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 .
Response to Amendment
The amendment filed 06/29/2026 has been entered. Claim(s) 1-13 and 15 is/are pending in this application and examined herein. Claim(s) 1 and 12 is/are amended. Claim(s) 14 is/are cancelled.
The rejection(s) under 35 USC 112(a) to claim(s) 1-15 is/are withdrawn in view of the amendments to claim(s) 1 and cancellation of claim 14.
The objection(s) to claim(s) 12 is/are withdrawn in view of the amendments to claim(s) 12.
Claim Rejections - 35 USC § 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.
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 1-8, 10-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over McGaa (US 6342089 B1), in view of Gilbert et al. (WO 2007080356 A1), Wilson (WO 0138455 A1), and Buchanan et al. (CA 1281907 C), all of which are cited in the IDS filed 11/15/2023.
Regarding claim 1, McGaa teaches direct reduced iron pellets, where green pellets are produced from an agglomeration of iron oxide-containing material, internal reductant, and binder (Col. 3 lines 20-24), where the internal reductant may be lignite or other high volatile carbon materials (Col. 5 lines 7-11); thus, the green pellets are composite bodies comprising low rank carbonaceous material and metal oxide containing material. McGaa teaches the materials are in intimate contact, as the internal reductant and iron-oxide containing material are formed together in pellets. McGaa states all references to percent refer to percent by weight unless noted otherwise (Col. 5 lines 66-68), and in Example 1 the green pellets were formed from a mixture of 79 percent iron oxide-containing material, 17 percent coal char and 4 percent binder (Col. 8 lines 1-5), a carbonaceous material to metal oxide ratio of 1:4.64 w/w, which is within the claimed range. While McGaa does not specify that the mixture percentages are based on a dry mix ratio, McGaa teaches that it is beneficial to minimize the presence of water in the particles to prevent generation of volatiles during reducing in order to prevent pellet degradation (Col. 4 lines 24-42), indicating pellets should contain minimal moisture after being produced, and the ratio of iron-oxide material to coal is approximately a dry mix ratio. McGaa teaches the reducing gas contains hydrogen (Col. 4 lines 26-28).
McGaa does not teach the feeding the pellets to a retort, or the moisture content for carbonaceous material.
Gilbert teaches production of carbonaceous metal ore pellets, where metal ore pellets are produced from a particulate carbon-based material, a metal ore material, and a binder which is ready for smelting to produce metal (Abstract); thus, Gilbert and McGaa are analogous as both are drawn to metal oxide/low rank carbonaceous material pellets for reduction of metals. Gilbert further teaches the moisture content of lignite tends to be <45% (pg. 7 lines 1-2). This overlaps the claimed range of having moisture content of from about 30% to about 70%. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because there is utility over an entire range disclosed in the prior art. See MPEP § 2144.05(I).
Wilson teaches a retort which may be used to produce metals or metal alloys from carbonaceous material-metal composites (Abstract) Composite bodies containing a mixture of carbonaceous material and metal containing material are continuously introduced to an upper region 16 of an upright retort 10 (pg. 2 line 32 – pg. 3 line 6, Fig. 1), and conveyed from the upper region 14a to heated lower region 14b of the upright retort (pg. 9 lines 16 – 22, Fig. 1), wherein said composite bodies are exposed to increasing temperature (pg. 9 lines 8 – 11). Wilson teaches the retort can produce a reduced metal containing product at a temperature of up to about 950 °C (pg. 12 lines 21-22). Wilson further teaches continuously removing the reduced metal containing product from the heated lower region of the upright retort (pg. 9 lines 18-20, pg. 7 lines 33-34, Fig. 1), Wilson therefore teaching a method of reducing metal oxide to metal in a continuous process. Wilson teaches the creation of a reducing gas atmosphere, where volatiles in the pellets produce reducing gases (pg. 5 lines 14 – 17); thus, said composite bodies are exposed to reducing gas generated in situ. Wilson teaches wherein the reducing gas is formed in situ via pyrolysis of carbonaceous material within the upright retort (pg. 3 lines 1-6), which would comprise gasification as the solid carbonaceous material is reacted to form gas. As Wilson teaches reducing the metal oxide pellets , and McGaa teaches the pellets to produce hydrogen reducing gas, and does not disclose an external hydrogen supply, Wilson teaches forming hydrogen sufficient to maintain a reducing environment without an external hydrogen supply. Wilson teaches wherein the upright retort comprises at least one gas extraction zone 24 extending around the circumference of the retort 10 adapted to allow the exit of gases (pg. 9 lines 6-14, 27-30, Fig. 1).
Wilson teaches that the pellets are maintained at a sufficiently high temperature and for a sufficient length of time to effect the desired level of reduction (pg. 11 lines 23 – 25), and that the retort is of light weight and simple design, enabling relatively inexpensive construction and maintenance which particularly facilitates its use in remote or inaccessible locations, and that the retort enables high efficiency continuous operation with minimal recondensation of off-gases, internal combustion of off-gases provides a source of heat and external heating is largely only needed in the start-up operation, and high thermal efficiency and low levels of greenhouse emissions, such as CO and NOx (pg. 7 line 31 – pg. 8 line 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the retort of Wilson in order to perform the reduction of the metal oxide pellets of McGaa in order to benefit from inexpensive construction and maintenance, enable use in remote or inaccessible locations, enable high efficiency continuous operation with minimal recondensation of off-gases, minimize external heating need, and produce only low levels of greenhouse emissions, such as CO and NOx as taught by Wilson.
McGaa, Gilbert and Wilson do not specify any particular length of time required to perform the reduction of metal oxides.
Buchanan teaches metallurgical composites and processes, where the composites are formed of ore or metal concentrates containing metal oxides, and brown coal (Abstract); thus, Buchanan and McGaa are analogous as they both relate to pellets comprising predominantly a metal oxide containing material and low rank coal. Buchanan teaches in Example 1 that heating to 600 °C is sufficient to generate reducing gases from the pellets (pg. 9 lines 4 – 19), and in Example 2 teaches after a preliminary pyrolysis to remove volatiles, heating pellets at 700 °C for 1 hour (pg. 10 lines 4 – 9), where one of ordinary skill would also expect reducing gases to be generated, where 1 hour is within the claimed range of reducing times. Buchanan teaches pellets comprising 10 – 75% by weight iron oxide (remainder coal) were tested in Experiment 2 (pg. 10 lines 15 – 21), and that all of the pellets heated up to 700 °C underwent reduction reactions (pg. 11 lines 1 – 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the lower firing temperature of 700 °C for a time of 1 hour as taught by Buchanan in order to treat the pellets of McGaa, which one of ordinary skill would recognize would reduce heating requirements due to the lower reduction temperature, reducing fuel/external heating requirements, expense of insulating materials, etc. all lowering operating costs.
McGaa in view of Gilbert, Wilson, and Buchanan is silent to wherein reducing gas containing hydrogen is formed via catalytic decomposition and water-gas shift reactions catalyzed by the metal reduced from the metal oxide. However, paragraph [0049] of the present specification, discloses “Hydrogen… is produced in the process at temperatures as low as 120 °C… hydrogen is produced via two primary routes: (a) catalytic decomposition of hydrocarbon gases, and; (b) catalytic cracking of water via the water-gas shift reaction, catalyzed by iron or other metals”, in accord with the method as presently claimed. As Buchanan teaches producing methane (hydrocarbon gas), and the production of hydrogen from low rank carbonaceous material in the presence of iron, McGaa in view of Gilbert, Wilson, and Buchanan discloses substantially the same process that Applicant states produces this feature one of ordinary skill would have a reasonable assumption that the claimed features would also occur when practicing the method of McGaa in view of Gilbert, Wilson, and Buchanan. See MPEP 2112 § (III-V) and 2112.01 § (I).
McGaa in view of Gilbert, Wilson, and Buchanan is silent to wherein the metal oxide reduction is performed primarily by H2 gas reduction. However, paragraph [0038] of the present specification discloses “H2 gas acts as the primary reducing agent to reduce the metallic oxides across a temperature range of from about 100 °C to about 900 °C, with resulting production of H2O” and [0046] of the present specification discloses “the adoption of the combination of the parameters in the process referred to herein delivers a predominantly hydrogen based reduction process at relatively low temperature, low residence time and with relatively low carbon emissions”, in accord with the method as presently claimed. As Buchanan teaches the production of hydrogen from low rank carbonaceous material, Wilson teaches using a temperature within the claimed range, and Wilson teaches using durations of time in the claimed range, McGaa in view of Gilbert, Wilson, and Buchanan discloses substantially the same conditions that Applicant states produces this feature, one of ordinary skill would have a reasonable assumption that the claimed features would also occur when practicing the method of McGaa in view of Gilbert, Wilson, and Buchanan.
McGaa in view of Gilbert, Wilson, and Buchanan as applied to claim 1 does not disclose or require that external reducing gas is injected into the retort, therefore McGaa in view of additional art teaches or suggests all of the features of claim 1.
Claim(s) 2-8, 10-13, and 15 remain(s) rejected as set forth in the Office Action dated 01/28/2026. Claim(s) 2-8, 10-11, 13, and 15 has/have not been amended since that time, and the amendments to claim(s) 12 are of an editorial nature and do not materially affect any statements made in the rejection in the prior Office Action. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over McGaa in view of Gilbert, Wilson, and Buchanan as applied to claim 1 above, and further in view of Schuiling (“Carbon Dioxide Sequestration, Weathering Approaches to”, cited in IDS filed 11/15/2023).
Claim(s) 9 remain(s) rejected as set forth in the Office Action dated 01/28/2026. Claim(s) 9 has/have not been amended since that time. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered with the following effect.
Regarding Applicant’s argument that McGaa fails to teach the claimed catalytic decomposition (see pg. 6-7 of remarks), the Examiner respectfully disagrees.
While as Applicant notes, McGaa is silent to iron in the pellets acting as a catalyst for hydrogen generation, and McGaa discloses that a water-gas shift reaction production of hydrogen occurs, the instant specification describes water-gas shift reaction production of hydrogen as one of the mechanisms for how hydrogen is produced (e.g., [0039] of the instant specification).
Therefore, as noted above, McGaa in view of other references is silent to (a) iron or other metals catalyzing decomposition of hydrocarbon gases , and (b) that the water-gas shift reaction is catalyzed by iron or other metals, however as McGaa in view of others teaches producing methane (hydrocarbon gas), and the production of hydrogen from low rank carbonaceous material, both in the presence of iron, McGaa in view of Gilbert, Wilson, and Buchanan discloses substantially the same process that Applicant states produces this feature one of ordinary skill would have a reasonable assumption that the claimed features would also occur when practicing the method of McGaa in view of others, regardless of if such is disclosed by McGaa or was known to its inventors.
Applicant’s arguments that Hanafy teaches introducing external reducing gas to the reactor, see pg. 7-8 of remarks, with respect to the rejection(s) of claim(s) 14 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made no longer in view of Hanafy as necessitated by amendment.
Regarding Applicant’s argument that McGaa fails to teach a process operating without injection of an external reducing gas (see pg. 8 of remarks), the Examiner respectfully disagrees.
While as Applicant notes, McGaa teaches external reductants are preferably used with the pellets of McGaa, however it has long been held that patents are relevant as prior art for all they contain, including nonpreferred embodiments, and disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123 (I-II). Therefore, even though McGaa teaches it to be preferred to use at least some external carbon over embodiments where only internal carbon is relied upon, McGaa still teaches the nonpreferred embodiment where only internal carbon is used as a choice of how the pellets may be metallized.
Further, even if McGaa did require the use of external reductants, claim 1 as amended only prohibits the use of external reducing gas, not the addition of an external solid reductant such as external carbon in the form of coal or coke as disclosed by McGaa, thus McGaa still would teach the claimed subject matter.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Nikolas T Pullen whose telephone number is (571)272-1995. The examiner can normally be reached Monday - Thursday: 10:00 AM - 6:00 PM EST.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
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