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 .
Election/Restrictions
Applicant’s election without traverse of claims 13-20 in the reply filed on 05/26/2026 is acknowledged.
Claims 1-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: reference character “230” in Fig. 2 and “455” in Fig. 4 are not mentioned in the specification. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 13 and 14 is objected to because of the following informalities: the limitation “ones of the steel slag particles”. It is unclear what “ones” refers to. Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-19 of U.S. Patent No. 12,091,605 (hereafter ‘605).
Regarding claims 13-16, ‘605 claims a plurality of steel slag particles wherein at least 90% of the steel slag particles have diameters of 1.25 mm or less and equal to or greater than 0.14 mm. (claim 1). ‘605 claims that the steel slag particles are electric arc furnace slag. (claim 1). ‘605 claims the content of iron-compound in the steels-slag particles is equal to or less than 5% by weight. (claim 14).
Regarding claim 17, ‘605 claims the steel slag particles having CaO, MgO, SiO2 and Al2O3. (claim 1).
Regarding claim 18-20, ‘605 claims the use of the steel slag particles in a blasting process under the same parameters as claimed that complies with SSPC-SP 10. (claims 15-17).
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 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 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Morioka et al. (EP 1 325 897) in view of Seo et al. (KR 20100117953).
Regarding claims 13-15 and 16-17, Morioka et al. teaches a cement composition containing Portland cement and a slowly cooled blast furnace slag powder. (Abstract and par. [0011]). The blast furnace slag contains SiO2, CaO¸ Al2O3, MgO, MnO and Fe2O3, wherein the content of Fe2O3 is less than 2%. (par. [0018]).
Morioka et al. does not teach the particle size of the slag within the range presently claimed.
Seo et al. teaches a concrete composition containing an aggregate mixture containing slag. (Abstract). Seo et al. teaches that the aggregate used in concrete compositions is advantageously used from the standpoint of reducing the cost of production. (see Advantageous-Effects) Seo et al. teaches that the slag should have a particle size of 0.08-5 mm from the standpoint of adjusting the ability of the slag to be effectively compounded into concrete and the ability thereof to be used into an aggregate. (Description of Embodiments, 7th paragraph).
It would have been obvious to one of ordinary skill in the art to optimize the particle diameter of the slag particles in Morioka et al. in view of the teachings of Seo et al.
One of ordinary skill in the art would have found it obvious to optimize the particle size distribution in view of the teachings in Seo et al. that the particle size is a result effective variable in affecting the ability for slag particles to be formed into suitable aggregates in concrete and their ability to be effectively compounded into concrete compositions. Where claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05.
Regarding claim 16, the slag particles disclosed in Morioka et al. are disclosed to be furnace slag. (par. [0017]). While Morioka et al. does teach that the slag comes from an electric arc furnace process, the method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113.
Regarding claims 18-20, the slag particles disclosed by the combination of teachings of Morioka et al. and Seo et al. would meet the limitation of an “abrasive blast media” by virtue of their composition and particle size which overlaps with those presently claimed. With respect to the cleaning process presently claimed, Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the slag particles disclosed in the prior art would be capable of being used under a cleaning process presently claimed using the pressure, blast nozzle positioning and cleaning rate as claimed in claims 18-20 such that the claimed process would yield a surface complying with SSPC-SP-10.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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, Alicia Chevalier can be reached at 5712721490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 07/21/2026
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