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 .
Response to Amendment
This office action is in response to the Amendment filed on 03/03/2026.
Claims 1-5 and 23-37 are presently pending and under examination; claims 6-22 are canceled; claim 1 is amended; claims 23-37 are new.
The 35 U.S.C. 103 rejection of claims 1-5 over AHN in view of CIUPERCA is maintained; the rejection of claims 6 and 20-22 are moot as these claims have been canceled.
New grounds of rejection are present herein in light of the amendments to the claims.
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 24, 28-30 and 36-37 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.
Claims 24 recites the limitation “wherein the ratio of the Al2O3 and the Fe2O3 is approximately 0.75 and approximately 1.50 and the ratio of the SiO2 and the sum of the Al2O3 + Fe2O3 is preferably approximately 1.25 and 2.25” (see claim 24 at lines 1-3); the scope of the claim cannot be ascertained from this language. It is not clear whether “the ratio of the Al2O3 and the Fe2O3” means the ratio of Al2O3 to Fe2O3 or whether it refers to each of these individually and the ratio is meant to refer to a ratio of each to some unrecited component, as two different values are claimed for the ratio (0.75 and 1.50). If this ratio is meant to be a ratio of Al2O3 to Fe2O3, it is not clear how this ratio could simultaneously be 0.75 and 1.50. The same uncertainty is present for the second recited ratio of the ratio of the SiO2 and the sum of the Al2O3 + Fe2O3. The claim also does not specify whether these ratios are mass ratios, molar ratios, or volumetric ratios, further rendering the scope indefinite. Further, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
For purposes of examination, Examiner treated claim 24 as meaning that the weight ratio of the Al2O3 to the Fe2O3 is between approximately 0.75 and approximately 1.50, and treated limitations following “preferably” as merely being a preference and not being part of the claimed invention, i.e., the claim is treated as though no specific ratio of SiO2 and Al2O3 + Fe2O3 is required. Clarification is requested.
Claims 28-30 and 36-37 each recite a range of percentages for the amorphous content of the hyaloclastite, but do not specify if the percentages are weight percentages or volumetric percentages, rendering the scopes of the claims indefinite.
For purposes of examination, Examiner treated the percentages recited in claims 28-30 and 36-37 as weight percentages. Clarification is requested.
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.
Claims 1-5 and 23-37 are rejected under 35 U.S.C. 103 as being unpatentable over Ahn, et al. (KR-100554715-B1) (hereinafter, “AHN”; citations herein refer to the attached machine translation) in view of Ciuperca (U.S. Pub. No. 2021/0002171-A1) (hereinafter, “CIUPERCA”).
Regarding claim 1, AHN teaches a method (see AHN generally at Abstract and paragraphs 3 and 14-15, teaching a method of manufacturing cement clinker) comprising:
combining calcium oxide or calcium hydroxide (see AHN at Abstract and paragraph 15, teaching calcium oxide) and pozzolanic volcanic rock (see AHN at Abstract and paragraph 15, teaching pumice) to form a mixture;
and heating the mixture to a sufficient temperature and for a sufficient time to produce a hydraulic cement clinker (see AHN at Abstract, teaching firing for 1-2 hours at a temperature of 1,450 ℃ to produce the hydraulic cement clinker).
However, AHN fails to explicitly teach that the pozzolanic volcanic rock is basaltic hyaloclastite or intermediate basaltic hyaloclastite comprising approximately 30 to approximately 57 percent by weight SiO2, approximately 10 to approximately 18 percent by weight Al2O3, approximately 8 to approximately 18 percent by weight Fe2O3, and approximately 4 to approximately 25 percent by weight CaO.
CIUPERCA teaches a method of forming a cementitious material comprising combining lime (calcium oxide/hydroxide) with basaltic hyaloclastite or intermediate basaltic hyaloclastite comprising, by weight, 43% to 57% SiO2, 8% to 15% Fe2O3, 5% to 15% CaO, and 5% to 20%, e.g., approximately 12%, Al2O3 (see CIUPERCA at Abstract and paragraphs [0036]-[0037], [0044] and [0047] and Table 1). CIUPERCA teaches that it is advantageous to use hyaloclastite instead of pumice in cementitious material as hyaloclastite has significantly lower water demand than pumice and results in better strength development than pumice (see CIUPERCA at paragraphs [0061] and [0065]-[0066]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of AHN by simply substituting the pumice with the hyaloclastite taught by CIUPERCA (see CIUPERCA at Abstract and paragraphs [0036]-[0037] and [0047]). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing the mixture with a natural pozzolan material (see CIUPERCA at Abstract and paragraph [0061]). Further, one of ordinary skill in the art would have been motivated to replace pumice with hyaloclastite for the benefit of reducing water demand and improving strength development as taught by CIUPERCA (see CIUPERCA at paragraphs [0061] and [0065]-[0066]).
Regarding claim 2, as applied to claim 1 above, AHN in view of CIUPERCA teaches a method according to claim 1, wherein the mixture is heated in a cement clinker kiln (see AHN at Abstract).
Regarding claim 3, as applied to claim 2 above, AHN in view of CIUPERCA teaches a method according to claim 2, wherein the mixture is heated to a temperature of approximately 1250 to approximately 1450 °C (see AHN at Abstract, teaching 1450 °C).
Regarding claims 4 and 31, as applied to claims 1 and 3 above, AHN in view of CIUPERCA teaches a method according to claims 1 and 3, further comprising grinding the hydraulic cement clinker to a fine powder (see AHN at paragraphs 14-15, 23-25, 31 and 36, teaching powder raw materials which are fired to produce clinker and are then subjected to further grinding/pulverizing).
Regarding claims 5 and 32, as applied to claims 1 and 31 above, AHN in view of CIUPERCA teaches a method according to claims 1 and 31.
AHN does not explicitly mention combining the powder with water.
However, it is known in the art that hydraulic cement clinker is mixed with water. For example, CIUPERCA teaches mixing cementitious material with water to hydrate the cementitious material (see CIUPERCA at paragraph [0048]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of AHN by including a step of combining the hydraulic cement clinker powder with water as taught by CIUPERCA (see CIUPERCA at paragraph [0048]), for the benefit of hydrating the cementitious material and forming a hardenable cementitious composition, e.g., concrete (see CIUPERCA at paragraph [0048]).
Regarding claim 23, as applied to claim 1 above, AHN in view of CIUPERCA teaches a method according to claim 1, wherein the sum of the Al2O3 + Fe2O3 is approximately 20 to approximately 35 percent by weight (see CIUPERCA at paragraph [0044] and Table 1, teaching, by weight, 5 to 20% Al2O3 and 8 to 15% Fe2O3, e.g., approximately 12% of each, i.e., a sum as claimed of approximately 24%).
Regarding claim 24, as applied to claim 1 above, AHN in view of CIUPERCA teaches a method according to claim 1, wherein the weight ratio of the Al2O3 to the Fe2O3 is between approximately 0.75 and approximately 1.50 (see CIUPERCA at paragraph [0044] and Table 1, teaching, by weight, 5 to 20% Al2O3 and 8 to 15% Fe2O3, e.g., approximately 12% of each, i.e., a ratio as claimed of approximately 1).
Regarding claims 25, 28-30 and 33-37, as applied to claims 1-4 above, AHN in view of CIUPERCA teaches a method according to claims 1-4, wherein the basaltic hyaloclastite or intermediate basaltic hyaloclastite is at least partially amorphous, approximately 30% to 95% amorphous, approximately 10% to 80% amorphous, or approximately 30% to 50% amorphous (see CIUPERCA at paragraph [0046], teaching, e.g., 30% to 50% by weight amorphous).
Regarding claims 26-27, as applied to claim 1 above, AHN in view of CIUPERCA teaches a method according to claim 1, wherein the basaltic hyaloclastite or intermediate basaltic hyaloclastite is at least partially amorphous and partially crystalline (see CIUPERCA at paragraph [0046]). CIUPERCA does not explicitly use the language “microcrystalline” or “nanocrystalline”; however, CIUPERCA teaches basaltic or intermediate basaltic hyaloclastite as claimed which is identical to the hyaloclastite of the present invention (see CIUPERCA at paragraphs [0036] and [0046]; see the present specification at pg. 20, line 26 - pg. 21, line 9), therefore the hyaloclastite would be expected to have the same or overlapping properties as the claimed hyaloclastite, including crystal size, and the crystalline portion would be expected to be microcrystalline or nanocrystalline. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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.
Response to Arguments
Applicant's arguments filed 03/03/2026 have been fully considered but they are not persuasive.
Further, the Amendment filed by Applicant necessitated new grounds of rejection under 35 U.S.C. 112(b) for claims 24, 28-30 and 36-37 and under 35 U.S.C. 103 for claims 23-37 over AHN in view of CIUPERCA as set forth above.
Applicant argues:
“Ahn does not disclose combining calcium oxide or calcium hydroxide with pozzolanic volcanic rock. Ahn does not disclose the use of calcium hydroxide at all… Ahn discloses combining calcium oxide with other materials including pumice… Ahn nowhere uses the generic term pozzolanic volcanic rock. Ahn only discloses pumice” (see Remarks at pg. 6-7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that AHN does not disclose pozzolanic volcanic rock and does not disclose combining calcium oxide or calcium hydroxide with pozzolanic volcanic rock, the examiner respectfully disagrees. As acknowledged by Applicant, AHN explicitly discloses combining calcium oxide with pumice, which is pozzolanic volcanic rock. The use of calcium hydroxide is irrelevant; the claim requires calcium oxide or calcium hydroxide, not both.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“the present invention does not produce the same release of CO2, and, therefore, is more environmentally friendly than the process of Ahn” (see Remarks at pg. 7).
“The use of hyaloclastite… simplifies the clinker manufacturing process… the use of an amorphous or partially amorphous hyaloclastite improves the efficiency, energy consumption and emissions of the clinker manufacturing process” (see Remarks at pg. 9).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., amount of CO2 emissions) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to Applicant's argument that the present invention is simple, efficient and environmentally friendly, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“Ciuperca does not disclose or suggest any process using a pozzolan… in the production of hydraulic cement clinkers. It is only through hindsight reconstruction that one would consider substituting hyoclastite for pumice in the preparation of a hydraulic cement clinker” (see Remarks at pg. 10).
“the hyoclastite is basaltic hyoclastite or intermediate basaltic hyoclastite and comprising approximately 30 to approximately 57 percent by weight SiO2, approximately 10 to approximately 18 percent by weight Al2O3, approximately 8 to approximately 18 percent by weight Fe2O3, and approximately 4 to approximately 25 percent by weight CaO. This is a special type of hyoclastite and not merely generic hyoclastite. The pumice disclosed by Ahn does not contain any iron… The present invention requires hyoclastite to contain approximately 8 to approximately 18 percent by weight Fe2O3” (see Remarks at pg. 10-11).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
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). As set forth in the rejection above, AHN teaches a method of making hydraulic cement clinker comprising pozzolanic volcanic rock, and CIUPERCA teaches basaltic or intermediate basaltic hyaloclastite, and it is the combination of the references which renders the present invention obvious. As set forth above, CIUPERCA sets forth very clear motivation to substitute pumice with hyaloclastite, teaching that it is advantageous to use hyaloclastite instead of pumice in cementitious material as hyaloclastite has significantly lower water demand than pumice and results in better strength development than pumice (see CIUPERCA at paragraphs [0061] and [0065]-[0066]). The iron content of pumice is immaterial when it is replaced with hyaloclastite.
In response to Applicant’s argument that the present invention is nonobvious because basaltic or intermediate basaltic hyaloclastite is special and not generic hyaloclastite, the Examiner respectfully disagrees; as set forth in the rejection above, CIUPERCA explicitly teaches basaltic or intermediate basaltic hyaloclastite as claimed.
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“Ahn and Ciuperca deal with completely different processes” (see Remarks at pg. 10).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that AHN and CIUPERCA disclose different processes, prior art references must be analogous to the present invention, not to each other. It has been held that a prior art reference must either be in the field of the inventor's endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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