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 .
Applicant’s Response and Status of Claims
Applicant’s response, filed 12/22/2025, has been entered. No claims are amended, newly cancelled, or newly added. Accordingly, claims 1, 5-11, 13-15, 18-21, 24, and 30-33 remain pending and considered in this Office Action.
Response to 1.130 Declaration of 12/22/2025
The 1.130(a) declaration filed 12/22/2025 is insufficient to overcome the rejection of claims 1, 5-11, 13-15, 18-21, 24, and 30-33 based upon the 102(a)(1) rejection over the teachings of Biswal as set forth in the last Office Action because the declaration fails to set forth sufficient facts to demonstrate that Veena Sahajwalla is the sole inventor of the subject matter described and claimed in the instant application.
Sahajwalla is the inventor named in a signed ADS (see ADS filed 07/26/2023) and has signed an inventor’s oath or declaration under 37 CFR 1.63 (see Oath filed 11/13/2023).
Sahajwalla’s 130 declaration, filed 12/22/2025, asserts that they are the sole inventor of the instant application (Item 1 of Declaration) and the sole inventor of the subject matter described in the Biswal Article (Item 3 of the Declaration).
However, Sahajwalla states that “I co-authored the Biswal Article…” (Item 2 of the Declaration). At Item 4 of the Declaration, Sahajwalla explains that ‘[t]he presence of Smitirupa Biswal, Farshid Pahlevani, and Saroj Kumar Bhattacharyya in the Biswal Article was to provide credit to each of the co-authors for her or his contributions in experiments and analysis, project and experiment design, and experiment and analysis supervision, as described in the “Credit author statement” found on pages 7-8 of the Biswal article”.
The Credit author statement from the Biswal article is as follows (screenshots below):
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From this statement, Examiner notes the following portions:
“Farshid Pahlevani designed the project and experiments and critically analysed the data” (emphasis respectfully added for clarity of the record).
“Veena Sahajwalla supervised the study and gave suggestions for experimental and theoretical investigation and to revise the manuscript”.
“Smitirupa Biswal wrote the manuscript and all authors analysed data, discussed the results, read and approved the final manuscript” (emphasis respectfully added for clarity of the record).
Examiner has considered the examples provided at MPEP 2155.01 as well as the contents of MPEP 717.01(a)(1).
Notably, 717.01(a)(1) includes ‘the evidence necessary to show that the disclosure is by the inventor or a joint inventor or another who obtained the subject matter from the inventor or a joint inventor requires case-by-case analysis, depending upon whether it is apparent from the disclosure itself or the patent application specification that the disclosure is an inventor originated disclosure’ (emphasis respectfully added for clarity of the record).
There is no accompanying evidence beyond the statements in the 130 Declaration and the Biswal Article itself. Specifically, there is no evidence from any of the co-authors of the article.
Weighing the facts, the 130 declaration of Sahajwalla is not sufficient to demonstrate that Sahajwalla is, in fact, the sole inventor such that the Biswal Article should be excepted from 102(a)(1) because the Credit Author statement indicates that multiple contributors conceived and invented the disclosed and claimed subject matter.
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.
Claims 1, 5-11, 13-15, 18-21, 24, 30-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Biswal et al. “A novel reforming approach of utilizing spent coffee grounds to produce iron” (Cited in IDS of 07/26/2023).
Regarding claim 1, Biswal et al. (hereinafter “Biswal”) teaches the use of spent coffee grounds as a carbon resource to recover iron values (Abstract; meeting claimed “process for preparing iron”). Specifically, Biswal teaches forming three sets of composite pellets prepared from blends that were made using hematite (Fe2O3) and carbon sources (2. Materials and experimental methods 3rd paragraph; meeting claimed step a requiring forming a mixture comprising iron oxide, because hematite is an iron oxide, and a carbon source) wherein one of the carbon sources is SCGs (i.e. spent coffee grounds; 2. Materials and experimental methods 1st and 2nd paragraphs).
The composite pellets are then heated (2. Materials and experimental methods 3rd paragraph).
Biswal then states “[i]t is quite evident from the diffractograms that iron oxide reduction to metallic iron has been feasible at all the above-mentioned temperatures” (Page 4, Right Column, 2nd paragraph).
Furthermore, Biswal concludes that “SCGs can be effectively utilized as an alternative carbon source for synthesizing iron… and SCGs…are more effective in taking part in iron oxide reduction” (4. Conclusions).
Thus, Biswal’s heating of the composite pellets meets Applicant’s claimed step b because the pellet is heated for a period of time that is sufficient to convert the iron oxide to iron.
Regarding claim 5, Biswal anticipates the process as applied to claim 1 above and further anticipates that the heating in step b is performed at different temperatures of 1150, 1250, 1400 and 1550 C (2. Materials and experimental methods 3rd Paragraph). All of the disclosed values by Biswal lie within the claimed range of ‘between about 1100C and about 1600C’.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 6, Biswal anticipates the process as applied to claim 1 above and further anticipates that the heating (i.e. step b as claimed) is performed in an inert atmosphere (2. Materials and experimental methods, Right Column, 1st paragraph).
Regarding claim 7, Biswal anticipates the process as applied to claim 1 above and further anticipates that the heating (i.e. step b as claimed) occurs for 15 min (2. Materials and experimental methods, Right Column, 1st paragraph) which lies within the claimed range of ‘about 5 minutes and about 1 hour’.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 8, Biswal anticipates the process as applied to claim 1 above and further anticipates that prior to step a, the coffee is dried (2. Materials and experimental methods, 1st paragraph “SCGs were dried…).
Regarding claim 9, Biswal anticipates the process as applied to claim 1 above and further anticipates that the carbon source which is obtained from coffee is coffee that has been subjected to a heat treatment (2. Materials and experimental methods, 1st paragraph “SCGs were dried in an electrically heated over at 80C…).
Alternatively, Biswal anticipates further heating the coffee powder in an inert atmosphere at a temperature of 400C for half an hour (2. Materials and experimental methods 1st paragraph).
Thus, Biswal anticipates the features of claim 9 on the first basis where the heating at 80C meets the BRI of ‘heat treatment’ and on the second basis where the further heating at 400C meets the BRI of ‘heat treatment’.
Regarding claim 10, Biswal anticipates the process as applied to claim 9 above and further anticipates that the heat treatment is sufficient to increase its carbon content (3. Results and Discussion as well as Table 1 “Fixed Carbon”).
Regarding claim 11, Biswal anticipates the process as applied to claim 10 above and further anticipates that the carbon content is fixed carbon content (3. Results and Discussion as well as Table 1 “Fixed Carbon”).
Regarding claim 13, Biswal anticipates the process as applied to claim 9 above and further anticipates heating the coffee powder in an inert atmosphere at a temperature of 400C for half an hour (2. Materials and experimental methods 1st paragraph) which anticipates the claimed range of between about 200 and about 500C.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 14, Biswal anticipates the process as applied to claim 9 above and further anticipates heating the coffee powder in an inert atmosphere at a temperature of 400C for half an hour (2. Materials and experimental methods 1st paragraph).
Regarding claim 15, Biswal anticipates the process as applied to claim 9 above and further anticipates heating the coffee powder in an inert atmosphere at a temperature of 400C for half an hour (2. Materials and experimental methods 1st paragraph) which anticipates the claimed range of “about 5 minutes and about 1 hour”.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 18, Biswal anticipates the process as applied to claim 1 above and particularly uses spent coffee grounds (SCGs) as the carbon source where the SCGs has been subject to heat treatment (2. Materials and experimental methods 1st paragraph).
Regarding claim 19, Biswal anticipates the process as applied to claim 18 above and further anticipates the heat treatment is sufficient to increase the coffee grounds carbon content (3. Results and Discussion as well as Table 1 “Fixed Carbon”).
Regarding claim 20, Biswal anticipates the process as applied to claim 19 above and further anticipates that the carbon content is fixed carbon content (3. Results and Discussion as well as Table 1 “Fixed Carbon”).
Regarding claim 21, Biswal anticipates the process as applied to claim 18 above and further anticipates heating the coffee powder in an inert atmosphere at a temperature of 400C for half an hour (2. Materials and experimental methods 1st paragraph) which anticipates the claimed range of between about 200 and about 500C.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 24, Biswal et al. (hereinafter “Biswal”) teaches the use of spent coffee grounds as a carbon resource to recover iron values (Abstract; meeting claimed “process for preparing a ferro-alloy”). Specifically, Biswal teaches forming three sets of composite pellets prepared from blends that were made using hematite (Fe2O3) and carbon sources (2. Materials and experimental methods 3rd paragraph) wherein the carbon sources include SCGs (i.e. spent coffee grounds as well as Transformed-SCGs or T-SCGs); 2. Materials and experimental methods 1st and 2nd paragraphs).
The composite pellets are then heated (2. Materials and experimental methods 3rd paragraph).
Furthermore, Biswal concludes that “SCGs can be effectively utilized as an alternative carbon source for synthesizing iron… and SCGs…are more effective in taking part in iron oxide reduction” (4. Conclusions).
Additionally, Biswal further anticipates that the heat treatment is sufficient to increase its carbon content (3. Results and Discussion as well as Table 1 “Fixed Carbon”).
Regarding claim 30, Biswal anticipates the process as applied to claim 24 above and further anticipates that the carbon content is fixed carbon content (3. Results and Discussion as well as Table 1 “Fixed Carbon”)..
Regarding claim 31, Biswal anticipates the process as applied to claim 30 above and further anticipates heating the coffee powder in an inert atmosphere at a temperature of 400C for half an hour (2. Materials and experimental methods 1st paragraph) which anticipates the claimed range of between about 200 and about 500C.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claim 32, Biswal anticipates the process as applied to claim 31 above and further anticipates heating the coffee powder in an inert atmosphere at a temperature of 400C for half an hour (2. Materials and experimental methods 1st paragraph).
Regarding claim 33, Biswal anticipates the process as applied to claim 32 above and further anticipates heating the coffee powder in an inert atmosphere at a temperature of 400C for half an hour (2. Materials and experimental methods 1st paragraph) which anticipates the claimed range of “about 5 minutes and about 1 hour”.
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Response to Arguments
No amendments were made and the 130 Declaration filed 12/22/2025 is unpersuasive for at least the reasons described above. As Applicant’s arguments were solely drawn to the 130 Declaration, no further response to arguments follows.
The 102(a)(1) rejection over the teachings of the Biswal article remain in effect because the reference is not disqualified.
Conclusion
THIS ACTION IS MADE FINAL. 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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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738