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 Amendment
The amendment filed 01/28/2026 has been entered. Claims 1-5 are pending in this application and examined herein. Claims 1-3 are amended. Claims 4-5 are new.
The rejections under 35 USC 112(b) to claims 1-3 are withdrawn in view of the amendments to claims 1 and 3.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “to reduce the content, at a temperature below 1000 °C” in lines 11-12. As noted by Applicant, the instant specification discloses wherein “the conversions proceed… at 200-800 °C” and wherein “oxidation by combustion proceeds at approximately 600-800 °C, and catalytic conversion proceeds at temperatures starting at 200 °C” (i.e., temperatures > 200 °C) in paragraph [0044], however the instant specification does not disclose the broad range of “below 1000 °C” (i.e., < 1000 °C), and therefore does not describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor invented the claimed invention at the time of filing.
Claims dependent upon claims rejected above, either directly or indirectly, are likewise rejected under this statute.
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 5 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.
Claim recites the limitation "the reduction shaft" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Hsieh (US 4212452 A, cited in Office Action dated 10/01/2025) in view of Eder et al. (US 20120328465 A1, cited in Office Action dated 10/01/2025).
Regarding claim 1, Hsieh teaches a device for carrying out a direct reduction method (Title, abstract), the device comprising a reduction unit 2 (Fig. 1, Col. 3 lines 56-58) with a reduction gas supply 8 and 11 (Fig. 1, Col. 5 lines 53-58, Col. 6 lines 66-68). Hsieh teaches a third zone for discharging product using a moving grid 12 (i.e., part of a product discharge device) (Col. 3 lines 31-35, Fig. 1-3) that discharges product from the reduction device (e.g., Fig. 1). Hsieh teaches a seal gas supply line opening into gas seal 13 below the moving grid 12 (i.e., part of the product discharge device) (Fig. 1, Col. 3 lines 56-59). Hsieh teaches a vent gas removal line 10 exiting from the product discharge device 12 (Fig. 1, Col. 4 line 5, Col. 5 lines 50-53, 58-59). Hsieh teaches a de-dusting device 17 (Fig. 1, Col. 7 lines 21-22), the vent gas removal line opening into the dry de-dusting device (Col. 7 lines 12-22). Hsieh teaches an acid scrubber 18 where the cleaned gas is divided (i.e., part of a diverting device) (Col. 7 lines 21-32), the diverting device exiting from the dry de-dusting device 17. Hsieh teaches the acid scrubber 18 diverts dry de-dusted vent gas into the atmosphere via high-temperature boiler 19 and stack 23 (Fig. 1, Col. 7 lines 35-38). Hsieh teaches the diverting device comprising high temperature boiler 19 which burns a mix of essentially H2O, CO and H2 (Col. 3 lines 8-13) to produce combustion gases of almost entirely carbon dioxide, water vapor, nitrogen, and excess oxygen (Col. 7 lines 58-61), reducing the content of CO and H2 by combusting to CO2 and H2O (i.e., a reducing device being operative to reduce the content of at least one gaseous constituent of the de-dusted vent gas the reducing device reducing the content by combustion to CO2 and H2O).
Hsieh does not teach wherein the de-dusting device is a dry de-dusting device.
Eder teaches an apparatus for producing pressed articles (Title), where particulate iron ore is direct-reduced in a series of shaft reactors 3 by reducing gas 9 (Abstract, Fig. 1, [0048-0049]), thus Eder and Hsieh are analogous to the instant application as both are directed to apparatuses for carrying out direct reduction methods with a supply of reduction gas. Eder teaches the gases leaving the fluidized bed reactors 3 are treated by a dry dedusting apparatus 16 ([0050], Fig. 1), wherein the dust from the dedusting apparatus 16 contains iron [0056] and is fed to a collection tank 5 where the dust is fed to a compacting system 7 to form pellets [0056].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the wet scrubber of Hsieh with a dry dedusting apparatus as taught by Eder as doing so would recover the dust in a form where it may be further used to produce a metal product.
Claim 1 discloses “the reducing device being operative to reduce the content, at a temperature below 1000 °C” in lines 11-12. As claim 1 is directed to an apparatus, therefore being operative at a temperature below 1000 °C comprises an intended use, and an apparatus in the prior art need only be capable of performing the intended use to read upon the claim. As Hsieh teaches the reducing device burns gas at 1500-1700 °C (Hsieh: Col. lines 35-38), and does not disclose the reducing device to be incapable of burning gas at lower temperatures, Hsieh would be capable of operating at the lower temperatures (i.e., less demanding operating conditions) of below 1000 °C as claimed. See MPEP § 2114 (II).
Regarding claim 2, Hsieh teaches the reducing device for reducing the content of at least one gaseous constituent of the de-dusted vent gas 17 is a device for reducing the CO content by combustion to CO2 (Col. 3 lines 8-13, Col. 7 lines 58-61).
Regarding claim 3, Hsieh teaches the reducing device for reducing the CO content constituent of the de-dusted vent gas 17 (Col. 3 lines 8-13, Col. 7 lines 58-61) has at least one supply line for supplying air (i.e., oxygen-containing gases) (Fig. 1, Col. 7 lines 35-38).
Regarding claim 4, Hsieh teaches the gaseous constituent is CO (Col. 3 lines 8-13, Col. 7 lines 58-61).
Regarding claim 5, Hsieh teaches wherein the product discharge device comprises a discharge grate 12 (i.e., a discharge member) (Col. 3 lines 31-35, Fig. 1-3). Hsieh teaches the product is discharged into the bottom of the furnace before leaving the furnace (Fig. 1), where as the product is conveyed along the bottom surface of the furnace before leaving the furnace, the bottom of the furnace comprises a material-conveying device. Hsieh teaches in operation zone C of the reduction shaft is at 3 atmospheres of pressure (Col. 5 lines 53-57), while the exterior of the furnace is open to atmosphere (i.e., at atmospheric pressure, ~ 1 atmosphere), thus the bottom of the furnace analogous to a material-conveying device is at a pressure between the two, and would intrinsically be at a positive pressure lower in comparison with the reduction shaft, or is not under a positive pressure.
Response to Declaration
The declaration under 37 CFR 1.132 filed 01/28/2026 is insufficient to overcome the rejections of claims 1-3 based upon Hsieh (US 4212452 A) in view of Eder (US 20120328465 A1) as set forth in the last Office action because:
The declaration asserts that the acid gas removal systems of Hsieh requires certain temperatures to operate successfully. While as the Declarant notes, Benfield and DEA adsorption systems are preferred by Hsieh, they are not the only acid gas removal systems disclosed; Hsieh also discloses that acid gas removal may be performed by using lime solution, alkali, or alkali carbonates (Hsieh: Col. 7 lines 24-25), where Hsieh does not disclose any limitations on the temperatures that may be used with lime solution, alkali, or alkali carbonates for acid gas removal, and could be used with a dry dedusting apparatus
The Examiner notes that the declaration does not rely on concrete physical or technical evidence, but solely on expert opinion, and while opinions are evaluated for reasonableness and validity of the opinion and entitled to consideration, the Examiner finds the opinion unconvincing as noted above. See MPEP 716.01 § (c) III.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Arguments
Applicant's arguments filed 01/28/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that Hsieh does not teach a diverting device operative to reduce the content of gaseous constituent at a temperature below 1000 °C (see pg. 8 of remarks), the Examiner notes that claim 1 is directed to an apparatus, therefore being operative at a temperature below 1000 °C comprises an intended use, and an apparatus in the prior art need only be capable of performing the intended use to read upon the claim. As Hsieh teaches the reducing device burns gas at 1500-1700 °C (Hsieh: Col. lines 35-38), and does not disclose the reducing device to be incapable of burning gas at lower temperatures, Hsieh would be capable of operating at the lower temperatures (i.e., less demanding operating conditions) of below 1000 °C as claimed.
Regarding Applicant’s argument that a skilled person would not replace the wet dedusting step of Hsieh with dry dedusting as that would destroy an important part of Hsieh’s method (see pg. 8-9 of remarks, pg. 1-4 of declaration), the Examiner respectfully disagrees.
As noted at Item No. 15 above, Hsieh is not limited to the use of the temperature dependent Benfield and DEA systems which allegedly require wet gas scrubbing prior to performing acid gas removal, instead Hsieh teaches acid gas removal may be also performed by using lime solution, alkali, or alkali carbonates, where Hsieh does not limit the temperatures needed to perform acid gas removal using lime solution, alkali, or alkali carbonates, and would therefore not be dependent on wet scrubbing being used, where one of ordinary skill in the art in combining the disclosures of Hsieh and Eder, would elect acid gas removal systems disclosed by Hsieh workable with the dry dedusting apparatus of Eder.
Further, even if Hsieh did require that the use of Benfield or DEA systems to perform acid gas removal, Hsieh is taken in view of Eder to suggest using a dry dedusting apparatus instead of wet scrubbing, where Eder teaches an apparatus for cooling the off-gas to temperatures suitable for the dedusting apparatus may be used prior to feeding the gas to the dedusting apparatus (Eder: [0038]), while Hsieh also teaches performing cooling of the gas before scrubbing (Hsieh: Col. 7 lines 14-19), thus Hsieh in view of Eder teaches apparatuses able to cool the gas prior to the dedusting apparatus and acid gas removal system, where one of ordinary skill in the art, in combining the references, would configure and operate the cooling apparatuses of Hsieh and Eder to cool the gas to the temperatures necessary to operate the Benefield or DEA acid gas removal systems.
Further, nothing in Hsieh teaches or suggests that the use of a wet scrubbing method necessarily reduces the temperature of the gas to below 100 °C. While water boils at 100 °C, water and a mixture of gases have different specific heats, the amounts of water and gas sent to a wet scrubber may both be adjusted, and the time/degree of scrubbing can be adjusted, thus any degree of cooling or lack thereof could be performed in a wet scrubber, resulting in many possible temperatures of outlet gas from a wet scrubber.
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
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