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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/6/2026 has been entered.
Claim Status
An amendment, filed 1/6/2026, is acknowledged. Claims 1, 3, 5, 7, and 9 are amended; 11-14 and 16 are canceled; claims 20-25 are newly added. Claims 1-10, 15, 17-25 are currently pending, claims 10 and 15 are withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 recites “wherein the second liquid iron stream has a carbon content in the range of 3 - 5 wt.%.” Claim 1, from which it depends, requires “wherein the second liquid iron stream comprises 2 to 4 wt.% carbon.” Therefore, Claim 5 requires a carbon content range extending outside the range set forth in claim 1 and fails to include all of the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-9 and 17-25 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuno (JP 2012092435A)(machine translation provided)(previously cited) in view of Uragami (US 6149709)(previously cited) and Rinker (US 6270551)(previously cited).
With respect to Claim 1, the claim is drawn to a “liquid feed for a basic oxygen furnace.” As the claim is drawn to a material composition in the form of a liquid it is interpreted as drawn to the statutory category of a product. As a result, the limitation “for a basic oxygen furnace” is considered a statement of the intended use of the claimed product. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, the intended use does not provide additional structure.
Additionally, “A liquid feed,” using the singular article “A,” is interpreted as drawn to a single overall composition comprising the two or more liquid iron components, and thus, any composition/mixture in the form of a liquid having the structure resulting from the first and second iron components meets the instant claim and deemed capable of the claimed intended use. In other words, the claim is not drawn to a method of combining two separate liquid iron streams, but instead, is drawn to a single combined product, in liquid form, having two iron sources.
Furthermore, as the claim is drawn to a product, the source and method of making or obtaining the constituent components, including the “first liquid iron stream of carburized molten scrap” and “second liquid iron stream from an iron making process” are drawn to limitations of how the product is made and constitute product-by-process limitations.
According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”
Therefore, the claimed method of making or obtaining the first and second liquid iron stream are not provided patentable weight outside the degree to which such product-by-process limitations provide limiting structure in the form of composition resulting from the respective processes. In particular, a liquid feed formed from components that were previously in solid form, but exist in liquid form in the combined liquid feed, meet the instant claim. The method or sequence of when individual components in the liquid feed are made into a liquid form is a product-by-process limitation that is no provided patentable weight as the required structure is only that of final product, a single liquid feed. It is also noted that the only overall compositional limitation of the claim is “at most 0.5 wt.% Si” and the respective carbon contents of the first and second liquid iron streams only impact the overall resulting liquid feed in that at least some amount of carbon must be present. That is, the claim does not exclude additional components, nor does it limit the respective contents of the first and second iron streams, therefore, the overall carbon content of the liquid feed may be 2-4 wt%, or may be higher or lower than that range.
With respect to Claim 1, 8, and 17-19, Matsuno teaches forming a liquid mixture for forming steel in a converter (i.e. basic oxygen furnace), the mixture combining molten carburized iron scrap and molten iron from a blast furnace. (para. 1-2, 14-15, 18, 27). Thus, Matsuno teaches a liquid feed comprising a first liquid iron stream of carburized molten scrap and a second liquid iron stream from an iron making process. Accordingly, the liquid mixture of taught by Matsuno, capable of use as a feed material for forming steel, and capable for use for a basic oxygen furnace, meeting the instant claim.
Matsuno teaches wherein the overall carbon content is controlled to 3.5 wt% or more (para. 14, 48), overlapping the respective claimed ranges. It would have been obvious to one of ordinary skill in the art select first and second liquid iron streams having carbon content from the overlapping portion of the ranges in order to obtain an overall carbon content of 3.5 wt% or more. MPEP 2144.05.
Matsuno is silent as to the specific composition of the liquid feed other than the desired carbon concentration and thus, is silent as to whether the liquid feed comprises Si as required by Claim 1 and whether the liquid feed comprises contents of the elements recited in claims 8 and 17-19, which are interpreted as optional elements as each range includes zero.
Uragami teaches controlling a molten iron feed, useful for EAF or BOF steel making, wherein the molten iron is controlled to comprise 1.5-4.5 wt% C, 0.05 wt% or less Si, 0.1 wt% or less Mn, 0.05 wt% or less S, 0.04 wt% or less P, balance Fe. (col. 11, ln 51-64; col. 12, ln. 21-45).
Thus, Matsuno and Uragami are both drawn to molten iron feed materials for steel making having overlapping carbon contents. It would have been obvious to one of ordinary skill in the art to modify the composition of the liquid feed of Matsuno, to obtain 0.05 wt% or less Si, and free or substantially free of Cu, Sn, Cr, Ni, and Mo, as taught by Uragami, in order to obtain a liquid feed useful for a basic oxygen furnace steel making or EAF steelmaking, and resulting in a steel having desired composition and properties. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Finally, Matsuno is silent as wherein the carburized molten scrap comprises galvanized scrap. Here, the source of the liquid iron stream being galvanized does impact the structure of the product. Specifically, galvanized scrap is interpreted such that it would contain at least some content of zinc resulting from the galvanizing process.
Rinker teaches that large amounts of conventional steelmaking scrap comprises galvanized scrap. (col. 1, ln. 26-30).
It would have been obvious to one of ordinary skill in the art to modify the liquid feed of Matsuno in view of Uragami, to select a least a portion of the scrap material comprising galvanized scrap, as taught by Rinker, in order to obtain readily available and/or inexpensive scrap iron material for the liquid feed.
With respect to Claim 2, the claim recites “The liquid feed according to claim 1, further comprising a third liquid iron stream” but places no limits on the composition of said stream nor the relative content of the third stream to the first and second streams making up the “liquid feed.” As detailed with respect to Claim 1, the claims are drawn to a single liquid product, and therefore, the number of constituent components (and their respective methods of making or obtaining) that were used to make up the product are not provided patentable weight unless they contain additional structure. That is, the number of “streams,” absent resulting structure, is drawn to the method of making and constitutes a product-by-process limitation. (see MPEP 2113, “If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.”).
As the “third liquid iron stream” limitation contains no structure, it does not modify the final structure of the claimed liquid feed. Accordingly, the liquid feed of Matsuno in view of Uragami and Rinker is deemed to meet the instant claim. In other words, either of the first liquid iron stream or the second liquid iron stream may also be considered to constitute the “third” liquid iron stream. Alternatively, as the claim places no limits on the relative content of the third liquid iron stream, it may be considered to present in such a small amount that the resulting liquid feed is essentially indistinguishable from the liquid feed without it, and therefore, the liquid feed of modified Matsuno is deemed sufficiently close to establish a prima facie case of obviousness. See MPEP 2144.05.
With respect to Claim 3, Matsuno teaches wherein the second liquid iron stream comprises liquid iron obtained from a blast furnace. (see rejection of claim 1 above).
With respect to Claims 4 and 7, Matsuno teaches wherein the second liquid iron stream comprises liquid iron obtained from a blast furnace. (see rejection of claims 1 and 3). The limitation “obtained from a smelting reduction unit” of claim 4 and “process comprises smelt reduction” of claim 7 are drawn to product-by-process limitations. As detailed above, "The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” MPEP § 2113. Here, the only required structure is the limitation drawn to 0.1 wt% or less of phosphorus.
As detailed above, Uragami teaches controlling a molten iron feed, useful for EAF or BOF steel making, wherein the molten iron is controlled to comprise 0.04 wt% or less phosphorus (P). (col. 11, ln 51-64; col. 12, ln. 21-45). It would have been obvious to one of ordinary skill in the art to modify the composition of the liquid feed of Matsuno, to obtain 0.04 wt% or less P, overlapping the claimed range, as taught by Uragami, in order to obtain a liquid feed useful for a basic oxygen furnace steel making or EAF steelmaking, and resulting in a steel having desired composition and properties. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Therefore, the second liquid iron stream of Matsuno in view of Uragami and Rinker, is deemed to meet the instant claim, regardless of the method in which it was made.
With respect to Claim 5, Matsuno teaches wherein the overall carbon content is controlled to 3.5 wt% or more (para. 14, 48), overlapping the respective claimed ranges. It would have been obvious to one of ordinary skill in the art select first and second liquid iron streams having carbon content from the overlapping portion of the ranges in order to obtain an overall carbon content of 3.5 wt% or more. MPEP 2144.05.
With respect to Claim 6, Matsuno teaches a liquid feed wherein the first and second liquid iron streams may be mixed to obtain a desired final composition. (para.14-15, 23, 27, 47-48). The reference is therefore, deemed to teach a mixture of any ratio of the first and second iron streams, overlapping the claimed volume% ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 9, Matsuno in view of Uragami and Rinker teach wherein the liquid feed comprises galvanized scrap (see rejection of claim 1 above) and therefore, would necessarily contain at least some content of zinc resulting from the galvanizing process. Additionally, Matsuno teaches wherein the second liquid iron stream comprises liquid iron obtained from a blast furnace. (see rejection of claims 1 and 3). The limitation “third liquid iron stream” does not further limit the structure of the claimed liquid feed and therefore, may be interpreted as a product-by-process limitation. As detailed above, "The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” MPEP § 2113. As modified Matsuno teaches a liquid feed meeting the claimed structure, it is deemed to meet the instant claim.
With respect to Claim 20, the claim is drawn to a product-by-process limitation describing the method in which the carburized molten scrap is carburized. The resulting structure is limited to the resulting composition from the source of carburizing material, not its initial form, state of matter, or means of addition or melting. Matsuno teaches carburizing in an arc furnace with carbonaceous material such as coke or coal. (para. 32). Accordingly, it would have been obvious to select scrap from this carburized material, to add as carburized scrap in the liquid feed, as detailed in claim 1.
Claim 21 is drawn to a liquid feed comprising substantially the same limitations of claim 1 and optionally incorporating the limitation of claim 2, differing in that it uses the closed transitional phrase “consisting of,” does not limit the carbon content of the second liquid iron stream, and states that the first liquid is from scrap melting unit and second liquid iron stream is from a blast furnace or smelting reduction unit. Here the source of such iron streams is not considered to provide additional structure outside any identified in the previous claims drawn to such limitations (see, e.g., rejection of claims 1-4 above). As Matsuno in view of Uragami and Rinker teach the liquid feed of claims 1-4, the combination is deemed to meet claim 21. Furthermore, while the closed transitional phrase does not exclude any teachings of the applied prior art as the liquid feed, comprising scrap and other materials from various iron making processes is not strictly limited in composition outside the claimed carbon content and silicon content, and therefore, the one of ordinary skill in the art would recognize that the resulting liquid feed product could contain a broad range of compositions depending on the particular source of material that went into the liquid feed.
Claims 22-23, the claims re drawn to a product-by-process limitation describing the method in which the carburized molten scrap is melted and carburized. The resulting structure is limited to the resulting composition from the source of carburizing material, not its initial form, state of matter, or means of addition or melting. (see also rejection of claim 20 above). Matsuno teaches carburizing in an arc furnace with carbonaceous material such as coke or coal. (para. 32). Accordingly, it would have been obvious to select scrap from this carburized material, to add as carburized scrap (first liquid iron stream) in the liquid feed, as detailed in claims 1 and 21.
With respect to Claim 24, Matsuno in view of Uragami and Rinker is deemed to teach a liquid feed meeting the instantly claimed limitation. (see rejection of claim 2, incorporated here by reference).
With respect to Claim 25, Matsuno in view of Uragami and Rinker is deemed to teach a liquid feed with a composition overlapping the claimed compositional limitation. (see rejection of claim 8, incorporated here by reference). Specifically, Uragami teaches controlling a molten iron feed, useful for EAF or BOF steel making, wherein the molten iron is controlled to comprise 1.5-4.5 wt% C, 0.05 wt% or less Si, 0.1 wt% or less Mn, 0.05 wt% or less S, 0.04 wt% or less P, balance Fe. (col. 11, ln 51-64; col. 12, ln. 21-45). It would have been obvious to one of ordinary skill in the art to modify the composition of the liquid feed of Matsuno, to obtain 0.05 wt% or less Si, 0.04 wt% or less P, and free or substantially free of Cu, Sn, Cr, Ni, and Mo, as taught by Uragami, in order to obtain a liquid feed useful for a basic oxygen furnace steel making or EAF steelmaking, and resulting in a steel having desired composition and properties. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 2, 9, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuno (JP 2012092435A)(machine translation provided)(previously cited) in view of Uragami (US 6149709)(previously cited) Rinker (US 6270551)(previously cited) as applied to claim 1 above (with respect to claims 2 and 9) and claim 21 above (with respect to claim 24), in view of Pusch (US 4889323)(previously cited).
With respect to Claims 2, 9, and 24, Matsuno in view of Uragami and Rinker is deemed to teach a liquid feed meeting the limitations of claims 2, 9, and 24. (see rejections above).
In the alternative, if the references are not interpreted to teach a liquid feed comprising a third stream as in claims 2, 9, and 24, Pusch teaches a feed mixture combining sponge iron from a direct reduction plant, molten pig iron from a blast furnace, and scrap iron. (Fig. 1; col. 2, ln. 27-40; col. 3, ln. 25-40). Thus, the reference evidences the utility of combining a plurality of iron-based material streams to form a liquid feed mixture.
It would have been obvious to one of ordinary skill in the art to modify the liquid feed of Matsuno, comprising a first liquid iron stream comprising carburized scrap and a second liquid iron stream comprising iron from a steelmaking process, to incorporate a third liquid iron stream, as taught by Pusch, in order to incorporate wider array of iron-based feed streams enabling improved efficiency and/or reduced cost. The specific source and/or composition of Pusch is not considered relevant to this combination. In other words, Pusch teaches the utility of combining at least three material streams to form a liquid feed; therefore, it would have been obvious to one of ordinary skill in the art to add a third liquid iron stream, even in a minute quantity, in order to better utilize available resources. As claims 2 and 9 do not specifically identify structure/composition of the third stream, its source is considered a product-by-process limitation and not provided patentable weight. MPEP 2113. Moreover, as Matsuno teaches sourcing an iron stream from a blast furnace, it would have also been obvious to one of ordinary skill in the art to split or add an additional such blast furnace stream, constituting a third liquid iron stream, to the liquid feed with a predictable result of success.
Response to Arguments
Applicant’s arguments, filed 1/6/2026, with respect to the rejection(s) under 35 U.S.C. 103 over Pusch and combinations with Pusch have been fully considered and are persuasive in view of Applicant’s amendment to the claims, further narrowing the required carbon content of the first liquid iron stream and the second liquid iron stream. Therefore, the rejections have been withdrawn.
Applicant’s arguments with respect to the 103 rejections over Matsuno and combinations with Matsuno, have been fully considered but are not found persuasive.
Applicant argues that prior art Matsuno fails to teach the require carbon concentrations of the first and second liquid iron streams. These arguments are not found persuasive.
Matsuno teaches wherein the overall carbon content is controlled to 3.5 wt% or more (para. 14, 48), overlapping the respective claimed ranges. It would have been obvious to one of ordinary skill in the art select first and second liquid iron streams having carbon content from the overlapping portion of the ranges in order to obtain an overall carbon content of 3.5 wt% or more. MPEP 2144.05. The 4.5 wt% carbon noted by Applicant is in reference to preferable range or a specific exemplary embodiment of the reference. disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); MPEP 2123.
Moreover, claim 1 limits the carbon content of components used to manufacture the liquid stream, but the claim does not actually limit the overall carbon content. Thus, even if Matsuno taught a liquid feed comprising a carbon content outside the claimed range, it would still meet the instant claim.
Applicant also cites the instant specification to distinguish Matsuno from the instant claims. (see Remarks, pgs. 12-13). These passages are drawn to the method of manufacture, not the composition/structure of the liquid feed. Applicant’s arguments drawn to product-by-process limitations that do not result in required structure of the liquid feed are not found persuasive. See MPEP 2113.
Applicant argues that one of ordinary skill in the art would not combine the method of Rinker with Matsuno, due to the inclusion of organic binder. (Remarks, p. 13). These arguments are not found persuasive.
Rinker teaches the conventional use of iron-making scrap comprising galvanized material. (col. 1, ln. 26-30). That is, Rinker is relied upon for the background of known recycling of scrap galvanized material, and not relied upon for the specific method described, for example, in the claims of Rinker. Applicant’s arguments are drawn to the latter teachings, not relied upon in the rejection, and therefore, are not found persuasive.
Applicant’s remaining arguments, including those with respect to Matsuno in view of Pusch, are deemed moot in view of the new grounds of rejection and/or withdrawal of rejection.
Conclusion
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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