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 with traverse of Group I (Claims 1-3) in the reply filed on July 22, 2025 is acknowledged. The traversal is on the ground(s) that the consideration of claims 4-13 with the elected claims 1-3 would not require any undue search and consideration. This is not found persuasive because it would be necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g. the search would require different search queries).
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 1 is 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.
Regarding claim 1, the limitation “at least about 15 % of the carbon…. consumed” indicates that 15%, 20%, 45%, etc., can be consumed. Based on this, the amount of carbon remaining should be 85%, 80%, 55%, etc. However, the following limitation “leaving at least about 85% of the carbon” indicates 85%, 90%, 95%, etc. which is in contradiction to the first consuming limitation. Clarification is requested to the amount of carbon consumed and remaining.
Regarding claim 1, there are two different ranges for both the temperature and the time – “400 to 500 C” and “450 to 500 C” and “30 to 180 minutes” and “30 to 120 minutes”. Clarification is requested.
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) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mennell et al (US 2022/0162726).
Regarding claims 1-3, Mennell teaches a heat-treated biomass ([0435]) in which the final carbonaceous material comprises between about 40 and 70 % of the carbon material contained in the starting feedstock ([0503]). Other embodiments stated that the amount of carbon remaining is greater than 80 % ([0503]). The feedstock can be wood (tree branches, stumps [0457])) or agricultural such as nut shells ([0457]).
It is noted that the other limitations are generally considered product-by-process limitations and do not carry much patentable weight. However, Mennell does teach these parameters and they are listed as follows: the biomass is treated at 250 to700 C ([0476]) for a time ranging from 10 to 120 min ([0482]) under non-oxygenated conditions ([0466]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the teachings of Mennell to arrive at the presently claimed invention. It would have been nothing more than using known methods in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. _, 82 USPQ2d 1385 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764