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 .
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. 18/278,027 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets calculate the CO2 emissions based on the raw material, energy sources, and processes used for manufacturing and using the lowest calculated steelmaking route to produce steel.
While claim 9 of the copending application does not require defining at least two different manufacturing routes using tools, dependent claim 15 discloses the manufacturing routes and one of ordinary skill in the art would be able to determine that the various route utilize tools to produce steel. Therefore, the present invention and the invention of the copending application are substantially identical.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Interpretation
Applicant uses the word “type” in claim 12. The Examiner has determined that on its own, the “types” of claim 12 are not indefinite as claim 12 also includes a Markush group of specific scrap materials and that the “types” refers to this limited Markush group.
Claim Objections
Claims 9-10 and 15-16 are objected to because of the following informalities:
Claim 9, lines 3-4: please amend “defining at least two different manufacturing routes MRi using tools Tx allowing to manufacture the product P” as this phrase reads weird
Claim 9, line 5: amend “CO2” to “CO2”
Claim 9, line 10: amend “CO2” to “CO2”
Claim 10, line 2: amend “CO2” to “CO2”
Claim 10, line 5: amend “CO2” to “CO2”
Claim 15, line 2: amend “Eexpi” to “Eexpi”
Claim 15, line 3: amend “CO2” to “CO2”
Claim 16, line 3: amend “H2” to “H2”
Appropriate correction is required.
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 not directed to a process, machine, manufacture, or composition of matter for the reasons described in section 6 above. However, claims 9-16 could be amended to fall within a statutory category and so the Examiner continues the analysis, as indicated in the flowchart provided at MPEP 2106, in the interest of compact prosecution.
Specifically, claims 9-12 are directed to an abstract idea without significantly more because the claims are directed to calculating the expected levels of CO2 emissions in various steel manufacturing routes. This judicial exception is not integrated into a practical application because the claims merely implement the mathematical principle on a physical machine, which is not a patentable application of that principle. See MPEP 2106.04(d) The Supreme Court has long distinguished between principles themselves (which are not patent eligible) and the integration of those principles into practical applications (which are patent eligible). See, e.g., Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 80, 84, 101 USPQ2d 1961, 1968-69, 1970 (2012) (noting that the Court in Diamond v. Diehr found ‘‘the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole,’’ but the Court in Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle’’). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steel producing step is a well understood routine and conventional step. Specifically, as noted in the 35 U.S.C. 102 rejection over Rammer below, it is well known in the art to determine the amount of CO2 emissions produced during steelmaking and based on various factors, the emissions can lowered below a desired amount.
Claim Rejections - 35 USC § 112(b)
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 12 and 15 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 12 recites the limitation “the scrap is chosen and of different types and chosen from the group consisting of.” It is unclear how many “types” are included in the “different types”, i.e., at least one from the Markush group, at least two from the Markush group, etc. Clarification is required. For the sake of compact prosecution, the Examiner is interpreting “different types” to include at least one of the Markush group.
Claim 15 recites the limitation “its” in line 3. It is unclear if “its” refers to the steel, the production step, the manufacturing route, or the CO2 emissions. Clarification is required.
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 9, 11-14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rammer, Barbara et al., “Comparing the Co2 Emissions of Different Steelmaking Routes,” BHM Vol. 162 (1): 7-13 (2017) (hereinafter “Rammer”).
Regarding claims 9, 14, and 16, Rammer teaches calculating CO2 emissions for various steel production routes including, blast furnace with BOF, COREX with BOF, FINEX with BOF, EAF, Midrex with EAF, FINORED with EAF, COREX, DR combination with EAF (Rammer, pg. 10 “3. Calculation Results”). Rammer further teaches the calculations are based on the sum of the CO2 emissions from Scope 1, Scope 2, and Scope 3, where Scope 1 includes direct emissions from process related emissions mainly due to combustion reaction of carbon carriers, Scope 2 includes indirect emissions from purchased electricity for e.g. LD-Plant, EAF or air separation unit, and Scope 3 includes indirect emissions from the production and transport of purchased materials including coking plants, coal and ore mining, sintering, or pelletizing (Rammer, pg. 9, Figure 2 and “2.3 Steel Production Routes and Definition of Borders”). Rammer also teaches that liquid steel is the end product of all the production routes (Rammer, pg. 10, Figure 3). Rammer teaches the CO2 emission calculations depend greatly on local site conditions, specifically the CO2 emission value for the generation of electric power, and that economical routes can be determined based on the various steel production routes and the materials input in making steel (Rammer, pg. 12, “4. Summary”).
The calculation process of Rammer corresponds to a method of manufacturing a steel product P in a steelmaking plant S comprising several manufacturing tools Tx of claim 9. The different steel producing routes of Rammer corresponds to defining at least two different manufacturing routes MRi using tools Tx allowing to manufacture the product P of claim 9. Calculating the CO2 emissions for comparison of Rammer corresponds to calculating, for each defined manufacturing route MRi, an expected level of CO2 emissions Eexpi to manufacture the steel product P according to manufacture route MRi, the calculation being done considering all CO2 contributions associated to raw materials, energy sources and processes used for manufacturing the steel product according to each manufacture route MRi of claim 9. Producing steel using the route with the lowest CO2 emission of Rammer corresponds to producing the steel product P using tools Tx according to the manufacturing route MRi having the lowest calculated expected level of CO2 emissions Eexpi of claim 9.
The various production routes having the different furnaces of Rammer corresponds to wherein the processes are chosen from the group consisting of: direct reduction processes, hydrogen-based ironmaking, steel electrolysis, blast furnace with top-gas recycling, blast furnace with top-gas conversion, electric- arc-furnace steelmaking, converter steelmaking, and scrap melting of claim 14 and wherein the tools Tx are chosen from the group consisting of: a coking plant, a sintering plant, a direct-reduction plant, a blast- furnace, an electric-arc furnace, a converter, a ladle, a H2 production plant, a chemical plant, a biotech plant, a power plant, a ladle, a furnace, a casting plant, a rolling plant, gas cleaning devices, heat recovery devices, and hot stoves of claim 16.
Regarding claims 11 and 12, Rammer teaches scrap can be used as part of the materials used in each of the steep production routes (Rammer, pg. 10 “3. Calculation Results”). Moreover, based on the specific route, coal, coke, pellets, and iron ore can all be added to the route (Rammer, pg. 11, Table 3). Rammer also teaches the most favorable conditions when it comes to CO2 emission are achieved by the scrap + EAF route, but this is limited due to the availability of high-quality scrap necessary for high-quality steel (Rammer, pg. 11, Column 2, second paragraph). The use of scrap, coal, coke, pellets, and iron ore of Rammer corresponds to wherein raw materials are chosen from the group consisting of scrap, iron ore, coal, coke, sinter feed, pellets, and gases of claim 11. The high-quality scrap of Rammer corresponds to wherein the scrap is chosen and of different types and chosen from the group consisting of: old scrap, new scrap, prime scrap, home scrap, pit scrap, shredded, plates and structure scrap, heavy melting scrap, cast scrap, coil scrap and busheling scrap of claim 12.
Regarding claim 13, Rammer teaches in the calculation it is assumed that all produced gases are used within the steel plant to a maximum extent to replace electricity needed for the process and thereby reduce the total CO2 emission (Rammer, pg. 10, “2.4 CO2 Credits for slag and off gas utilization”). The use of the recycled gas to replace the electricity of Rammer corresponds to wherein the energy sources are chosen from the group consisting of: renewable electricity, electricity produced by internal recycling of exhaust gas from the steel manufacturing process and electricity produced by capture of heat released by products from the steel manufacturing process of claim 13.
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 10 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Rammer, Barbara et al., “Comparing the Co2 Emissions of Different Steelmaking Routes,” BHM Vol. 162 (1): 7-13 (2017) (hereinafter “Rammer”).
Regarding claim 10, Rammer teaches Figure 4 in which the CO2 emissions are compared for the various production routes and at different locations (Rammer, pg. 12, Figure 4). In the Figure Rammer shows the possible highest amount of CO2 emissions for each route and demonstrates that location, raw materials, and routes greatly influence the amount of CO2 emissions produced (Rammer, pg. 12, Figure 4). Given the data present in Figure 4 of Rammer, one of ordinary skill in the art would be able to determine the predicted maximum amount of CO2 emission in a specific route and make adjustments based on the results in order to lower the overall CO2 emissions as presently claimed.
Regarding claim 15, it would have been obvious to one of ordinary skill in the art to establish a certificate that states the amount of CO2 emissions produced for a steel product as presently claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Ryman et al. “Reduction of CO2 Emissions from Integrated Steelmaking by Optimized Scrap Strategies: Application of Process Integration Models on the BF-BOF System” teaches a similar calculation process to determine CO2 emissions in steelmaking; Wang et al. “Potential CO2 emission reduction for BF-BOF steelmaking based on optimized use of ferrous burden material” also teaches a similar calculation process to determine CO2 emissions in steelmaking; Song et al. “Comparison of Energy Consumption and CO2 emission for three steel production routes—integrated steel plant equipped with blast furnace, oxygen blast furnace or COREX teaches a similar calculation process to determine CO2 emissions in steelmaking.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738