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 Arguments
Applicant's arguments filed 5/19/2026 have been fully considered but they are not persuasive.
Applicant argues that amended claim 1 is non-obvious because Mennell does not teach or suggest that base-acid ratio is a property that matters, the argument is unpersuasive since it does not address the rejection. The discovery of an unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discover. See MPEP 2112.1 Here, as cited Mennell teaches a biocarbon composition that has the claimed property of a base-acid ratio in the claimed range regardless if it was not appreciated.
Applicant also argues that the amendment requires the presence of an additive. Applicant also notes in the arguments at Page 8 that many of the additives claimed are or contain one or more species that are present in the formula for the base-acid ratio. The Office also notes that many do not contain any of the oxide species in the formula for base-acid ratio including at least calcium, calcium carbonate, magnesium carbonate, magnesium, manganese, aluminum, nickel, chromium, boron, cerium, molybdenum, phosphorous, tungsten, vanadium, iron chloride, iron bromide, iron ore concentrate, fluorite, fluorospar, sodium hydroxide, potassium hydroxide, hydrogen bromide, hydrogen chloride, potassium permanganate, borax, titanium, titanium carbide, titanium hydride, and titanium nitride. Therefore, these additives would have no effect on the base-acid ratio. The rejection over Mennell is therefore maintained since it would have been obvious to add any of the additives to the biocarbon composition as taught by Mennell including any of the above additives having no effect on the base-acid ratio.
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.
Claim(s) 1-14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mennell et al (US 2015/0144831).
Regarding claim 1, Mennell discloses a biogenic activated carbon (i.e., a biocarbon) comprising Douglas Fir wood which is pyrolyzed at a temperature of 600°C for a residence time of 30 minutes (see Example 8). Mennell further discloses the biocarbon comprising 90.4 wt% carbon (see Table 7). Mennell therefore discloses a biocarbon composition comprising 50 wt% to 99 wt% total carbon where he teaches 90.4 wt% carbon and wherein the total carbon is 100% renewable since he teaches Douglas Fir wood. Mennell further discloses that biomass feedstocks used to produce the biocarbon generally contain non-volatile species including silica and various metals (see [0601]).
Mennell does not disclose that the total carbon is at least 50% renewable as determined from a measurement of the 14C/12C isotopic ratio of the total carbon. Mennell does not teach wherein the biocarbon composition is characterized by a base-acid ratio defined by formula as claimed wherein the base-acid ratio is at least 0.1 to at most about 10.
First regarding 50% renewable as determined from a measurement of the 14C/12C isotopic ratio of the total carbon. The limitation is a product by process limitation where Mennell discloses that the biocarbon is fully sourced from Douglas Fir wood as a feedstock. “[E]ven 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 claim 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Here, the prior art discloses a biocarbon produced fully from Douglas Fir which is a renewable biomass. The instant claim implies the structure of a carbon where at least 50% is from renewable biomass. One of ordinary skill in the art at the time of the invention that measurement methods would not impart structural differences to the biocarbon since the characteristic of feedstock as renewable is independent of the method of measuring. In the event any slight differences can be shown between the 14C/12C isotopic ratios, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art Mennell. See Ex parte Gray, 10 USPQ2d 1922.
Secondly regarding the base-acid ratio, it is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971). Here, Mennell compares to the biocarbon of claim 1 with the following parameters:
Mennell (Example 8 and Table 7)
The Instant Invention (Examples 4)
Biocarbon feedstock
Douglas fir wood
Douglas fir wood
Pyrolysis temperature
600°C
650°C
Pyrolysis time
30 minutes
15-30 minutes
Dry Carbon content
89.6 wt%
86.41 wt%
Dry Hydrogen content
2.00 wt%
2.67 wt%
Dry Nitrogen content
0.212 wt%
0.42 wt%
Dry Oxygen content
7.30 wt%
9.31 wt%
Ash
0.841 wt%
1.23 wt%
Additives
none
Starch binder
Additional processing
cooling
320 lb (dry basis) of biocarbon is combined with 30 lb of starch binder, pelletized and dried to 9 wt%
Base-acid ratio
1.57
Iron-calcium ratio
0.37
Iron-plus-calcium parameter
37.14 wt%
Slagging factor
0.031
Fouling factor
0.8275
Moisture content
1.45 wt%
9.08 wt%
Fixed Carbon on dry basis
91.9 wt%
80.18 wt%
Although, Instant Examples 4 contains a starch binder, one of ordinary skill in the art would recognize that starches comprise only complex carbohydrates and therefore would not affect the Base-Acid Ratio of claim 1 which depend only on Fe2O3, CaO, MgO, K2O, Na2O, SiO2, Al2O3, and TiO2 which are not contained in starches. Furthermore, since Mennell teaches that biomass feedstocks used to produce the biocarbon generally contain non-volatile species including silica and various metals (see [0601]), one of ordinary skill in the art would also reasonably recognize that the content of Fe2O3, CaO, MgO, K2O, Na2O, SiO2, Al2O3, TiO2 related to the base-acid ratio of the biocarbon depends only on the biomass feedstock used to produce the biocarbon and the conversion of those metals into oxides depends on pyrolysis conditions. Therefore, the skilled artisan would have been motivated to reasonably expect the composition disclosed by Mennell to exhibit the property base-acid ratio in values comparable to that instantly claimed because Mennell discloses a substantially identical composition comprising biocarbon produced by pyrolyzing Douglas fir under conditions that are substantially identical absent the showing of convincing evidence to the contrary.
Regarding additives, Mennell further discloses various additives may be introduced to improve one or more properties of the biogenic activated carbon or a downstream product incorporating the reagent (See [0218]). Mennell further discloses the biocarbon composition comprising an additive selected from magnesium, manganese, aluminum, nickel, iron, chromium, silicon, boron, cerium, molybdenum, phosphorus, tungsten, vanadium, iron chloride, iron bromide, magnesium oxide, dolomite, dolomitic lime, fluorite, fluorspar, bentonite, calcium oxide, lime, sodium hydroxide, potassium hydroxide, hydrogen bromide, hydrogen chloride, sodium silicate, potassium permanganate, organic acids, iodine, an iodine compound and combinations thereof (See [0242]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the biocarbon as taught by Mennell where the biocarbon is combined with any of the overlapping additives as taught by Mennell including those not comprising the metal oxides of the claimed formula to improve the properties of the product as suggested by Mennell.
Regarding claim 2, the instant example 4 has a base-acid ratio that is 1.57. The skilled artisan would have been motivated to reasonably expect the composition disclosed by Mennell to exhibit the property base-acid ratio in values comparable to that instantly claimed because Mennell discloses a substantially identical composition comprising biocarbon produced by pyrolyzing Douglas fir under conditions that are substantially identical absent the showing of convincing evidence to the contrary.
Regarding claim 3, Mennell does not disclose the iron-calcium parameter. The instant example 4 has an iron-plus-calcium parameter of 0.37. One of ordinary skill in the art would also reasonably recognize that the content of the iron and calcium in the biocarbon relates only to the feedstock used to produce the biocarbon and the conversion of metals into oxide depends on pyrolysis conditions. Therefore, the skilled artisan would have been motivated to reasonably expect the composition disclosed by Mennell to exhibit the iron-plus-calcium parameter in values comparable to that instantly claimed because Mennell discloses a substantially identical composition comprising biocarbon produced by pyrolyzing Douglas fir under conditions that are substantially identical absent the showing of convincing evidence to the contrary.
Regarding claim 4, Mennell does not disclose the iron-plus-calcium parameter. The instant example 4 has an iron-plus-calcium parameter of 37.14 wt%. One of ordinary skill in the art would also reasonably recognize that the content of the iron and calcium in the biocarbon relates only to the feedstock used to produce the biocarbon and the conversion of metals into oxide depends on pyrolysis conditions. Therefore, the skilled artisan would have been motivated to reasonably expect the composition disclosed by Mennell to exhibit the iron-plus-calcium parameter in values comparable to that instantly claimed because Mennell discloses a substantially identical composition comprising biocarbon produced by pyrolyzing Douglas fir under conditions that are substantially identical absent the showing of convincing evidence to the contrary.
Regarding claim 5, Mennell does not disclose the slagging factor. The instant example 4 has a slagging factor of 0.031. One of ordinary skill in the art would also reasonably recognize that the content of the metals related to the base-acid ratio and the sulfur in the biocarbon relates only to the feedstock used to produce the biocarbon and the conversion of metals into oxide depends on pyrolysis conditions. Therefore, the skilled artisan would have been motivated to reasonably expect the composition disclosed by Mennell to exhibit the slagging factor parameter in values comparable to that instantly claimed because Mennell discloses a substantially identical composition comprising biocarbon produced by pyrolyzing Douglas fir under conditions that are substantially identical absent the showing of convincing evidence to the contrary.
Regarding claim 6, Mennell does not teach the fouling factor. The instant example 4 has a fouling factor of 0.8275. One of ordinary skill in the art would also reasonably recognize that the content of the metals related to the base-acid ratio and Na2O relate only to the feedstock used to produce the biocarbon and the conversion of the metals into oxide depends on pyrolysis conditions. Therefore, the skilled artisan would have been motivated to reasonably expect the composition disclosed by Mennell to exhibit the fouling factor parameter in values comparable to that instantly claimed because Mennell discloses a substantially identical composition comprising biocarbon produced by pyrolyzing Douglas fir under conditions that are substantially identical absent the showing of convincing evidence to the contrary.
Regarding claim 7, Mennell does not disclose the modified fouling factor. One of ordinary skill in the art would reasonably expect that the content of metals related to the base-acid ratio and leachable Na2O relates to the feedstock used to produce the biocarbon and the pyrolysis conditions. Therefore, the skilled artisan would have been motivated to reasonably expect the composition disclosed by Mennell to exhibit the modified fouling factor in values comparable to that instantly claimed because Mennell discloses a substantially identical composition comprising biocarbon produced by pyrolyzing Douglas fir under conditions that are substantially identical absent the showing of convincing evidence to the contrary.
Regarding claim 8, Mennell teaches a biocarbon with a moisture content of 1.45 wt% (see Table 7).
Regarding claim 9, since Mennell teaches that biomass feedstocks used to produce the biocarbon generally contain non-volatile species including silica and various metals (see [0601]), one of ordinary skill in the art would also reasonably expect that the silica of the biocarbon produced from Douglas Fir in Mennell is in values comparable to that instantly claimed.
Regarding claim 10, since Mennell further teaches that biomass feedstocks used to produce the biocarbon generally contain non-volatile species including silica and various metals (see [0601]), one of ordinary skill in the art would also reasonably expect that the mercury of the biocarbon produced from Douglas Fir in Mennell is in values comparable to that instantly claimed.
Regarding claim 11, Mennell teaches a biocarbon with 91.9 wt% fixed carbon (see Table 7).
Regarding claims 12-13,Mennell teaches a biocarbon that is fully Douglas Fir and therefore fully renewable. Furthermore, as stated above the content of renewable carbon in the biocarbon is independent to how it is measured including the measurement of 14C/12C ratio.
Regarding claim 14, Mennell further discloses the final product pressed or pelletized with a binder as a desired form (see [0170]). Mennell further discloses that activated carbon is used in a wide variety of liquid and gas-phase applications and key product attributes include particle size and shape (see [0651]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the biocarbon as taught by Mennell in the form of a pellet as taught by Mennell so that it is in a desirable form for its intended use.
Regarding claim 16, Mennell further discloses that activated carbon is used in a wide variety of liquid and gas-phase applications and key product attributes include particle size and shape (see [0651]). Mennell further discloses the activated carbon produced from powder feedstocks (See [0168]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the biocarbon as taught by Mennell in the form of a powder as taught by Mennell so that it is in a desirable form for its intended use.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mennell and in further view of Wolff (US 2006/0142154).
As applied in claim 14, Mennell teaches a biocarbon fully comprising pyrolyzed Douglas Fir wood, having a base-acid-ratio between 0.01 and 10, further comprising a claimed additive and where the biocarbon is formed in a pellet with a binder.
Mennell does not disclose the binder comprising a starch, thermoplastic starch, crosslinked starch, starch polymers, cellulose, cellulose ethers, hemicellulose, methylcellulose, chitosan, lignin, lactose, sucrose, dextrose, maltodextrin, banana flour, wheat flour, wheat starch, soy flour, corn flour, wood flour, coal tars, coal fines, met coke, asphalt, coal-tar pitch, petroleum pitch, bitumen, pyrolysis tars, gilsonite, bentonite clay, borax, limestone, lime, waxes, vegetable waxes, baking soda, baking powder, sodium hydroxide, potassium hydroxide, iron ore concentrate, silica fume, gypsum, Portland cement, guar gum, xanthan gum, polyvidones, polyacrylamides, polylactides, phenol-formaldehyde resins, vegetable resins, recycled shingles, recycled tires, or a combination or a derivative thereof.
Regarding claim 15, Wolff discloses shaped activated carbon articles comprising carbon particles, binder, and liquid phase (see [0049]). Wolff discloses carbon particles comprising activated carbon powders based on wood (see [0053]). Wolff further discloses that binders that have proven very suitable are water-containing binders for examples carbohydrates, starch, sugars and non-aqueous binders, for example those based on pitch, coal tar, charcoal tar, or bitumen (see [0052]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the biocarbon formed into a pellet with a binder as taught by Mennell where the binder comprises any of the overlapping binders as taught by Wolff since they are very suitable for forming shaped activated carbon monoliths from activated carbon powders as suggested by Wolff.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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