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 and Status of Claims
Pending and under examination: claims 1-20
Amended: claims 1, 8, 10, 14, and 18
Rejected: claims 1-20
The amendments obviate the previous claim objections and 102 rejections, which are hereby withdrawn. However, in due to the amendments, the claims remain rejected under 112(b) and 103.
Response to Arguments
Applicant's arguments filed 07/08/2026 have been fully considered but they are not persuasive.
The applicant’s arguments concerning the 112(b) rejections (see page 7 of arguments), particularly of claim 14, are not found persuasive. The claim still recites that the solid reactants and the reactants that react in contact with water are each “made available”. It is unclear what “made available” means. E.g., it is unclear if, for example, an operator of the method merely possesses them, or if the reactants are present in the mixture but separated, are present in the mixture, not separated, but not reacted, or are present to be loaded into the mixture but are still not in the mixture.
The applicant’s arguments concerning Boll and relying on Boll to modify Tiburzio (see pages 8-11 of arguments) are not found persuasive; the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination (MPEP 2144). In the instant case, It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Tiburzio to include using a saccharide binder in the binder mixture, because it is an organic binder, and organic binders are expected to have no large impact on the cold crush strength after firing, as they burn off at low temperatures below 500°C [0010].
The arguments that Tiburzio teaches away from using organic binders is not found persuasive. Tiburzio merely teaches that in some alternate embodiments, organic binders might not be present (see page 9, lines 6-9). Such does not constitute a teaching away; a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments (MPEP 2123 I.); disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2123 II.).
Claim Objections
Claims 1-20 are objected to because of the following informalities:
Claims 1-20 need corresponding “A” or “The” articles as the first word in each of the claims, to designate whether they are independent (use “A”) or dependent (use “The”) claims. E.g., claim 1 should read “A solid agglomerated product…”, and claim 2 should read “The product…”.
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.
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 1-20 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.
Claims 1 and 10 recite “wherein said at least one organic binder is a polymer capable of adsorbing water and selling and is selected from among polysaccharides, carboxymethylcellulose, lignin, and combinations of two or more thereof, and wherein said at least one organic binder comprises starch”. The limitation is indefinite for the following reasons:
1) the limitation first states that what organic binder “is”, and then recites three alternatives. Then, the limitation recites that the organic binder “comprises”, which is a broader scope. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
2) the limitation constitutes an improper Markush grouping, A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members (MPEP 2173.05(h); also MPEP 2117). In other words, the first instance defines the closed group of members as being polysaccharides, carboxymethylcellulose, lignin, and combinations of two or more thereof”, but the claim later adds another member, “starch”, as a possibility for “organic binder”. Thus, the metes and bounds of the claim are unclear due to the uncertainty in what is actually possible to be included as the “organic binder”.
Claim 1 recites “Solid agglomerated product, such as a briquette”, which is exemplary claim language; description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim (MPEP 2173.05(d)).
Claim 9 recites “wherein it is in the form of a briquette”. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites “wherein first the solid reactants are made available, and then the reactants that react in contact with water are made available”; the limitation is indefinite because it is unclear what the metes and bounds are of making the reactants ‘available’, or in other words, what scope is defined by this limitation.
Claim 15 is rejected as being dependent on claim 14.
The remainder of the claims are rejected based on their dependency to claims 1 and 10.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5-7, 12, 17-18, and 20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 5, 7, and 12 recite the same scope of limitations as in their respective parent claims, and as such do not further limit the scope of the claims. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 6, 17-18, and 20 are rejected as being dependent from their respective parent claims.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tiburzio et al. (WO 2020065691 A1) in view of Boll (EP 3760748 A1).
Regarding claims 1, 5-7, and 17-18, with regard to the claimed “Solid agglomerated product, such as a briquette, usable as charge material for an electric arc furnace, said solid agglomerated product comprising: at least one by-product fraction deriving from a steel plant and comprising a first part containing ferrous oxide FeO and a second part containing ferric oxide Fe2O3;” Tiburzio teaches a solid agglomerated product containing FeO and a second part containing Fe2O3 (page 3, lines 15-18).
With regard to the claimed “a solid fuel fraction containing a quantity of carbon;
at least one inorganic binder to agglomerate said at least one by-product fraction and said solid fuel fraction together;” Tiburzio teaches a solid fuel fraction containing a quantity of carbon C_fix (page 3, line 19)
With regard to the claimed “at least one organic binder to agglomerate said at least one by-product fraction and said solid fuel fraction together”, Tiburzio teaches at least one inorganic binder at least partly comprising slag in order to agglomerate the at least one fraction of by-product and the fraction of solid fuel with each other (page 3, lines 20-23).
With regard to the claimed “wherein said solid fuel fraction is present in a quantity by weight, CR, determined by the relation CR=K*CS/C_fix, wherein:
K: is a coefficient selectin in the range from 1.0 to 2.5;
CS: is a quantity by weight of stoichiometric carbon defined by the relation
CS=0.11*(Fe2+_tot)+0.16*(Fe3+_tot), where Fe2+_tot is a quantity by weight of iron contained in said first part, and Fe3+_tot is a quantity by weight of iron contained in said second part.”, Tiburzio teaches “According to one aspect of the present invention, the fraction of solid fuel is present in a quantity in weight determined by the formula CR=K*CS/C_fix, wherein:
K: is a constant comprised between 1.2 and 2.5;
CS: is a quantity of stoichiometric carbon in weight defined by the formula CS=0.11 *(Fe2+_tot)+0.16*(Fe3+_tot), where Fe2+_tot is a quantity in weight of iron contained in the first part, and Fe3+_tot is a quantity in weight of iron contained in the second part.” (page 3, lines 26-33).”
Tiburzio is silent regarding the use of an organic binder such as the claimed list of polymers.
Boll teaches calcined iron and chrome containing pellets, and further teaches the use of a saccharide/polysaccharide binder [0013], [0028]-[0029] (meeting the limitations in claim 1 and claim 5), which is an organic binder, wherein the saccharide may be starch (meeting claims 7 and 17). The amount of saccharide may be in the range of about 1-5 wt% [0031], which overlaps with the range in claims 6 and 18. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Tiburzio to include using a saccharide binder in the binder mixture, because it is an organic binder, and organic binders are expected to have no large impact on the cold crush strength after firing, as they burn off at low temperatures below 500°C [0010].
Regarding claims 2, 4, and 9, Tiburzio meets the limitations (see page 8, lines 6-7 of claims 2 and 4; see page 16, claim 9 of Tiburzio for instant claim 9).
Regarding claims 3, 8, 16, and 19, Tiburzio teaches the products of claims 2 and 3 above; Tiburzio meets the limitations (page 8, lines 6-21); regarding the ranges in claims 8, 16, and 19, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Regarding claim 10, with regard to the claimed “Method for making a solid agglomerated product comprising:
making available at least one by-product fraction comprising a first part containing ferrous oxide FeO and a second part containing ferric oxide Fe2O3;
making available a solid fuel fraction containing a quantity of carbon;
mixing at least said by-product fraction with said solid fuel fraction and with at least one inorganic binder and with at least one organic binder,”
and
“wherein, before said mixing, it comprises determining a quantity by weight of said solid fuel fraction by means of the relation CR=K*CS/C_fix, wherein:
K: is a coefficient selected in the range from 1.0 to 2.5;
CS: is a quantity by weight of stoichiometric carbon defined by the relation CS=0.11*(Fe2+_tot)+0.16*(Fe3+_tot), where Fe2+_tot is a quantity by weight of iron contained in said first part, and Fe3+_tot is a quantity by weight of iron contained in said second part”, Tiburzio teaches “Method to produce a solid agglomerated product comprising:
- making available at least one fraction of by-product (M; Ml , M2, M3) comprising a first part containing ferrous oxide FeO and a second part containing ferric oxide Fe2O3;
- making available a fraction of solid fuel (CR) containing a quantity of carbon C_fix;
- mixing at least said fraction of by-product (M; Ml, M2, M3) with said fraction of solid fuel (CR) and with at least one inorganic binder in order to obtain said solid agglomerated product,
characterized in that before said mixing, the method comprises determining a quantity in weight of said fraction of solid fuel (CR) by means of the formula CR=K*CS/C fix, wherein:
K: is a constant comprised between 1.2 and 2.5;
CS: is a quantity of stoichiometric carbon in weight defined by the formula CS=0.11 *(Fe2+_tot)+0.16*(Fe3+_tot), where Fe2+_tot is a quantity in weight of iron contained in said first part, and Fe _tot is a quantity in weight of iron contained in said second part, wherein the inorganic binder at least partly comprises slag.” (see claim 11 of Tiburzio).
Tiburzio is silent regarding the use of an organic binder such as the claimed list of polymers.
Boll teaches calcined iron and chrome containing pellets, and further teaches the use of a saccharide/polysaccharide binder [0013], [0028]-[0029], which is an organic binder, wherein the saccharide may be starch. The amount of saccharide may be in the range of about 1-5 wt% [0031], which overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Tiburzio to include using a saccharide binder in the binder mixture, because it is an organic binder, and organic binders are expected to have no large impact on the cold crush strength after firing, as they burn off at low temperatures below 500°C [0010].
Regarding claim 11, Tiburzio meets the limitations (see page 8, lines 6-7 and claims 12-13 of Tiburzio).
Regarding claims 12 and 20, Tiburzio and Boll teach the method of claim 10 above, and as discussed above, Boll teaches calcined iron and chrome containing pellets, and further teaches the use of a saccharide binder [0013]. The saccharide may be a polysaccharide [0028]-[0029], such as starch [0029], or organic binder such as carboxymethylcellulose [0006].
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Tiburzio to include using a saccharide binder in the binder mixture, because it is an organic binder, and organic binders are expected to have no large impact on the cold crush strength after firing, as they burn off at low temperatures below 500°C [0010].
Regarding claim 13, Tiburzio and Boll teach the method of claim 10 above, and Tiburzio further teaches mixing in an order based on particle size (see claims 15-16 of Tiburzio). Furthermore, it has been held that a selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (MPE 2144.04 IV. C.).
Regarding claim 14, Tiburzio and Boll teach the method of claim 13 above, and Tiburzio further teaches preparing the solid reactants before adding water (Fig. 1; page 11, lines 2-6; page 13, lines 5-11). Furthermore, it has been held that a selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (MPE 2144.04 IV. C.).
Regarding claim 15, Tiburzio teaches the method of claim 14 above, and with regard to the order of steps, it has been held that a selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (MPE 2144.04 IV. C.).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
