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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 submission filed on 07/02/2026 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 07/02/2026.
Claims 1-5 and 23-37 are presently pending and under examination; claims 6-22 are canceled; claims 1, 24, 28-30 and 36-37 are amended.
The rejections of claims 28-30 and 36-37 under 35 U.S.C 112(b) are withdrawn in light of the amendments to the claims; the 112(b) rejection of claim 24 is maintained.
The 35 U.S.C. 103 rejection of claims 1-5 and 23-37 over AHN in view of CIUPERCA is maintained.
New grounds of rejection are present herein in light of the amendments to the claims.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/02/2026 was filed after the mailing date of the final action on 04/09/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-5 and 23-37 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.
Claim 1 recites the limitation “A more energy efficient and environmentally friendly method” (see claim 1 at lines 1-2); the term “environmentally friendly” renders the scope of the claims indefinite as it is not clear what is actually required for the method to be considered “environmentally friendly” as claimed. The language “environmentally friendly” could not be found in the present specification and no clarification could be found in the specification regarding what requirements must be met for a method to be considered “environmentally friendly”.
Additionally, term “more energy efficient and environmentally friendly method” in claim 1 is a relative term which renders the claim indefinite. The terms “more energy efficient” and “more environmentally friendly” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear to what the process is being compared, i.e., it is not clear what the process must be more energy efficient and more environmentally friendly than, rendering the metes and bounds of the claim further indefinite.
Additionally, the term “a reduced amount of carbon dioxide emissions” in claim 1 (see claim 1 at lines 12-13) is a relative term which renders the claim indefinite. The terms “a reduced amount of carbon dioxide emissions” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Again, it is not clear what the point of comparison is for this limitation, i.e., the meaning of “a reduced amount” cannot be determined as it is not clear from what starting point / comparative value of emissions the emissions produced by the process must be reduced in order to meet this limitation.
For purposes of examination, Examiner treated any method comprising the claimed method steps as being a method according to the present claim, as the meaning of “more energy efficient and environmentally friendly” and “a reduced amount of carbon dioxide emissions” as claimed could not be determined. Clarification is requested.
Claims 24 recites the limitation “wherein the ratio of the Al2O3 to the Fe2O3 is approximately 0.75 and approximately 1.50 and the ratio of the SiO2 to 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 how the ratio of Al2O3 to Fe2O3 could simultaneously be 0.75 and 1.50. The same uncertainty is present for the second recited ratio of the ratio of the SiO2 to 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 to Al2O3 + Fe2O3 is required. Clarification is requested.
Claims 2-5, 23 and 25-37 are included herein as each depends from a claim which is indefinite for the reasons set forth above.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 machine translation provided with a previous office action) 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) with 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, wherein the basaltic hyaloclastite or intermediate basaltic hyaloclastite is approximately 10 to 100% by weight amorphous.
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) wherein the basaltic hyaloclastite or intermediate basaltic hyaloclastite is approximately 10 to 100% by weight amorphous (see CIUPERCA at paragraph [0046], teaching, e.g., 30% to 50% by weight amorphous). CIUPERCA teaches that hyaloclastite is a known natural pozzolan which is a source of silica/alumina (see CIUPERCA at Abstract and paragraphs [0004], [0008], [0010] and [0061]). CIUPERCA also 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 partially amorphous hyaloclastite taught by CIUPERCA (see CIUPERCA at Abstract and paragraphs [0036]-[0037] and [0046]-[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 volcanic rock material which is a source of silica/alumina (see CIUPERCA at Abstract and paragraphs [0004], [0008], [0010] and [0061]; see AHN at Abstract and paragraphs 5 and 23).
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 07/02/2026 have been fully considered but they are not persuasive.
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. 7-8).
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:
“Ahn is proposing to use waste concrete… as a source of silica and possibly alumina… Ahn is also proposing to use pumice as a source of silica and alumina… However, Ahn’s main purpose for his invention is to substitute the use of pumice and other sources of silica and alumina with recycled concrete dust… Thus, Ahn does not disclose the use of pumice as a pozzolan” (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 AHN does not disclose the use of pumice as a pozzolan because AHN teaches that waste concrete is also used, the Examiner respectfully disagrees. As acknowledged by Applicant, AHN explicitly discloses a method of making clinker using pumice. Pumice is a pozzolanic volcanic rock.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“Since the present invention does not utilize limestone to produce the cement clinker, the present invention does not produce the same release of CO2 associated with the prior art methods of producing cement clinker, and, therefore, is more environmentally friendly than the process of Ahn… Applicant has amended Claim 1 to specifically recite that the claimed process produces reduced amounts of carbon dioxide emissions” (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. 10).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention does not utilize limestone whereas the prior art does, the Examiner notes that there is no language in the claimed method which excludes the use of limestone to produce the cement clinker.
In response to Applicant's argument that the present claims produce reduced amounts of carbon dioxide emissions, as discussed in the 112(b) rejection of claim 1 above, the meaning of the relative terms “a reduced amount of carbon dioxide emissions” and “more energy efficient and environmentally friendly” as claimed in amended claim 1 cannot be determined, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention; any method comprising the claimed method steps is treated as being a method according to the present claim in view of this indefinite language.
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 volcanic pozzolan or hyaloclastite in the production of hydraulic cement clinkers... It is only through hindsight reconstruction that one would consider substituting hyaloclastite for pumice in the preparation of a hydraulic cement clinker” (see Remarks at pg. 11-12).
“the hyaloclastite is basaltic hyaloclastite or intermediate basaltic hyaloclastite 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 hyaloclastite and not merely generic hyaloclastite. The pumice disclosed by Ahn does not contain any iron… The present invention requires hyaloclastite to contain approximately 8 to approximately 18 percent by weight Fe2O3” (see Remarks at pg. 12).
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. The iron content of pumice is immaterial when it is replaced with hyaloclastite.
In response to Applicant’s argument that one of ordinary skill in the art would not consider substituting hyaloclastite for pumice in the production of a cement clinker, the Examiner respectfully disagrees. As discussed above, AHN discloses that pumice, which is a pozzolanic volcanic rock, is used in a method of producing cement clinker as a source of silica and alumina. CIUPERCA discloses that both pumice and hyaloclastite are natural pozzolans known to have high silica/alumina content (see CIUPERCA at paragraphs [004], [0008], [0010] and [0061]). One of ordinary skill in the art could have simply substituted one pozzolanic volcanic rock for the other with a reasonable expectation of success, yielding the predictable result of providing a natural pozzolan volcanic rock which is a source of silica/alumina.
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. 11).
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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