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 Claims
Claims 9-16 are pending and are presented for this examination.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 09/07/2023 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 9-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
A detailed 101 analysis is presented as following according to MPE 2106.
First, according to MPEP 2106.03 Eligibility Step 1, instant claim 9 is directed to method of manufacturing a steel product comprising a calculation step and a manufacturing step of making the steel product based on the calculation. The calculation step is done by considering step as recited in claim 9. Considering is indeed a mental step. Manufacturing the steel product in a steelmaking unit with the lowest CO2 emission as recited in claim 9 is well known and conventional as evidenced by Song. (NPL document “Comparison of Energy Consumption and CO2 Emission for three steel Production Routes-Integrated Steel Plant Equipped with Blast Furnace, Oxygen Blast Furnace or COREX”)
Second, according to MPEP 2106.04 Eligibility Step 2A, Prong One, once the steelmaking unit with the lowest level of CO2 emission is determined from the calculation step, it is then used to manufacture the steel product. This is merely applying the abstract idea or generally linking the abstract idea (i.e. steelmaking unit with the lowest CO2 emission) to the field of endeavor. See MPEP 2106.05(j)/2106.05(h)
Third, according to MPEP 2106.04 Eligibility Step 2A, Prong Two. Instant claim 9 does not recite additional elements that integrate the judicial exception into a practical application. There is no application much less a particular practical application.
Fourth, according to MPEP 2106.04 Eligibility Step 2B whether a claim amounts to significantly more. In the instant case, there are no additional limitations or steps that add something significantly more than the abstract idea because manufacturing step recited in claim 9 is well known and conventional as indicated above.
At best, claim 9 recited calculations are done to gather data to determine a steelmaking unit with the lowest CO2 emission. But it should be noted that data gathering in a general way is insignificant extra-solution activity according to MEPE 2106.05(g). Adding (emphasis added) insignificant extra-solution activity to the judicial exception is also not indicative of integration into a practical application. See MPEP 2106.05(g)
As a result of rejected independent claim 9, all dependent claims are also rejected under the same statue.
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 11-12 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 pre-AIA the applicant regards as the invention.
The terms “old scrap” and “new scrap” in claim 11 are relative terms which renders the claim indefinite. The terms “old” and “new” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 12 recites the limitation "the steel manufacturing process" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether it refers to
“processes used for manufacturing the steel product P” as recited in claim 9 or something else.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 9-15 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Song (NPL document “Comparison of Energy Consumption and CO2 Emission for Three Steel Production Routes—Integrated Steel Plant Equipped with Blast Furnace, Oxygen Blast Furnace or COREX” published in 2019)
As for claims 9-15, Song discloses a comparison of Energy Consumption and CO2 Emission for Three Steel Production Routes—Integrated Steel Plant Equipped with Blast Furnace (BF), top gas recycling-Oxygen Blast Furnace (TGR-OBF) or COREX. Hence, Song discloses a method of manufacturing a steel product in at least two steelmaking units. The method concludes that TGR-OBF production route has the lowest direct CO2 emission. (abstract) The comparison of CO2 emission in each of the three production routes is based on contribution factor associated to raw material, energy sources and process.(Page 13 Conclusion section) Hence, Song anticipated instant claim 9.
The raw materials are coal, coke (Page 3, 2. Models and Methods 2.1. static process models paragraph) as required by instant claim 10.
Scrap (Figure 3) is used as required by instant claim 11. Hence, scrap broadly encompasses both new and old scraps.
The energy sources are electricity produced by capture of heat released by products from steel manufacturing process (Page 11 3.3 Electricity Analysis) as required by instant claim 12.
The processes are ironmaking and steelmaking process (Figure 3) as required by instant claim 13.
Top gas recycling-Oxygen Blast Furnace (TGR-OBF) reads on instant claim 14 required blast furnace with top gas recycling.
For a given steelmaking unit by blast furnace, at least two different manufacturing routes, TGR-OBF or BF are defined and calculation of CO2 emission is performed for each route and the lowest CO2 emission is TGR-OBF. Hence, instant claim 15 is met.
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.
Claim(s) 16 are rejected under 35 U.S.C. 103 as being unpatentable over Song in view of Xu (NPL document “CO2 emission from China’s iron and steel industry”).
As for claim 16, Song does not disclose establishing a certificate.
Xu discloses CO2 emission from blast furnaces steel making are analyzed. Data on CO2 emission derived from iron and steel making is a basic requirement for a certificate of CO2 reduction. (Abstract) A precise qualification of CO2 emission is a crucial step to meet CO2 emission reduction target to fight against global climate change. That is, Xu suggests establishing a certificate is necessary for meeting CO2 emission reduction target to fight against global climate change.
Hence, it would have been obvious to one skill in the art, at the time the invention is made, to establish a certificate for the manufactured steel indicated level of CC2 emission as suggested by Xu, in the process of Song for the benefit of meeting CO2 emission reduction target to fight against global climate change.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-16 of copending Application No. 18/278,029. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions claim a method of making a steel product in at least two different steelmaking routes comprising a calculation step of each steelmaking route by considering all CO2 contribution factors associated to raw material, energy sources and processes used for making the steel product followed by manufacturing the steel product wherein the calculated CO2 emission is the lowest.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 9-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-20 of copending Application No. 18/278,022. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions claim a method of making a steel product in at least two different steelmaking routes comprising a calculation step of each steelmaking route by considering all CO2 contribution factors associated to raw material, energy sources and processes used for making the steel product followed by manufacturing the steel product wherein the calculated CO2 emission is the lowest.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JENNY R WU/Primary Examiner, Art Unit 1733