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
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 of this title, 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 8, 9, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kang et al (KR 101565906) (Translation provided in IDS dated 9/25/2022) in view of Design Choice.
Regarding claim 8, Kang discloses a method of obtaining a byproduct having increased purity of unburned carbon and amorphous compounds from coal pond ash, comprising: (a2) subjecting coal pond ash (page 3, lines 32- 36 and page 6, lines 1-4) to screening (page 2; claim 1, line 5 separated ash), flotation (page 2; claim 2, lines 2-4 flotation step), and recovery (page 2; claim 1, line 8); (a3) subjecting coal pond ash to screening, float-sink, grinding, flotation, and recovery; (a4) subjecting coal pond ash to screening, float-sink, magnetic separation, and recovery; (a5) mixing a byproduct obtained through screening, float-sink, primary magnetic separation, and grinding of coal pond ash with a residue obtained in step (a2) and then performing secondary magnetic separation and recovery; or (a6) subjecting a residue obtained in step (a5) to magnetic separation and recovery, wherein in step of screening, the coal pond ash is classified into coarse particles having a diameter of greater than 2.36 mm, intermediate particles having a diameter of 0.15-2.36 mm, and fine particles having a diameter of less than 0.15 mm, using standard sieves with grids of 0.15 mm and 2.36 mm; wherein step of flotation is performed at a pH of 7; wherein, step of float-sink is performed using a solution with a specific gravity of 2.2; and wherein, in step of magnetic separation, from a mixture of the residue obtained in step of flotation and the residue obtained in step of float-sink, a fine material containing high-purity Fe oxide is separated using a 0.1 T wet magnetic separator and then a fine material containing low- purity Fe oxide is separated using a 1.0T wet magnetic separator.
Kang does not explicitly disclose the coal pond ash is classified into coarse particles having a diameter of greater than 2.36 mm, intermediate particles having a diameter of 0.15-2.36 mm, and fine particles having a diameter of less than 0.15 mm, using standard sieves with grids of 0.15 mm and 2.36 mm. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to separate ash in different size fractions because Applicant has not disclosed that the particle dimension provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Kang, and applicant’s invention, to perform equally well with either particle dimension because both particle ranges would perform the same function of separating particles for the purpose of processing different particle sizes.
Kang does not explicitly disclose step (a2) is performed at a pH of 7. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to flotation separation because Applicant has not disclosed that pH level for flotation provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Kang in view of Bae, and applicant’s invention, to perform equally well with either pH level because both flotation separations would perform the same function of separating particles with flotation for the purpose of separating minerals.
Furthermore, line 11 states ‘or’ at the end of the line indicating that only one of the steps a2 through a6 is performed. As such, the additionally limitations added by amendment regarding pH and float-sink are not required as step a2 is addressed above.
Regarding claim 9, Kang discloses a method of obtaining a byproduct having increased efficiency of recovery of Fe oxide from coal pond ash, comprising: (b2) subjecting coal pond ash (page 3, lines 32- 36 and page 6, lines 1-4) to screening (page 2; claim 1, line 5 separated ash), flotation (page 2; claim 2, lines 2-4 flotation step), and recovery (page 2; claim 1, line 8); (b3) subjecting coal pond ash to screening, float-sink, and recovery; (b4) mixing a byproduct obtained through screening, float-sink, and grinding of coal pond ash with a residue obtained in step (b2) and then performing magnetic separation and recovery; or (b5) subjecting a residue obtained in step (b4) to magnetic separation and recovery, wherein in step of screening, the coal pond ash is classified into coarse particles having a diameter of greater than 2.36 mm, intermediate particles having a diameter of 0.15-2.36 mm, and fine particles having a diameter of less than 0.15 mm, using standard sieves with grids of 0.15 mm and 2.36 mm; wherein step of flotation is performed at a pH of 7; wherein step of float-sink is performed using a solution with a specific gravity of 2.2 wherein step of grinding is performed to have a size of less than 0.15 mm; and wherein, in step of magnetic separation, from a mixture of the residue obtained in step of flotation and the residue obtained in step of float-sink, a fine material containing high-purity Fe oxide is separated using a 0.1T wet magnetic separator and then a fine material containing low- purity Fe oxide is separated using a 1.0T wet magnetic separator.
Kang does not explicitly disclose the coal pond ash is classified into coarse particles having a diameter of greater than 2.36 mm, intermediate particles having a diameter of 0.15-2.36 mm, and fine particles having a diameter of less than 0.15 mm, using standard sieves with grids of 0.15 mm and 2.36 mm. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to separate ash in different size fractions because Applicant has not disclosed that the particle dimension provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Kang, and applicant’s invention, to perform equally well with either particle dimension because both particle ranges would perform the same function of separating particles for the purpose of processing different particle sizes.
Furthermore, line 9 states ‘or’ at the end of the line indicating that only one of the steps b2 through b5 is performed. As such, the additionally limitations added by amendment regarding pH and float-sink are not required as step b2 is addressed above.
Regarding claim 13, Kang discloses a method of obtaining a byproduct having increased strength from coal pond ash, comprising: (e1) subjecting coal pond ash composed of a mixture of fly ash and bottom ash (page 3, lines 32- 36 and page 6, lines 1-4) to screening, flotation (page 2; claim 2, lines 2-4 flotation step), and recovery (page 2; claim 1, lines 5 and 8); or (e2) subjecting coal pond ash to screening, float-sink, and recovery.
Kang does not explicitly disclose the coal pond ash is classified into coarse particles having a diameter of greater than 2.36 mm, intermediate particles having a diameter of 0.15-2.36 mm, and fine particles having a diameter of less than 0.15 mm, using standard sieves with grids of 0.15 mm and 2.36 mm. However, before the time the invention was effectively filed, it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to separate ash in different size fractions because Applicant has not disclosed that the particle dimension provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Kang, and applicant’s invention, to perform equally well with either particle dimension because both particle ranges would perform the same function of separating particles for the purpose of processing different particle sizes.
Furthermore, line 4 states ‘or’ at the end of the line indicating that only one of the steps e1 through e2 is performed. As such, the additionally limitations added by amendment regarding pH and float-sink are not required as step e1 is addressed above.
Allowable Subject Matter
Claims 1, 5, and 7 are allowed.
The following is an examiner’s statement of reasons for allowance:
The closest prior art discloses a method of obtaining unburned carbon and Fe oxide from coal pond ash. The closest prior art does not disclose or make obvious wherein in step (d), from a mixture of the residue obtained in step (b) and the residue obtained in step (c), a fine material containing high-purity Fe oxide is separated using a 0.1T wet magnetic separator and then a fine material containing low-purity Fe oxide is separated using a 1.0T wet magnetic separator in conjunction with the other structures in claim 1.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 8/21/2025 have been fully considered but they are not persuasive.
Rejection under USC 112
Regarding the rejection of claims 8 and 9, the USC 112 rejection has been withdrawn as the claims have been amended to include ‘or’ instead of ‘and’ as previously presented. A new rejection based on the ‘or’ limitation is shown above.
Rejection under USC 103
Regarding Applicant’s argument,” Claims 8 and 9 as thus amended herein are patentably distinguished over Kang in view of Design Choice. See in this respect the Examiner's statement of reasons for allowance in paragraph 16 at page 7 of the Office Action, addressing the allowance of claims 1, 5, and 7, and discussing that "step (b) [flotation] is performed at a pH of 7" and that ‘float-sink is performed using a solution with a specific gravity of 2.2", as features that "[t]he closest prior art does not disclose or make obvious’,” the Examiner disagrees. The Examiner asserts that Kang discloses subjecting coal pond ash (page 3, lines 32- 36 and page 6, lines 1-4) to screening (page 2; claim 1, line 5 separated ash), flotation (page 2; claim 2, lines 2-4 flotation step), and recovery (page 2; claim 1, line 8) and includes the design choice analysis for the specific ranges and values of each of the steps. Furthermore, regarding claim 13, the rejection dated 9/2/2025 inadvertently omitted the rejection related to the amendment dated 8/21/2025. The rejection above has corrected the previous omission.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kalyanavenkateshware Kumar whose telephone number is (571)272-8102. The examiner can normally be reached on M-F 08:00-16:30.
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/K.K./Examiner, Art Unit 3653 /MICHAEL MCCULLOUGH/ Supervisory Patent Examiner, Art Unit 3653