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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/07/2024 has been considered by the examiner except where lined through.
Specifically, all but three of the listed non-patent literature references have been lined through because copies of the references were not provided. 37 CFR 1.98(a)(2) requires a legible copy of each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. The information referred to therein has not been considered.
Duplicate Claim Warning
Applicant is advised that should claim 1 be found allowable, claim 9 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
In the instant case, the concrete mixture of claim 1 and the concrete manufactured from the concrete mixture according to claim 1 (i.e., the features of claim 9) appear to cover the same thing.
Claim Rejections - 35 USC § 101 and 35 USC § 112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 12 is a “use” claim (MPEP 2173.05 q) and is alternatively rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, and/or 35 U.S.C. 101. Claim 12 attempts to claim a process without setting forth any steps involved in the process and is therefore indefinite under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Alternatively, claim 12 is an improper definition of a process under 35 U.S.C. 101. To be clear, the claimed use of the concrete mixture according to claim 1 for manufacturing concrete while avoiding and/or reducing the alkali-silicic acid reaction does not constitute a proper process claim and/or set forth the steps required to accomplish a process of using the concrete mixture according to claim 1.
Claim 13 is a “use” claim (MPEP 2173.05 q) and is alternatively rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, and/or 35 U.S.C. 101. Claim 13 attempts to claim a process without setting forth any steps involved in the process and is therefore indefinite under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Alternatively, claim 13 is an improper definition of a process under 35 U.S.C. 101. To be clear, the claimed use of an olivine-based binder for avoiding and/or reducing the alkali-silicic acid reaction does not constitute a proper process claim and/or set forth the steps required to accomplish a process of using the olivine-based binder.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 requires “an olivine-based binder”; however, it is unclear what constitutes an olivine-based binder. The phrase has not been given a special definition nor would the phrase be recognized by persons of ordinary skill in the art before the effective filing date of the claimed invention such that they would reasonably understand where infringement of such a feature/claim would begin. In the interest of furthering prosecution, the claims have been interpreted such that any material containing olivine and/or olivine itself would meet the claimed ‘olivine-based binder’. Of note, the functionality of the olivine as a binder is also not considered to be required under the BRI, e.g., the presence of olivine or a material containing olivine but as an aggregate would still be considered to meet the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation “30 % by weight to 95 % by weight”, and the claim also recites “preferably 40 % by weight to 95% by weight, further preferred 50% by weight to 90% by weight” which is/are the narrower statement(s) of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “less than 10 %”, and the claim also recites “preferably less than 5 % by weight of Portland cement clinker, further preferably less than 2 % by weight of Portland cement clinker, further preferably essentially no Portland cement clinker, further preferably no Portland cement clinker at all” which is/are the narrower statement(s) of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 7 includes various instances of the use of the word ‘preferably’ which renders the metes and bounds of the claim indefinite because it is unclear if the materials following ‘preferably’ are actually claim limitations such that they are required or not.
Additionally, claim 7 uses the phrase “industrially occurring materials” which renders the metes and bounds of the claim indefinite because it is unclear what materials would constitute ‘industrially occurring materials’ nor is the phrase defined by Applicant such that the phrase is given a special definition. Also, considering the knowledge of a hypothetical person having ordinary skill in the art before the effective filing date of the claimed invention, ‘industrially occurring materials’ would not be a recognized genus of material such that the metes and bounds of the claim would be sufficiently clear for POSITA to reasonably determine where infringement would begin.
Claim 8 is rejected as being indefinite under 112(b) because it is an attempt to claim a process without setting forth any steps involved in the process. Specifically, ‘a process for manufacturing concrete while using the concrete mixture according to claim 1’ is indefinite because it merely recites a use with any active, positive steps delimiting how this use is actually practiced (see MPEP 2173.05(q)).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “7 to 11”, and the claim also recites “preferably 7 to 10, further preferred 8 to 9” which is/are the narrower statement(s) of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Additionally, claim 10 recites “the pore solution after hardening of the concrete mixture” which lacks sufficient antecedent basis.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “below 100”, and the claim also recites “more preferred below 50 mmol/L” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 12 recites in part “while avoiding and/or reducing the alkali-silicic acid reaction” which renders the metes and bounds of the claim unclear. It is unclear when infringement would begin for at least the reasons that ‘avoiding and/or reducing’ is relative/subjective and that ‘the alkali-silicic acid reaction’ is unclear. Notably, an alkali-silicic acid reaction has not been defined by the instant disclosure or introduced in claim 1 or claim 12; thus, it is unclear what result is achieved and/or what method steps would yield such a result.
Claim 13 recites in part “for avoiding and/or reducing the alkali-silicic acid reaction” which renders the metes and bounds of the claim unclear. It is unclear when infringement would begin for at least the reasons that ‘avoiding and/or reducing’ is relative/subjective and that ‘the alkali-silicic acid reaction’ is unclear. Notably, an alkali-silicic acid reaction has not been defined by the instant disclosure or introduced in claim 1 or claim 13; thus, it is unclear what result is achieved and/or what method steps would yield such a result.
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.
Claims 1, 4-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over McNulty (U.S. 2003/0084826).
Regarding claims 1 and 9, McNulty teaches a concrete-like material (meeting claimed ‘concrete mixture’ and/or ‘concrete’; Paragraphs 0005 and/or 0021) containing a cementitious material that includes one or more rocks and minerals from the group consisting of materials including olivine basalt (line 3 of Paragraph 0016; meeting claimed ‘olivine-based binder’) and graywacke (line 7 of Paragraph 0016; meeting claimed ‘greywacke’).
Regarding claim 4, McNulty teaches the mixture as applied to claim 1 above and further teaches that the rocks and minerals may be from 10 wt% to 90 wt% (Paragraph 0014) which lies within the claimed range of 1:1 to 1:10. Notably, McNulty teaches that the one or more rocks and minerals may be selected from materials that include olivine basalt and/or graywacke. The person of ordinary skill in the art would find it obvious to determine the appropriate proportions of the olivine basalt and the greywacke absent evidence to the contrary. Such proportions have not been demonstrated by the instant specification to have yielded critical and/or unexpected results.
Regarding claim 5, McNulty teaches the mixture as applied to claim 1 above and teaches rocks and minerals may be from 10 wt% to 90 wt% (Paragraph 0014). Notably, McNulty teaches that the one or more rocks and minerals may be selected from materials that include olivine basalt. The person of ordinary skill in the art would find it obvious to determine the appropriate proportions of the olivine basalt absent evidence to the contrary. Such proportions have not been demonstrated by the instant specification to have yielded critical and/or unexpected results.
Regarding claim 6, McNulty teaches the mixture as applied to claim 1 and is silent to the presence of Portland cement; thus, it is taken that McNulty’s composition includes no Portland cement.
Regarding claim 7, McNulty teaches the mixture as applied to claim 1 above and further teaches the inclusion of additional materials such as siliceous sandstone (Paragraph 0016; meeting claimed one or more SiO2-containing additives).
Regarding claim 8, McNulty teaches the mixture as applied to claim 1 above and further teaches a process for making concrete by mixing the material with water (Paragraph 0017).
Regarding claim 10, McNulty teaches the concrete as applied to claim 9 above but is silent to the pH being from 7 to 11; however, concrete is usually an alkaline material such that it embodies a pH of 7+. As the PTO cannot manufacture and test compositions of the prior art, it is taken that the McNulty composition would have an alkaline pH absent evidence to the contrary because of the use of the same materials paired with POSITA’s understanding that concrete/cement is usually strongly basic/alkaline.
Regarding claims 12 and 13, McNulty teaches the mixture as applied to claim 1 but is silent to the use of the material for avoiding and/or reducing the alkali-silicic acid reaction. However, in view that McNulty describes the use of the same materials claimed by Applicant in the pursuit of making a concrete material, there is a prima facie basis to presume that McNulty’s composition would perform and/or be capable of performing the same function claimed, i.e., McNulty’s composition should seemingly avoid and/or reduce the alkali-silicic acid reaction absent evidence to the contrary.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hill (U.S. 4,838,941) directed to a magnesium cement including olivine as a useful material (Col. 8 approx. line 52).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
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