DETAILED ACTION
Response to Preliminary Amendment
The preliminary amendment submitted on 17 March 2026 has been entered. After entry of the amendment, claims 1-10 are currently pending in the application.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on 17 March 2026 is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
Applicant needs to update the specification to include the patent number of the parent application as the application has since matured into a patent
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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.
Claims 1-5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Korea Patent Specification No. KR 10-2020-0021266 A.
The reference teaches, in the claims, a binder composition comprising 100 parts by weight of fly ash, 5 to 40 parts by weight of quicklime (CaO) and 1 to 20 parts by weight of formate. The fly ash has an average particle diameter of 1 to 500 ㎛, SiO2, Al2O3, Fe2O3, CaO, K2O, MgO, Na2O, TiO2, SO3 and P2O5, respectively 45 to 70% wt%, 15 to 30 wt%, 5-15 wt%, 1-10 wt%, 0.1-3 wt%, 0.1-3 wt%, 0.1-3 wt%, 0.1-2 wt%, 0.1-2 wt% and 0.1-2 wt%.
The instant claims are obvious over the reference.
As for claim 1, the quicklime meets the calcium oxide component and the fly ash meets the SCM. The amount of the quicklime and the fly ash overlaps the claimed amounts and overlapping ranges are obvious. The amounts of the SiO2 and Al2O3 present in the fly ash meet the claimed limitations. The amount of the MgO present in the fly ash overlaps the claimed range and overlapping ranges are obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claims 2 and 3 the reference teaches an amount of SiO2 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 4, the reference teaches an amount of Al2O3 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 5, the reference teaches a sum of amounts that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 7, the reference teaches an amount of Na2O that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 8, the references teaches amount of Na2O and K2O that overlaps the claimed range of amounts and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Claims 1-6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Korea Patent Specification No. KR 10-1228815 B1.
The reference teaches, in the claims, a composition comprising from 2 parts by weight to not more than 45 parts by weight of burnt lime powder per 100 parts by weight of fine blast furnace slag powder. The slag has the following composition according to paragraph [0021]: 30.0 to 36.0 wt% of SiO2, 12.0 to 18.0 wt% of Al2O3, 0.25 to 0.35 wt% of Fe2O3, 38.0 to 45.0 wt% of CaO, 10.0 wt% or less of MgO, and not more than 3.0% by weight of other components.
The instant claims are obvious over the reference.
As for claim 1, the quicklime meets the CaO component. The blast furnace slag powder meets the SCM. The amounts of the quicklime and the blast furnace slag powder overlaps the claimed amounts and overlapping ranges are obvious. The amounts of the SiO2, Al2O3, and MgO present in the blast furnace slag powder meet the claimed limitations. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claims 2 and 3 the reference teaches an amount of SiO2 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 4, the reference teaches an amount of Al2O3 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 5, the reference teaches a sum of amounts that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 6, the reference teaches an amount of Fe2O3 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 9, the reference does not include fly ash.
As for claim 10, the reference teaches slag.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,919,813 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims encompass all of the limitations of the claims of the copending application and therefore rendered obvious by said claims.
The reference teaches. in claim 1, a lime-based cement extender composition, comprising: lime particles comprising calcium hydroxide and/or calcium oxide and at least 10% by weight of the composition; limestone particles comprising calcium carbonate and at least 20% by weight of the composition; and pozzolan particles comprising silicon dioxide and/or aluminum dioxide and at least 35% by weight of the composition. Claim 3 teaches that the composition comprises a calcium oxide concentration of 45-65%; a magnesium oxide concentration of 0.5-2%; an iron oxide concentration of 0.5-2.0%; an aluminum oxide concentration of 2-8%; a silicon dioxide concentration of 20-40%; a potassium oxide concentration of 20,000-30,000 ppm; and a sodium oxide concentration of 10,000-20,000 ppm. Claim 4 teaches that the lime particles comprise at least one of quicklime, hydrated lime, or dolomitic lime.
The instant claims are obvious over the reference.
As for claim 1, the reference teaches calcium oxide in an amount of at least 10% of the composition and a pozzolan comprising silicon dioxide and/or aluminum dioxide in an amount of at least 35% by weight of the composition. The composition further comprise magnesium oxide. As for the amounts of the components the reference teaches amounts that overlap the claimed ranges of amounts and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claims 2 and 3 the reference teaches an amount of SiO2 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 4, the reference teaches an amount of Al2O3 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 5, the reference teaches a sum of amounts that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 6, the reference teaches an amount of Fe2O3 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 7, the reference teaches an amount of Na2O that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 8, the references teaches amount of Na2O and K2O that overlaps the claimed range of amounts and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 9, fly ash is not a required component.
As for claim 10, the reference teaches pozzolan slag.
Claims 1-4, 6, and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-15 of U.S. Patent No. 12,091,360 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims encompass all of the limitations of the claims of the copending application and therefore rendered obvious by said claims.
The reference teaches, in claim 11, a composition comprising: lime particles comprising more than 20% by weight of the composition; and pozzolan particles comprising at least 35% by weight of the composition, wherein the pozzolan particles do not include fly ash, and wherein the pozzolan particles include: a magnesium oxide concentration of at least 0.5%; an iron oxide concentration of at least 0.5%; an aluminum oxide concentration of at least 2%; and a silicon dioxide concentration of at least 20%.
The instant claims are obvious over the reference.
As for claim 1, the reference teaches lime particles in an amount of at least 20% of the composition and a pozzolan comprising at least 35% by weight of the composition, wherein the pozzolan particles do not include fly ash, and wherein the pozzolan particles include: a magnesium oxide concentration of at least 0.5%; an iron oxide concentration of at least 0.5%; an aluminum oxide concentration of at least 2%; and a silicon dioxide concentration of at least 20%. The composition further comprise magnesium oxide. The lime meets the CaO component. As for the amounts of the components the reference teaches amounts that overlap the claimed ranges of amounts and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claims 2 and 3 the reference teaches an amount of SiO2 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 4, the reference teaches an amount of Al2O3 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 6, the reference teaches an amount of Fe2O3 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 9, fly ash is not a required component.
Claims 1-4 and 6-7 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,515,992 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims encompass all of the limitations of the claims of the copending application and therefore rendered obvious by said claims.
The reference teaches, in claim 1, a composition, comprising: between 25-40% by weight calcium oxide; and pozzolan including silicon dioxide, aluminum oxide, and iron oxide, wherein the silicon dioxide forms at least 40% by weight of the composition, wherein the aluminum oxide forms at least 2% by weight of the composition, and wherein the silicon dioxide, the aluminum oxide, and the iron oxide together form at least 60% by weight of the composition. Claim 4 teaches that the composition further comprises a magnesium oxide concentration of at least 0.5% by weight of the composition. Claim 5 teaches that the iron oxide forms at least 0.5% by weight of the composition. Claim 6 teaches a composition comprising: between 25-40% by weight calcium oxide; a sodium oxide concentration of at least 1% by weight of the composition; and pozzolan including silicon dioxide, aluminum oxide, and iron oxide, wherein the silicon dioxide forms at least 40% by weight of the composition, and wherein the silicon dioxide, the aluminum oxide, and the iron oxide together form at least 60% by weight of the composition. Claim 7 teaches that the sodium oxide concentration is between 1-3% by weight of the composition.
The instant claims are obvious over the reference.
As for claim 1, the reference teaches calcium oxide particles in an amount of at least 25-40% of the composition and a pozzolan including silicon dioxide, aluminum oxide, and iron oxide, wherein the silicon dioxide forms at least 40% by weight of the composition, wherein the aluminum oxide forms at least 2% by weight of the composition, and wherein the silicon dioxide, the aluminum oxide, and the iron oxide together form at least 60% by weight of the composition. The amount of the sodium oxide concentration is between 1-3% by weight of the composition. As for the amounts of the components the reference teaches amounts that overlap the claimed ranges of amounts and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP 2144.05.
As for claims 2 and 3 the reference teaches an amount of SiO2 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 4, the reference teaches an amount of Al2O3 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 6, the reference teaches, in claim 14, an amount of Fe2O3 that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 7, the reference teaches an amount of Na2O that overlaps the claimed range and in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As for claim 9, fly ash is not a required component.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
ajg
April 1, 2026
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