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.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because it is shorter than 50 words in length. Correction is required. See MPEP § 608.01(b).
Claim Objections
Claims 2-10 are objected to because of the following informalities:
In claims 2-9, “contain” should read “contains” (see claims 2-9 each at line 2).
In claim 10, “have” should read “has” (see claim 10 at line 2).
Appropriate correction is required
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 2-8 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 2-8 each recite percentages (e.g., 4.5%, 5%, etc.), but do not specify if these percentages are measurements on a basis of weight, volume, moles, etc., rendering the metes and bounds of the claim indefinite.
For purposes of examination, Examiner treated all recited percentages as being weight percentages, as this would appear most in keeping with Applicant’s intent as discussed in the specification at pg. 7. Clarification is requested.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hills, et al., "Valorisation of agricultural biomass-ash with CO2", published August 2020 (hereinafter, “HILLS”),.
Regarding claim 1, HILLS teaches a method of producing a cementitious material substitute comprising: preparing a carbonated biomass ash (see HILLS at pg. 1, pg. 3 “Materials and methods”, pg. 4, “Results and discussion”, pg. 9, “Raw biomass and ash monoliths” and pg. 10-11, “Implications”, teaching a method of carbonating biomass ash which is used as a cement replacement).
Regarding claims 2-4, HILLS teaches a method according to claim 1, wherein the carbonated biomass ash contains at least 4.5%, at least 5%, and at least 5.5%, of inorganic carbon, as recited by claims 2-4 respectively (see HILLS at Figs. 1-2, Tables 4-5, and pg. 11, “Implications”, teaching carbonated biomass ashes with at least 5.5 wt% inorganic carbon; e.g., see Table 4, disclosing a carbonated biomass ash containing 76.41 wt% calcite (CaCO3); CaCO3 is about 12 wt% carbon, i.e., the carbonated biomass ash contains at least about 9% inorganic carbon in the calcite).
Regarding claim 5, HILLS teaches a method according to claim 1, wherein the carbonated biomass ash contains less than 10% of lime (see HILLS at, e.g., Table 4, teaching carbonated biomass ash containing no lime).
Regarding claim 6, HILLS teaches a method according to claim 1, wherein the carbonated biomass ash contains more than 2% of carbonates (see HILLS at, e.g., Table 4, teaching carbonated biomass ash containing 76.41 wt% calcite (i.e., calcium carbonate)).
Regarding claim 7, HILLS teaches a method according to claim 1, wherein the carbonated biomass ash contains less than 60% of SiO2 (see HILLS at Table 3, teaching ashes containing less than 60% SiO2, e.g., 8.8% SiO2).
Regarding claim 8, HILLS teaches a method according to claim 1, wherein the carbonated biomass ash contains less than 40% of Al2O3 (see HILLS at Table 3, teaching ashes containing less than 40% Al2O3, e.g., 1.1% Al2O3).
Regarding claim 9, HILLS teaches a method according to claim 1, wherein the carbonated biomass ash contains calcite, kalcinite, carbo-hydroxyapatite and/or hydrocalumine (see HILLS at, e.g., Table 4, teaching carbonated biomass ash containing calcite).
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over HILLS.
Regarding claim 10, as applied to claim 1 above, HILLS teaches a method according to claim 1.
HILLS does not explicitly mention that the carbonated biomass ash has a loss on ignition of at least 5%; however, HILLS teaches a carbonated biomass as claimed by claim 1, therefore the carbonated biomass of HILLS would be expected to have the same or overlapping properties as the claimed carbonated biomass, including loss on ignition. 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. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of HILLS have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise
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
