DETAILED ACTION
Maintenance Fees
MPEP 2504 explains that, for maintenance fees due on or after January 16, 2018, separate maintenance fees must be paid in:
Each reissued patent in force on (i.e., issued before) the maintenance fee due date. This includes all reissued patents that replace the same original patent.
An original patent that is not surrendered because one or more applications for reissue of that original patent are still pending on the maintenance fee due date.
USPTO records show that no maintenance fee is yet due for original US Patent No. 11,484,832 B2, i.e., the patent for which reissue is sought.
Applicant Submission
This Office action is responsive to the preliminary claim amendments filed on February 2, 2024.
The proposed substitute specification filed on February 2, 2024 is improper and has not been entered because the submission of a substitute specification fails to comply with 37 CFR 1.173(b)(1), (d) and (g), which govern amendments to the specification in reissue applications. Changes to the patent specification must be made by submission of the entire text of each added or rewritten paragraph, including markings pursuant to 37 CFR 1.173(d), except that an entire paragraph may be deleted by a statement deleting the paragraph, without presentation of the text of the paragraph. The precise point in the specification where any added or rewritten paragraph is located must be identified.
Thus, each amended paragraph and each new paragraph must be presented separately along with a separate identification (i.e., by column and line numbers) of their location in the patent specification. Further, the use of strikethrough is not permitted. Deletions must be shown by enclosing the text to be omitted in single brackets. See the examples of proper amendments in MPEP 1453.
Since the proposed substitute specification is improper and has not been entered, its contents will not be addressed in this Office action.
Claims Subject to Examination
Original patent claims 1-20 and new reissue claims 21-24 are subject to examination.
Objections to Amendments – Formalities
The amendment filed on February 2, 2024 is objected to for failing to comply with 37 CFR 1.173(c). Whenever there is an amendment to the claims, there must also be supplied, on pages separate from the pages containing the changes, an explanation of the support in the disclosure of the patent for the changes made to the claims (i.e., support for all changes made in the claims, whether insertions or deletions). A general allegation of support in the disclosure of the patent fails to satisfy the requirement of 37 CFR 1.173(c).
The claim amendments filed on February 2, 2024 are objected to for failing to comply with 37 CFR 1.173(b)(2), (d) and (g). Amended and added claims must show all changes made relative to the original patent claims which were in effect as of the filing date of the reissue application. Matter to be omitted must be enclosed in single brackets, and matter to be added must be underlined. Thus, new claims must be underlined in their entirety.
The claim amendments are improper because:
New claim 21 is not underlined in its entirety. Gaps appear in the underlining in lines 4, 7 and 8.
New claim 23 is not underlined in its entirety. Gaps appear in the underlining in lines 6, 7 and 9.
Original Disclosure – Definition
The instant application seeks reissue of US Patent No. 11,484,832 B2, which issued from US Application No. 17/570,615, which claimed priority to US Provisional Application No. 63/134,839. The “original disclosure” is the disclosure of Application No. 17/570,615 as filed on January 7, 2022. Any subject matter added to the disclosure during either the prosecution of the instant reissue application or the earlier-concluded prosecution of Application No. 17/570,615 does not constitute part of the “original disclosure”.
Prohibition of New Matter
35 USC 132(a) prohibits any amendment that introduces new matter into the disclosure of the invention.
35 USC 251(a) prohibits the introduction of new matter into the application for reissue.
Objection to Amendment – New Matter
The amendment filed on February 2, 2024 is objected to under 35 USC 132(a) and 35 USC 251(a) because it improperly introduces new matter for the reasons given below.
New reissue claim 22 recites “wherein the carbon reduction assembly is configured such that an amount of hot gas produced by the carbon reduction assembly is conveyed between the carbon reduction section and the dryer section.” This subject matter constitutes new matter because:
The recitation “the carbon reduction assembly is configured such that an amount of hot gas produced by the carbon reduction assembly” encompasses hot gas production by any portion/component of the carbon reduction assembly. In contrast, the original disclosure only provides support for hot gas production via the direct-fired carbon reduction section burner unit. Thus, the scope of claim 22 exceeds the scope of the original disclosure, i.e., it encompasses new matter.
The recitation “such that an amount of hot gas produced by the carbon reduction assembly is conveyed between the carbon reduction section and the dryer section” encompasses conveyance of hot gas (i) from the carbon reduction section to the dryer section, and (ii) from the dryer section to the carbon reduction section. In contrast, the original disclosure only provides support for hot gas conveyance from carbon reduction section to the dryer section. Thus, the scope of claim 22 exceeds the scope of the original disclosure, i.e., it encompasses new matter.
New reissue claim 24 recites “conveying an amount of hot gas produced by the carbon reduction assembly between the carbon reduction section and the dryer section.” This constitutes new matter for the same reasons given above with respect to claim 22.
For these reasons, claims 22 and 24 recite new matter. Applicant is required to cancel the new matter in response to this Office action.
Application Data Sheet
The Application Data Sheet (ADS) filed on February 2, 2024 is defective because of an error in the residency and mailing address for Inventor 6. For both the residency and mailing address, the city and state is identified as “Chickamauga, TN”. However, the first page of US Patent No. 11,484,832 B2 identifies the city and state for Inventor 6 as “Chickamauga, GA”. Further, it does not appear that “Chickamauga, TN” is a valid city and state for residency and mailing address.
In response to this Office action, applicant is required to correct the ADS in accordance with 37 CFR 1.76(c).
Filing Receipt
Due to the errors in the ADS, the Filing Receipt issued on February 27, 2024 contains inaccurate inventor information. As explained in section II of MPEP 601.05(a), a corrected ADS should be filed with a request for a corrected filing receipt unless accompanied by a request to take some other action, such as a request to change the applicant under 37 CFR 1.46(c), or a request to correct inventorship under 37 CFR 1.48.
Consent of Assignees
This application is objected to under 37 CFR 1.172(a) as lacking a proper written consent of all assignees owning an undivided interest in the patent. The consent of the assignees must be in compliance with 37 CFR 1.172. See MPEP 1410.01.
Specifically, the Form PTO/AIA /53 (Reissue Application: Consent of Assignee…) filed February 2, 2024 on behalf of Astec, Inc. is not properly executed because it bears an improper S-signature. When software inserts the S-signature in the form of machine-produced script, a single forward slash mark must appear before the script, and a single forward slash mark must appear after the script. See MPEP 502.02, subsection II, which states that “Presentation of a typed name in a script font without the typed name being placed between the required slashes does not present the proper indicia manifesting an intent to sign and will be treated as an unsigned document.”
Improper S-signature
John T. Smith
Proper S-signature
/John T. Smith/
A proper written consent of Astec, Inc. is required in reply to this Office action.
Reissue Oath/Declaration
The reissue declaration filed on February 2, 2024 is defective because it fails to specifically identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP 1414-1414.01.
As required by 37 CFR 1.175(a), the reissue oath/declaration must specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue. In identifying the error, it is sufficient that the reissue oath/declaration identify a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. It is not sufficient to merely state that applicant seeks to broaden or narrow the scope of a patent claim. Further, a statement in the reissue oath/declaration of “…failure to include a claim directed to…” and then reciting all the limitations of a newly added claim would not be considered a sufficient error statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa.
In the present case, the portion of the reissue declaration where the error statement is to be provided has been left blank.
The reissue declaration filed on February 2, 2024 is also defective because it fails to identify an original patent claim that the instant broadening reissue application seeks to broaden. See 37 CFR 1.175(b) and MPEP 1414-1414.01. As required by 37 CFR 1.175(b), for an application that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must identify a claim that the application seeks to broaden. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement.
A claim is broadened if it is broader in any one respect even though it may be narrower in other respects. In the instant application, new claims 21-24 are broader than patent claims 1-20. For example, new claims 21-24 do not require a burner unit that is direct-fired, a burner unit that is disposed upstream from the dry material inlet device, a dryer section drum that is direct-fired, or a carbon reduction assembly adapted to produce dry fly ash.
Effective Filing Date
The instant application claims priority to US Provisional Application No. 63/134,839.
The examiner has reviewed the disclosure of Provisional Application No. 63/134,839 in order to determine whether such application provides support in the manner required by 35 USC 112(a) for the subject matter claimed in the instant application. The examiner finds that Provisional Application No. 63/134,839 fails to provide support in the manner required by 35 USC 112(a) for claims 1-24 of the instant application at least because the provisional application fails to provide support for the claimed control unit operatively connected with the carbon reduction section and the dryer section.
Accordingly, the effective filing date of claims 1-24 of the instant application is January 7, 2022, i.e., the filing date of US Patent No. 11,484,832 B2 for which reissue is sought.
Listing of Prior Art
The following is a listing of the prior art cited in this Office action together with the shorthand reference used for each document (listed alphabetically):
“Benezech”
US Patent No. 2,167,100
“Choi et al.”
KR Publication No. 10-1392468 B1 (with translation)
“Crafton et al.”
US Patent No. 7,047,894 B2
“Fried”
US Publication No. 2013/0125792 A1
“Greer”
US Publication No. 2004/0033184 A1
“Guimard”
FR Publication No. 3 105 214 A1 (with translation)
“Hicks”
US Publication No. 2012/0028200 A1
“Knowles et al.”
US Patent No. 8,960,107 B2
“Nakagawa et al.”
US Publication No. 2015/0175890 A1
“Nakamura et al. ‘244”
US Patent No. 4,668,244
“Nakamura et al. ‘363”
US Patent No. 4,511,363
“Poling et al.”
US Patent No. 11,898,112 B2
“Swanson et al.”
US Patent No. 5,466,418
“Takai”
JP Publication No. 2001-163646 A (with translation)
Claim Construction
During examination, the pending claims are normally interpreted according to the broadest reasonable interpretation standard (hereinafter, the “BRI standard”). That is, claims are given their broadest reasonable interpretation consistent with the specification, and limitations in the specification are not read into the claims. See MPEP 2111 et seq.
An exception to the BRI standard occurs when the applicant acts as their own lexicographer. For this exception to apply, the applicant must clearly set forth a special definition of a claim term in the specification that differs from the plain and ordinary meaning it would otherwise possess. See MPEP 2111.01, subsection IV.
Another exception or special case occurs when a claim recites a means-plus-function limitation that must be interpreted in accordance with 35 USC 112 ¶ 6, or 35 USC 112(f). See MPEP 2181. According to the guidance provided by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc), 35 USC 112 ¶ 6 applies when the claim term fails to recite (i) sufficiently definite structure, and/or (ii) sufficient structure for performing the claimed function.
The following claim terms/limitations are construed by the examiner to aid in reexamination:
Claim Term:
dry material inlet device being adapted to receive the dry CCPs (claims 1, 15 and 16); dry material inlet device adapted to receive the dry CCPs (claims 21 and 23)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to receive dry CCPs, and (ii) include, but are not limited to, hoppers, feeders, gate valves, rotary airlocks, rotary feeders, single/double flap valves, slide/knife gate valves, and the like
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “device” is a generic placeholder for structure, and the structural term “inlet” does not constitute sufficient structure for performing the claimed function because an “inlet” is not a complete “device” for receiving the dry CCPs. Rather, an “inlet” is part of or defined by the complete “device”. Thus, the claimed “device” is synonymous with “means for receiving the dry CCPs, which means comprises or defines an inlet”.
According to the patent specification, the term “material inlet device” means any device, mechanism, assembly or combination thereof that is adapted to receive material, including wet and dry CCPs, into the assembly. The term “material inlet device” includes, without limitation, hoppers, feeders, gate valves, rotary airlocks, rotary feeders, single/double flap valves, slide/knife gate valves, and the like. See col. 3, ll. 49-55.
Claim Term:
direct-fired carbon reduction section burner unit…being adapted to reduce carbon content in the dry CCPs (claims 1, 15 and 16); burner unit adapted to reduce carbon content in the dry CCPs (claims 21 and 23)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or systems that (i) include a burner, (ii) are capable of functioning to reduce carbon content in the dry CCPs, and (iii) with respect to claims 1, 15 and 16 only, are direct-fired
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “unit” is a generic placeholder for structure, and the structural term “burner” does not constitute sufficient structure for performing the claimed function because a “burner” is not a complete “unit” for reducing the carbon content in the dry CCPs. Rather, a “burner” is part of the complete “unit”. Thus, the claimed “unit” is synonymous with “means for reducing carbon content in the dry CCPs, which means is direct-fired, and which means includes a burner”.
The specification fails to identify any specific device, mechanism, assembly or system suited to serve as the “burner unit”. Further, Figs. 1 and 2 of the drawings provide only a generally schematic illustration of the structure identified as the burner unit 34, 234. It is impossible to ascertain from either the specification or the drawings what structural elements constitute the claimed direct-fired carbon reduction section burner unit, or how these structural elements are structured and function to adapt the burner unit to reduce carbon content in the dry CCPs (including the manner in which the device is “direct-fired”).
For the embodiment of Fig. 2, the specification states that the direct-fired carbon reduction section 230 includes the burner unit 234, and a carbon reduction section drum 236 (which is preferably a rotary drum). See col. col. 6, ll. 19-27. However, the specification fails to explain the relationship between the burner unit 234 and the drum 236, fails to identify the specific structure of drum 236, and fails to explain the specific manner in which the burner unit 234 and drum 236 function together to reduce carbon content in the dry CCPs.
Claim Term:
wet material inlet device being adapted to receive the dry CCPs (claims 1, 15 and 16); wet material inlet device adapted to receive the dry CCPs (claims 21 and 23)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to receive wet CCPs, and (ii) include, but are not limited, to hoppers, feeders, gate valves, rotary airlocks, rotary feeders, single/double flap valves, slide/knife gate valves, and the like
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “device” is a generic placeholder for structure, and the structural term “inlet” does not constitute sufficient structure for performing the claimed function because an “inlet” is not a complete “device” for receiving the wet CCPs. Rather, an “inlet” is part of or defined by the complete “device”. Thus, the claimed “device” is synonymous with “means for receiving the wet CCPs, which means comprises or defines an inlet”.
According to the patent specification, the term “material inlet device” means any device, mechanism, assembly or combination thereof that is adapted to receive material, including wet and dry CCPs, into the assembly. The term “material inlet device” includes, without limitation, hoppers, feeders, gate valves, rotary airlocks, rotary feeders, single/double flap valves, slide/knife gate valves, and the like. See col. 3, ll. 49-55.
Claim Term:
direct-fired dryer section drum being adapted to dry the wet CCPs (claims 1, 15 and 16); dryer section drum adapted to dry the wet CCPs (claims 21 and 23)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or systems that (i) include a drum, (ii) include but are not limited to the use of a rotary dryer drum, (iii) are capable of functioning to dry the wet CCPs, and (iv) with respect to claims 1, 15 and 16 only, are direct-fired
Examiner’s Explanation:
This term invokes 35 USC 112(f) because the structural term “drum” does not constitute sufficient structure for performing the claimed function because a “drum” is not a complete device, mechanism, assembly or system for drying the wet CCPs. Rather, a “drum” is part of the complete device, mechanism, assembly or system since a “drum” requires a heat source and associated structure for delivering heat to the drum to dry the wet CCPs. Thus, the claimed “drum” is synonymous with “means for drying the wet CCPs, which means includes a drum”.
The specification identifies a single preferred embodiment in which the direct-fired dryer section drum 44, 244 comprises a rotary dryer drum. See col. 5, ll. 30-31; col. 6, ll. 35-36. However, the specification fails to identify the specific structure of such a rotary dryer drum, and fails to explain the specific manner in which it functions/operates to dry the wet CCPs. Further, Figs. 1 and 2 of the drawings provide only a generally schematic illustration of the structure identified as the direct-fired dryer section drum 44, 244. It is impossible to ascertain from either the specification or the drawings what structural elements constitute the disclosed rotary dryer drum (including what structural elements constitute its heat source and heat delivery structure), or how these structural elements are structured and function to adapt the rotary dryer drum to dry the wet CCPs (including the manner in which the device is “direct-fired”).
Claim Term:
control unit (claims 1, 15, 16, 21 and 23)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are configured in some unspecified manner to carry out some unspecified control of the claimed carbon reduction assembly, and (ii) include, but are not limited to, control processing units, microprocessors, monitoring processors, SCADA systems, PLC systems, alarm monitoring, algorithms, and the like
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “unit” is a generic placeholder for structure, and the term “control” defines the function performed by the claimed “unit”. A generically recited “control unit” (claimed apart from the recitation of any of its specific structural components or their interrelationships, and/or claimed apart from the specific computer programming (i.e., algorithm) required to carry out the associated control function)) does not constitute sufficient structure for performing the claimed “control”. Thus, the claimed “control unit” is synonymous with “means for controlling”.
According to the patent specification, the term “control unit” means any device, mechanism, assembly or combination thereof that is adapted to control or supervise the operation of the assembly, receive and interpret program instructions, send control signals, and/or route data throughout the assembly. The term “control unit” includes, without limitation, control processing units, microprocessors, monitoring processors, SCADA systems, PLC systems, alarm monitoring, algorithms, and the like. See col. 3, ll. 40-48.
Claim Term:
finished product storage unit being adapted to store an amount of the dry fly ash (claim 2)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to store an amount of the dry fly ash, and (ii) include, but are not limited to, silos, bins, rail cars, road transport tankers, bags, tanks, and the like
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “unit” is a generic placeholder for structure, the modifier “finished product storage” refers to the function performed by the claimed “unit”, and the phrase “adapted to store…” defines the function performed. Thus, the claimed “unit” is synonymous with “means for storing a finished product, the finished product being an amount of the dry fly ash”.
According to the patent specification, the term “storage unit” means any device, mechanism, assembly or combination thereof that is adapted to store or house material, including fly ash. The term “storage unit” includes, without limitation, silos, bins, rail cars, road transport tankers, bags, tanks, and the like. See col. 3, ll. 63-67.
Claim Term:
carbon reduction feed material storage unit being adapted to store an amount of the dry CCPs (claim 3)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to store an amount of the dry CCPs, and (ii) include, but are not limited to, silos, bins, rail cars, road transport tankers, bags, tanks, and the like
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “unit” is a generic placeholder for structure, the modifier “carbon reduction feed material storage” refers to the function performed by the claimed “unit”, and the phrase “adapted to store…” defines the function performed. Thus, the claimed “unit” is synonymous with “means for storing a carbon reduction feed material, the feed material being an amount of the dry CCPs”.
According to the patent specification, the term “storage unit” means any device, mechanism, assembly or combination thereof that is adapted to store or house material, including fly ash. The term “storage unit” includes, without limitation, silos, bins, rail cars, road transport tankers, bags, tanks, and the like. See col. 3, ll. 63-67.
Claim Term:
dryer feed material storage unit being adapted to store an amount of the wet CCPs (claim 4)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to store an amount of the wet CCPs, and (ii) include, but are not limited to, silos, bins, rail cars, road transport tankers, bags, tanks, and the like
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “unit” is a generic placeholder for structure, the modifier “dryer feed material storage” refers to the function performed by the claimed “unit”, and the phrase “adapted to store…” defines the function performed. Thus, the claimed “unit” is synonymous with “means for storing a dryer feed material, the feed material being an amount of the wet CCPs”.
According to the patent specification, the term “storage unit” means any device, mechanism, assembly or combination thereof that is adapted to store or house material, including fly ash. The term “storage unit” includes, without limitation, silos, bins, rail cars, road transport tankers, bags, tanks, and the like. See col. 3, ll. 63-67.
Claim Term:
cooler...being adapted to cool an amount of the dry fly ash (claim 5)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that are adapted to cool an amount of the dry fly ash
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “cooler” is a generic term that does not constitute sufficient structure for performing the claimed function. The claim does not specify any of the structural elements of the “cooler” or their interrelationships. Thus, the claimed “cooler” is synonymous with “means for cooling an amount of the dry CCPs”.
The specification fails to identify any specific device, mechanism, assembly or system suited to serve as the “cooler”. Further, Fig. 2 of the drawings provides only a generally schematic illustration of the structure identified as the cooler 360. It is impossible to ascertain from either the specification or the drawings what structural elements constitute the claimed cooler, or how these structural elements are structured and function to adapt the cooler to cool an amount of the dry fly ash.
Claim Term:
first classifier…adapted to classify an amount of the dry CCPs (claim 6)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to classify an amount of the dry CCPs, and (ii) include, but are not limited to, screens, sieves, air classifiers, cyclones, air-sweep mills, fluidized beds, centrifuges, air elutriation, and the like
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “classifier” is a generic term that does not constitute sufficient structure for performing the claimed function. The claim does not specify any of the structural elements of the “classifier” or their interrelationships. Thus, the claimed “classifier” is synonymous with “means for classifying an amount of the dry CCPs”.
According to the patent specification, the term “classifier” means any device, mechanism, assembly or combination thereof that is adapted to classify, separate, or sort particles and mixtures into constituent parts by size and/or density. The term “classifier” includes, without limitation, screens, sieves, air classifiers, cyclones, air-sweep mills, fluidized beds, centrifuges, air elutriation, and the like. See col. 3, ll. 33-39.
Claim Term:
second classifier…adapted to classify an amount of the wet CCPs (claim 7)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to classify an amount of the wet CCPs, and (ii) include, but are not limited to, screens, sieves, air classifiers, cyclones, air-sweep mills, fluidized beds, centrifuges, air elutriation, and the like
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “classifier” is a generic term that does not constitute sufficient structure for performing the claimed function. The claim does not specify any of the structural elements of the “classifier” or their interrelationships. Thus, the claimed “classifier” is synonymous with “means for classifying an amount of the wet CCPs”.
According to the patent specification, the term “classifier” means any device, mechanism, assembly or combination thereof that is adapted to classify, separate, or sort particles and mixtures into constituent parts by size and/or density. The term “classifier” includes, without limitation, screens, sieves, air classifiers, cyclones, air-sweep mills, fluidized beds, centrifuges, air elutriation, and the like. See col. 3, ll. 33-39.
Claim Term:
particle size reduction unit being adapted to reduce the particle size of an amount of the dry CCPs (claim 8)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to reduce the particle size of an amount of the dry CCPs, and (ii) include, but are not limited to, crushers, grinders, ball mills, rod mills, tower mills, tube mills, pebble mills, pin mills, hammer/screen mills, and the like
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “unit” is a generic placeholder for structure, the modifier “particle size reduction” refers to the function performed by the claimed “unit”, and the phrase “adapted to reduce…” defines the function performed. Thus, the claimed “unit” is synonymous with “means for reducing the particle size of an amount of the dry CCPs”.
According to the patent specification, the term “particle size reduction unit” means any device, mechanism, assembly or combination thereof that is adapted to reduce the size of particles, including wet and dry CCPs. The term “particle size reduction unit” includes, without limitation, crushers, grinders, ball mills, rod mills, tower mills, tube mills, pebble mills, pin mills, hammer/screen mills, and the like. See col. 3, ll. 56-62.
Claim Term:
supplemental burner unit (claim 9)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or systems that (i) include a burner, (ii) are capable of functioning to reduce carbon content in the dry CCPs, and (iii) with respect to claims 1, 15 and 16 only, are direct-fired
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “unit” is a generic placeholder for structure, and the structural term “burner” does not constitute sufficient structure for performing the claimed function because a “burner” is not a complete “unit” for accomplishing supplemental burning. Rather, a “burner” is part of the complete “unit”. Thus, the claimed “unit” is synonymous with “means for burning supplementally, which means includes a burner”.
The specification fails to identify any specific device, mechanism, assembly or system suited to serve as the “supplemental burner unit”. Further, Fig. 2 of the drawings provides only a generally schematic illustration of the structure identified as the supplemental burner unit 370. It is impossible to ascertain from either the specification or the drawings what structural elements constitute the claimed supplemental burner unit, or how these structural elements are structured and function to adapt the burner unit to burn supplementally.
Claim Term:
first weighing device (claim 10), second weighing device (claim 11)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that (i) function to weigh a material or object, and (ii) include, but are not limited, to belt scales, load cells, weight belt feeders, optical belt scales, and the like
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “device” is a generic placeholder for structure, and the modifier “weighing” defines the function performed. Thus, the claimed “device” is synonymous with “means for weighing”.
According to the patent specification, the term “weighing device” means any device, mechanism, assembly or combination thereof that is adapted to weigh material, including fly ash and wet and dry CCPs. The term “weighing device” includes, without limitation, belt scales, load cells, weight belt feeders, optical belt scales, and the like. See col. 4, ll. 1-6.
Claim Term:
exhaust gas cooling device…being adapted to cool exhaust from the direct-fired dryer section drum (claim 13)
Examiner’s Construction:
any and all possible devices, mechanisms, assemblies or combinations thereof that are adapted to cool gas exhausted from the direct-fired dryer section drum
Examiner’s Explanation:
This term invokes 35 USC 112(f) because “device” is a generic placeholder for structure, the modifier “exhaust gas cooling” refers to the function performed by the claimed “device”, and the phrase “adapted to cool…” defines the function performed. Thus, the claimed “cooling device” is synonymous with “means for cooling gas exhausted from the direct-fired dryer section drum”.
The specification fails to identify any specific device, mechanism, assembly or system suited to serve as the “exhaust gas cooling device”. Further, Fig. 2 of the drawings provides only a generally schematic illustration of the structure identified as the exhaust gas cooling device 390. It is impossible to ascertain from either the specification or the drawings what structural elements constitute the claimed cooling device, or how these structural elements are structured and function to adapt the cooling device to cool exhaust gas from the direct-fired dryer section drum.
Claim Rejections – 35 USC § 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(b) MULTIPLE REISSUED PATENTS.—The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
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(c) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
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(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS. No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
GROUND 1: Claims 1-24 are rejected under 35 U.S.C. 251 as being based upon a defective reissue oath/declaration. See 37 CFR 1.175. The nature of the defect(s) in the reissue oath/declaration is explained above.
GROUND 2: Claims 22 and 24 are rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is explained above.
Claim Rejections - 35 USC § 112(a)
The following is a quotation 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.
GROUND 3: Claims 22 and 24 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because these claims recite new matter. The added material which is not supported by the original disclosure is explained above.
GROUND 4: Claims 1-24 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. These claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The Federal Circuit has repeatedly held that “the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’.” Nevertheless, not everything necessary to practice the invention need be disclosed; all that is necessary is that one skilled in the art be able to practice the claimed invention, given the level of knowledge and skill in the art. With respect to the breadth of a claim, the relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. In other words, the scope of the claims must be less than or equal to the scope of the enablement provided by the specification. See MPEP 2164.08.
As explained in the Claim Construction section above:
Claims 1, 15, 16, 21 and 23 require both a dry material inlet device adapted to receive the dry CCPs, and a wet material inlet device adapted to receive the dry CCPs.
Claims 1, 15, 16, 21 and 23 are construed broadly to cover any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to receive dry and wet CCPs, and (ii) include, but are not limited, to hoppers, feeders, gate valves, rotary airlocks, rotary feeders, single/double flap valves, slide/knife gate valves, and the like.
Claims 1, 15 and 16 require a direct-fired carbon reduction section burner unit…being adapted to reduce carbon content in the dry CCPs, and claims 21 and 23 require a burner unit adapted to reduce carbon content in the dry CCPs.
Claims 1, 15, 16, 21 and 23 are construed broadly to cover any and all possible devices, mechanisms, assemblies or systems that (i) include a burner, (ii) are capable of functioning to reduce carbon content in the dry CCPs, and (iii) with respect to claims 1, 15 and 16 only, are direct-fired.
Claims 1, 15 and 16 require a direct-fired dryer section drum being adapted to dry the wet CCPs, and claims 21 and 23 require a dryer section drum adapted to dry the wet CCPs.
Claims 1, 15, 16, 21 and 23 are construed broadly to cover any and all possible devices, mechanisms, assemblies or systems that (i) include a drum, (ii) include but are not limited to the use of a rotary dryer drum, (iii) are capable of functioning to dry the wet CCPs, and (iv) with respect to claims 1, 15 and 16 only, are direct-fired.
Claims 1, 15, 16, 21 and 23 require a control unit.
Claims 1, 15, 16, 21 and 23 are construed broadly to cover any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are configured in some unspecified manner to carry out some unspecified control of the claimed carbon reduction assembly, and (ii) include, but are not limited to, control processing units, microprocessors, monitoring processors, SCADA systems, PLC systems, alarm monitoring, algorithms, and the like.
Claim 2 requires a finished product storage unit being adapted to store an amount of the dry fly ash.
Claim 2 is construed broadly to cover any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to store an amount of the dry fly ash, and (ii) include, but are not limited to, silos, bins, rail cars, road transport tankers, bags, tanks, and the like.
Claim 3 requires a carbon reduction feed material storage unit being adapted to store an amount of the dry CCPs.
Claim 3 is construed broadly to cover any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to store an amount of the dry CCPs, and (ii) include, but are not limited to, silos, bins, rail cars, road transport tankers, bags, tanks, and the like.
Claim 4 requires a dryer feed material storage unit being adapted to store an amount of the wet CCPs.
Claim 4 is construed broadly to cover any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to store an amount of the wet CCPs, and (ii) include, but are not limited to, silos, bins, rail cars, road transport tankers, bags, tanks, and the like.
Claim 5 requires a cooler...being adapted to cool an amount of the dry fly ash.
Claim 5 is construed broadly to cover any and all possible devices, mechanisms, assemblies or combinations thereof that are adapted to cool an amount of the dry fly ash.
Claim 6 requires a first classifier…adapted to classify an amount of the dry CCPs.
Claim 6 is construed broadly to cover any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to classify an amount of the dry CCPs, and (ii) include, but are not limited to, screens, sieves, air classifiers, cyclones, air-sweep mills, fluidized beds, centrifuges, air elutriation, and the like.
Claim 7 requires a second classifier…adapted to classify an amount of the wet CCPs.
Claim 7 is construed broadly to cover any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to classify an amount of the wet CCPs, and (ii) include, but are not limited to, screens, sieves, air classifiers, cyclones, air-sweep mills, fluidized beds, centrifuges, air elutriation, and the like.
Claim 8 requires a particle size reduction unit being adapted to reduce the particle size of an amount of the dry CCPs.
Claim 8 is construed broadly to cover any and all possible devices, mechanisms, assemblies or combinations thereof that (i) are adapted to reduce the particle size of an amount of the dry CCPs, and (ii) include, but are not limited to, crushers, grinders, ball mills, rod mills, tower mills, tube mills, pebble mills, pin mills, hammer/screen mills, and the like.
Claim 9 requires a supplemental burner unit.
Claim 9 is construed broadly to cover any and all possible devices, mechanisms, assemblies or systems that (i) include a burner, (ii) are capable of functioning to reduce carbon content in the dry CCPs, and (iii) with respect to claims 1, 15 and 16 only, are direct-fired.
Claims 10 and 11 require first and second weighing devices.
Claims 10 and 11 are construed to broadly cover any and all possible devices, mechanisms, assemblies or combinations thereof that (i) function to weigh a material or object, and (ii) include, but are not limited, to belt scales, load cells, weight belt feeders, optical belt scales, and the like.
Claim 13 requires an exhaust gas cooling device…being adapted to cool exhaust from the direct-fired dryer section drum.
Claim 13 is construed broadly to cover any and all possible devices, mechanisms, assemblies or combinations thereof that are adapted to cool gas exhausted from the direct-fired dryer section drum.
With respect to the inlet devices of claims 1, 15, 16, 21 and 23, the control unit of claims 1, 15, 16, 21 and 23, the storage units of claims 2-4, the classifiers of claims 6 and 7, the reduction unit of claim 8, and the weighing devices of claims 10 and 11, the specification provides a general list of possible structures. However, neither the claims nor the specification limit the claimed devices to any specific or particular structure. Instead, the disclosure requires the skilled artisan to investigate every possible option and determine how to integrate each viable option into an operational device. As a result, the scope of enablement provided to one skilled in the art by the disclosure is not commensurate with the scope of protection sought by the claims.
With respect to the burner units of claims 1, 9, 15, 16, 21 and 23, and the dryer section drum of claims 1, 15, 16, 21 and 23, the specification identifies only a broad class of possible devices. The specification fails to identify the specific structure of any embodiment of the claimed device, and fails to explain the specific manner in which it functions/operates. Instead, the disclosure requires the skilled artisan to investigate every possible option and determine how to integrate each viable option into an operational device. As a result, the scope of enablement provided to one skilled in the art by the disclosure is not commensurate with the scope of protection sought by the claims.
With respect to the cooler of claim 5 and the cooling device of claim 13, the specification fails to identify any specific device, mechanism, assembly or system suited to serve as the claimed device. Instead, the disclosure requires the skilled artisan to investigate every possible option and determine how to integrate each viable option into an operational device. As a result, the scope of enablement provided to one skilled in the art by the disclosure is not commensurate with the scope of protection sought by the claims.
Claim 16 broadly recites the step of “removing carbon from the fly ash derived from the wet and dry CCPs” (l. 23). Claim 17 broadly recites the step of “sizing the dry fly ash.” Claim 18 broadly recites the step of “sizing the dry CCPs.” Claim 19 broadly recites the step of “removing water from wet CCPs.” Claim 20 broadly recites the step of “removing mercury from exhaust gas derived from the wet CCPs and the dry CCPs.” However, neither the claims nor the specification limits the claimed method to any specific manner in which the carbon is removed, any specific way in which the ash is sized, any specific manner in which water is removed, or any specific way in which mercury is removed. Instead, the disclosure requires the skilled artisan to investigate every possible option and determine how to integrate each viable option into an operational device. As a result, the scope of enablement provided to one skilled in the art by the disclosure is not commensurate with the scope of protection sought by the claims.
Concerning the Wands factors (see MPEP 2164.01(a)):
The scope of the claims is very broad because they cover any and all possible structures that are capable of being used and that are capable of functioning in any and all possible manners.
The nature of the invention is a complex assembly capable of processing both wet and dry CCPs in order to reduce carbon therein.
The prior art considered by the examiner establishes that it was known in the art to:
Use inlet hoppers to feed CCPs and other components to be combined into pellets, dried in a rotary drying oven, pre-calcinated and calcinated in a rotary kiln, cooled in an insulated container, and classified using a sieve (see Takai). While this is one specific approach to processing CCPs, it is not representative of the many different classes or categories of possible processing assemblies encompassed by applicant’s broad disclosure and claims.
Use a tank to feed wet CCPs to be dried in a drying sheath, classified using a cyclone separator, calcinated in a combustion chamber, classified again using a cyclone separator, and cooled in a cyclone cooler, with the processing being controlled by a control unit (see Guimard). While this is another specific approach to processing CCPs, it is not representative of the many different classes or categories of possible processing assemblies encompassed by applicant’s broad disclosure and claims.
The skilled artisan is familiar with prior art systems for processing CCPs, including the prior art structures discussed above. However, the skilled artisan is not aware of a broad number of different systems that combine a carbon reduction section having a dry CCP inlet device and associated carbon reduction burner unit with a dryer section having a wet CCP inlet device and associated dryer section drum, with a control unit operatively connected with the carbon reduction section and the dryer section. Further, the skilled artisan would not be aware of any and all possible systems that are capable of integrating the processing of both dry CCPs and wet CCPs in a single assembly (including those not yet known in the art).
(E) The level of predictability in the art is considered to be relatively low because integrating the processing of both dry CCPs and wet CCPs in a single assembly involves a significant level of complexity.
(F) The amount of direction provided by the inventor is very limited in comparison to the scope of the claims. For some of the claimed structures, the original disclosure provides only a general list of possible devices. For other claimed structures, the specification identifies only a broad class of possible devices. For still other claimed structures, the specification fails to identify any specific device, mechanism, assembly or system suited to serve as the claimed device. In contrast, the claims broadly cover any and all possible structures that are capable of serving as the claimed structures in any and all possible manners. Thus, the scope of enablement provided to on