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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim1, 3-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is no support in the specification for “a site susceptible to PFAS contamination”.
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, 3-20 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 1, 13 are vague and indefinite for the phrase “located at a site susceptible to PFAS contamination”. There is no standard or measurement for assessing this susceptibility in a way that would set forth the meets and bounds of the claim. The remaining dependent claims are rejected for failing to correct this issue.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 4, 8-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Douglas (Sealants and Other Management Strategies for PFAS-Contaminated Concrete and Asphalt).
Claims 1:
Douglas teaches a method for treating concrete that is contaminated with PFAS or is likely to be contaminated with PFAS by applying a penetrative sealant into the concrete to prevent PFAS ingress, prevent PFAS egress, PFAS in situ binding, and concrete pore blocking (pg. 610, L). Fig. 1 illustrates PFAS contaminated concreate with surface sealing, pore lining sealing, and pore-blocking sealing. The step of allowing the penetrating sealer composition to permeate into the cementitious product and cure within the cementitious product is shown in Fig. 1. Generic curing is a necessary inherent step in order to form the resulting sealant and sealed concrete surface.
Claim 2:
Douglas makes it clear the treatment can be used as a pre-treatment to prevent the ingress of PFAS (pg. 609, R).
Claim 4:
Douglas teaches the concreate surface needs to be clean, dry, and free of contaminates (pg. 611, L).
Claims 8-10:
Douglas teaches the penetrating sealer is Na, K, or Li silicates (pg. 614). These are densifying due to pore-filling.
Claim 11:
Douglas teaches penetrating, hydrophobic silane/siloxane sealers (pg. 614).
Claim 12:
Douglas teaches applying the sealants ex situ e.g., waste piles of the concrete (pg. 609, R).
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.
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.
Claim(s) 3, 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Douglas (Sealants and Other Management Strategies for PFAS-Contaminated Concrete and Asphalt).
Douglas does not explicitly teach penetrating at least 3 mm into the cementitious product, or pretreating by removal of hydrocarbons and solvent or water washing.
However, Douglas does teach total or partial capillary pore filling (pg. 610, R) (Fig. 1). In this respect, Douglas sets forth a range of permeation distance including at least 3mm and routinely optimizable in order to achieve the effects listed (pg. 610, R).
Douglas also teaches water washing (pg. 609, L) and hydrocarbons are a known contaminate (pg. 610, L).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Douglas and allow the penetrating sealer to penetrate at least 3mm, conduct water washing, and remove hydrocarbon contaminates. Douglas establishes penetration depth of the penetrating sealer is linked to the resulting properties, water washing cleans the surface in preparation of further treatment, and hydrocarbons are one such contaminate that is removed by the cleaning.
Claim(s) 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kita (WO 2022/036414 A1) in view of Suzuki (US 4134956).
Claims 13, 15-16:
Kita teaches a method for containing PFAS within cementitious products [0001] by applying a cementitious slurry and allowing the cementitious slurry to cure [0015]. The applied cementitious slurry functions by permeating into the cementitious product [0057]. The cementitious slurry includes ordinary Portland cement [0067] and sand (understood to be silica sand) [0062]. These components are provided in amounts that overlap with the claimed ranges (Table 3).
Although Kita does teach additional additives [0075], alkaline earth compounds are not explicitly taught.
However, Suzuki teaches a concrete composition that further includes curing agents that are added to Portland cement that improves bonding strength and overall strength (3:4-27). These curing agents include alkaline earth compounds such as calcium chloride (Id.). The amount of curing agent is listed (Id.), but also the amount of curing agent is a result effective variable for providing the curing function and would have been obvious through routine optimization.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the method of Kita and add alkaline earth compounds as a curing agent additive. Suzuki establishes this is desirable because it decreases curing time, improves bond strength, and improves overall strength of the cement product.
Claim 14:
Suzuki also teaches sodium carbonate as a curing agent added to Portland cement (3:4-27).
Claim 17:
Neither reference teaches the application amount of the base treatment. However, Kita makes it clear the base treatment is for the containment of PFAS within concrete [0054] primarily by plugging capillary pores [0057]. To this end, the amount of base treatment is a result effective variable for the containment of PFAS and would have been obvious through routine optimization.
Claims 18-19:
A molded test specimen was kept moist and submerged in water for 7 days [0084].
Claim 20:
Assuming the coarse aggregate is the contaminated cementitious product, it is broken up prior to being encapsulated in the base treatment [0058-0060].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Douglas (Sealants and Other Management Strategies for PFAS-Contaminated Concrete and Asphalt) in view of Kita (WO 2022/036414 A1) in view of Suzuki (US 4134956).
Douglas, Kita, and Suzuki are all discussed above and claim 7 is rejected as the combination of base treatment composition taught by Kita and Suzuki followed by the penetrating sealant composition taught by Douglas. It is noted that Douglas does teach treatment by polymer modified cementitious coating in addition to penetrating sealers (Table 2) and the desirability for using a combination of treatments to achieve the desired level of PFAS mitigation (pg. 616, L).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the methods of Douglas, Kita, and Suzuki resulting in application of both treatments because Douglas states combined methods are likely required to achieve the desired levels of PFAS mitigation.
Response to Arguments
Applicant's arguments filed 7/24/26 have been fully considered but they are not persuasive.
Applicant’s arguments pertaining to the 112 rejection and 102 rejection are similar in that they are based on a particular interpretation of the claimed identifying step for a site susceptible to PFAS contamination. To aid in explanation, the following thought experiment may be useful: “Is the US Patent and Trademark Office a site susceptible to PFAS contamination?”, Why or why not?, and How is this determined? The examiner is unable to determine the answers to these questions based on the information provided in the specification and the supplementary document. This does render the claims indefinite. For the purposes of examination, any site is taken to be susceptible to PFAS contamination in the sense that PFAS contamination can occur anywhere. If there is a more specific procedure for determining where the sealer composition is applied, such as argued by Applicant, it is not currently reflected in the current claim language.
The examiner disagrees with Applicant’s argument that new concrete does not equate to non-contaminated concrete and does maintain that Douglas does teach application of a sealer as a prophylactic pretreatment. There is no evidence or suggestion that new concrete is pre-contaminated and Douglas does specifically state the sealer stops the ingress of PFAS.
Claims 13-20: It is the position of the examiner that the cementitious product of Kita reads on the claimed cementitious product.
Claim 7: The combination combines Kita as the base treatment with Douglas as the sealer.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX A ROLLAND whose telephone number is (571)270-5355. The examiner can normally be reached M-F 10-6:30.
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, Curtis Mayes can be reached at 5712721234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEX A ROLLAND/Primary Examiner, Art Unit 1759
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