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 .
Priority
Applicant’s claim for the benefit of a prior-filed application (371 of PCT/US2021/056771, filed 27 October 2021, which has PRO 63/107,267, filed 29 October 2020) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Election/Restrictions
Applicant’s election without traverse of Group 1, Claims 1-9, drawn to a method of producing biochar, in the reply filed on 12 June 2025 is acknowledged.
Claims 10-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 June 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04 September 2025 is acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statements filed 19 October 2023 (three forms) and 12 March 2025 (four forms) fail to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 as explained in the Requirement under Rule 105 filed 14 July 2025 and discussion summarized in the Interview Summary filed 25 August 2025. They have been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in these information disclosure statements or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Claim Objections
Claim 2 is objected to because of the following informalities:
“wherein the second pyrolysis temperature range is in a range of about 200°C to [[and ]]about 1,000°C”.
Claim 3 is objected to because of the following informalities:
“heating the oven in which the dried spent coffee grounds are disposed to a first pyrolysis temperature for a time sufficient to pyrolyze…”.
Appropriate correction is required.
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.
Claims 3 and 4 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.
Regarding Claim 3, the claim recites “heating the oven in which the dried spent coffee grounds are disposed to a first evaporation temperature for a time sufficient to evaporate water and other liquid from within pore spaces”. It is unclear what measure of time would be considered “sufficient” to evaporate “water and other liquid” at a “first evaporation temperature” because no temperature value is provided and no “other liquid” is identified; such lack of specificity renders the claim indefinite for failing to particularly point out and distinctly claim the subject matter. Even further, it is unclear as to what Applicant would consider a “sufficient” degree of evaporation of water and other liquid, e.g., is the level of evaporation “sufficient” when 10%, 25%, 50%, or 99% of water and other liquid have evaporated? Or would an evaporation of 50% of the water and 99% of other liquid be considered “sufficient”?
Similarly, regarding the limitation “heating the oven in which the dried spent coffee grounds are disposed to a first pyrolysis temperature for [a] time sufficient to pyrolyze the dried spent coffee grounds”, it is unclear what measure of time would be considered “sufficient” to pyrolyze the dried spent coffee grounds. Even further, it is unclear as to what Applicant would consider a “sufficient” degree of pyrolysis.
Regarding Claim 4, the claim recites “heating the intermediate biochar and the caustic at a second evaporation temperature for a time sufficient to evaporate water and other liquid from within pore spaces”. It is unclear what measure of time would be considered “sufficient” to evaporate “water and other liquid” at a “second evaporation temperature” because no temperature value is provided and no “other liquid” is identified; such lack of specificity renders the claim indefinite for failing to particularly point out and distinctly claim the subject matter. Even further, it is unclear as to what Applicant would consider a “sufficient” degree of evaporation of water and other liquid, e.g., is the level of evaporation “sufficient” when 10%, 25%, 50%, or 99% of water and other liquid have evaporated? Or would an evaporation of 50% of the water and 99% of other liquid be considered “sufficient”?
Similarly, regarding the limitation “heating the intermediate biochar and the caustic at a second pyrolysis temperature for a time sufficient to pyrolyze the intermediate biochar”, it is unclear what measure of time would be considered “sufficient” to pyrolyze the intermediate biochar. Even further, it is unclear as to what Applicant would consider a “sufficient” degree of pyrolysis.
Claim Rejections - 35 USC § 102
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 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, 3, 4, and 6-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 19990070311 A (machine translation provided and referenced herein).
Regarding Claim 1, KR ‘311 discloses a method of producing high quality activated carbon from recycled coffee waste wherein coffee waste is first pretreated and subsequently carbonized using an activator to produce activated carbon (title, pg. 2, par. 1). Coffee waste from Arabica species (pg. 2, par. 4) is first pretreated at a pretreatment temperature of 300-400°C for 8-10 minutes on a hot plate to increase the fixed carbon ratio and to remove moisture and volatile substances present in the coffee waste (i.e., dried spent coffee grounds; pg. 3, par. 4-5). Subsequently, the pretreated material is carbonized under a pyrolysis step at 400-700°C for 30-60 minutes under an air-minimized atmosphere in an electric furnace to form a coffee char (i.e., heating dried spent coffee grounds in an oven in a first pyrolysis temperature range to provide an intermediate biochar; pg. 4, par. 1-2). Then, the coffee char is mixed with an activator, e.g., sodium hydroxide or potassium hydroxide, and activated at 800°C for 2 hrs in an electric furnace to form the activated carbon (i.e., heating the intermediate biochar and a caustic in the oven in a second pyrolysis temperature range to provide the biochar; pg. 4, par. 5-9).
Regarding Claim 3, KR ‘311 discloses the method of Claim 1. KR ‘311 further discloses that after pretreatment, the pretreated material is carbonized under a pyrolysis step at 400-700°C for 30-60 minutes under an air-minimized atmosphere in an electric furnace to form a coffee char (i.e., heating the oven in which the dried spent coffee grounds are disposed to a first pyrolysis temperature for [a] time sufficient to pyrolyze the dried spent coffee grounds; pg. 4, par. 1-2).
As noted earlier, during the pretreatment drying of coffee waste from Arabica species on a hot plate, the pretreatment temperature of 300-400°C for 8-10 minutes was sufficient to remove moisture and volatile substances present in the coffee waste (pg. 3, par. 4-5). Although the prior art is deficient in disclosing that the subsequent pyrolysis step to produce coffee char is heated at a first evaporation temperature for a time sufficient to evaporate water and other liquid from the pore spaces of the dried coffee waste, KR ‘311 discloses the subsequent pyrolysis step is conducted at 400-700°C for 30-60 minutes, i.e., higher and longer than the 300-400°C temperature range and 8-10 minutes disclosed, respectively, to already remove moisture and volatile substances, such a claimed limitation is inherently anticipated given the much higher temperature range and duration.
Regarding Claim 4, KR ‘311 discloses the method of Claim 1. KR ‘311 further discloses that after pretreatment and a first pyrolysis treatment to produce a coffee char, the coffee char is further mixed with an activator and activated at 800°C for 2 hrs in an electric furnace to form the activated carbon (i.e., heating the intermediate biochar and the caustic at a second pyrolysis temperature for a time sufficient to pyrolyze the intermediate biochar; pg. 4, par. 5-9).
As noted earlier, during the pretreatment drying of coffee waste from Arabica species on a hot plate, the pretreatment temperature of 300-400°C for 8-10 minutes was sufficient to remove moisture and volatile substances present in the coffee waste (pg. 3, par. 4-5). Although the prior art is deficient in disclosing that the final pyrolysis step to produce activated carbon from coffee char is heated at a second evaporation temperature for a time sufficient to evaporate water and other liquid from the pore spaces of the intermediate biochar, KR ‘311 discloses the pyrolysis step is conducted at 800°C for 2 hrs, i.e., higher and longer than the 300-400°C temperature range and 8-10 minutes disclosed, respectively, to already remove moisture and volatile substances, such a claimed limitation is inherently anticipated given the much higher temperature range and duration.
Regarding Claim 6, KR ‘311 discloses the method of Claim 1. KR ‘311 further discloses the coffee char and activator are mixed at a ratio of 1:1 (pg. 4, par. 8), which reads on the claimed ratio of a mass:mass ratio of the caustic to the intermediate biochar is about 1:1.
Regarding Claim 7, KR ‘311 discloses the method of Claim 1. KR ‘311 further discloses the coffee char and activator are mixed prior to the second pyrolysis step (i.e., mixing the intermediate biochar and caustic; pg. 4, par. 8).
Regarding Claim 8, KR ‘311 discloses the method of Claim 1. KR ‘311 further discloses coffee waste from Arabica species is first pretreated at a pretreatment temperature of 300-400°C for 8-10 minutes on a hot plate to increase the fixed carbon ratio and to remove moisture and volatile substances present in the coffee waste (i.e., drying spent coffee grounds to provide the dried spent coffee grounds; pg. 3, par. 4-5).
Regarding Claim 9, KR ‘311 discloses the method of Claim 1. KR ‘311 further discloses the activated carbon is washed with 3% hydrochloric acid (i.e., rinsing the biochar with a dilute acidic solution; pg. 4, last paragraph).
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.
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 19990070311 A.
Regarding Claim 2, KR ‘311 discloses the method of Claim 1. As noted, KR ‘311 discloses the pretreated material is carbonized under a pyrolysis step at 400-700°C for 30-60 minutes under an air-minimized atmosphere in an electric furnace to form a coffee char (pg. 4, par. 1-2); this temperature range overlaps with the claimed range of about 200°C to about 500°C for the first pyrolysis temperature range and therefore, establishes a case of prima facie obviousness (MPEP 2144.05). Then, the coffee char is mixed with an activator, e.g., sodium hydroxide or potassium hydroxide, and activated at 800°C for 2 hrs in an electric furnace to form the activated carbon (i.e., wherein the second pyrolysis temperature range is in a range of about 200°C [to] about 1,000°C; pg. 4, par. 5-9).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 19990070311 A, or in the alternative, further in view of NABAIS et al. (PT 103520 B; machine translation provided and referenced herein).
Regarding Claim 5, KR ‘311 discloses the method of Claim 1. KR ‘311 discloses carbonizing pretreated coffee waste under a pyrolysis step at 400-700°C for 30-60 minutes under an air-minimized atmosphere in an electric furnace to form a coffee char (pg. 4, par. 1-2). Although KR ‘311 fails to disclose also utilizing an “air-minimized atmosphere” in the subsequent pyrolysis step with an activator, such a step would be obvious to any one of ordinary skill in the art of carbonization/pyrolysis. As is well-known, the presence of oxygen during carbonization above approximately 100°C would result in the undesired oxidation and combustion of the carbon material, resulting in the loss of the activated carbon. “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” (Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004); MPEP §2112 II).
Alternatively, indeed, as disclosed by NABAIS, in the production of activated charcoal from coffee precursors, a coffee precursor is first carbonized under an inert gas at a first temperature range (pg. 3, par. 7) and subsequently mixed with an activator and carbonized again under an inert gas at a second temperature range (pg. 3, par. 8-10). Thus, prior to the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to flow an inert gas through the oven while heating the dried spent coffee grounds and while heating the intermediate biochar as taught by NABAIS for the method disclosed by KR ‘311.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1777
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