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 .
Priority
This application repeats a substantial portion of prior Application No. 17/498,824, filed 10/12/2021, and adds disclosure not presented in the prior application. The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/498,824, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application, particularly regarding the production of electrical energy. Therefore the effective filing date of the present application is 10/24/2023.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 07/23/2026 has been considered by the examiner.
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 7 and 13 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.
Regarding claim 13, the amended values (1 part of the reduced size vegetable matter) is not supported by the Specification as originally filed. The Specification only describes embodiments utilizing 2 parts of the reduced size vegetable matter. For the purposes of examination, the value of “2 parts” as originally described is considered to encompass any parts deemed suitable for the topsoil product as would be known to one of ordinary skill in the art.
Regarding claims 7 and 13, the step of reserving the removed dirt and combining the removed dirt is not supported by the Specification as originally filed. For the purposes of examination, the limitation dirt is given its pain meaning as defined by Merriam-Webster dictionary to include, but not limited to, any of the following: : a filthy or soiling substance such as mud, dust, or grime, loose or packed soil or sand.
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.
Claims 1-5 are 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 1 recites a process for producing compost. The claim, however, involves converting waste energy into electrical energy. While a process may have multiple outputs, the term “compost” implies a biological decomposition product. Here, the result of the claimed steps is electricity and the preamble is considered indefinite because it does not align with the claimed steps which do not describe a method of producing a compost product as would be understood by one of skill in the art. For the purposes of examination the term “compost” is interpreted to include any agricultural material.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Schmitt (Airburners, 2019), as evidenced by Applicant’s Specification in view of Sirois et al. (US Department of Agriculture Research Service, 1985).
In regard to claim 1, Schmitt teaches a process for producing compost (e.g. biochar that can be repurposed for purposes such as soil remediation or gardening) [pg. 1, 3rd para.] electrical energy (e.g. producing power and conversion to electricity) [pg. 1], comprising the steps of:
(a) providing a supply of vegetable matter comprising trees, stumps, brush, leaves, or combinations thereof (e.g. wood waste; logs) [pg. 1, 2nd para.; pg. 2, 2nd to last para.];
(d) incinerating a variable amount of the vegetable matter using an air curtain burner (e.g. air curtain technology) [pg. 1, 2nd para.] to produce ash (e.g. clean carbon ash) [pg. 1, 3rd para.] and waste heat (e.g. capturing heat loss [pg. 2, 1st para.];
(e) combining the reduced-size vegetable matter (e.g. biochar) and ash (e.g. among the ash is a certain amount of biochar that can also be repurposed for purposes such as soil remediation or gardening) [pg. 1, 3rd para.] and;
(f) converting the waste heat into electrical energy using a power module that captures a portion of the waste heat, directs the captured waste heat to a heat exchanger to produce hot water, and supplies the hot water to a power-generating unit that drives an induction generator (e.g. an example air burner system configured to convert thermal energy into electrical energy includes the PGFireBox 100 KW device manufactured and sold by Air Burners, Inc. The power module which captures a portion of the waste heat in the exhaust from the air burner. The captured waste heat is directed to a heat exchanger to produce hot water which supplies a power-generating unit that converts thermal energy into electrical energy by driving an induction generator) [Applicant’s Specification, para. 0030], wherein Schmitt describes the PGFireBox®, produced by Air Burners® 100kW model [pg. 1].
While Schmitt describes supplying the vegetable matter, the reference does not explicitly disclose:
(b) agitating the vegetable matter to loosen and remove dirt associated with the vegetable matter; and
(c) reducing the size of the vegetable matter (e.g. logs, bark, sawdust and wood chips are inherently reduced size vegetable matter).
Sirois et al. is directed to the preparation of wood for energy use [abstract]. The initial form of the wood may or may not require additional processing before burning [pg. 176, 2nd para.] including
(b) agitating the vegetable matter to loosen and remove dirt associated with the vegetable matter (e.g. cleaning the wood material to remove dirt contamination by the use of disc screens, air screens, the flotation method, and magnets) [para. bridging pgs. 178-179]; and
(c) reducing the size of the vegetable matter (e.g. sizing is necessary when the type of boiler requires a uniform particle size…initial sizing can take place for use with a portable chipper, using an auger to separate the wood chips into smaller and larger materials) [pg. 179].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention remove dirt from the vegetable matter to reduce damage and maintenance to equipment and reduce pollution [pg. 178, last 2 para.]. One of ordinary skill in the art would have been motivated to reduce the size of the vegetable matter because a small particle size allows for faster combustion [pg. 175, 2nd para.].
In regard to claim 2, Sirois et al. disclose a step of screening the vegetable matter to remove large debris (e.g. sizing by screening, the larger material is passed over the screen and separated into one pile) [pg. 179; sizing].
In regard to claims 3-4, Schmitt discloses at least partially decomposing the vegetable matter (e.g. biochar is the result of heated biomass; ash is a certain amount of biochar) [pg. 1, 3rd para.]. Food and garden waste is considered to begin to decompose immediately due to microbial activity and one of ordinary skill in the art would understand the vegetable matter described in Schmitt is at least partially decomposed before combining with the ash.
In regard to claim 5, Sirois et al. disclose reducing the size of the vegetable matter by processing the vegetable matter through a chipper (whole-tree chipping in a wood chipper) [pg. 176].
In regard to claim 7, Schmitt teaches a process for producing topsoil (e.g. biochar that can be repurposed for purposes such as soil remediation or gardening) [pg. 1, 3rd para.] and electrical energy (e.g. producing power and conversion to electricity) [pg. 1], comprising the steps of:
(a) providing a supply of vegetable matter comprising trees, stumps, brush, leaves, or combinations thereof (e.g. wood waste; logs) [pg. 1, 2nd para.; pg. 2, 2nd to last para.];
(d) incinerating a variable amount of the vegetable matter using an air curtain burner (e.g. air curtain technology) [pg. 1, 2nd para.] to produce ash (e.g. clean carbon ash) [pg. 1, 3rd para.] and waste heat (e.g. capturing heat loss [pg. 2, 1st para.];
(e) combining the reduced-size vegetable matter (e.g. biochar) and ash (e.g. among the ash is a certain amount of biochar that can also be repurposed for purposes such as soil remediation or gardening) [pg. 1, 3rd para.], wherein both are considered dirty materials; and
(f) converting the waste heat into electrical energy using a power module that captures a portion of the waste heat, directs the captured waste heat to a heat exchanger to produce hot water, and supplies the hot water to a power-generating unit that drives an induction generator (e.g. an example air burner system configured to convert thermal energy into electrical energy includes the PGFireBox 100 KW device manufactured and sold by Air Burners, Inc. The power module which captures a portion of the waste heat in the exhaust from the air burner. The captured waste heat is directed to a heat exchanger to produce hot water which supplies a power-generating unit that converts thermal energy into electrical energy by driving an induction generator) [Applicant’s Specification, para. 0030], wherein Schmitt describes the PGFireBox®, produced by Air Burners® 100kW model [pg. 1]
While Schmitt describes supplying the vegetable matter, the reference does not explicitly disclose:
(b) agitating the vegetable matter to loosen and remove dirt associated with the vegetable matter; and
(c) reducing the size of the vegetable matter (e.g. logs, bark, sawdust and wood chips are inherently reduced size vegetable matter).
Sirois et al. is directed to the preparation of wood for energy use [abstract]. The initial form of the wood may or may not require additional processing before burning [pg. 176, 2nd para.] including
(b) agitating the vegetable matter to loosen and remove dirt associated with the vegetable matter (e.g. cleaning the wood material to remove dirt contamination by the use of disc screens, air screens, the flotation method, and magnets) [para. bridging pgs. 178-179]; and
(c) reducing the size of the vegetable matter (e.g. sizing is necessary when the type of boiler requires a uniform particle size…initial sizing can take place for use with a portable chipper, using an auger to separate the wood chips into smaller and larger materials) [pg. 179].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention remove dirt from the vegetable matter to reduce damage and maintenance to equipment and reduce pollution [pg. 178, last 2 para.]. One of ordinary skill in the art would have been motivated to reduce the size of the vegetable matter because a small particle size allows for faster combustion [pg. 175, 2nd para.].
In regard to claim 8, Sirois et al. disclose a step of screening the vegetable matter to remove large debris (e.g. sizing by screening, the larger material is passed over the screen and separated into one pile) [pg. 179; sizing].
In regard to claims 9-10, Schmitt disclose at least partially decomposing the vegetable matter (e.g. biochar is the result of heated biomass; ash is a certain amount of biochar) [pg. 1, 3rd para.]. Food and garden waste is considered to begin to decompose immediately due to microbial activity and one of ordinary skill in the art would understand the vegetable matter described in Schmitt is at least partially decomposed before combining with the ash.
In regard to claim 11, Sirois et al. disclose reducing the size of the vegetable matter by processing the vegetable matter through a chipper (whole-tree chipping in a wood chipper) [pg. 176].
In regard to claim 13, Schmitt teaches the byproduct of the system is a clean carbon ash that can be turned back into landfill cover or sold to an area horticulturist as a soil amendment. Among the ash is a certain amount of biochar that can also be repurposed for purposes such as soil remediation or gardening. [pg. 1, 3rd para.]. The reference does not explicitly disclose the parts of the components in the soil amendment as recited in the claim. However, soil is inherently comprises of dirt and soil contains reduced-size vegetable and plant matter in various stages of breakdown, known collectively as soil organic matter. Schmitt describes the ash for use as a soil amendment. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. Here, the general conditions of the claim are disclosed in Schmitt and it is not inventive to discover the optimum or workable ranges by routine experimentation.
Response to Arguments
The objection to claim 13 is withdrawn in view of Applicant’s amendment to the claim. The rejection of claims 7-13 are rejected under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to the claims.
Applicant’s arguments, filed 07/21/2026, with respect to rejection(s) of the claim(s) based on the teachings of the Juárez et al. reference have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 Jennifer A Smith whose telephone number is (571)270-3599. The examiner can normally be reached Monday - Friday 9:30am-6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731 August 11, 2026
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