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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's 1-7-26 submission has been entered.
Response to Arguments
Applicant's 1-7-25 arguments vis-a-vis prior art rejections employing Constantz et al., US 2011/0059000 (published 3-10-11) (“’000”) as the primary reference therefor, state in pertinent that “Applicant disputes that the fly ash of Constanz et al. and the carbonatable material of the present invention are equivalent for the stated purpose in Constanz et al. as compared to the present invention.” (Remarks at p. 11; italics supplied). It matters not that ‘000 employs its fly ash for a different purpose than that claimed (this point also applies to applicant’s p. 13 argument that ‘000’s fly ash is merely “a minor ingredient in the dissolving solution and only used to raise the pH of the dissolving solution”), so long as ‘000 provides a motivation to employ such fly ash (which it does, as cited in the prior Office Action and is repeated in the rejections below). See MPEP 2144 IV, citing, e.g., In re Lintner, 173 USPQ 560, 562 (CCPA 1972). Regardless of whatever reason fly ash is employed in either ‘000 or the claimed method, what matters is that fly ash is a claimed “carbonatable mineral”, and that sufficient motivation was cited within ‘000 to render employing fly ash prima facie obvious. See also MPEP 2145 II, citing, e.g., In re Lintner. Applicant’s p. 12 argument that ‘000 “teaches away from the use of fly ash as a carbonatable material” is undercut by the portion of ‘000 (i.e. par. 181 thereof) applicant cites in support of this argument. ‘000’s par. 181 says that “un-dissolved [fly] ash may be separated from the remainder of the reaction product… for a subsequent use.” (emphasis supplied) The fact that ‘000’s fly ash may be separated off for a subsequent use amounts to neither a directive to do so, nor a teaching away from employing the fly ash as a carbonatable material. MPEP 2123 & 2145 X.D.1. As to applicant’s pp. 13-14 argument that employing an amorphous carbonatable material evinces certain advantages over employing a crystalline version thereof (e.g. dissolvability in a weaker acid, and thus with less E expended, than the corresponding crystalline material, etc.), this is considered to be an assertion that employing the claimed amount of amorphous carbonatable material is critical. However, as applicant has not cited sufficient evidence thereof in the application-as-filed, nor submitted such evidence via (a Rule 1.132) Declaration, nor compared any such evidence against data/examples not employing such an amount/concentration of amorphous carbonatable material (MPEP 716.02(d) II), this assertion is unpersuasive. As applicant’s arguments vis-à-vis claim 1 have been rebutted above, applicant’s arguments vis-à-vis the dependent claims (which merely rely upon the arguments vis-à-vis claim 1) are likewise unpersuasive; the prior art rejections are re-asserted as proper.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
In considering the obviousness rejections below, the applicant should note that the person having ordinary skill in the art at the time of the effective filing date of the claimed invention has the capability of understanding the scientific and engineering principles applicable to the claimed invention. The references of record in the application reasonably reflect this level of skill.
Claims 1, 3-6, 23-26, 29-30, and 33 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Constantz et al., US 2011/0059000 (published 3-10-11) (“’000”). Regarding claims 1, 3-5, and 29-30, ‘000 teaches a method comprising dissolving ~5.8 µm olivine (a solid mineral, which comprises uncarbonated Mg) particles in aq. acid, treating the resulting Mg+2-comprising acidic solution with CO2, and allowing the CO2 to react with at least some of the Mg+2 ions. See ‘000 at, e.g., par. 288-89. ‘000 also teaches that pH-raising, alkaline-earth-metal-ion-containing sources such as fly ash (also a solid mineral per claim 1) comprising “substantial amounts of silica (silicon dioxide, SiO2) (both amorphous and crystalline) and lime (calcium oxide, CaO, magnesium oxide, MgO)” is also “of interest” as a pH-raising/modifying agent (see id. at, e.g., par. 170-72), rendering it prima facie obvious to modify ‘000’s overall methodology by employing fly ash i) instead of and/or ii) in conjunction with its olivine, given ‘000’s teaching that fly ash is “of interest” (i.e. appropriate, effective, and desirable) for its method. MPEP 2143 I.(A)-(B) & (G). Regarding i), selecting between two or more materials or processes is an obvious choice if their equivalence for the given purpose was known in the art when the invention was made. See MPEP 2144.06 II. Further, "[a]n express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious." Id., citing In re Fout, 675 F.2d 297 (CCPA 1982). Regarding ii), it has been held prima facie obvious to combine two compositions, each useful for the same purpose, to form a third composition also useful for the same purpose. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980); MPEP 2144.06. In doing so, it is noted that ‘000 teaches that its fly ash comprises 15-60 wt% SiO2, which can be amorphous or crystalline, and “range[s] in size from 0.5 µm to 100 µm (at least 80 wt% of which is <~45 µm). See ‘000 at, e.g., 172-73 and 175; Table 3. See also MPEP 2144.05.
Regarding claims 6 and 33, ‘000 teaches that its acidic solution can be of pH < 6.5 (pH < 6, < 5.5, < 5, < 4.5, or < 4 are also specifically taught), rendering it prima facie obvious to employ an acidic solution of such a pH range. See ‘000 at, e.g., par. 68; MPEP 2144.05.
Regarding claims 23-25, ‘000 employs aq. HCl. See ‘000 at, e.g., par. 288-89.
Regarding claim 26, ‘000 teaches the appropriateness and interchangeability of employing aq. HCl or aq. H2SO4 as its acidic solution. See id. at, e.g., par. 73. Given the foregoing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘000’s overall methodology by employing aq. H2SO4 i) instead of and/or ii) in conjunction with its aq. HCl, given ‘000’s teaching that aq. H2SO4 appropriate and effective in introducing/leaching divalent cations into solution. MPEP 2143 I.(A)-(B) & (G) and 2144.07. Regarding i), selecting between two or more materials or processes is an obvious choice if their equivalence for the given purpose was known in the art when the invention was made. See MPEP 2144.06 II. Further, "[a]n express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious." Id., citing In re Fout. Regarding ii), it has been held prima facie obvious to combine two compositions, each useful for the same purpose, to form a third composition also useful for the same purpose. See In re Kerkhoven; MPEP 2144.06.
Claims 21 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over ‘000 in view of Wolf et al., US 2022/0404329 (published 12-22-22; filed 6-22-22; US Prov’l Appl’ns filed on and after 6-22-21) (“’329”). Regarding claim 21, ‘000’s teachings are as above. While ‘000 does not (additionally) employ an acidic soil within its acidic solution, ‘329 so teaches.
‘329 teaches that weathering silicate minerals (such as ‘000’s olivine and/or fly ash) “in acidic soil solution[ drives] the uptake of additional CO2 into dissolved inorganic carbon (DIC) in the soil solution”, i.e. such as alkaline earth carbonate(s) (e.g. MgCO3 from the Mg+2 leached into ‘000’s acidic solution). See ‘329 at, e.g., par. 3.
Regarding claim 31, ‘000 teaches that its acidic solution can be of pH < 6.5 (pH < 6, < 5.5, < 5, < 4.5, or < 4 are also specifically taught), rendering it prima facie obvious to employ an acidic solution of such a pH range. See ‘000 at, e.g., par. 68; MPEP 2144.05.
Claims 22, 27-28, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over ‘000 in view of Clitheroe et al., US 3,728,430 (1973) (“’430”). Regarding claims 22 and 27-28, ‘000’s teachings and suggestions are as detailed above. While ‘757 does not employ aq. H2SO3 or an organic acid such as HOAc in its dissolution step, ‘430 so teaches.
‘430 teaches that oxidic minerals/materials (of which ‘000’s fly ash is considered to qualify) can be cost-effectively leached with H2SO3 as a primary leaching agent, along with lesser amounts of such acids as HOAc, (‘000’s) H2SO4, and/or (‘000’s) HCl. See ‘430 at, e.g., col. 5, ln. 38-48 and 57-59. Given the foregoing, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify ‘000’s overall methodology by employing i) H2SO3 and ii) HOAc in conjunction with iii) ‘000’s HCl and/or H2SO4, to achieve ‘430’s taught motivation of thereby achieving low-cost leaching of ‘000’s oxidic fly ash. Indeed, it has been held prima facie obvious to combine two (or more) compositions, each useful for the same purpose, to form a third composition also useful for the same purpose. See In re Kerkhoven; MPEP 2144.06.
Regarding claim 32, ‘000 teaches that its acidic solution can be of pH < 6.5 (pH < 6, < 5.5, < 5, < 4.5, or < 4 are also specifically taught), rendering it prima facie obvious to employ an acidic solution of such a pH range. See ‘000 at, e.g., par. 68; MPEP 2144.05.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction -including a lack of unity of invention- would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Thus, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 Examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. Examiner can normally be reached M-F 8:30-5:00 (Central). 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 Examiner by telephone are unsuccessful, Examiner’s supervisor, Anthony Zimmer can be reached on (571) 270-3591. 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.
/DANIEL BERNS/ January 15, 2026
Primary Examiner
Art Unit 1736
Prosecution Insights