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 .
Election
Applicant's election with traverse of Group I, claims 1-8, 11, 13-15 and 17-20 in the reply filed on May 12, 2025 is acknowledged. The traversal is on the ground(s) that the search for the elected group would significantly overlap a search for the non-elected groups and therefore there would be no undue burden in searching all of the groups together. This is not found persuasive because a search for the non-elected groups would clearly entail searching for concepts not particularly relevant to the elected group, for example the various parts of the apparatus as defined in non-elected Group II or the preheating step of non-elected Group III.
The requirement is still deemed proper and is therefore made FINAL.
Rejections -- 35 U.S.C. 112
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.
Claims 1-8, 11, 13-15 and 17-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
a) The end of claim 1 recites returning steam to “the process”. A process is not a location but rather defines a set of step(s) or action(s). Therefore it is unclear where one is required to return steam in a method according to the claim.
b) Claims 6, 7 and 17 recite using steam for certain functions in “the process”. Since the claims overall are directed to a process, it is unclear at what point in that process the steam is used for those functions.
c) Claim 8 recites a step (discharging a flue gas) that occurs after “the process” has reached a “predetermined” condition. First, the word “predetermined” merely means determined beforehand, and the claim fails to identify any limitation upon the condition. So it is unclear under what circumstances one is required to discharge a flue gas in order for a given process to fall within the scope of this claim. Second, it is unclear what aspect of a process is being referred to in the claim, i.e. it is uncertain what particular variable condition would require one to discharge the flue gas.
d) In lines 2 and 3 of claim 19, “the reaction chamber” lacks proper antecedent basis.
e) Claims dependent upon any of the above, either directly or indirectly, are likewise rejected under this statute.
Rejections -- 35 U.S.C. 102
5. 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.
6. Claims 1, 2, 3, 4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berndt et al. (US 2004/0242925).
Berndt discloses a process that includes reacting hydrogen and oxygen in a space that can be defined as a “reaction chamber” to produce heat and steam (see Berndt para [0049]). Steam can be removed (see Berndt para [0090]). The heat treats a material (isobutane) to produce a treated material (methacrylic acid). At least some steam can be recycled into the reaction zone (Berndt para [0090]). With respect to claim 2, Berndt para [0049] discloses combustion of the hydrogen and oxygen. With respect to claim 3, the oxygen can be accompanied by nitrogen (see Abstract). With respect to claim 4, the method disclosed by Berndt appears to produce at least some of the treated material coextensively with production of the steam. With respect to claim 7, Berndt para [0067] indicates the steam is a heat carrier, considered equivalent to the claimed “heat transfer medium”. Thus the disclosure of Berndt et al. is held to anticipate the claimed invention.
7. Claims 1, 2 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson et al. (US 2010/0224363).
Anderson discloses a process that includes reacting hydrogen and oxygen via combustion (in accord with claim 2) in a gas generator (considered equivalent to the claimed “reaction chamber”; see para [0010-0011] and the left portion of Anderson Fig. 3. This produces steam and may also result in superheat; see Anderson para [0044]. The steam is discharged from the gas generator (see area C in Anderson Fig. 3), and can be used to produce a treated material, i.e. Anderson para [0001] suggests purposes such as chemical refining and industrial and food processing which would fall within this limitation of the instant claims. Anderson para [0044] discloses recycling of the steam, i.e. suggests “returning…to the process”. With respect to claim 11, Anderson para [0010] states that the steam can be used for power generation. Thus the disclosure of Anderson et al. is held to anticipate the claimed invention.
Rejections -- 35 U.S.C. 103
8. 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.
9. Claims 4, 5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al.
Anderson, discussed supra, does not specifically recite the limitations set forth in the instant claims. However,
a) With respect to claim 4, the process disclosed by Anderson is clearly a continuous process which will continue as long as fuel and oxygen are fed to the gas generator. As such, one of skill in the art would readily be able to carry out producing steam in the gas generator coextensively with forming a treated material from already produced heat and steam.
b) With respect to claim 5, while the prior art does not specifically state the temperature of the steam, clearly the prior art method involves maintaining the steam in a gaseous state, i.e. above its condensation temperature.
c) With respect to claim 8, Anderson discharges a mixture of steam and CO2 from the gas generator. Anderson does not specify the percentage of steam in that mixture, and does not set forth any particular condition for discharge. However, the instant claim merely recites a “predetermined” condition, which can be any condition desired by an artisan. As to the percentage, the mere recitation of a numerical parameter in an otherwise known process will not generally result in patentability of a claim directed to that process absent evidence of criticality of the numerical parameter. In the present case, the numerical parameter (at least 95% by volume steam) does not appear to be critical to the invention, at least for the reason it is recited solely in a dependent claim.
Thus, the disclosure of Anderson et al. is held to create a prima facie case of obviousness of a process as presently claimed.
10. Claims 13 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. in view of Mills (WO 2008/052249).
Anderson, discussed supra, does not dehydrating or calcination as required by the instant claims. Mills is directed to calcination of aluminum trihydroxide to produce alumina. Mills indicates it was known in the art, at the time of filing of the present invention, to accomplish via a process that employs superheated steam (see Mills, top of p. 7), i.e. using the same component as produced by the gas generator of Anderson. Given this disclosure of Mills, it would have been obvious for one of ordinary skill in the art to employ the superheated steam produced by Anderson et al. to dehydrate and/or calcinate a material as presently claimed.
11. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. in view of Reid (US 2018/0036804).
Anderson, discussed supra, does not disclose treating a metal oxide to produce a reduced form of the oxide as required by the instant claim. Reid is directed to producing metallic iron from iron oxide. Reid indicates it was known in the art, at the time of filing of the present invention, to do so via use of a gas produced by mixing hydrogen and oxygen in a manner that produces heat and steam (see Reid para [0050]), i.e. a gas as produced in the process of Anderson. Given this disclosure of Reid, it would have been obvious for one of ordinary skill in the art to employ the steam produced by Anderson et al. to form a reduced metal from a metal oxide as claimed.
Nonstatutory Double Patenting
12. 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.
13. Claims 1-8, 13, 15 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8, 10 and 12-16 of copending Application No. 17/792576 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because a combination of claims 1 and 2 of the reference application would result in a process substantially in accord with instant claims 1, 2 and 15. Carrying out a method in accord with claim 12 of the reference application would result in a process substantially in accord with instant claim 17. Claim 16 of the reference application recites using a form of oxygen in accord with instant claim 3. Claim 14 of the reference application is substantially in accord with instant claims 4 and 19. Claims 3, 5, 6 and 8 of the reference application are substantially in accord with instant claims 5, 6, 7 and 8, respectively. With respect to instant claim 13, claim 1 of the reference application recites “aluminium hydroxide” but identifies it as Al2O3.3H2O, whereas the generally accepted formula for aluminum hydroxide is Al(OH)3. As such, it would appear that the process of the reference application in fact would include forming a dehydrated form of a hydrate in accord with instant claim 13. Claims 13 and 15 of the reference application recite limitations substantially in accord with instant claims 18 and 20, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Additional Prior Art
14. The remainder of the art cited on the attached PTO-892 and SB/08 forms is of interest. This art is held to be no more relevant to the claimed invention than the art as applied in the rejections supra.
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE WYSZOMIERSKI whose telephone number is (571) 272-1252. The examiner can normally be reached on Monday thru Friday from 8:30 am to 5:00 pm Eastern time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached on 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE WYSZOMIERSKI/Primary Examiner, Art Unit 1733 June 26, 2025
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