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 2023/0278874. 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 4/2/2026 has been received and will be entered.
Claim(s) 1-6 and 8-20 is/are pending.
Claim(s) 1, 8, 10, 12, 14, 15, 17, and 18 is/are currently amended.
Claim(s) 7 is/are acknowledged as cancelled.
The action is FINAL.
Response to Arguments
Double Patening
I. With respect to the provisional rejection of Claim 1, 2, 3, 6, 7, 8, 9, 10, 12, 19, and 20 under 35 U.S.C. 101 as claiming the same invention as that of claim 1, 2, 4, 5, 6, 7, 8, 9, 10, 16, 18, 20 of copending Application No. 17/931,720 (reference application), the Remarks rely on amendments. (Remarks of 4/2/2026 at 20). The amendments in this application and those in 17/931,720 obviate the rejection as previously set forth. The rejection is WITHDRAWN.
Claim Rejections – 35 U.S.C. §112
I. With respect to the rejection of Claim(s) 8, 10, and 12-20 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, the Remarks traverse, but provide no substantive traversal. (Remarks of 4/2/2026 at 9 et seq.). Instead, the Remarks would appear to rely upon amendments. Id.
As to the multiple cleaning steps and long recitations of details in Claim 8/7/1, issues remain. These are developed in the rejection below.
As to the issue with the carbonizing/graphitizing language in Claim 10/1, deleting the “carbonizing” language from the preamble of Claim 1, along with the other amendments, obviates the rejection on those grounds.
As to the “-like” suffixes and pastry language in Claim 12, deleting the “-like” suffixes and pastry (croissant) language obviates the rejection of those claims on those grounds.
The rejection is MAINTAINED, as updated below.
Claim Rejections – 35 U.S.C. §§ 102-103
I. With respect to the rejection of Claim(s) 1, 2, 3, 6, 9, 10, and 12 under 35 U.S.C. 102(a)(1) as being anticipated by Qiu, et al., Insight into the change in carbon structure and thermodynamics during anthracite transformation into graphite, International Journal of Minerals, Metallurgy and Materials 2020; 27(2): 162-171 (February 2020, hereinafter “Qiu at __”), the traversal relies on amendments. (Remarks of 4/2/2026 at 12). The amendment narrows the claim from the broadly phrased “carbonizing an upgraded coal” to the new language limiting the steps required to form the upgraded coal. This is persuasive for the method claims. The Remarks do not address the product-by-process claim, Claim 9. The rejection as previously set forth is WITHDRAWN. New rejections appear below.
II. With respect to the rejection of Claim(s) 16 under 35 U.S.C. 103 as being unpatentable over Qiu, et al., Insight into the change in carbon structure and thermodynamics during anthracite transformation into graphite, International Journal of Minerals, Metallurgy and Materials 2020; 27(2): 162-171 (February 2020, hereinafter “Qiu at __”), the traversal relies upon incorporation of a non-rejected dependent claim into Claim 1. (Remarks of 4/2/2026 at 14). This is persuasive, the rejection is WITHDRAWN.
III. With respect to the rejection of Claim(s) 4 and 11 under 35 U.S.C. 103 as being unpatentable over Qiu, et al., Insight into the change in carbon structure and thermodynamics during anthracite transformation into graphite, International Jouranl of Minerals, Metallurgy and Materials 2020; 27(2): 162-171 (February 2020, hereinafter “Qiu at __”) in view of: Leinhard V., et al., A Heat Transfer Textbook, 6th Edition, Phlogiston Press, p. 528 (2024) (hereinafter “Heat Transfer at __”), the traversal relies upon incorporation of a non-rejected dependent claim into Claim 1. (Remarks of 4/2/2026 at 14-15). This is persuasive, the rejection is WITHDRAWN.
IV. With respect to the rejection of Claim(s) 5 under 35 U.S.C. 103 as being unpatentable over Qiu, et al., Insight into the change in carbon structure and thermodynamics during anthracite transformation into graphite, International Jouranl of Minerals, Metallurgy and Materials 2020; 27(2): 162-171 (February 2020, hereinafter “Qiu at __”) in view of: (i) US 2018/0155201 to Zhang, the traversal relies upon incorporation of a non-rejected dependent claim into Claim 1. (Remarks of 4/2/2026 at 15). This is persuasive, the rejection is WITHDRAWN.
V. With respect to the rejection of Claim(s) 7 under 35 U.S.C. 103 as being unpatentable over Qiu, et al., Insight into the change in carbon structure and thermodynamics during anthracite transformation into graphite, International Journal of Minerals, Metallurgy and Materials 2020; 27(2): 162-171 (February 2020, hereinafter “Qiu at __”) in view of: (i) Rozelle, et al., Coal Upgrading Technologies and the Extraction of Useful Materials from Coal Mine Products: History and Opportunities, United States Department of Energy Office of Fossil Energy DOI: 10.2172/1457712, pp. 1-56 (March 2018), and (ii) Li, et al., An extremely rapid, convenient and mild coal desulfurization new process: Sodium borohydride reduction, Fuel Processing Technology 2010; 91: 1162-1167 (hereinafter “Li at __”), initially, it is noted that what would appear to be in the incorrect “Li” document was supplied with the Non-Final Office Action dated 1/15/2026. Specifically, Li, et al., Effects of Coal Rank and Macerals on the Structure Characteristics of Coal-Based Graphene Materials from Anthracite in Qinshui Coalfield, Materials 2022; 12: 588, pp. 1-25 was provided. The Examiner regrets the error.
A procedure exists to remedy situations where an error affects an applicant’s ability to reply to an office action. See MPEP 710.06. This does not appear to have been the case here. First, the Applicant did (or was able to) reply to the office action. Second, the procedure in MPEP 710.06 was not followed, i.e. the error was not brought to the attention of the Office (no phone calls were made to the Examiner, etc.). Third, the Applicant was prosecuting identical claims across two applications in the family: this one and 17/931,720. To the extent the Applicant was unaware of this, a statutory double patenting rejection was made in this application that would have alerted the Applicant to 17/931,720. Finally, the “correct” Li reference (i.e. that which appears in the rejection heading in this application: Li, et al., An extremely rapid, convenient and mild coal desulfurization new process: Sodium borohydride reduction, Fuel Processing Technology 2010; 91: 1162-1167) was applied in 17/931,720. The Applicant was provided with a copy of Li, et al., An extremely rapid, convenient and mild coal desulfurization new process: Sodium borohydride reduction, Fuel Processing Technology 2010; 91: 1162-1167 in the parent application. See (17/931,720: Non-Final Office Action dated 12/16/2025 at 10, “Rejection III.”). As such, it does not appear as if the Applicant was prejudiced by this error. A copy of Li, et al., An extremely rapid, convenient and mild coal desulfurization new process: Sodium borohydride reduction, Fuel Processing Technology 2010; 91: 1162-1167 is made of record in this application.
Claim 7 has been cancelled and incorporated into Claim 1. As applied to Claim 1, the Remarks traverse on four grounds (“IX(A) – IX(D)” in the Remarks). (Remarks of 4/2/2026 at 16 et seq.).
The Remarks traverse on the grounds that “Qiu does not describe or suggest the claimed upgrading steps.” (Remarks of 4/2/2026 at 16). This is a piecemeal treatment of the references, and is not persuasive. If Qiu taught these features, the rejection would have been made under 35 U.S.C. 102.
The Remarks traverse on the grounds that:
The office action cites Rozelle for the proposition that "cleaning coal is old and known." Office Action at 14. Rozelle is a U.S. Department of Energy report surveying the history of coal upgrading technologies. Rozelle at 1. Rozelle defines coal upgrading broadly as "processing of run of mine (ROM) coal that takes place prior to its shipment to the customer." Rozelle at 7. Rozelle's discussion encompasses physical separation methods such as gravity separations, dense medium systems, and froth flotation. Rozelle at 8-12. While Rozelle mentions chemical extraction processes in general terms, Rozelle does not describe reacting a cleaned coal residue with an oxidizable inorganic metallic agent such as iron(II) sulfate or iron(II) chloride. Rozelle does not describe reacting a cleaned coal residue with a reducing agent such as lithium aluminum hydride or sodium borohydride as a step in preparing coal for carbonization or graphitization. Rozelle's discussion of chemical extraction is directed to producing pitch from coal using organic solvents, or to extracting metal values from coal-associated rock using inorganic leaching agents. Rozelle at 16- 17. None of these processes corresponds to the claimed step of reacting a cleaned coal residue with an oxidizable inorganic metallic agent or a reducing agent to form an upgraded coal that is then carbonized.
(Remarks of 4/2/2026 at 17). Again, this is a piecemeal treatment of the references. The rejection is based on the combination of references. Rozelle was applied to address the very broad “cleaning” step, and is evidence that “cleaning coal” has been the practice for hundreds of years. The piecemeal treatment of the references was not persuasive.
The Remarks traverse on the grounds that “the combination of Qiu with Li fails for multiple independent reasons” and then goes on to present reasons IX(C)(1)-(3). (Remarks of 4/2/2026 at 18). As to IX(C)(1), the Remarks state “A person of ordinary skill in the art would have no reason to apply Li’s desulfurization process to Qui’s anthracite. Qui’s Taixi anthracite contains only 0.08% sulfur,” and Li’s process is for coals with “sulfur contents that are orders of magnitude higher.” (Remarks of 4/2/2026 at 18). This presupposes a certain amount of sulfur is acceptable. No record evidence has been introduced to that end. The presence of sulfur is understood to be universally “bad,” but to the extent evidence is needed, Li states “SO2 pollution can cause serious damage, not only on public health but also on soil, water, ozone layer, metal structures and concrete building, etc.” (Li at 1162, col. 1). This is the motivation to remove it. The specific motivation to use the method of Li was set forth in the rejection. Furthermore, note that the Federal Circuit has not required a literal motivation when the combination results in a cleaner product: “An implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal-and even common-sensical-we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.” DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (emphasis added). Here, it is abundantly clear that the ordinary artisan has the knowledge and skills capable of combining the prior art references. These arguments were not persuasive.
The Remarks argue Li’s process is redundant in the context of Qui’s graphitization, stating “Li’s sodium borohydride treatment would serve no purpose in Qiu’s process.” (Remarks of 4/2/2026 at 18). This has been considered, but is not persuasive. As noted above, acid gasses like SO2 cause damage to metal structures, the environment, etc. (Li at 1162, col. 1). Removing sulfur before graphitizing would reduce damage to process equipment or the environment. This was not persuasive. The Remarks also argue that the temperatures taught by Qui would result in “sulfur and other volatile heteroatoms [] thermally driven from the carbon matrix. Qiu’s proximate analysis data confirm this…” (Remarks of 4/2/2026 at 18). As understood, the ultimate analysis would provide the sulfur content, not the proximate analysis. Regardless, the fact that something else may occur is immaterial to the teachings of Qui related to carbonization/graphitization. The claim neither requires nor excludes sulfur removal.
The Remarks argue Li is non-analogous art. (Remarks of 4/2/2026 at 18-19). The test for analogous art is: (1) same field of endeavor as the claimed invention or (2) reference is reasonably pertinent to the problem faced by the inventor. MPEP 2141.01(a). The Remarks only argue the first prong, characterizing Li as “improving the combustion characteristics of coal for use as fuel,” and Qiu as “directed to the production of synthetic graphite, a materials science application in which coal is not burned but is instead converted into an ordered crystalline carbon structure…” (Remarks of 4/2/2026 at 18-19). Per MPEP 2141.01(a):
When determining whether the "relevant field of endeavor" test is met, the examiner should consider "explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention." Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380, 2019 USPQ2d 430083 (Fed. Cir. 2019) (quoting Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212). When determining whether a prior art reference meets the "same field of endeavor" test for the analogous art, the primary focus is on what the reference discloses. Airbus, 41 F.3d at 1380. The examiner must consider the disclosure of each reference "in view of the ‘the reality of the circumstances.’" Airbus, 41 F.3d at 1380 (quoting Bigio, 381 F.3d at 1326, 72 USPQ2d at 1212). These circumstances are to be weighed "from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor." Airbus, 41 F.3d at 1380. See also Donner Technology, LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 2020 USPQ2d 11335 (Fed. Cir. 2020); Sanofi-Aventis, 66 F.4th at 1378; and Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1358-59, 2023 USPQ2d 1057 (Fed. Cir. 2023) ("The field of endeavor is ‘not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.’") (quoting Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001, 120 USPQ2d 1593, 1597 (Fed. Cir. 2016)).
(emphasis added). The Specification refers to upgraded coal throughout but does not define it. It has been construed on the record with prior art, and Applicants have not rebutted this or otherwise substantively addressed the construction. It has been construed as “processing of run of mine (ROM) coal that takes place prior to its shipment to the customer.” Qui, Rozelle and Li are within this field of endeavor. The Specification refers to making graphite from coal. (S. 1: [0011]). Qui, Rozelle and Li are directed to coal. Qui makes graphite from coal. This is within the same field of endeavor. The Specification refers throughout to removal of sulfur. See e.g. (S. 2: [0014]: “The upgraded coal has at least one of a lower oxygen concentration, a lower sulfur concentration, a lower nitrogen concentration, and a higher carbon concentration, as compared to the naturally-sourced coal used to form the upgraded coal.”) and (S. 8: [0124]: “The reacting of the cleaned coal residue with the oxidizable inorganic metallic agent can remove one or more heteroatoms from the cleaned coal residue, such as oxygen, sulfur, or a combination thereof.”) Li is removing sulfur from coal. This is within the same field of endeavor. The statement that “Li does not address the problem faced by a person working in graphite synthesis-namely, now to prepare a coal precursor with reduced heteroatom content and improved carbon structure to enhance graphitizability” is not understood. (Remarks of 4/2/2026 at 19). The word “coal desulfurization” is in the title of Li. How does this not address removing a heteroatom from coal?
The Remarks argue in a heading that “The claimed method serves a different purpose than Li’s desulfurization,” but then goes on to refer to “[t]he present application,” not the claims. Regardless, the purpose is irrelevant. “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.” KSR v. Teleflex, 550 U.S. 398, 419 (2007). The Remarks argue “[t]he present application describes reacting a cleaned coal residue with an oxidizable inorganic metallic agent or a reducing agent not merely to remove sulfur, but to reduce the overall heteroatom content (oxygen, sulfur and nitroguen) and to modify the organic functional groups in the coal structure…” (Remarks of 4/2/2026 at 19). This is not what Claim 1 requires. No result is actually required by the “reacting” step. The Remarks go on to argue that “Li’s sodium borohydride treatment at ambient conditions for one minute does not accomplish these structural modifications to the coal.” (Remarks of 4/2/2026 at 19). In response, this is another a piecemeal treatment of the references. The rejection was not over Li alone. Carbonization/graphitization is addressed by Qui. Furthermore, note that “carbonized upgraded coal” is the only structural modification claimed. It is broad language. This doesn’t require graphite, reduced volatile matter, increased fixed carbon, etc.
The Remarks argue the patentability of Claims 17-18, which were previously rejected as indefinite for claiming some manner of ““pastry graphite.”” As to any characterization of the absence of a prior art-based rejection, MPEP 2173.06 II states “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”
A conclusion paragraph repackages many of the arguments addressed above. As to the “Li’s treatment rendered redundant by Qiu” argument, there seems to be some confusion here as to why Qiu was applied. Qiu was applied to address the heating in an inert environment language.” (Non-Final Office Action dated 1/15/2026 at 10). Qiu was not applied to address Claim 7. Li was. Nobody – except the applicant – is arguing to combine the two for redundant sulfur removal steps. The fact that something else (like the sublimation of sulfur) occurs as a result of the carbonization step is immaterial. Again, the claim neither requires nor excludes it.
In the Non-final Office Action, official notice was taken with respect to cleaning coal. See (Non-Final Office Action dated 1/15/2026 at 14). Applicants have not traversed the assertion of official notice. As such, the common knowledge/well-known in the art statement is taken to be admitted prior art. See 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.”).
The rejection is mooted by cancellation. New rejections appear below.
VI. With respect to the rejection of Claim(s) 9 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Forrest, et al., Theoretical and Experimental Approaches to the Carbonization of Coals and Coal Blends, Coal and Coal Products: Analytical Characterization Techniques Chapter 1, pp 1-25 (1982), the Remarks incorrectly stylize the rejection as an anticipation rejection under 35 U.S.C. 102. (Remarks of 4/2/2026 at 12-13). The rejection was made under 35 U.S.C. 102/103, per the practice set forth in MPEP 2143. The rejection was not substantively traversed. Id. Claim 9 is a product-by-process claim. Adding another process step to method Claim 1 does not necessarily make product-by-process claim allowable. As stated in the rejection, Claim 1 suggests a carbonized composition. Forrest teaches carbonized coal. (Forrest at 2 – The Carbonization Process: “As coal is heated it undergoes depolymerization and decomposition resulting in the evolution of gas and condensible vapours and leaves behind a solid residue of high carbon content (3).”). The rejection is MAINTAINED, as updated below.
VII. With respect to the rejection of Claim(s) 19-20 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shi, et al., Coal-derived synthetic graphite with high specific capacity and excellent cyclic stability as anode material for lithium-ion batteries, Fuel 2021; 292: 120250, pp. 1-11 (hereinafter “Shi at __”), the Remarks state:
Independent claim 1 is presently amended to incorporate the features of canceled dependent claim 7. Claim 7 was not rejected under the present rejection. Shi fails to describe or suggest all the features of presently amended independent claim 1. As such, independent claim 1 as presently amended is patentable over Shi.
Dependent claims 19-20 depend indirectly from independent claim 1. As such, these dependent claims incorporate all the features of claim 1. Accordingly, dependent claims 19-20 are patentable for at least the reasons given herein for patentability of independent claim 1.
Applicant therefore respectfully requests reconsideration and withdrawal of the rejection of claims 19-20 under 35 U.S.C. § 102(a)(1) over Shi.
(Remarks of 4/2/2026 at 13). As discussed in the rejection, Claim 19 is a product-by-process claim. The Remarks do not address this, or the rationale/proof provide in the rejection. Adding additional process steps does not necessarily impact the product-by-process claim. Applicants have not shown a non-obvious difference. MPEP 2113 II. The rejection is MAINTAINED, as updated below.
VIII. With respect to the rejection of Claim(s) 1, 2, 3, 10, 13, 16, 9, 19, and 20 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Xing, et al., Preparation of synthetic graphite from bituminous coal as anode materials for high performance lithium-ion batteries, Fuel Processing Technology 2018; 172: 162-171 (hereinafter “Xing at __”), the traversal relies on incorporation of Claim 7 into Claim 1. This is persuasive for Claim 1, but not for certain product-by-process claims. The rejection is MAINTAINED, as updated below.
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.
I. Claim 8 is 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 8/1 is reproduced below:
8/1. (Currently Amended) A method
cleaning coal to form a cleaned coal residue;
reacting the cleaned coal residue with an oxidizable inorganic metallic agent or reacting the cleaned coal residue with a reducing agent, to form the upgraded coal; and
heating the upgraded coal in an inert environment, to form a carbonized upgraded coal, wherein the method comprises:
cleaning coal having a largest dimension of 25 mm or less using a strong mineral acid at a temperature of 30 °C to 100 °C to form a cleaned coal residue;
wherein
reacting the cleaned coal residue with an oxidizable inorganic metallic agent comprises reacting the cleaned coal residue at 100 °C to 500 °C under an inert gas with 20), iron (II) chloride tetrahydrate (FeCl-4H20), or a combination thereof,
reacting the cleaned coal residue with a reducing agent comprises reacting the cleaned coal residue at 0 °C to 50 °C in an organic solvent with aluminum hydride (LAH), sodium borohydride (NAH), or a combination thereof,
the upgraded coal has a lower ash content, as compared to the coal used to form the upgraded coal, and
the upgraded coal has at least one of a lower oxygen concentration, a lower sulfur concentration, a lower nitrogen concentration, and a higher carbon concentration, as compared to the naturally-sourced coal used to form the upgraded coal.
(underlines and strikethroughs in original; bold faced text added). The claim recites two cleaning steps to form cleaned coal residue. Later, the claim refers to reacting “the cleaned coal residue.” It is unclear to which cleaning step is being referenced. Stated differently, the terms lack antecedent basis. The Examiner recommends referring to one cleaning step, then adopting some language like “wherein the cleaning step further comprises…,” if this was the intent of the claim.
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, 6, 10, and 16 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Qiu, et al., Insight into the change in carbon structure and thermodynamics during anthracite transformation into graphite, International Jouranl of Minerals, Metallurgy and Materials 2020; 27(2): 162-171 (February 2020, hereinafter “Qiu at __”) in view of:
(i) Rozelle, et al., Coal Upgrading Technologies and the Extraction of Useful Materials from Coal Mine Products: History and Opportunities, United States Department of Energy Office of Fossil Energy DOI: 10.2172/1457712, pp. 1-56 (March 2018), and
(ii) Li, et al., An extremely rapid, convenient and mild coal desulfurization new process: Sodium borohydride reduction, Fuel Processing Technology 2010; 91: 1162-1167 (hereinafter “Li at __”).
With respect to Claim 1, this claim requires “cleaning coal to form a cleaned coal residue.” Qiu teaches treating with acid. (Qiu at 1875 – Materials). To the extent this cannot be construed as “cleaning,” cleaning is generic and is construed broadly. Cleaning is old and known; admitted prior art. See discussion above and (Rozelle at 11 et seq.) (note history of cleaning coal dating back to at least the 1800s). Use of known techniques to achieve predictable results does not impart patentability. MPEP 2143; KSR.
Claim 1 further requires “reacting the cleaned coal residue with an oxidizable inorganic metallic agent or reacting the cleaned coal residue with a reducing agent, to form the upgraded coal.” These are construed as alternatives. Li teaches reacting coal with sodium borohydride. (Li at 1163, col. 2 – 2. Materials and methods). One of skill in the art would be taught, suggested and/or motivated to react with sodium borohydride to remove sulfur, with Li noting that “[b]y applying NaBH4 reduction, the time and cost required to remove sulfur form coal were pronouncedly reduced.” (Li at 1166, col. 1). Alternatively or additionally, the combination reflects application of known techniques (reaction with NaBH4, per Li) to achieve predictable results (sulfur removal). This does not impart patentability. MPEP 2143; KSR.
Claim 1 further requires “heating the upgraded coal in an inert environment, to form a carbonized upgraded coal.” The upgraded coal is heated in an argon atmosphere. (Qiu at 163 – 2.2 Graphitization process). The heating, heating rates, and times in Qui would result in carbonization, even if Qui proceeds to graphitization. Note also the claimed times and temperatures below. See rejection of Claims 2-3. As the claimed times and temperatures are taught, it is expected that carbonization occurs. This is the rationale to show inherency.
As to Claim 2, a temperature of 1773 K (~1500 °C) is taught. (Qiu at 165, col. 2). A time of 3 hours is taught. Id.
As to Claim 3, the anthracite bricks are interpreted as an upgraded particulate coal. (Qiu at 163 – 2.2. Graphitization process).
As to Claim 6, fixed carbon of ~98% is taught. (Qiu at 164 – Tables 3-4).
As to Claim 10, graphitization is taught. (Qiu at 163 – 2.2 Graphitization process).
As to Claim 16, Qiu reports 95.2% graphitization. (Qiu at 164 – Table 2). This is 0.2% more than claimed. However, Table 4 clearly teaches the graphitization rate is a function of time – which makes sense. Id. Stated differently, it is a result-effective variable, optimization of which does not impart patentability. MPEP 2144.05.
II. Claim(s) 4 and 11 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Qiu, et al., Insight into the change in carbon structure and thermodynamics during anthracite transformation into graphite, International Jouranl of Minerals, Metallurgy and Materials 2020; 27(2): 162-171 (February 2020, hereinafter “Qiu at __”) in view of:
(i) Rozelle, et al., Coal Upgrading Technologies and the Extraction of Useful Materials from Coal Mine Products: History and Opportunities, United States Department of Energy Office of Fossil Energy DOI: 10.2172/1457712, pp. 1-56 (March 2018),
(ii) Li, et al., An extremely rapid, convenient and mild coal desulfurization new process: Sodium borohydride reduction, Fuel Processing Technology 2010; 91: 1162-1167 (hereinafter “Li at __”), and further in view of:
(iii) Leinhard V., et al., A Heat Transfer Textbook, 6th Edition, Phlogiston Press, p. 528 (2024) (hereinafter “Heat Transfer at __”).
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 4, Qiu states “the furnace was naturally cooled to room temperature to obtain the coal based graphite products.” (Qiu at 163 – 2.2 Graphitization process). Room temperature reads on the claimed temperature range. Qiu doesn’t explicitly state the time. Given the small sample size graphitized, it is highly likely it would cool off in the duration claimed. Regardless, the skilled artisan could select a cooling technique to achieve the cooling over the claimed time period. Official notice is taken of heat transfer and the body of work that the skilled artisan would have exposure to (e.g. a college heat transfer course). The Heat Transfer text is offered as scientific truisms, and as such, need not antedate the filing date. MPEP 2124. Older heat transfer books exist; this text was readily accessible. The entire file was too large to upload, but this is publicly accessible online.1 Implementing any and all methods of cooling – for example a fan / forced air convection – is an obvious expedient, reflecting application of known techniques to achieve predictable results. See e.g. (Heat Transfer at 528: “…the ultimate heat disposal can be as simple as a small fan blowing air…”). This does not impart patentability. MPEP 2143; KSR.
As to Claim 11, 3 hours and 3000 C are taught. (Qiu at 165, col. 1-2). Qiu states “the furnace was naturally cooled to room temperature to obtain the coal based graphite products.” (Qiu at 163 – 2.2 Graphitization process). Room temperature reads on the claimed temperature range. Qiu doesn’t explicitly state the time. Given the small sample size graphitized, it is highly likely it would cool off in the duration claimed. Regardless, the skilled artisan could select a cooling technique to achieve the cooling over the claimed time period. Official notice is taken of heat transfer and the body of work that the skilled artisan would have exposure to (e.g. a college heat transfer course). Heat Transfer is offered as evidence. (Heat Transfer, entire book). The Heat Transfer text is offered as scientific truisms, and as such, need not antedate the filing date. MPEP 2124. Older heat transfer books exist; this text was readily accessible. Implementing any and all methods of cooling – for example a fan / forced air convection – is an obvious expedient, reflecting application of known techniques to achieve predictable results. See e.g. (Heat Transfer at 528: “…the ultimate heat disposal can be as simple as a small fan blowing air…”). This does not impart patentability. MPEP 2143; KSR.
III. Claim(s) 5 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over Qiu, et al., Insight into the change in carbon structure and thermodynamics during anthracite transformation into graphite, International Jouranl of Minerals, Metallurgy and Materials 2020; 27(2): 162-171 (February 2020, hereinafter “Qiu at __”) in view of:
(i) Rozelle, et al., Coal Upgrading Technologies and the Extraction of Useful Materials from Coal Mine Products: History and Opportunities, United States Department of Energy Office of Fossil Energy DOI: 10.2172/1457712, pp. 1-56 (March 2018),
(ii) Li, et al., An extremely rapid, convenient and mild coal desulfurization new process: Sodium borohydride reduction, Fuel Processing Technology 2010; 91: 1162-1167 (hereinafter “Li at __”), and further in view of:
(iii) US 2018/0155201 to Zhang.
The discussion accompanying “Rejection I” above is incorporated herein by reference.
As to Claim 5, Qiu does not teach the particulars of the coal. Zhang however teaches
[0020] Preferably, the fixed carbon content of the coal is 40 to 70%, the volatile content is 20 to 50%, the moisture content is 0 to 30%, the ash content 0 to 10%; coal element analysis requires carbon content of 50 to 80%, hydrogen content of 0 to 10%, oxygen content of 0 to 30%; the ash in the coal contains one or more of CaO, MgO, K2O, Na2O; the ash in the coal also contains one or more of SiO2, Al2O3, Fe2O3, TiO2, MnO2, P2O5.
(Zhang 2: [0020]). Use of a known coal is an obvious expedient, and reflects application of a known material (the coal of Zhang) to a known process (that of Qiu) to achieve predictable results (carbonized/graphitized coal). This does not impart patentability. MPEP 2143; KSR.
IV. Claim(s) 9 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Qiu, et al., Insight into the change in carbon structure and thermodynamics during anthracite transformation into graphite, International Jouranl of Minerals, Metallurgy and Materials 2020; 27(2): 162-171 (February 2020, hereinafter “Qiu at __”).
Claim 9 is a product-by-process claim. Product-by-process claims are not limited by the process steps, except to the extent they suggest structure or composition. See generally MPEP 2113. Here, Claim 9 is construed as requiring a carbonized composition. Qiu teaches this. (Qiu at 163 – 2.2 Graphitization process). Note that carbonized does not exclude graphitized.
V. Claim(s) 9 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Forrest, et al., Theoretical and Experimental Approaches to the Carbonization of Coals and Coal Blends, Coal and Coal Products: Analytical Characterization Techniques Chapter 1, pp 1-25 (1982).
With respect to Claim 9, this claim recites “[a] carbonized upgraded coal formed by the method of claim 1.” This is a product-by-process claim. Product-by-process claims are not limited by the process steps, except to the extent they suggest structure or composition. See generally MPEP 2113. Here, it suggests a carbonized composition. Forrest teaches carbonized coal. (Forrest at 2 – The Carbonization Process: “As coal is heated it undergoes depolymerization and decomposition resulting in the evolution of gas and condensible vapours and leaves behind a solid residue of high carbon content (3).”).
VI. Claim(s) 19-20 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Shi, et al., Coal-derived synthetic graphite with high specific capacity and excellent cyclic stability as anode material for lithium-ion batteries, Fuel 2021; 292: 120250, pp. 1-11 (hereinafter “Shi at __”).
With respect to Claim 19, this claim requires “[a] graphite formed from the method of claim 10.” This is a product-by-process claim. Product-by-process claims are not limited by the process steps, except to the extent they suggest structure or composition. See generally MPEP 2113. Here, the process suggests graphite. Shi teaches graphite. See e.g. (Shi at 2 – 2.1 Synthesis of graphite).
With respect to Claim 20, this claim recites in the preamble “[a]n electrochemical cell.” To the extent this is limiting (no such concession is made), Shi teaches lithium ion batteries. (Shi Abstract; passim).
Claim 20 further requires “a cathode.” A cathode is taught. (Shi Abstract; passim).
Claim 20 further requires “an anode comprising the graphite of claim 19.” As discussed above, Claim 19 is a product-by-process claim and is so construed. An anode comprising graphite is taught. (Shi Abstract; passim).
VII. Claim(s) 9, 19, and 20 – or as stated below - is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Xing, et al., Preparation of synthetic graphite from bituminous coal as anode materials for high performance lithium-ion batteries, Fuel Processing Technology 2018; 172: 162-171 (hereinafter “Xing at __”).
With respect to Claim 9, this claim recites “[a] carbonized upgraded coal formed by the method of claim 1.” This is a product-by-process claim. Product-by-process claims are not limited by the process steps, except to the extent they suggest structure or composition. See generally MPEP 2113. Here, it suggests a carbonized composition. Xing teaches carbonized coal. (Xing at 163 – 2.2. Carbonization and graphitization of bituminous coal: “The bituminous coal powder was placed in a corundum crucible and carbonized at 1000 °C…”).
With respect to Claim 19, this claim requires “[a] graphite formed from the method of claim 10.” This is a product-by-process claim. Product-by-process claims are not limited by the process steps, except to the extent they suggest structure or composition. See generally MPEP 2113. Here, the process suggests graphite. Xing teaches graphite. (Xing at 163 – 2.2. Carbonization and graphitization of bituminous coal: “Such prepared synthetic graphite samples…”
With respect to Claim 20, this claim recites in the preamble “[a]n electrochemical cell.” To the extent this is limiting, an electrochemical cell is taught. (Xing at 163, col. 2 – 164, col. 1: “The electrochemical measurements were carried out using a two electrode CR2016 coin-type cell.”
Claim 20 further requires “a cathode.” The non-working electrode is interpreted as the cathode. (Xing at 163, col. 2 – 2.4 Electrochemical measurements, et seq.).
Claim 20 further requires “an anode comprising the graphite of claim 19.” As discussed above, Claim 19 is a product-by-process claim, and is so construed. The working electrode is interpreted as the anode. (Xing at 164, col. 1: “The working electrode was fabricated by mixing the synthetic graphite materials, carbon black (BP2000), and polyvinylidene fluoride (PVDF) in a weight ratio of 8:1:1 with N-methylpyrrolidone (NMP) as a solvent.”).
Allowable Subject Matter
I. Claims 17-18 are allowed.
Search of the prior art did not reveal the particulars of the process to achieve the specific morphologies claimed. “Graphulerenite” would appear to be the Applicant’s own term. While unconventional, it is ““reasonably”” clear in view of the passage in the Specification and the lexicographer doctrine. See (S. 3: [0018]); MPEP 2111.01 IV.
II. Dependent upon a rejected base claim
Claim 12 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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