DETAILED ACTION
Response to Amendment
The Amendment filed 1/20/26 has been entered. Claims 1, 3-8, and 15 remain pending in the application. Claim(s) 2, 9-14, and 16-18 have been canceled.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-8, and 15 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, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "a compaction strength of at least 500 N". The instant specification states that “There is a number of industry standards for measuring compaction strength” (page 7). Page 16 of the instant specification states that “it is important that the compression strength of the briquettes be sufficient.” Applicant states that compaction strength is interpreted as compression strength (remarks, page 4). It is noted that compression strength is measured in N/area, not N. It is unclear what industry standard is used for measuring compaction strength in N, or how compaction strength in N is determined. Ibe (US 20170189960 A1) teaches that “compressive strength σ (MPa) of a secondary particle determined by an equation σ=2.8×L/π/d2” (paragraph [0125]). Accordingly, one of ordinary skill in the art would understand that the SI unit of compressive strength is Pascals, or Pa, not Newtons. Claims 3-8 and 15 are rejected due to their dependence on rejected claim 1.
Claim 4 recites the limitation "a compaction strength of at least 850 N". The instant specification states that “There is a number of industry standards for measuring compaction strength” (page 7). Applicant states that compaction strength is interpreted as compression strength (remarks, page 4). It is noted that compression strength is measured in N/area, not N. It is unclear what industry standard is used for measuring compaction strength in N, or how compaction strength in N is determined. Ibe (US 20170189960 A1) teaches that “compressive strength σ (MPa) of a secondary particle determined by an equation σ=2.8×L/π/d2” (paragraph [0125]). Accordingly, one of ordinary skill in the art would understand that the SI unit of compressive strength is Pascals, or Pa, not Newtons.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parenthesis. Examiner explanations are shown in italics.
Claims 1, 3-8, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Eisele et al. (US 20070209480 A1), previously cited.
Regarding claim 1, Eisele teaches that “the use of a binder is not utterly essential to the successful operation of the invention since any way of compacting the particles into a compact mass can be used” (which reads upon “a compacted green briquette”, as recited in the instant claim; paragraph [0030]). Eisele teaches that “while the mass of ore and reductant material can be of any suitable size, it is preferred to provide pieces of pellets or briquettes which are small enough so that the heat quickly reaches the interior of each piece, the most useful being less than 4-8 cm. in diameter and preferably in the range of about 0.25 cm in diameter to about 4 cm in diameter, the most preferred being in the range of about ½ cm to 2.5 cm in diameter” (which reads upon “the briquette being a general cuboid shape with rounded edges/corners”, as recited in the instant claim; paragraph [0035]; briquettes reads on the briquette being a general cuboid shape with rounded edges/corners). Eisele is silent regarding the volume of the briquette. It would be obvious to one of ordinary skill in the art to select a size of a briquette such that the volume would be about that of the preferred volume of when using a pellet shape (sphere). Eisele teaches that “it is convenient to form the coherent mass into generally round pellets” (which reads upon “having a volume of between 5 cm3 and 20 cm3”, as recited in the instant claim; paragraph [0035]; a sphere with a diameter of 4 cm has a volume of about 34 cm3, a sphere with a diameter of 0.5 cm has a volume of about 0.065 cm3, a sphere with a diameter of 3 cm has a volume of about 14 cm3). It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I). Here, the claimed range of between 5 cm3 and 20 cm3 lies inside the range disclosed by the prior art of 0.065 cm3 – 34 cm3. Accordingly, the prior art renders the claim obvious.
Eisele teaches that “a composition comprising a mass of material formed from a mixture of iron ore particles and particles of a reductant that is either a biomass material in particulate form or a plastic resinous material in particulate form” (paragraph [0024]; the composition contains iron ore particles and reductant). Eisele teaches that “the use of a binder is not utterly essential to the successful operation of the invention since any way of compacting the particles into a compact mass can be used” (paragraph [0030]; the composition may contain only iron ore particles and reductant, the binder is optional). Eisele teaches that “for practical purposes and to assure sufficient reductant, in practice a quantity of organic material is used that is in excess of the amount that is theoretically needed to reduce the iron, and that the iron ore preferably comprises between about 60%-90% by weight of the mass” (which reads upon “a composition by dry weight of at least 30% lignocellulosic biomass material and at least 55% iron ore fines”, as recited in the instant claim; paragraph [0043]; if the composition contains only iron ore particles and reductant and the iron ore is between about 60%-90% by weight then the reductant is between about 10%-40% by weight). It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I). Here, the claimed range of at least 55% iron ore overlaps the range disclosed by the prior art of 60%-90%. Here, the claimed range of at least 30% lignocellulosic biomass material overlaps the range disclosed by the prior art of 10%-40%. Accordingly, the prior art renders the claim obvious.
Eisele teaches that “the iron oxide ore used as a starting material, typically taconite, hematite or limonite can be used in any suitable commercially available particulate form, preferably in the form of fine particles” (which reads upon “iron ore fines”, as recited in the instant claim; paragraph [0030]). Eisele teaches that “a suitable reductant can either be a biomass material or a plastic resinous material” (which reads upon “biomass material”, as recited in the instant claim; paragraph [0031]). Eisele teaches that “the biomass materials useful herein include carbohydrates and other organic polymeric compounds and hydrocarbons other than coal, coke or charcoal, and that examples include paper, paper pulp, cellulositic paper mill waste sludge, ground wood, wheat flour, corn meal, dried sugar beet waste pulp, grass clippings, leaves and stems, chopped straw, corn stalks, sawmill waste, dried post-consumer organic wastes, dried sewage sludge, peat, starch, gluten, lignin, dried distillers grain and other solid residues from alcohol production, molasses, switchgrass and other biomass crops” (which reads upon “lignocellulosic biomass material”, as recited in the instant claim; paragraph [0033]). Eisele teaches that “both magnetite (Fe3O4,) and hematite (Fe2O3) have been successfully reduced through the use of the invention to produce metallic iron” (which reads upon “suitable for a direct reduction process to produce direct reduced iron”, as recited in the instant claim; paragraph [0043]).
Eisele teaches that “the biomass materials useful herein include carbohydrates and other organic polymeric compounds and hydrocarbons other than coal, coke or charcoal, and that examples include paper, paper pulp, cellulositic paper mill waste sludge, ground wood, wheat flour, corn meal, dried sugar beet waste pulp, grass clippings, leaves and stems, chopped straw, corn stalks, sawmill waste, dried post-consumer organic wastes, dried sewage sludge, peat, starch, gluten, lignin, dried distillers grain and other solid residues from alcohol production, molasses, switchgrass and other biomass crops” (which reads upon “lignocellulosic biomass material”, as recited in the instant claim; paragraph [0033]). The instant application teaches that “the term 'lignocellulosic' is understood herein to mean any of several closely-related substances consisting essentially of cellulose and hemicellulose in a lignin framework, and that such lignocellulosic biomass can be found within forestry products and by-products (including mill residues), agricultural products and by-products (including residues such as straw and chaff waste from harvesting crops) and/or energy crops such as sorghum, switchgrass and sugar cane (as sugar cane bagasse) including short rotation coppice crops including willow and poplar (page 8). The Examiner notes that there is significant overlap in the biomass materials cited.
The instant application is silent as to the composition of the iron ore fines. The percentages of iron ore fines to biomass is overlapping. Accordingly, the claimed and prior art products are identical or substantially identical in composition.
Eisele is silent regarding the density or compaction strength of the compacted green briquette. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not 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 § 2112.01 II. Therefore, it is expected that the briquette of the prior art possesses the properties as claimed in the instant claims since the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above). Since the Office does not have a laboratory to test the reference product, it is applicant’s burden to show that the reference product does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980). Additionally, it is noted that a compaction strength of at least 500 N is irresolvably unclear.
Regarding claim 3, Eisele teaches the briquette of claim 1 as stated above. Eisele teaches that “after the ore and reductant have been weighed, they are thoroughly mixed in a mixer of any suitable commercially available type such as a kneader-mixer” (paragraph [0036]).
Regarding claim 4, as best understood, Eisele teaches the briquette of claim 1 as stated above. Eisele is silent regarding the compaction strength of the compacted green briquette. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not 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 § 2112.01 II. Therefore, it is expected that the briquette of the prior art possesses the properties as claimed in the instant claims since the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above). Since the Office does not have a laboratory to test the reference product, it is applicant’s burden to show that the reference product does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980). Additionally, it is noted that a compaction strength of at least 850 N is irresolvably unclear.
Regarding claim 5, Eisele teaches the briquette of claim 1 as stated above. Eisele is silent regarding the percentage of the surface area of the compacted green briquette formed by the biomass material. 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). See MPEP § 2112.01 I. “Products of identical chemical composition can not 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 § 2112.01 II. Therefore, it is expected that the briquette of the prior art possesses the properties as claimed in the instant claims since the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above). Since the Office does not have a laboratory to test the reference product, it is applicant’s burden to show that the reference product does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Regarding claims 6-8, Eisele teaches the briquette of claim 5 as stated above. Eisele teaches that “common sources of biomass are: 1.) agricultural wastes such as corn stalks, straw and hulls or manure, etc., 2.) woody materials, wood or bark, sawdust and mill scraps, 3.) municipal waste such as waste paper, grass, leaves and yard clippings, 4.) energy crops, such as poplars, willows, switchgrass, alfalfa, prairie bluestem, corn starch and soybean oil.” (paragraph [0031]). Eisele teaches that “besides wood chips or wood pulp, sawdust, etc., of the invention can employ a wide variety of non-woody biomass material such as grass, grains, stalks and the like which consists largely of cellulose and other saccharide polymers” (paragraph [0032]). Eisele teaches that “the biomass material a material selected from the group consisting of paper, paper pulp, cellulosic paper mill waste sludge, ground wood, wheat flour, corn meal, dried sugar beet waste pulp, grass clippings, chopped straw, corn stalks, sawmill waste, dried post consumer organic waste, dried sewage sludge, peat, starch, gluten, lignin, dried distillers grain, solid residues from alcohol production, molasses, switchgrass and the plastic resinous material comprises a hydrocarbon comprising polypropylene plastic resin, polyethylene plastic resin, polyvinyl chloride plastic resin or mixtures thereof” (claim 20).
Regarding claim 15, Eisele teaches the briquette of claim 1 as stated above. Eisele teaches that “the iron oxide ore used as a starting material, typically taconite, hematite or limonite can be used in any suitable commercially available particulate form” (paragraph [0030]). Eisele teaches that “particles as large as 0.25 inch in diameter or larger could be used” (paragraph [0030]; 0.25 inch = 6.3 mm). Eisele teaches that “it is preferred that small particles be used, the most preferred being particles that are finely ground, and that by “finely ground” is meant particles 90% of which will at least pass a 75 micrometer screen” (paragraph [0030]; corresponding to a diameter of about 0.075 mm). It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I). Here, the claimed range of 0.15 and 2.0 mm lies inside the range disclosed by the prior art of 0.075 mm – 6.3 mm. Accordingly, the prior art renders the claim obvious.
Response to Arguments
Applicant's arguments filed 1/20/26 have been fully considered but they are not persuasive. Applicant argues that there are a number of standard techniques for measuring "compaction strength," and these techniques would be known to a skilled person (remarks, page 3). Applicant argues that one skilled in the art would have understood the meaning of "compaction strength," as well as "compression strength" and "compressive strength," consistent with the use in the present application (remarks, page 5). This is not found convincing because Ibe (US 20170189960 A1) teaches that “compressive strength σ (MPa) of a secondary particle determined by an equation σ=2.8×L/π/d2” (paragraph [0125]). Accordingly, one of ordinary skill in the art would understand that the SI unit of compressive strength is Pascals, or Pa, not Newtons. NRMCA, CIP 35 – Testing Compressive Strength of Concrete, Concrete in Practice, https://cdn.zephyrcms.com/2348096f-8890-41c7-b890-bcab8364e607/-/inline/yes/cip-35-testing-compressive-strength-of-concrete.pdf , (2003), is an industry compressive strength testing standard. NRMCA also teaches that the SI unit of compressive strength is Pascals, or Pa, not Newtons.
Applicant argues that Eisele then explains that approximately 23% (7.5 grams/32.5 grams) of its total pellet mass is reductant (remarks, page 6). Applicant argues that Eisele also explains that "biomass additions material in the range of about 20%-30% of the oxide by weight of the pellet or other agglomerated mass (remarks, page 6). Applicant further argues that Eisel is silent as to increasing an amount of biomass above 30% (remarks, page 6). This is not found convincing because the existence of an example or a preference which does not read on the claims does not negate the broader teaching which does. Eisele teaches that “for practical purposes and to assure sufficient reductant, in practice a quantity of organic material is used that is in excess of the amount that is theoretically needed to reduce the iron, and that the iron ore preferably comprises between about 60%-90% by weight of the mass” (paragraph [0043]). The composition can contain only iron ore particles and reductant. The iron ore is between about 60%-90% by weight. Thus, the reductant is between about 10%-40% by weight.
Applicant argues that Eisele describes a wide range of biomass materials including "paper particles, paper pulp, cellulosic paper mill waste sludge, ground wood, dried sugar beet waste pulp, grass clippings, recycled and recyclable plastic resinous material, wheat flour, corn meal, chopped straw, corn stalks, sawmill waste, dried post-consumer organic wastes, dried sewage sludge, peat, starch, gluten, lignin, dried distillers grain, solid residue from alcohol production, molasses and switchgrass" (remarks, page 6). Applicant argues that [Eisele] lacks any teaching or suggestion as to the importance of selecting "lignocellulosic biomass material" (remarks, page 6). Applicant further argues that for at least these reasons, Eisele does not teach or suggest "a composition by dry weight of at least 30% lignocellulosic biomass material," as recited in amended (sic.) claim 1 (remarks, page 6). This is not found convincing because the existence of an example or a preference which does not read on the claims does not negate the broader teaching which does. In response to applicant's argument that Eisele lacks any teaching or suggestion as to the importance of selecting "lignocellulosic biomass material", the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that there is no teaching or suggestion in Eisele for green briquettes suitable for a direct reduction process (remarks, page 6). This is not found convincing because Eisele teaches that “both magnetite (Fe3O4,) and hematite (Fe2O3) have been successfully reduced through the use of the invention to produce metallic iron” (paragraph [0043]). Applicant’s arguments rely on language solely recited in preamble recitations in claim 1. When reading the preamble in the context of the entire claim, the recitation “suitable for a direct reduction process to produce direct reduced iron” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Applicant argues that Eisele discloses a preference for pellets (e.g., paragraph [0035] ("It is convenient to form the coherent mass into generally round pellets which can be done in any known manner, for example, by using an ore pelletizer....") and there is no teaching or suggestion of a "a general cuboid shape with rounded edges/corners and having a volume of between 5 cm3 and 20 cm3 ," as recited in claim 1 (remarks, page 7). This is not found convincing because the existence of an example or a preference which does not read on the claims does not negate the broader teaching which does. Eisele teaches a briquette shape and a volume range that overlaps the claimed volume as stated above.
Regarding claim 3, Applicant argues that Eisele's mixing action differs from the actions of folding, flexing or plastically deforming lignocellulosic biomass material around iron ore fines (remarks, page 7). This is not found convincing because Eisele teaches that “after the ore and reductant have been weighed, they are thoroughly mixed in a mixer of any suitable commercially available type such as a kneader-mixer” (paragraph [0036]). One of ordinary skill in the art would understand that the operation of a kneader-mixer would result in the lignocellulosic biomass material being folded, flexed, or plastically deformed around the iron ore fines. See, for example, Franli, Kneader Mixer: Uniform Mixing Equipment of Silicone Rubber, https://www.franli.com/kneader-36/, last accessed February 5, 2026. Franli explains that
The working principle of a kneader mixer involves a combination of kneading elements and high-speed dispersion. The mixer consists of two counter-rotating sigma blades that provide intensive material flow and intermeshing action. During operation, the sigma blades rotate at different speeds to promote efficient material flow within the mixing chamber.
The unique design of the sigma blades ensures that all parts of the material are constantly involved in the mixing process, resulting in thorough dispersion and uniform blending within a short processing time. The combination of high-speed dispersion and intensive kneading action creates a homogeneous mixture with excellent processing and performance characteristics”
Franli page 5.
Accordingly, the intensive kneading action using two counter-rotating sigma blades that provide intensive material flow and intermeshing action would result in the lignocellulosic biomass material being folded, flexed, or plastically deformed around the iron ore fines.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434. The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6.
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. The Examiner requests that interviews not be scheduled during the last week of each fiscal quarter or the last half of September, which is the end of the fiscal year. Q1: 1/5-1/9/26; Q2: 3/30-4/3/26; Q3: 6/22-6/26/26; Q4: 9/21-9/30/26.
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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/REBECCA JANSSEN/Primary Examiner, Art Unit 1733