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
Applicant’s amendments filed 05/15/2026 have been entered. Claim 4 is canceled; claims 1-3 and 5-6 remain pending in this application.
The amendments to the drawings overcome the objections made to the drawings; these objections are therefore withdrawn by the Examiner. The amendments to paragraphs [0011]-[0012] overcome the objections made to the specification; these objections are therefore withdrawn by the Examiner. The amendments to the claims overcome each and every objection and 112(b) rejection made to the claims; these objections and 112(b) rejections are therefore withdrawn by the Examiner.
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 1-3 and 5-6 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 recites “absorbing gases generated during step (a) and step (b) in a wet scrubbing unit,” which finds support in the instant specification in paragraph 0041, which states that “toxic gases” are sent to the wet scrubbing unit for absorption. It is unclear if the term “gases” in the plural indicates CO2 and H2O, as instantly claimed, as the gases in question, and if so, a question of indefiniteness arises as H2O is not conventionally known as toxic to one of ordinary skill in the art, and CO2 may be considered a toxic gas depending upon context, since “toxic” is a relative term. It is furthermore unclear if H2O is to be absorbed in the recited wet scrubbing unit. Other gases that could be considered toxic and therefore subject to the absorption step are not defined in the invention or disclosure: Cl2 is used as a reactant in step (b) and is not necessarily generated as a result of step (b). Therefore claim 1 is indefinite, since the limitation “absorbing gases generated during step (a) and step (b)” requires at least one gas from step (b) to be sent to a scrubbing unit to be absorbed, and there appears to not be such a gas in the instant claim in light of the specification. The specification does not explicitly indicate that H2O or CO2 are to be absorbed. Claims 2-3 and 5-6 depend upon claim 1 and are therefore similarly rejected since they do not rectify the issue of indefiniteness.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Morishita, Morishita, JP 55-075926 A, in view of Bai et al., Removal of CO2 Greenhouse Gas by Ammonia Scrubbing. Ind. Eng. Chem. Res. 2 June 1997; 36 (6): 2490–2493, and Deininger, EP 0082590 B1, referred to herein as Morishita, Bai, and Deininger, respectively. Morishita and Deininger are cited as provided in the previous Office action.
Regarding claim 1, Morishita teaches a method for synthesizing ferrate (a process for producing an alkali ferrate, JP MT p. 2) comprising: a. reacting hematite iron ore with sodium carbonate (the alkali ferrite used … wherein M represents K or Na,… is prepared by oxidizing and roasting a mixture of an iron compound such as iron hydroxide, hydrous iron oxide or iron oxide, an iron ore such as hematite or magnetite, and an alkali agent, JP MT p. 2-3; examples thereof include alkali, alkali carbonate, JP MT p. 3 pp. 1; Morishita original document shows the formula being M2O*Fe2O3, which is equivalent to 2MFeO2, column 6) at a temperature of about 900 degrees Celsius (at least 800, preferably 900-1200, Morishita A C7) to produce sodium ferrite (NaFeO2); b. reacting NaFeO2 with chlorine (Cl2) (the oxidizing agent which is another raw material, chlorine or an alkali hypochlorite is used, JP MT p. 3, pp. 4) and sodium hydroxide (NaOH) to produce sodium ferrate, sodium chloride and water (Morishita A C8, Equation 4); and c. carrying out the reaction of step (b) at a temperature in the range of 50 to 60 C (the change at is kept at about 60 ° C. or less, JP MT p. 3 pp. 8).
Morishita does not teach the second reactant mixture being sodium carbonate. However, the use of sodium carbonate as an alkali carbonate would be obvious to one skilled in the art with reasonable prediction of success. It is noted that the Supreme Court has ruled that a claim can be proved obvious by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, E.).
Morishita additionally does not teach that the water acts as the fourth reactant mixture; however the equation taught by Morishita (Morishita A, C8) produces water which is capable of acting as a fourth reactant mixture.
Morishita additionally does not teach absorbing toxic gases. However, Bai teaches the removal of CO2 gas from flue gas streams (Introduction) using a wet ammonia scrubber (wet method, p. 2491 col. 1). One would be motivated to combine the teachings of Morishita and Bai in order to remove CO2 from the atmosphere to control emissions and ameliorate greenhouse effects, as Bai teaches (Introduction); and furthermore Bai motivates the wet scrubber as advantageous to avoid potential explosivity in the scrubbing process (p. 2491 col. 1).
Morishita additionally does not teach stabilizing the resultant final mixture by the addition of sixth reactant mixture, the stabilizing agent. However, Deininger teaches stabilizing the final mixture by the addition of a stabilizing agent (alkali metal salts of iodide and iodate, and alkali metal silicates, p. 5 line 61-64, which are added in continuous operation, “ferric salt, chlorine gas, an aqueous KOH solution, and at least one ferrate-stabilizing compound are all added to the ferrate reactor,” p. 9 lines 42-43). It would be obvious to one skilled in the art before the effective filing date of the invention to modify the invention disclosed by Morishita with the addition of a stabilizing agent as taught by Deininger, in order to stabilize the ferrate produced by the invention, motivation also taught by Deininger (Ferrate Stabilizers, p. 5-6). One of ordinary skill in the art would therefore arrive at the presently claimed invention with reasonable prediction of success.
Regarding claim 3, Morishita, Bai, and Deininger teach the method as applied to claim 1. Deininger further discloses Example 1 wherein the caustic soda KOH was added with deionized water to ferric chloride and stirred (p. 12 lines 12-15) and continuously sent to reactor (p. 12 line 12) and then centrifuged (p. 12 line 58). Deininger teaches that filtration is an equivalent method of separation (“filtration and centrifuging are the preferred methods, with the latter being more preferred for continuous operation,” p. 8 lines 38-39). It would be obvious to one skilled in the art before the effective filing date of the invention to modify the invention taught by Morishita with the agitation and separation taught by Deininger and arrive at the claimed invention, wherein the NaFeO2 is mixed with NaOH and water in a mixing tank under agitation and transferred to a reactor and subsequently filtered. One would be motivated to do so in order to increase the rate of dissolution, as taught by Deininger (“agitation to increase the rate of dissolving,” p. 9 line 5) and in order to separate liquids and solids in a continuous process, as taught by Deininger (p. 8 lines 38-39).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Morishita, Bai, and Deininger as applied to claim 1 above, and further in view of Heo Bong-Cheol, KR 100233566 B1, referred to herein as Heo, and Quan et al., CN 109365106 A, referred to herein as Quan.
Regarding claim 2, Morishita, Bai, and Deininger teaches the method for synthesizing ferrate as applied to claim 1, and Morishita further teaches the first reactant mixture and second reactant mixture being processed in an electric furnace (electric oven, p. 4 Examples 1 and 2).
Morishita, Bai, and Deininger do not teach the mixture being combined in the dry ball mill and being forwarded to a vibro sifter for screening, and does not teach the electric furnace being of rotary type.
However, Heo discloses an electric rotary kiln (title). It would be obvious to one of ordinary skill in the art before the effective filing date of the present invention to process the reactant mixtures in an electric rotary kiln, as taught by Heo. One would be motivated to do so in order to provide an even heating atmosphere to the mixtures, motivation taught by Heo (“forming a heating zone so that the heating atmosphere is evenly and widely provided,” p. 2 pp. 1). Therefore one skilled in the art would reasonably be motivated to modify the electric oven taught by Morishita with an electric rotary kiln taught by Heo with reasonable prediction of success.
Morishita, Bai, Deininger and Heo does not disclose the use of a dry ball mill and forwarded to vibro sifter.
However, Quan discloses a metal material being processed in a dry ball mill and then being fed to a two-stage vibrating screen (0033).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the processing of the reactant mixtures with the dry ball mill and vibrating screen taught by Quan. One would be motivated to do so in order to improve the separation efficiency of the materials to obtain a controlled particle size, such as the separation of granular vs slag steel as taught in Quan (0038). Therefore one skilled in the art would reasonably be motivated to modify the process taught by Morishita, Bai, Deininger, and Heo with the dry ball mill and vibrating screen taught by Quan with reasonable prediction of success.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Morishita, Bai, and Deininger as applied to claim 1 above, and further in view of Sharma, US 20110076223 A1.
Regarding claim 5, Morishita, Bai, and Deininger teaches the method for synthesizing ferrate as applied to claim 1. Deininger further teaches the addition of stabilizing agents to stabilize the product ferrate (p. 5); it would be obvious to one skilled in the art to combine the teachings of a stabilizing agent with the previously disclosed teachings in the prior art; one skilled in the art would be motivated to do so in order to avoid degradation of the product ferrate, as Deininger teaches (p. 5 line 46-47).
They do not teach that the Na2FeO4 is obtained as an aqueous solution.
However, Sharma discloses a liquid ferrate (aqueous solution, 0031) formed from the reaction of step (b) of claim 1, wherein sodium ferrite is reacted with an oxidizing agent and alkali base (0033). Sharma further discloses that this ferrite can be formed from the reaction of Fe2O3 with Na2CO3 as the reaction of step (a) of claim 1 of the present invention (0053). It would be obvious to one skilled in the art to modify the invention of Morishita, Bai, and Deininger by obtaining an aqueous solution as taught by Sharma; one would be motivated to do so in order to obtain a stable ferrate as Sharma teaches (“stable liquid ferrate,” 0031) since Sharma teaches that the aqueous solution is stable for several weeks (0021). Therefore one skilled in the art would arrive at the claimed invention prior to the effective filing date.
Regarding claim 6, Morishita, Bai, Deininger, and Sharma teach the invention as applied to claim 5. Sharma further teaches a stability of several weeks (0021), which is at least one week. Such a disclosed range overlaps with the claimed range of at least 6 weeks. As set forth in MPEP 2144.05, in the case where the claimed range "overlap or lie inside ranges disclosed by the prior art," a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform a method for preparing aqueous ferrate as suggested by Morishita, Bai, Deininger, and Sharma where the stability of the ferrate solution is in any workable or optimum range overlapping with several weeks as taught by Sharma including the claimed range in order to obtain a stability suitable for the final product.
Response to Arguments
Applicant asserts that Morishita does not teach or suggest the use of sodium carbonate as recited in claim 1 (Response p. 7), and that the selection of sodium carbonate from Morishita’s teaching of an alkali carbonate or alkali nitrate is not obvious to try (Response p. 7-8). Applicant asserts that Morishita does not provide a finite list of alkali carbonates, and asserts that the use of sodium carbonate in the instant claim 1 results in a different invention than the use of another alkali carbonate such as potassium carbonate (that the use of, for example, K2CO3 would result in a different intermediate of K2FeO2). This argument is not found convincing, because Morishita teaches a finite list of either Na or K to be used in the invention (“wherein M represents K or Na,” bottom of page 2 of English translation, which corresponds to column 6 of the original document, last paragraph; see also bottom of column 8 of original document, where the chemical reaction equation 4 is given in terms of the same M) and therefore teaches that the reactions of Na and K are equivalent given the ionic species in the reactions are interchangeable (Equation 4, original Morishita in column 8). Furthermore, the list of known alkali metal elements is finite and such a list would be obvious to one skilled in the art when selecting an alkali carbonate.
Applicant asserts that the rejection of claim 1 is based on impermissible hindsight (Response p. 8) in order to teach water as a fourth reactant mixture. Applicant asserts that water is an intentional participant in the reaction rather than being incidentally formed, and that water being produced in a reaction does not constitute a teaching that water functions as a reactant mixture. The Examiner finds this unconvincing in light of the instant claims, which do not list water on the reactant side of the equation but on the product side, and the instant specification which does the same (0038). Water is assigned as “RM4” in the specification (0032) which acts as a reactant (0040) but this is not claimed in the invention. It is improper to import claim limitations from the specification; see MPEP 2111.01(II) as held in Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Therefore the invention as presently claimed is taught in the prior art by Morishita’s teaching of water. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant asserts that Deininger does not cure these deficiencies of Morishita and does not teach or suggest absorbing gases generated during step (a) and step (b) in a wet scrubbing unit, as recited in amended claim 1 (Response p. 9). The Examiner finds this argument convincing but the argument is rendered moot given the new grounds of rejection set forth above, as necessitated by amendment.
Applicant asserts that the process of Deininger is fundamentally different from the claimed method (Response p. 10) and therefore claim 3 is not obvious over Morishita in view of Deininger. This argument is not found convincing. Deininger teaches the mixing of a ferric salt with an analogous alkali hydroxide and water (p. 12 lines 12-15) and it would be obvious to one skilled in the art to combine the teaching of Deininger with the teachings of Morishita because of the motivation to combine taught by Deininger, that agitation increases the rate of dissolving (p. 9 line 5). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Applicant has asserted that Deininger alone does not teach the materials of the claimed invention, but the combination of teachings of Morishita and Deininger would lead one skilled in the art to reasonably use a mixer to combine the compounds and thus arrive at the claimed invention. Similarly, Deininger teaches that filtration is a known method of solid-liquid separation (p. 8 line 38) and Deininger teaches the separation of liquids from the solid of K2FeO4 (p. 8). It would be obvious to one skilled in the art to combine the teachings of Morishita and Deininger, motivated to separate solids and liquids as taught by Deininger (p. 8 lines 35-40) and the combination of teachings arrives at the claimed invention, rather than references individually.
Applicant asserts that Deininger does not teach the addition of a stabilizing agent as claimed in claim 5 (p. 11); the Examiner finds this argument convincing.
Applicant asserts that Deininger does not teach the storage stability of claim 6 (p. 11) since Deininger teaches the stability for a solid rather than aqueous sodium ferrate as claimed in the instant invention. The Examiner finds this argument convincing.
Applicant asserts that, regarding claim 2, the Office has not provided a rationale as to why one of ordinary skill in the art would have reasonable expectation that Heo and Morishita would be compatible (p. 12) and that Quan is non-analogous art (p. 12). In response to applicant’s argument against the combination of Heo and Morishita, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, one skilled in the art would be motivated to improve upon the electric furnace taught by Morishita with the rotary furnace taught by Heo for at least the motivations discussed of “forming a heating zone so that the heating atmosphere is evenly and widely provided” as Heo teaches (p. 2 pp. 1). Thus it is clear that the prior art suggests such a combination and one skilled in the art would arrive at the claimed invention.
In response to applicant's argument that Quan is non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Quan solves the problem of improved material grinding (0038), which is pertinent to the field of solid materials mixture, and since Morishita teaches the mixture of hematite and an alkaline agent such as alkali carbonate (top of page 3), and roasting such a mixture, this is relevant art to the technology disclosed by Quan. This argument is therefore found unconvincing.
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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/Eileen Moudou/Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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