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 .
Claim Status
A preliminary amendment, filed 11/9/2023, is acknowledged. Claims 1-14 are canceled; claims 15-28 are newly added. Claims 15-28 are currently pending.
Claim Interpretation
Claim 15 recites “the direct induction furnace including a reduction zone, a transition zone, and a cooling zone.” Neither Claim 15 nor the instant specification provides a specific definition of such zones. The specification paragraph [0004] recites, “Reduction zone at top, transition zone at the middle, cooling zone at the cone shape bottom;” however, this passage does not amount to a required definition and such limitations are not imparted to the claims. As a result, the recited passage is interpreted that direct reduction furnace is considered to have 3 zones, in the recited order, but do not require specific structure other than some degree of reduction occurring in the reduction zone and some degree of cooling occurring in the cooling zone. Moreover, the claims do not exclude the possibility of overlapping zones, for example, wherein the transition zone and cooling zones overlap or are coextensive.
Additionally, Claim 15 recites “injecting a carbon-bearing liquid below the reduction zone” and dependent claims require wherein the carbon-bearing liquid is, for example, a liquid alcohol such as ethanol or a liquid hydrocarbon. One of ordinary skill in the art would recognize that such carbon-bearing materials, such as ethanol, would be vaporized at the temperatures occurring within a direct reduction furnace. The instant specification in fact recognizes that the injected carbon-bearing liquid is vaporized. (para. 40 of PG Pub). Moreover, the instant specification lists methane as exemplary hydrocarbon (required by claim 22) which would exist as a gas even at room temperature. In view of the text of the claims, the structure required by the claimed direct reduction furnace, and in light of the specification, Claim 15 is interpreted such that the carbon-bearing material may exist in a liquid state prior to injection and/or during at least part of an injection process but does not require that the carbon-bearing liquid exist in a liquid state within the furnace for any material amount of time.
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)(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) 15-27 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mohseni-Morner et al. (US 2024/0084410)(hereafter, “Mohseni”).
With respect to Claim 15, Moheseni teaches a method of manufacturing direct reduced iron, the method comprising steps of charging iron ore (thus, comprising oxidized iron) into a direct reduction furnace shaft, introducing a hydrogen-rich reducing gas to reduce the iron ore, the reduction deemed to take place in a “reduction zone,” carburizing the reduced iron at a portion of the furnace downstream from the reduction zone, and thus, constituting a “transition and/or cooling zone.” (para. 19-21, 32-33, 35, 73, 78, 93-94; Figs. 2b, 2c). Specifically, the reference teaches injecting a carbon-bearing material at a downstream portion of a single furnace shaft (such as in Fig. 2b) or at a downstream separate shaft/reactor (such as Figb. 2c) and where a cooling cone may be located downstream from the reduction and/or carburizing portions. (see, e.g., para. 78, 94). Accordingly, either arrangement of Mohseni comprises portions of a direct reduction furnace constituting a reduction zone and a cooling zone and a portion between or overlapping such zones may be assigned as a “transition zone.” Mohseni teaches that the carburizing step comprises injecting carburizing material, such as an alcohol or hydrocarbon, wherein the carburizing gas may be liquid at room temperature but becomes gaseous at the higher temperatures present in the furnace/reactor. (para. 73, 93).
Thus, Mohseni is deemed to teach a method for manufacturing direct reduced iron comprising reducing oxidized iron material in a direct reduction furnace by a reducing gas, the direct reduction furnace including a reduction zone, transition zone, and a cooling zone, and injecting a carbon-bearing liquid (e.g. an alcohol), that forms a gas, below the reduction zone. In other words, while Mohseni teaches injecting a carbon-bearing material below the reduction zone, the reference recognizes that the carbon-bearing material may be a liquid at a room temperature, but necessarily forms a gas at the temperatures present in the furnace. Accordingly, the reference is deemed to teach “injecting a carbon-bearing liquid below the reduction zone” anticipating the instant claim. (see also instant specification, recognizing that the injected carbon-bearing liquid is vaporized, para. 40 of PG Pub).
With respect to Claims 16-18, the claims recite one or more of a transition zone and cooling zone, but do not provide specific structure defining the zones. (see further discussion in the claim interpretation section above). As Mohseni teaches injecting the carbon-bearing liquid at a portion of the furnace below/downstream the reduction zone, the injection site may be alternatively considered to be in the transition zone and/or the cooling zone, meeting the respective limitations of claims 16-18.
Additionally, Mohseni teaches an embodiment (see, e.g. Fig. 2b) wherein the carbon-bearing liquid is injected at a location between the reduction zone and a cooling cone, and thus, deemed to constitute a “transition zone” meeting claim 16. One of ordinary skill in the art would recognize that at least some of the carbon-bearing liquid (forming a gas within the furnace) would pass downstream and thus, may be considered as injected into transition zone and the cooling zone, as in claims 17 and 18. Claim 18 is not interpreted to require multiple, separate, injection sites.
With respect to Claim 19, Mohseni teaches wherein the carbon-bearing material may comprise a biofuel, such as biomethane, deemed to meet the instant limitations of claims 19. (para. 93). Specifically, the instant specification explicitly enumerates methane as a liquid product comprising carbon (para. 39 of PG Pub) and therefore, the biomethane of Mohseni is deemed to meet the claim.
With respect to Claims 20-21, Mohseni teaches wherein the carbon-bearing liquid may comprise ethanol, a liquid alcohol. (para. 93).
With respect to Claim 22, Mohseni teaches wherein the carbon-bearing liquid may comprise a hydrocarbon, such as methane, LPG (liquid petroleum gas), or petroleum, and therefore is deemed teach a liquid carbon-bearing material comprising a hydrocarbon. (para. 73). (see also rejection of claim 19, discussing methane).
With respect to Claim 23, Mohseni teaches wherein the reducing gas may include, for example, 80 vol% hydrogen or more, falling within the claimed range. (para. 80).
With respect to Claim 24, Mohseni teaches wherein the reducing gas may “consist of” hydrogen, and thus consist of 100% hydrogen, falling within the claimed range. (para. 80).
With respect to Claims 25-26, Mohseni teaches wherein hydrogen gas (reducing gas) is at least partially obtained by electrolysis and is performed using renewable energy. (para. 82).
With respect to Claim 27, Mohseni teaches wherein top reduction gas is captured at the exit of the direct reduction furnace and subjected to a recycle stream and a bleed off stream, processing the bleed off stream through a separation unit to provide a hydrogen-enriched off-stream and in inert-enriched off-stream, and introducing the recycle stream and the hydrogen-enriched off-stream as constituent parts of the hydrogen-rich gas to the direction reduction shaft. (abstract; para. 84-87). Mohseni teaches wherein such separation includes separating carbon-containing stream, including CO2 from the H2 rich stream. (para. 29, 58). Therefore, the reference is deemed to teach wherein a top reduction gas is captured at the exit of the direct reduction furnace and subjected to at least one separation step so as to be split between a CO2-rich gas and an H2-rich gas, the H2-rich gas being at least partly used as the reducing gas.
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) 15-27 are rejected under 35 U.S.C. 103 as being unpatentable over Mohseni-Morner et al. (US 2024/0084410)(hereafter, “Mohseni”).
With respect to Claim 15, Moheseni teaches a method of manufacturing direct reduced iron, the method comprising steps of charging iron ore (thus, comprising oxidized iron) into a direct reduction furnace shaft, introducing a hydrogen-rich reducing gas to reduce the iron ore, the reduction deemed to take place in a “reduction zone,” carburizing the reduced iron at a portion of the furnace downstream from the reduction zone, and thus, constituting a “transition and/or cooling zone.” (para. 19-21, 32-33, 35, 73, 78, 93-94; Figs. 2b, 2c). Specifically, the reference teaches injecting a carbon-bearing material at a downstream portion of a single furnace shaft (such as in Fig. 2b) or at a downstream separate shaft/reactor (such as Figb. 2c) and where a cooling cone may be located downstream from the reduction and/or carburizing portions. (see, e.g., para. 78, 94). Accordingly, either arrangement of Mohseni comprises portions of a direct reduction furnace constituting a reduction zone and a cooling zone and a portion between or overlapping such zones may be assigned as a “transition zone.” Mohseni teaches that the carburizing step comprises injecting carburizing material, such as an alcohol or hydrocarbon, wherein the carburizing gas may be liquid at room temperature but becomes gaseous at the higher temperatures present in the furnace/reactor. (para. 73, 93).
Thus, Mohseni is deemed to teach a method for manufacturing direct reduced iron comprising reducing oxidized iron material in a direct reduction furnace by a reducing gas, the direct reduction furnace including a reduction zone, transition zone, and a cooling zone, and injecting a carbon-bearing liquid (e.g. an alcohol), that forms a gas, below the reduction zone. In other words, while Mohseni teaches injecting a carbon-bearing gas below the reduction zone, the reference recognizes that the carbon-bearing material may be a liquid at a room temperature, but necessarily forms a gas at the temperatures present in the furnace. Accordingly, the reference is deemed to teach “injecting a carbon-bearing liquid below the reduction zone” anticipating the instant claim. (see also instant specification, recognizing that the injected carbon-bearing liquid is vaporized, para. 40 of PG Pub).
In the alternative, it would have been obvious to one of ordinary skill in the art to select one of the carbon-bearing carburizing materials disclosed by Mohseni, such as an alcohol or petroleum and known to form a liquid at room temperature and/or under pressure, and inject the material in a liquid state, wherein such material is vaporized forming a gas only when inside the furnace/reactor and exposed to an elevated temperature. One of ordinary skill in the art would be motivated to store and transport the carbon-bearing material at room temperature and/or in the form of a pressurized liquid in order reduce costs associated with additional heating or cooling the material or to reduce the size of the container storing the material (e.g. pressurized material in the form of a liquid), where the material is sufficiently heated by the heat of the furnace/reactor to a desired temperature.
With respect to Claims 16-18, the claims recite one or more of a transition zone and cooling zone, but do not provide specific structure defining the zones. (see further discussion in the claim interpretation section above). As Mohseni teaches injecting the carbon-bearing liquid at a portion of the furnace below/downstream the reduction zone, the injection site may be alternatively considered to be in the transition zone and/or the cooling zone, meeting the respective limitations of claims 16-18.
Additionally, Mohseni teaches an embodiment (see, e.g. Fig. 2b) wherein the carbon-bearing liquid is injected at a location between the reduction zone and a cooling cone, and thus, deemed to constitute a “transition zone” meeting claim 16. One of ordinary skill in the art would recognize that at least some of the carbon-bearing liquid (forming a gas within the furnace) would pass downstream and thus, may be considered as injected into transition zone and the cooling zone, as in claims 17 and 18. Claim 18 is not interpreted to require multiple, separate, injection sites.
With respect to Claim 19, Mohseni teaches wherein the carbon-bearing material may comprise a biofuel, such as biomethane, deemed to meet the instant limitations of claims 19. (para. 93). Specifically, the instant specification explicitly enumerates methane as a liquid product comprising carbon (para. 39 of PG Pub) and therefore, the biomethane of Mohseni is deemed to meet the claim. Alternatively, it would have been obvious to one of ordinary skill in the art to select a liquid biofuel from the disclosed species of carbon-bearing biofuel of the reference.
With respect to Claims 20-21, Mohseni teaches wherein the carbon-bearing liquid may comprise ethanol, a liquid alcohol. (para. 93).
With respect to Claim 22, Mohseni teaches wherein the carbon-bearing liquid may comprise a hydrocarbon, such as methane, LPG (liquid petroleum gas), or petroleum, and therefore is deemed teach a liquid carbon-bearing material comprising a hydrocarbon. (para. 73). (see also rejection of claim 19, discussing methane).
With respect to Claim 23, Mohseni teaches wherein the reducing gas may include, for example, 80 vol% hydrogen or more, falling within the claimed range. (para. 80).
With respect to Claim 24, Mohseni teaches wherein the reducing gas may “consist of” hydrogen, and thus consist of 100% hydrogen, falling within the claimed range. (para. 80).
With respect to Claims 25-26, Mohseni teaches wherein hydrogen gas (reducing gas) is at least partially obtained by electrolysis and is performed using renewable energy. (para. 82).
With respect to Claim 27, Mohseni teaches wherein top reduction gas is captured at the exit of the direct reduction furnace and subjected to a recycle stream and a bleed off stream, processing the bleed off stream through a separation unit to provide a hydrogen-enriched off-stream and in inert-enriched off-stream, and introducing the recycle stream and the hydrogen-enriched off-stream as constituent parts of the hydrogen-rich gas to the direction reduction shaft. (abstract; para. 84-87). Mohseni teaches wherein such separation includes separating carbon-containing stream, including CO2 from the H2 rich stream. (para. 29, 58). Therefore, the reference is deemed to teach wherein a top reduction gas is captured at the exit of the direct reduction furnace and subjected to at least one separation step so as to be split between a CO2-rich gas and an H2-rich gas, the H2-rich gas being at least partly used as the reducing gas.
Claim(s) 28 is rejected under 35 U.S.C. 103 as being unpatentable over Mohseni-Morner et al. (US 2024/0084410)(hereafter, “Mohseni”), as applied to claim 27 above, in view of Szego (US 2018/0155191).
With respect to Claim 28, Mohseni teaches wherein CO2 rich gas is separated from hydrogen rich gas as in claim 27 (see rejection above), but is silent as to a step of subjecting the CO2 rich gas to a hydrocarbon production step.
Szego teaches a method of using a gaseous mixture from the direct reduction of iron ore, wherein the method comprises production of a hydrocarbon using a CO2-rich gas stream. (para. 1, 22-25). The reference teaches that the process lowers the environmental impact of direct reduction processes by a reduction in CO2 emissions into the environment and allows for the beneficial use of such as CO2 rich gas stream. (para. 2, 10).
It would have been obvious to one of ordinary skill in the art to modify the method of Mohseni to use a CO2-rich gas stream from the direction reduction process in a hydrocarbon production step, as taught by Szego, in order to lower the environmental impact of the direct reduction method by a reduction in CO2 emissions into the environment.
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.
Claim 15-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-23 of copending Application No. 18559901 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant and related claims are both drawn to a method comprising direction reduction of iron ore comprising subjecting oxidized iron to a reducing gas in a furnace having a reduction zone, transition zone, and cooling zone, and injecting a liquid carbon product into the furnace at least in the transition and/or cooling zone. Additionally, both claims are drawn to wherein the carbon-containing liquid is a biofuel, liquid alcohol, or hydrocarbon, and also wherein the reducing gas contains 50% or 99% or more hydrogen.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 15-18 and 20-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-29 of copending Application No. 18290551 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant and related claims are both drawn to a method comprising direction reduction of iron ore comprising subjecting oxidized iron to a reducing gas in a furnace having a reduction zone, transition zone, and cooling zone, and injecting a liquid carbon product into the furnace at least in the transition and/or cooling zone. Additionally, both claims are drawn to wherein the carbon-containing liquid is a liquid alcohol, such as ethanol.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 2024/0035103, to Mohseni-Morner, having a similar to disclosure the above cited reference US 2024/0084410.
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/JOHN A HEVEY/ Primary Examiner, Art Unit 1735