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 .
Response to Amendment
This is the response to amendment filed 03/03/2026 for application 17859068.
Claims 1-23, 25-32, 36-49, 52-54, and 58-77 are currently pending and have been fully considered.
Claims 24, 33-35, 50-51, and 55-57 have been cancelled.
Claim 77 has been added.
Claims 1 and 76 have been amended.
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 (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.
Claim(s) 1-23, 25-32, 36-49, 52-54, and 58-77 are rejected under 35 U.S.C. 103 as being unpatentable over MENNELL (WO 2012142486).
MENNELL teaches high-carbon biogenic reagents that are produced by pyrolysis of biomass.
Regarding claims 1 and 76, MENNELL teaches the method in paragraph 10 and the apparatus in paragraph 50. A carbon containing biomass feedstock is pyrolyzed in a pyrolysis reactor to generate hot pyrolyzed solids, condensable vapors and non-condensable vapors. (pyrolyzed, in a first pyrolysis reactor, a biomass containing feedstock to generate a first biogenic reagent and a pyrolysis vapor)
A portion of the condensable vapors and a portion of the non-condensable vapors are separated from the hot pyrolyzed solids. (introducing, to a separation unit, the pyrolysis vapor thereby generating a pyrolysis precipitate)
Separating condensable vapors from non-condensable vapors by using condensation would be well within one of ordinary skill in the art. (pyrolysis precipitate in the form of a liquid)
Alternatively, MENNELL teaches that the hot pyrolyzed solids may be cooled to warm pyrolyzed solids. The warm pyrolyzed solids are further taught to be cooled to form cooled pyrolyzed solids.
A portion of the cooled pyrolyzed solids may be collected as a high-carbon biogenic reagent.
MENNELL teaches in paragraph 24 that a portion of the condensable vapors may be combined with the cooled pyrolyzed solids to increase the carbon content of the high-carbon biogenic reagent.
MENNELL also teaches in paragraph 24 that a portion of the condensable vapors may be combined with the warm pyrolyzed solids to increase the carbon content of the high-carbon biogenic reagent.
The condensable vapors and warm pyrolyzed solids being cooled would be expected to form a liquid. (pyrolysis precipitate in the form of a liquid)
Separating the condensable vapors by condensing to a liquid and combining the liquid with the cooled pyrolyzed solids would be expected to have substantially the same results as combining the condensable vapors with warmed pyrolyzed solids and then cooling the combination of the condensable vapors with warmed pyrolyzed solid.
It has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results; In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
MENNELL teaches in paragraph 24 that a portion of the vapors may be combined with the pyrolyzed solids to increase the carbon content of the high-carbon biogenic reagent. (contacting the first biogenic reagent with pyrolysis precipitate to generate an intermediate material wherein the material comprises the first biogenic reagent and the pyrolysis precipitate)
MENNELL teaches in paragraph 33 that one embodiment comprises forming a fine powder from the high-carbon biogenic reagents.
Alternatively, or sequentially, MENNELL further teach in paragraphs 38 and 99, that the high-carbon biogenic reagent may be formed into a structural object by pressing, binding, pelletizing, or agglomeration. (pelletizing the intermediate material, thereby generating an intermediate pellet)
MENNELL further teach in paragraph 322 that the high-carbon biogenic reagent may be further pyrolyzed to increase its carbon content.
It would be well within one of ordinary skill in the art to repeat the steps that are taught in MENNELL using the biogenic reagents that comprise cooled pyrolysis solids and a portion of the vapors, that have been pelletized, as a second feedstock for a second through process that MENNELL teaches.
Although MENNELL does not use the same terminology, MENNELL does teach in paragraph 29 that a portion of the cooled pyrolysis solids may be sent for further pyrolysis to generate a solid product with higher carbon content than the cooled pyrolysis solids. (pyrolyzing in a second pyrolysis reactor, the intermediate pellet, thereby generating a second biogenic reagent and a pyrolysis off-gas, wherein the first pyrolysis reactor and the second pyrolysis reactor may be the same reactor or distinct reactors)
MENNELL teaches an embodiment in paragraph 149 and Fig 2 in which off-gases from first zone 212 and second zone 214 may be combined and sent to a separator 200.
MENNELL teaches in paragraph 24 that a portion of the vapors may be combined with the pyrolyzed solids to increase the carbon content of the high-carbon biogenic reagent.
It would be well within one of ordinary skill in the art to send not only the off-gases from the first reactor but also the off-gases from the second reactor to combine with the pyrolyzed solids.
The motivation to do so would be to increase the carbon content of the high-carbon biogenic reagent.
MENNELL teaches a single separator 200.
However, the court has held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. Separating off-gases from the first reactor in a first separator to form a first precipitate and separating off-gases from the second reactor to form a second precipitate before combining the two precipitates would be mere duplication of parts if the off-gases are separated under the same conditions in a single separator or 2 different separators. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
Furthermore, MENNELL teaches in paragraph 383 that the biogenic reagents may be analyzed and then in regards to properties and modified based on reactivity and chemical composition. (recovering the second biogenic reagent as a biocarbon pellet)
MENNELL does teach in paragraph 29 that a portion of the cooled pyrolysis solids may be sent for further pyrolysis to generate a solid product with higher carbon content than the cooled pyrolysis solids. (fixed carbon content of the second biogenic reagent is greater than fixed carbon content of first biogenic reagent)
MENNELL teaches in paragraph 226 that the shape of the final pellet may be in the form of spheres, cylinders, or cubes.
One example of the size of the pellets is one centimeter in diameter.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
MENNELL also teaches in paragraphs 132-133, 224, and 226 that the feed materials may already possess the desired size and/or shape for the final product.
It would be obvious to one of ordinary skill in the art that when the solid biogenic regent that has already been pelletized to the desired size and/or shape for the final product to be sent to a second pass through the process, the final product would have most of all of the same size and shape of the solid biogenic reagent. (biocarbon pellet has a pellet effective diameter that is within 10% of the effective pellet diameter of the intermediate pellet)
The choice of pelletizing apparatus for producing the pellets appear to be a matter of design choice given that the choice of pelletizing apparatus does not appear to solve any particular problem or is for any particular purpose as long as a pellet in the desired shape and size may be made.
Further, the choices of pelletizing apparatus taught are well known for pelletizing.
MENNELL teaches production from biomass and the total carbon within the biomass would be expected at least 90% renewable to fully renewable.
Regarding claims 1-10, MENNELL teaches a process that is substantially similar and teaches in paragraph 383 that the conditions may be adjusted to reach specific properties. (oxygen reactivity based on thermogravimetric analysis based on specific conditions set forth in present claims)
It would be well within one of ordinary skill in the art to adjust the process conditions with the repeated process steps to meet specific properties absent evidence to the contrary.
Regarding claims 53-54 and 58-61, MENNELL teaches a process that is substantially similar and teaches in paragraph 383 that the conditions may be adjusted to reach specific properties.
It would be well within one of ordinary skill in the art to adjust the process to meet specific properties absent evidence to the contrary.
Regarding claim 11, MENNELL teaches in paragraph 133 that the biomass may be milled wood chips or pellets.
Regarding claim 12, MENNELL teaches in paragraph 68 that separating condensable vapors and non-condensable vapors are done with a separation unit.
MENNELL teaches in paragraphs 330-331 that separation may be done with a condenser.
Regarding claim 13, MENNELL teaches in paragraph 252 separations may be done with simultaneous separations from multiple phases and multiple zones.
Regarding claim 14, MENNELL teaches in paragraphs 330-331 that separation may be done with cyclone and distillation units.
Regarding claims 15-16, MENNELL teaches in paragraph 80 that the solids may adsorb some of the vapors.
Regarding claims 17 and 20-21, it has been held that making a process integral would be an obvious matter to one of ordinary skill in the art. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965).
Regarding claim 72, it has been held that making a process continuous would be an obvious matter to one of ordinary skill in the art. In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963).
Regarding claim 18, MENNELL teaches in paragraph 224 that a binder may be added.
Regarding claim 19, MENNELL teaches in paragraph 150 that the raw material may be dried prior to introduction to the first pyrolysis.
It would be obvious for one of ordinary skill in the art that if the steps are repeated, that the second feedstock may be cooled prior to introduction to the second pyrolysis.
Regarding claim 22, MENNELL teaches in paragraph 272 that the carbonaceous solids may be milled with a variety of size reduction units such as hammer mills.
Regarding claim 23, MENNELL teaches in paragraph 272 that the carbonaceous solids may be milled with a variety of size reduction units such as hammer mills. One of ordinary skill in the art would recognize that the carbonaceous solids that are produced multiple the second pyrolysis step would also be able to be milled.
Regarding claims 25-26, MENNELL teaches in paragraph 12 that the process may be performed with a single reactor or multiple reactors.
It is well within one of ordinary skill in the art to perform both pyrolysis steps in a single reactor or separate reactors.
Regarding claim 27, MENNELL teaches in paragraph 432 that the high-carbon biogenic reagents produced can act as catalyst supports.
Regarding claims 28 and 30, MENNELL teaches in paragraph 17 that the pyrolysis conditions are performed from about 400°C to 600°C and a time of at least 20 minutes.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claims 29 and 31, MENNELL teaches in paragraph 17 that the pyrolysis conditions are performed from about 400°C to 600°C and a time of at least 20 minutes.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claim 32, MENNELL teaches in paragraph 25 that non-condensable vapors may be used for energy.
Regarding claims 36-37 and 47-49, repeating the steps that MENNELL teaches would include separating the vapors in the second pyrolysis step and then condensing them and feeding them back with the biogenic reagents. The vapors from the first pyrolysis step that are condensed may also be feed-back and combined with the biogenic reagents.
Regarding claims 38-39, MENNELL teaches in paragraph 35 the amount of fixed carbon is more than 55 wt%.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claims 40-42, MENNELL teaches in paragraph 86 the amount of ash is less than 10 wt%.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claims 43-44, MENNELL teaches in paragraph 258 that the process thoroughly removes volatile matter. MENNELL teaches in paragraph 408 an embodiment with less than 3% volatile matter.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claims 45-46, MENNELL teaches in paragraph 355 that volatile matter in vapors may contribute to the fixed carbon of the biogenic reagent in an amount of more than 5% to more than 50%.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claims 69-72, the balance of the fixed carbon would be expected to be produced from the biomass with would be less than 95%.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claim 52, MENNELL teaches production from biomass which would be expected to be more than 50% renewable to fully renewable.
Regarding claim 74, MENNELL does teach in paragraphs 38, 272-273 and 363-366 that the high carbon biogenic reagent may be formed into a fine powder with sizing units with sizes such as at least about 1 cm and into cylinders.
A prima facie case of obviousness exists wherein the claimed ranges overlap.
Regarding claim 62, MENNELL teaches in paragraph 367 that additives may be incorporated.
Regarding claims 63-68, the additives are taught in paragraph 368-380 that the additives include an acid, base, salt, metals and others. The additives are taught to act as binders or other modifiers to adjust final properties of the product.
Regarding claim 75, the second biogenic reagent is a part of the biocarbon pellet and adding more second biogenic reagent (adjusting the amount of biogenic reagent) would be well within one of ordinary skill in the art.
Regarding claim 77, MENNELL further teaches in paragraph 35 that an additive may be added to increase the carbon content of the high-carbon biogenic reagent. The additive is taught in paragraph 90 to include solid carbon containing compounds such as dolomite.
It is noted that claim 77 is written in open-ended transitional language and it would be well within one of ordinary skill in the art to both add the off-gases from reactors in MENNELL as well as external additives to the biogenic reagent to increase the carbon content.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Response to Arguments
Applicant's arguments filed 03/03/2026 have been fully considered but they are not persuasive.
Applicant argues that the present claims are directed toward the formation of an intermediate pellet and then separately pyrolyzing the intermediate pellet to form a final biocarbon pellet and that MENNELL do not teach or suggest such a configuration.
This is not persuasive as is recognized in the response, MENNELL teaches that the initial biomass may be in the form of a pellet. Biomass in the form of a pellet would be expected to be pelletized.
Applicant argues that the claims have been amended to state that pyrolysis off-gas is conveyed into a second separation unit under effective precipitation conditions to general a second pyrolysis precipitate. The claims have been further amended to state combining the second pyrolysis precipitate with the first biogenic reagent.
Applicant states that the motivation to modify and combine references must come from the prior art and not Applicant’s own specification.
This is not persuasive as the rejection references MENNELL and legal precedents.
MENNELL teaches an embodiment in paragraph 149 and Fig 2 in which off-gases from first zone 212 and second zone 214 may be combined and sent to a separator 200.
MENNELL teaches in paragraph 24 that a portion of the vapors may be combined with the pyrolyzed solids to increase the carbon content of the high-carbon biogenic reagent.
It would be well within one of ordinary skill in the art to send not only the off-gases from the first reactor but also the off-gases from the second reactor to combine with the pyrolyzed solids.
The motivation to do so would be to increase the carbon content of the high-carbon biogenic reagent.
MENNELL teaches a single separator 200.
However, the court has held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. Separating off-gases from the first reactor in a first separator to form a first precipitate and separating off-gases from the second reactor to form a second precipitate before combining the two precipitates would be mere duplication of parts if the off-gases are separated under the same conditions in a single separator or 2 different separators. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
Applicant further states that new claim 77 teaches that carbon-containing condensed-matter material is an external provided material and that MENNELL does not teach an external provided material that is not provided from pyrolysis vapor.
MENNELL further teaches in paragraph 35 that an additive may be added to increase the carbon content of the high-carbon biogenic reagent. The additive is taught in paragraph 90 to include solid carbon containing compounds such as dolomite.
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.
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/MING CHEUNG PO/ Examiner, Art Unit 1771
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
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