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 09/26/2025 has been entered. Claims 1-15 are pending in this application and examined herein. Claims 1 and 11-13 are amended.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/26/2025 has been entered.
Claim Objections
Claim 12 is objected to because of the following informalities:
“comprise” in line 2 should read “further comprises”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “via catalyzed thermal decomposition” in lines 13-14. The instant specification discloses “in situ catalytic decomposition during the process, producing carbon and H2” (instant specification: [0038]) however the instant specification does not disclose the decomposition to be thermal decomposition, and therefore does not describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor invented the claimed invention at the time of filing.
Claims dependent upon claims rejected above, either directly or indirectly, are likewise rejected under this statute.
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 catalysed thermal decomposition and water-gas shift reactions. 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, catalysed 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 (as best can be examined in view of the rejection of claim 1 under 35 USC 112(a)), one of ordinary skill would have a reasonable assumption that the features of claim 1 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).
Regarding claim 2, McGaa teaches wherein the composite bodies comprising low rank carbonaceous material and metal oxide are produced by mixing particulate low rank carbonaceous material and metal oxide containing material (Col. 5 lines 31-36, Col. 8 lines 3-5), and the mixing may be performed with optional addition of water to produce a plastic mass (Col. 4 lines 39-41, Col. 6 lines 12-17) forming moist composite bodies. Gilbert teaches drying the composite bodies to produce dried composite bodies. (pg. 5 lines 10 - pg. 6 line 7).
Regarding claim 3, McGaa teaches wherein the metal oxide containing material may include reverts such as furnace dusts and sludges, basic oxygen furnace dust, blast furnace dust, and millscale (i.e., products or by-products of an industrial process) (Col. 3 lines 50-52). McGaa further teaches the reverts are used alone or in conjunction with iron ore, and therefore teaches wherein the metal oxide containing material is a metal oxide containing mineral ore.
Regarding claim 4, McGaa in view of Gilbert, Wilson, and Buchanan as applied to claim 2 does not teach wherein the moisture content of said dried composite bodies is up to about 15% w/w.
Gilbert teaches that pellets should be cured after forming for some time while only requiring ambient temperatures (pg. 5 lines 10 - pg. 6 line 7), and can have a moisture content reduced to preferably as little as <5% moisture content once fully cured (pg. 8 lines 22-25, claim 23). Gilbert further teaches that a reduction in moisture provides a direct increase in the heat content value of the product as it is burned, increasing its efficiency and economic value, the latter extending to the transportation of the product (pg. 8 line 29 – pg. 9 line 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the green pellets of McGaa to incorporate the ambient temperature curing step of Gilbert, to produce pellets with an overall moisture content of <5 % in order to increase the heat content and economic values of the green pellets.
Regarding claim 5, McGaa teaches wherein the forming of moist composite bodies is by extrusion and the composite bodies are pellets (Col. 6 lines 54-57).
Regarding claims 6-7, McGaa teaches in Example 1 green pellets were formed from a mixture of 79 wt. percent iron oxide-containing material, 17 wt. percent coal char and 4 wt. percent binder (Col. 8 lines 1-5), a low rank carbonaceous material to metal oxide ratio of 1:4.64 w/w. This is both i) within the range of claim 6 and ii) considered to be “about 1:5” as in claim 7.
Regarding claim 8, McGaa teaches wherein the low rank carbonaceous material is lignite (Col. 5 lines 8-9).
Regarding claim 10, McGaa teaches wherein the metal oxide containing material comprises ferrous oxide (Col. 7 lines 1-4).
Regarding claim 11, Wilson teaches the said composite bodies are exposed to reducing gas (pg. 5 lines 14 – 17). Buchanan teaches a reducing gas exposure time of 1 hour (pg. 10 lines 4 – 9), which is within the claimed range.
Regarding claims 12 and 13, McGaa teaches the reducing gas comprises gases including CO (Col. 4 lines 26 – 28). Claim 13 as presently drafted is relevant only to an embodiment where the reducing gas is a hydrocarbon, and therefore the disclosure of McGaa is considered to also read upon claim 13, as McGaa is not directed to a hydrocarbon reducing gas.
Regarding claim 15, McGaa teaches volatile reducing gases are released from within the pellets (Col. 4 lines 26 – 28). As reducing gas is formed within the pellets, one of ordinary skill would recognize that at least some reduction reactions must occur within the pellets as the reducing gas moves from within to outside the pellets, McGaa teaching all of the limitations of claim 15.
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).
Gilbert teaches peat may be used as an internal reductant in alternative to other lower rank carbonaceous materials such as lignite, sub-bituminous coals, animal wastes, biomass, or sewage wastes (pg. 10 lines 8-19), and that peat and lignite can be treated with identical technology or can be blended with other fuel sources to create hybrid pellet fuels with pre-designed characteristics such as smokeless burning (pg. 24 lines 11-15). Schuiling teaches that peat is widely available (pg. 2178, last paragraph), and is produced on significantly shorter timescales than coal (pg. 2177, paragraph 2). 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 peat as the low rank carbonaceous material of the pellets of McGaa, as Gilbert teaches the suitability of peat as a carbonaceous material reductant for reducing metal pellets, in order to utilize a carbon source that is very widely available and also somewhat renewable as taught by Schuiling.
Claim 14 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 Hanafy (WO 2016170467 A1, original document, cited in IDS filed 11/15/2023).
McGaa teaches volatiles such as carbon monoxide and hydrogen gas are generated typically during the metallization process (Col. 4 lines 26 – 28), but is silent to whether the reducing gas is primarily hydrogen.
Hanafy teaches composite iron pellets and methods of making same, producing composite pellets comprising a core comprising iron ore and a carbonaceous reducing agent, and a shell comprising iron ore, where the resulting composite pellets can be used to produce direct reduced iron (DRI) (Abstract); thus, Hanafy and McGaa are analogous as both are directed to reducing iron/carbonaceous material pellets. Hanafy teaches a low pressure reducing gas is introduced to a reactor and moves counter-current to lump iron oxide or lump iron oxide pellets, and the reducing gas is 10 to 20 mol% CO and from about 80 to 90 mol% H2 (i.e., the gas is primarily H2) [0075]. Hanafy teaches the top gas from the reactor comprises hydrogen and can be cleaned by scrubbing and carbon dioxide removed, and can be recycled back into the reducing gas stream and utilized for further direct reduction of iron [0073].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the primarily H2 reducing gas of Hanafy into the method of process of direct reduction of McGaa, to enable recycling of reducing gases from the top gas stream as taught by Hanafy.
Response to Arguments
Applicant's arguments filed 09/26/2025 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that McGaa does not teach a reducing gas that contains hydrogen in situ (see pg. 6 of remarks), the Examiner respectfully disagrees.
McGaa, as noted by Applicant discloses firing of green pellets in a reducing atmosphere can injection of natural gas, however McGaa’s discussion of natural gas is limited to discussing reduction of green pellets in prior art processes (e.g., “Prior art methods for producing direct reduced iron require the use of high grade iron as well as large amounts of gaseous reductants, such as natural gas at Col. 1 lines 39-42). McGaa instead teaches the pellets use an internal reductant (e.g., Col. 3 lines 9-10, Col. 4 lines 42-56), which produces hydrogen in situ (Col. 2 lines 27-32) and teaches against the use of an external reductant (Col. 5 lines 27-30), and thus does not use an external hydrogen supply.
Regarding Applicant’s argument that McGaa in view of Wilson is silent to reducing within the retort using reducing gases to reduce iron oxide (see pg. 7-8 of remarks), the Examiner respectfully disagrees.
While as noted by Applicant, Wilson discloses some volatiles and reducing gases evolved from the charge being released through an annulus, Wilson teaches reduction of the pellets by hot gases produced in the furnace (E.g., pg. 3 lines 17-20, pg. 13 line 32- pg. 14 line 2), and is thus not silent to reducing using the reducing gases produced, but instead expressly teaches such.
Regarding Applicant’s argument that Wilson does not teach an upright retort that has at least one gas extraction zone (see pg. 7-8 of remarks), the Examiner respectfully disagrees.
Wilson teaches a retort that includes an annular space 24, where gas evolved from heating the charge of iron/carbonaceous material compacts exits the upright retort 10 through the annular space 24, thus the annular space comprises an extraction zone extending around the circumference of the retort. While Applicant asserts that the extraction zone of the present invention is different to the open annulus 24, the annulus reads on all of the positive limitations of the “extraction zone” as presently claimed.
Regarding Applicant’s argument that McGaa in view of Gilbert, Wilson, and Buchanan does not teach wherein the reducing gas is formed via catalyzed thermal decomposition and water-gas shift reaction (see pg. 9 of remarks), the Examiner respectfully disagrees.
McGaa in view of Gilbert, Wilson, and Buchanan is silent to wherein reducing gas containing hydrogen is formed via catalysed thermal decomposition and water-gas shift reactions. 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, catalysed by iron or other metals”, in accord with the method as presently claimed. As Buchanan teaches producing methane (a 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, thus one of ordinary skill would have a reasonable assumption that the features of claim 1 would also occur when practicing the method of McGaa in view of Gilbert, Wilson, and Buchanan.
Regarding Applicant’s argument that one of ordinary skill would not beginning with McGaa turn to Gilbert or Wilson on how to modify McGaa (see pg. 9 of remarks), the Examiner respectfully disagrees.
Gilbert is relied upon only to teach the expected moisture content of lignite, as McGaa teaches the use of lignite but is silent to the moisture content thereof (with respect to instant claim 1); and to teach drying the pellets of McGaa to a moisture content (with respect to instant claim 4), thus the use of gases in Gilbert has no bearing on how Gilbert has been applied to modify McGaa. Wilson does not disclose the presence of external hydrocarbon gas.
Conclusion
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