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 .
DETAILED ACTION
This Final Office action is based on the 17/580012 application originally filed January 20, 2022.
Amended claims 21-34 and 37, filed January 20, 2026, are pending and have been fully considered. Claims 1-20, 35 and 36 have been canceled.
Terminal Disclaimer
The terminal disclaimer filed on July 03, 2024 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Application Number 17/579985 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claim Interpretation and Introduction
The examiner takes note of certain definitions in the instant specification. Noting that the examiner will not read this as limitations of the claims, the claims have been afforded the broadest reasonable interpretation in view of the disclosures/specification:
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Claim Rejections - 35 USC § 103
Claim(s) 21-34 and 37 is/are rejected under 35 U.S.C. 103 as obvious over Despen et al (US 2012/0285080) further in view of Walter (US 2016/0145519).
Regarding Claims 21-34 and 37:
Despen et al (US 2012/0285080) discloses a biogenic reagent from red pine douglas fir (since the product is made solely from wood meeting the limitation for biocarbon and bio renewable carbon of claims 21 and 23-24) which is prepared and treated by pyrolysis and comprise additives such as potassium hydroxide (meeting claim 27) and sodium hydroxide [0610-0612] the potassium or sodium hydroxide maybe sprayed or soaked onto the biogenic reagent [0610] (i.e. the biocarbon reagent has pores with the additive disposed on the surface and within the pores of instant claims 33-34) to possess carbon, fixed carbon, hydrogen, oxygen and moisture within the instantly claimed ranges (see tables 3 and 4)
Esp. example G
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The product of produced by Example 1 is formed into a pellet [0625] having 90 wt.% fixed carbon (Table 8) (meeting claims 21 for a pellet and claim 22 for at least about 50 % fixed carbon)
The additive may be a process additive or a product additives to increase carbon and energy content and maintain structural integrity or mechanical strength of the biogenic reagent [0161][0384][0387] and the product may be contacted with the additive for a time sufficient to allow penetration into the material [0388](i.e. the material has pores and the additive is in the pores and/or on the surface of the pellet of claims 32-33) the material may be porous [0463]
The additive includes modifiers to enrich the final properties and binders [0545]
The additive incudes calcium oxide calcium carbonate etc. which may decease reactivity [0561] (meeting the limitations for educed reactivity compared to pellets without additive moderating agent of claims 21 and 28-31).
The additive may be used in ranges such as about 1 wt.% to about 25 wt.% [0544] which the examiner maintains meets the limitations for about 1 to about 30 and about 2 to about 25 wt.% of the instant claims. (esp. where the claimed ranges are recited as “about”)
No other additives or compositional components are present as such the composition comprises a range of the biogenic reagent meeting the claimed ranges as well as moisture meeting the claimed range and an amount of reactivity moderating agent such as the hydroxide in a range which meets the claimed range.
Substantially all of the carbon is bio renewable [0198][0546] meeting the limitations of claims 23 and 24.
Since the reference teaches the claimed composition as a pellet it will necessarily possess the claimed reactivities, properties including but not limited to chemical and thermal reactivity. 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 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “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) “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Further Regarding Clams 35-37:
Despen recognized the product may comprise an additive may be a process additive or a product additives to increase carbon and energy content and maintain structural integrity or mechanical strength of the biogenic reagent [0161][0384][0387]
Since the reference teaches the claimed composition as a pellet it will necessarily possess the claimed Hardgrove Grindability Index or in the alternative an overlapping HGI. 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 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “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) “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) See MPEP 2144.05(I): "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)"
Despen discloses the limitations above set forth. Despen teaches that the biomass includes starch, cellulose etc. as a renewable source of carbon [0005] but does not teach an amount of same. Despen teaches the additive includes modifiers to enrich the final properties and binders [0545] The pellet may be used as a fuel [0223][0463]
While Despen teaches various biomass components including starch and also teaches additives including binders as more fully above set forth, it does not expressly recite the binder to include starch or the amount thereof of instant amended claim 21 or recite a HGI for the final pellet of instant claims 35-37.
Walter (US 2016/0145519) like Despen discloses a renewable energy source of densified biomass fuel (Abstract) The composition is a renewable energy fuel [0002]
The fuel comprises a carbonized component and at least one of biomass lubricant and binder which are densified. The carbonized component is 10-40 %; the biomass is 50-80 %;(as such the biogenic reagent component of the instant claims and fully bio-renewable and overlapping the range of 35-99 wt.% of claim 21) and 0-5 % binder and 5 % lubricant (See clams 21-23 reference overlapping the range of claims 21 and 26 and meeting the limitation for a reactivity moderating agent hereinafter binder and reactivity moderating agent are used interchangeably) The biomass is woody and non woody type (See claim 6 of reference)(biogenic, bio renewable, etc.)
The carbonized component is biochar [0037] The carbonized component is an organic substance such as biomass converted into carbon or a carbon containing residue or through any appropriate process such as pyrolysis, destructive distillation or other means and includes biochar.[0015] The carbonized component includes any single or combination of biomass wood etc. of various species such as wood white fir wood and may include mixtures of wood products and wood types [0015]
The binder incudes a biopolymer and/or non-bio polymer (See claims 9-10 of reference)
The binder includes biopolymer such as corn starch, (corn starch meeting the limitation for a reactivity moderating agent of claims 21, 27-28, etc. and being one of the species of claimed reactivity agents of a starch polymer will necessarily afford the instantly claimed properties and improvements in ranges which meet and or overlap the claimed ranges) cotton, high density polyethylene such as from refuse in landfills [0018] The binder may harden and structurally stabilize the densified biomass or may be hydrophobic [0018]
The lubricant may be a bio oil (See claim 12 reference - bio renewable)
The carbonized component is derived from a second biomass with low lignin (See claims 15-16 of reference all bio renewable)
The carbonized component incudes a product of pyrolysis or other means such as biochar from biomass feed stocks including wood such as white fir wood [0015] (meeting and/or overlapping the claimed ranges of carbon, fixed carbon, hydrogen and oxygen and being fully renewable and at least 50 % renewable)
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see claims 25-39 for the densified biomass)
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[0019] (teaching binder/reactivity moderating agent on the surface and within the pores of claims 32)
The densified product comprises 10-80 wt.% carbonized component 0-80 % biomass 0-30 wt.% binder and 0-20wt.% lubricant See claim 26 reference. The carbonized mixture may be 8-90 % carbonized component and 0-20 % binder (See claim 31)(overlapping the ranges of claims 21 and 26)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add starch in the amounts taught by Walter to the composition of Despen as a binder thereto as Despen expressly contemplates a binder and starch is a suitable binder for forming pellets from carbonized biomass to harden and structurally stabilize the fuel pellets of Despen; further, doing so amounts to nothing more than use of a known substance – starch- in a known environment – biomass derived fuel pellets to achieve an entirely expected result – binding and structural stabilization.
The examiner notes in the instant specification:
[562-564 et seq] douglas fir pyrolyzed to form a biocarbon reagent and [0565-0566] red pine wood or hardwood and soft wood pyrolyzed. Douglas fir is pyrolyzed and 320lb is combined with 30 lb. starch forming a pellet of Hardgrove Grindability 49. [0564] This would be 8.5 wt.% starch. See also applicants Fig 2-6 and spec [0074-0075] showing analysis of pyrolyzed fir of examples made from fir which meet the claimed ranges of moisture, carbon, fixed carbon, hydrogen and oxygen)
The specification examples show that when more starch is added the HGI is lower. Since the prior art teaches the same/similar wood with a binder of starch at a range which includes 8.5 % and below the HGI would necessarily overlap the claimed ranges of same as well as carbon, hydrogen, oxygen and fixed carbon.
See MPEP 2144.05(I): "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)"
Claim Rejections - 35 USC § 103
Claim(s) 21-34 and 37 is/are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Walter (US 2016/0145519) in view of Mennell et al (US 2014/0075834) and Kluko (US 2009/0205546).
Regarding Claims 21-34 and 37:
Walter discloses the limitations above set forth. While the examiner maintains that since Walters teaches biomass, wood, fir wood, pyrolysis of same and biocarbon the carbon ranges as more fully above set forth the claimed ranges of carbon, hydrogen, oxygen, fixed carbon will meet and/or overlap the claimed ranges.
Walters teaches the biochar may have a BTU of 5,086-19,0003 BTU/lb. (Table 2B)
Walters discloses the carbonized component is an organic substance such as biomass converted into carbon or a carbon containing residue or through any appropriate process such as pyrolysis, destructive distillation or other means and includes biochar.[0015] The carbonized component includes any single or combination of biomass wood etc. of various species such as wood white fir wood and may include mixtures of wood products and wood types [0015]
Assuming arguendo the ranges of carbon, fixed carbon, hydrogen, oxygen and HGI are not rendered obvious:
Mennell et al (US 2014/0075834) discloses high carbo biogenic reagent formed from pyrolyzed solids having BTU of for example 12,000, 13,000, 14,000, 14,400 BTU/lb. and provides strength improved heat rate to the structural objects made therefrom. (Abstract)
The biogenic reagent is made from materials including sawdust, chips and wood chunks (Fig 16) the biogenic reagent comprises at least 60 wt.% carbon or at least 70 wt.% carbon or at least 80 wt. % carbon said carbon including fixed carbon [0161] or at least 90 wt.% fixed carbon [0223] (overlapping the ranges of claims 21-24 for carbon, fixed carbon, renewable carbon) less than 10 wt. % hydrogen less than 20 wt.% oxygen such as 1- 10wt.% [0162] See also Tables 3-5 (within the range of claim 21)
The biogenic reagent may be prepared from wood, wood waste, soft and hard wood chips, etc. [0327] including douglas fir [0612] [0618]
The biogenic reagent may be pelletized [0072] [0196]
The biogenic reagents are combustible to produce energy (i.e. fuel [0551]) such as in a furnace [0555] [0597]
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use the biogenic reagent of Mennell as the carbonized component of Walters as it is suitable for use as a fuel component to provide a high energy content, strength and heat rate to the fuel of Walters. Further since Walters expressly contemplates the carbonized component made from known means such as pyrolysis of wood, sawdust and fir tree wood, doing so amounts to nothing more than use of a known composition (carbonized/biogenic carbon) in a known environment (fuel pellets) to achieve an entirely expected result (fuel pellet of high energy and strength).
Regarding the claim limitations directed to the Hardgrove Grindability Index of claim 37: while the examiner maintains the reference meets/overlaps or otherwise renders obvious the claimed ranges; assuming arguendo it does not:
Walters in view of Mennell teaches the limitations as above set forth. Walters discloses the composition is a renewable energy fuel [0002].
Kluko (US 2009/0205546) discloses a biomass fuel pellet comprising cellulosic material derived from a biomass source ad thermoplastic polymer. The thermoplastic is 5-15 wt.%, the cellulosic material is at least about 75 wt.% and may optionally comprise a lignin additive (Abstract) Biomass includes waste from industrial processes such as sawdust, pulp rejects, agricultural plant waste such as cereal straw, corn stover and sugarcane bagasse as well as plants grown for fuel production such as switchgrass [0022] Raw biomass is treated to reduce moisture to no more than about 15 wt. % or nor more than about 11 wt. %, the feedstock is comminuted. The feed stock may have 90 % biomass and 10 % polymeric material or 95 wt. % biomass and 5 % polymeric material [0017]The thermoplastic polymer may be polyethylene polypropylene polyamide polyimide [0020] The composition may comprise 0.5 to 5 wt.% lignin on a dry basis [0021]
Kluko teaches the composition is a fuel that has a Hardgrove of no more than 80 or no more than 60 and has a pellet durability index of at least about 95 or higher [0009](overlapping and/or meeting the instantly claimed ranges)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to adjust the fuel Hardgrove Grindability Index of Walters to the ranges of Kluko as these ranges are suitable for biomass derived fuel pellets; further since Walters expressly contemplates adjusting the composition for parameters of various apparatus, etc. doing so amounts to nothing more than forming a fuel pellet to possess a known performance feature of HGI in a range that is known to be suitable for use in fuel environment.
Response to Arguments
Applicant's arguments filed January 20, 2026 have been fully considered but they are not persuasive.
Applicants argued: “Despen is silent as to Hardgrove Grindability Index. Mennell is also silent as to Hardgrove Grindability Index. Walter mentions "Hardgroves [sic] Grindability Index" but makes no attempt to quantify HGI. On page 24, section 12 of the Office Action, the Examiner turns to Kluko in a combination with Walter and Mennell, regarding the Hardgrove Grindability Index. It is mentioned on page 25 of the Office Action that at paragraph [0009], "Kluko teaches the composition is a fuel that has a Hardgrove of no more than 80 or no more than 60". However, critically, Kluko's pellet is made from raw, dried biomass and a thermoplastic polymer. Kluko's pellet does not use pyrolyzed biomass. The distinction from a composition standpoint (not a process distinction) is that Kluko's cellulosic material even if it is called a "biogenic reagent"-will have significantly higher than 15 wt% oxygen. As is well-known, cellulose has about 50 wt% oxygen, which is between about 17x to 3 x higher than the 3-15 wt% oxygen range in claim 21. Applicant therefore disagrees that "It would have been obvious to one of ordinary skill in the art at the time of filing the invention to adjust the fuel Hardgrove Grindability Index of Walters to the ranges of Kluko as these ranges are suitable for biomass derived fuel pellets". Walter discloses the use of a carbonized component. At paragraph [0015], Walter explains that "A carbonized component may be an organic substance that has been converted into carbon or a carbon-containing residue through any appropriate process such as pyrolysis, destructive distillation, or other means obtaining the same or similar results. For example, biochar is a solid material obtained from the carbonization, through pyrolysis or heating in a low/no oxygen environment, of biomass." Kluko's disclosure of a Hardgrove Grindability Index cannot reasonably be combined with Walter's disclosure of a fuel pellet containing carbonized biomass, because Kluko requires the use of raw, possibly dried biomass, and never discloses or suggests pyrolyzed/carbonized biomass that would have a range of oxygen content overlapping with instant claim 21. In order to arrive at the claimed invention, Kluko would need to be modified so remove oxygen content from the biomass component.”.
Applicants arguments are not deemed persuasive. First, it is maintained Despen discloses the product of produced by Example 1 is formed into a pellet [0625] having 90 wt.% fixed carbon (Table 8) (meeting claims 21 for a pellet and claim 22 for at least about 50 % fixed carbon). Despen further discloses the pellet is derived from a biogenic reagent from red pine douglas fir, which overlaps the claimed pellet. Walters discloses the claimed biogenic component. Specifically, Walters discloses in paragraph 0015, mixing a carbonized component to raw or dried biomass feedstock prior to densification will increase the energy density of densified biomass fuel as compared to standard pressed biomass, such as wood, pellets. The energy value can be determined and then controllably altered through the addition of a carbonized component which is of higher energy density per unit mass relative to typical raw biomass. A carbonized component may be an organic substance that has been converted into carbon or a carbon-containing residue through any appropriate process such as pyrolysis, destructive distillation, or other means obtaining the same or similar results. For example, biochar is a solid material obtained from the carbonization, through pyrolysis or heating in a low/no oxygen environment, of biomass. It will be appreciated that other forms of carbon may also be used as a carbonized component as desired for a particular application. The carbonized component may be of a single type (e.g., biomass derivative or non-biomass, wood or non-wood) or may be a combination. Additionally, Kluko has been applied to teach the claimed Hardgrove Grindability Index (HGI) due to producing a biomass-densified fuel pellet. Additionally, Walters modified by Mennell and Kluko teaches the claimed biogenic component (see above rejection). It is to be noted, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., pyrolyzed/carbonized biomass) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is maintained that Despen modified by Walter have met the limitations of the presently claimed invention. As well as Walter modified by Mennell and Kluko have met the limitations of the presently claimed invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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, Prem Singh can be reached on 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Latosha Hines/Primary Examiner, Art Unit 1771
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