DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶) where # denotes the page number and ¶ denotes the paragraph number of the pre-grant publication corresponding to the application, US 2024/0083750. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
The response dated 4/13/2026 has been received and will be entered.
Claim(s) 1-3, 5-10, 15-17, 20, 22, and 25 is/are pending.
Claim(s) 4, 11-14, 18-19, 21, 23-24, and 26-30 is/are acknowledged as cancelled.
The action is NON-FINAL.
Response to Arguments
Claim Rejections – 35 U.S.C. §§ 102-103
I. With respect to the rejection of Claim(s) 1, 2, 3, 6, 7, 8, 22, and 25 under 35 U.S.C. 102(a)(1) as being anticiapted by Zhang, et al., Studies on the decomposing carbon dioxide into carbon with oxygen-deficient magnetite I. Preparation, characterization of magnetite, and its activity of decomposing carbon dioxide, Material Chemistry and Physics 2000; 62: 44-51 (hereinafter “Zhang I at __”), the traversal is on the grounds that “the oxygen-deficient magnetite of Zhang I does not fulfill the feature (2).” (Remarks of 4/13/2026 at 6). While the oxygen deficient magnetite taught by Zhang I may not meet the first alternative in the claim, Zhang I did teach stoichiometric magnetite. The passages referenced in the rejection (“(Zhang I at 48, col. 1; 49, col. 1; passim).”) are reproduced below:
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(Zhang I at 48, col. 1).
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On reconsideration, while Zhang I teaches stoichiometric magnetite at the end of the reaction with the carbon dioxide, Zhang I would not appear to teach reaction of stoichiometric magnetite with carbon dioxide as claimed. The rejection is WITHDRAWN.
II. With respect to the rejection of Claim(s) 5 and 20 under 35 U.S.C. 103 as being unpatentable over Zhang, et al., Studies on the decomposing carbon dioxide into carbon with oxygen-deficient magnetite I. Preparation, characterization of magnetite, and its activity of decomposing carbon dioxide, Material Chemistry and Physics 2000; 62: 44-51 (hereinafter “Zhang I at __”), the rejection is WITHDRAWN in view of the discussion accompanying “Rejection I” above.
III. With respect to the rejection of Claim(s) 9-10 under 35 U.S.C. 103 as being unpatentable over Zhang, et al., Studies on the decomposing carbon dioxide into carbon with oxygen-deficient magnetite I. Preparation, characterization of magnetite, and its activity of decomposing carbon dioxide, Material Chemistry and Physics 2000; 62: 44-51 (hereinafter “Zhang I at __”) in view of: (i) US 2010/0230830 to Farsad, et al., the rejection is WITHDRAWN in view of the discussion accompanying “Rejection I” above. Note that official notice was taken, and was not traversed. The teachings are admitted prior art. MPEP 2144.03 C. (“If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate.”).
IV. With respect to the rejection of Claim(s) 15 under 35 U.S.C. 103 as being unpatentable over Zhang, et al., Studies on the decomposing carbon dioxide into carbon with oxygen-deficient magnetite I. Preparation, characterization of magnetite, and its activity of decomposing carbon dioxide, Material Chemistry and Physics 2000; 62: 44-51 (hereinafter “Zhang I at __”) in view of: (i) US 2010/0230830 to Farsad, et al. and (ii) Tate, et al., History of Iron and Steel Making Technology in Japan – Mainly on the smelting of iron sand by Tatara, Tetsu-to-Hagane 2005; 91: 2-10 (hereinafter “Tate at __”), the rejection is WITHDRAWN in view of the discussion accompanying “Rejection I” above.
V. With respect to the rejection of Claim(s) 16 under 35 U.S.C. 103 as being unpatentable over Zhang, et al., Studies on the decomposing carbon dioxide into carbon with oxygen-deficient magnetite I. Preparation, characterization of magnetite, and its activity of decomposing carbon dioxide, Material Chemistry and Physics 2000; 62: 44-51 (hereinafter “Zhang I at __”) in view of: (i) US 2010/0230830 to Farsad, et al. and (ii) Dobrescu, et al., Hematite. Processing and Applications, The Annals of “Dunarea De Jos” University of Galati Fascicle IX. Metallurgy and Materials Science 2019; 1: 19-24 (hereinafter “Dobrescu at __”), the rejection is WITHDRAWN in view of the discussion accompanying “Rejection I” above.
VI. With respect to the rejection of Claim(s) 17 under 35 U.S.C. 103 as being unpatentable over Zhang, et al., Studies on the decomposing carbon dioxide into carbon with oxygen-deficient magnetite I. Preparation, characterization of magnetite, and its activity of decomposing carbon dioxide, Material Chemistry and Physics 2000; 62: 44-51 (hereinafter “Zhang I at __”) in view of: (i) US 2010/0230830 to Farsad, et al. and (ii) Echterhof, Review on the Use of Alternative Carbon Sources in EAF Steelmaking, Metals 2021; 11: 222, pages 2-15 (27 January 2021, hereinafter “Echterhof at __”), the rejection is WITHDRAWN in view of the discussion accompanying “Rejection I” above.
Claim Rejections - 35 USC §§ 102-103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
I. Claim(s) 1, 2, 3, 5, 7, 8, 22 and 25 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akanuma, et al., Characterization of Carbon deposited from Carbon Dioxide on Oxygen-deficient Magnetites, J. Mater. Chem. 1993; 3(9): 943-946 (hereinafter “Akanuma at __”).
With respect to Claim 1, this claim requires “a carbon generation step of causing carbon dioxide to react with a reducing agent to generate carbon.” Carbon dioxide is reacted with magnetite, interpreted as a reducing agent. See (Akanuma at 943, col. 2 – Raman, EDX and WDX Spectra of Deposited Carbon) and (Akanuma at 944, col. 1: “It was then reacted with 58 cm3 or 8.1 cm3 of CO2 at 1 atm total pressure with N2 gas.”). Carbon is generated. (Akanuma at 943, col. 2 – Raman, EDX, and WDX Spectra of Deposited Carbon).
Claim 1 further requires “as the reducing agent, an oxygen-deficient iron oxide represented by Fe3O4-δ (where δ is 1 or more and less than 4), which is obtained by reducing magnetite while maintaining a crystal structure, or an oxygen-completely deficient iron (δ = 4) which is obtained by completely reducing magnetite is used.” Akanuma teaches stoichiometric magnetite (Fe3O4), i.e. an oxygen-completely deficient iron (δ = 4). (Akanuma at 944, col. 2: “The magnetite used in this work can be regarded as a solid solution of stoichiometric Fe304 and 7-Fe2O3, as has been reported.”). Reducing the magnetite is taught. (Akanuma at 943, col. 2: “Magnetite (5 g) was reduced in a 90 cm3 quartz cell in flowing H2…”).
As to Claim 2, reducing the magnetite – interpreted as a “reducing agent generation step” as claimed, is taught. (Akanuma at 943, col. 2: “Magnetite (5 g) was reduced in a 90 cm3 quartz cell in flowing H2…”).
As to Claim 3, a temperature of 300 C is taught. (Akanuma at 943, col. 2: “filled with 1 atm of CO2 at the same temperature.”) (emphasis added). Note the “same” temperature being referenced (i.e. the reducing temperature). is at 300 C.
As to Claim 5, the magnetite is dissolved with HCl. (Akanuma at 943, col. 2: “A portion of magnetite powder which had reacted with CO, was dissolved in 6 mol dm-3 HCl solution to collect black particles using a centrifuge.”) and (Akanuma at 945, col. 2: “The chlorine probably came from the HCl solution used for dissolution of magnetite.”).
As to Claim 7, a temperature of 300 C is taught. (Akanuma at 943, col. 2: “filled with 1 atm of CO2 at the same temperature.”) (emphasis added). Note the “same” temperature being referenced (i.e. the reducing temperature) is at 300 C. Id.
As to Claim 8, a pressure of 1 atm (0.1 MPa) is taught. (Akanuma at 944, col. 1: “It was then reacted with 58 cm3 or 8.1 cm3 of CO2 at 1 atm total pressure with N2 gas.”).
With respect to Claim 22, carbon material is produced. (Akanuma at 943, col. 2 – Raman, EDX, and WDX Spectra of Deposited Carbon).
With respect to Claim 25, this claim requires “[a] reducing agent that includes at least one of an oxygen-deficient iron oxide represented by Fe3O4-δ (where δ is 1 or more and less than 4), which is obtained by reducing magnetite while maintaining a crystal structure, and an oxygen-completely deficient iron (δ = 4) which is obtained by completely reducing magnetite.” Akanuma teaches stoichiometric magnetite (i.e. where δ = 4, in the equation of the claim). (Akanuma at 944, col. 2: “The magnetite used in this work can be regarded as a solid solution of stoichiometric Fe304 and 7-Fe2O3, as has been reported.”).
II. Claim(s) 6 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Akanuma, et al., Characterization of Carbon deposited from Carbon Dioxide on Oxygen-deficient Magnetites, J. Mater. Chem. 1993; 3(9): 943-946 (hereinafter “Akanuma at __”) in view of:
(i) Shen, et al., Structural Disorder And Phase Transofmation In Graphite Produced By Ball Milling, Nanostructured Materials 1996; 7(4): 393-399 (hereinafter “Shen at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 6, Akanuma teaches carbon deposited on the magnetite throughout. See (Akanuma at 944, col. 2; 945, col. 2: “carbon particles”). Akanuma does not literally teach particle diameter, but does teach that the particles were “visible.” Claim 6 extends to “nanoparticles” that are 1000 nm in diameter, or less. To the extent the visible particles teaching of Akanuma does not address the upper end of this range, achieving carbon particles this small is a matter of application of known techniques (like ball milling) to achieve predictable results (reduction in size). Official notice is taken. Shen is offered as evidence. See (Shen at 394 – Experimental). Application of known techniques to achieve predictable results does not impart patentability. MPEP 2143; KSR.
III. Claim(s) 9-10 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Akanuma, et al., Characterization of Carbon deposited from Carbon Dioxide on Oxygen-deficient Magnetites, J. Mater. Chem. 1993; 3(9): 943-946 (hereinafter “Akanuma at __”) in view of:
(i) US 2010/0230830 to Farsad, et al.
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 9, Akanuma teaches reduction of carbon dioxide, as discussed above, but does not specify the source of the carbon dioxide. Steel plants are known to have waste streams that contain carbon dioxide. Official notice is taken. Farsad is offered as evidence. (Farsad 14: [0120]: “The nature of the industrial plant may vary, the industrial plants including, but not limited to, power plants, chemical processing plants, mechanical processing plants, refineries, cement plants, steel plants, and other industrial plants that produce CO2 as a by-product of fuel combustion or another processing step (e.g., calcination by a cement plant).”). The combination reflects use of waste CO2 from a known source (steel plants) in a known process that calls for CO2 (Akanuma at 943, col. 2; passim) to achieve predictable results, i.e. fixation of carbon / carbon sequestration. This does not impart patentability. MPEP 2143; KSR.
As to Claim 10, a temperature of 300 C is taught. (Akanuma at 943, col. 2: “filled with 1 atm of CO2 at the same temperature.”) (emphasis added). Note the “same” temperature being referenced (i.e. the reducing temperature) is at 300 C. Furthermore, note that these temperatures are common in CO2 generating processes. (Farsad 15: [0124]).
IV. Claim(s) 15 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Akanuma, et al., Characterization of Carbon deposited from Carbon Dioxide on Oxygen-deficient Magnetites, J. Mater. Chem. 1993; 3(9): 943-946 (hereinafter “Akanuma at __”) in view of:
(i) US 2010/0230830 to Farsad, et al., and
(ii) Tate, et al., History of Iron and Steel Making Technology in Japan – Mainly on the smelting of iron sand by Tatara, Tetsu-to-Hagane 2005; 91: 2-10 (hereinafter “Tate at __”).
The discussion accompanying “Rejection III” above is incorporated herein by reference.
As to Claim 15, the “is used in” language is broad and generic, and is so construed. Iron sand is common in iron making in Japan. (Tate “Abstract”). Use of iron from known sources of iron is not inventive. It is being a consumer. This does not impart patentability. MPEP 2143.
V. Claim(s) 16 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Akanuma, et al., Characterization of Carbon deposited from Carbon Dioxide on Oxygen-deficient Magnetites, J. Mater. Chem. 1993; 3(9): 943-946 (hereinafter “Akanuma at __”) in view of:
(i) US 2010/0230830 to Farsad, et al., and
(ii) Dobrescu, et al., Hematite. Processing and Applications, The Annals of “Dunarea De Jos” University of Galati Fascicle IX. Metallurgy and Materials Science 2019; 1: 19-24 (hereinafter “Dobrescu at __”).
The discussion accompanying “Rejection III” above is incorporated herein by reference.
As to Claim 16, hematite is a known raw material for steel making. (Dobrescu at 21 – 3. Applications). Use of known materials consistent with their known uses does not impart patentability. MPEP 2143; KSR.
VI. Claim(s) 17 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Akanuma, et al., Characterization of Carbon deposited from Carbon Dioxide on Oxygen-deficient Magnetites, J. Mater. Chem. 1993; 3(9): 943-946 (hereinafter “Akanuma at __”) in view of:
(i) US 2010/0230830 to Farsad, et al., and
(ii) Echterhof, Review on the Use of Alternative Carbon Sources in EAF Steelmaking, Metals 2021; 11: 222, pages 2-15 (27 January 2021, hereinafter “Echterhof at __”).
The discussion accompanying “Rejection III” above is incorporated herein by reference.
As to Claim 17, those of skill in the art are using alternative sources of carbon in steel making. (Echterhof, entire reference). Use of the carbon of Akanuma reflects use of known materials (carbon) in known processes (steel making) to achieve predictable results (steel). This does not impart patentability. MPEP 2143; KSR.
Allowable Subject Matter
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Akanuma teaches magnetite powders. (Akanuma at 943, col. 1). Akanuma does not teach the particle size, nor does it reasonably suggest the claimed range. The criticality and/or unexpected results stemming from particle diameter size is noted. (S. 4: [0078]-[0079]).
Conclusion
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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