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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17 in the reply filed on 1/5/2026 is acknowledged.
Claims 18-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/5/2026.
Claim Rejections - 35 USC § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 contains the limitation Fe2O3, CaO, MgO, K2O, Na2O, SiO2, Al2O3 and TiO2 correspond to weight percentages in the biocarbon composition pursuant to ASTM D4326.
This limitation is indefinite since ASTM D4236 as a standard has multiple versions and has undergone prior revisions including in 1994 and 1988. Therefore, the limitation is indefinite since one of ordinary skill in the art is unclear what version of ASTM D4236 is referring. For purposes of compact prosecution the weight percentages in the biocarbon composition pursuant to ASTM D4236 is interpreted as meeting the ASTM D4236-94(2021) standard, which is the reaffirmed version of ASTM D2436-94 standard, approved on November 1, 2021 and published in November 2021. Support for this interpretation is based on the filing date of the provisional application on 11/12/2021.
Claims 2-17 depend on claim 1 and are therefore rejected for the same reasons.
Claim 3 also contains the limitation ASTM D4326.
Claim 4 also contains the limitation ASTM D4326.
Claim 6 also contains the limitation ASTM D4326.
Claim 7 also contains the limitation ASTM D4326.
Claim 8 contains the limitation equilibrium moisture content defined according to ASTM D1412. This limitation is indefinite since ASTM D1412 as a standard has multiple versions and has undergone prior revisions including revisions in 2020, 2019, 2018, and 2017. Therefore, the limitation is indefinite since one of ordinary skill in the art is unclear what version of ASTM D1412 is referring. For purposes of compact prosecution this limitation is interpreted as the moisture content.
Claim 9 also contains the limitation ASTM D4326.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 14 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mennell.
As applied to claim 1, Mennell discloses a biocarbon fully comprising pyrolyzed Douglas Fir wood and a base-acid ratio in the range of 0.1 to 10.
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.
Regarding claim 17, 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 to improve the properties of the product as suggested by Mennell.
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, 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
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