such, this would merely involve a simple substitution of one known element for another to obtain predictable results, and the courts have held this to be obvious (MPEP 2143 I(A)).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Perrino (EP3842400A1 - corresponding U.S PG Pub 20230015398A1 used for citations) and Cook (U.S Patent 5413633) and Rajamma ("Characterisation and use of biomass fly ash in cement-based materials" - cited in IDS and NPL provided by applicant).
Regarding claim 8, neither Perrino nor Cook have explicitly disclosed the biomass ashes having an average chemical composition as claimed. This limitation is disclosed by Rajamma.
Rajamma, drawn also to the art of biomass ashes in cement based materials (Title), discloses biomass ashes having a chemical composition as claimed (Table 1).
It would have been obvious to an ordinarily skilled artisan to have modified the dry mortar composition of Perrino and Cook, with the biomass ashes having an average chemical composition as disclosed by Rajamma, to arrive at the instant invention, in order to improve performance of fly-ash cement binders (Abstract).
Response to Arguments
Applicant's arguments filed 03/04/2026 have been fully considered but they are not persuasive.
Applicant argues that Cook does not disclose biomass ashes and that the combination of Perrino and Cook do not disclose the weight ranges of the composition as claimed in instant claim 1.
The examiner disagrees. The instant claim 1 merely claims biomass ashes without claiming a specific type of biomass ash or a specific source of biomass ash. Thus, the sewage sludge ash of Cook meets the instant limitations of the biomass ash as claimed in instant claim 1, since sewage sludge would naturally have present human or animal waste (feces) and thus constitute biomass ash. Further, Perrino as modified by Cook discloses the weight ranges as claimed (see claim 1 rejection above), and it is noted that as long as weight ranges are close they are also obviated by the prior art in the absence of any new or unexpected or superior results tied directly to the weight range, or rather as a direct effect of the weight of the components. The burden falls on the applicant to prove that such a weight range exists and is being claimed. Additionally, regarding the biomass ash, Perrino and Cook, as modified by Dodgen, at the very least provide a biomass ash that is a wood ash (see rejections of claims 5-6 above).
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).
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
Prosecution Insights