DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Applicant’s amendments to Figs. 1, 2, 3, 6, 8, 10, 12, and 13 to delete reference numerals not mentioned in the description is noted.
Applicant amended Claims 1, and 6-7. Applicant canceled claims 8-17. Support for the amendments is found in the original filing. No new matter is presented.
Information Disclosure Statements
The information disclosure statements (IDS) submitted on 12/18/2023, 03/14/2024, and 07/22/2024 have been considered by the examiner.
Response to Amendment
Responsive to communications filed on 08/24/2026, amendments to the claims have been acknowledged.
The rejections over NPL Kakela et al. are maintained in view of NPL Tam et al. and NPL Piret et al. as necessitated by amendment.
Terminal Disclaimer
The terminal disclaimer filed on 08/24/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of copending Application No. 18/414,956 (US PG PUB 20240263095 A1) has been reviewed and is accepted. The terminal disclaimer has been recorded.
Election/Restrictions
Claims 9-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected distinct process, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/24/2026.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-7 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over NPL Kakela et al. in view of NPL Tam et al. and NPL Piret et al.
Regarding Claims 1-2 and 4-5, NPL Kakela teaches introducing a taconite pellet into a blast furnace, wherein the taconite pellet comprises magnetite, thereby oxidizing the magnetite to hematite (Pages 95, 99).
NPL Kakela does not expressly teach a taconite pellet addition composition having the composition overlapping the instantly claimed composition.
However, NPL Tam et al. teaches macadamia nut shell activated carbon blast furnace additions (meeting the limitation for a taconite pellet addition composition), having an exemplary carbon (C) concentration of 94.58% , hydrogen (H) concentration of 0.97%, nitrogen (N) concentration of 0.47%, and sulfur (S) concentrations of 0.03% by weight. These concentrations of C, H, N, and S meet the instantly claimed range of Claim 1 for at least about 55 wt% total carbon, at most about 5 wt% hydrogen, at most about 1 wt % nitrogen, at most about 05 wt % phosphorous, and at most about 0.2 wt % sulfur. These concentrations also meet the limitations of Claim 4 for at least about 70 wt % total carbon on a dry basis.
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The limitation of Claim 5 for at least about 95 wt % total carbon on a dry basis, is met by the teaching of 94.58% carbon in NPL Tam et al. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap but are merely close. See MPEP 2144.05(I).
Regarding the newly amended limitations of Claim 1, NPL Kakela does not expressly teach an additive selected from the group consisting of sodium hydroxide, magnesium oxide, hydrogen bromide, hydrogen chloride, potassium permanganate, iron chloride, iron bromide, and combinations thereof.
However, NPL Piret et al. teaches at (Page 215) binding pelletized taconite powder used as blast furnace charge with a sodium hydroxide binder, meeting the limitations of the instant Claims 1 and 2.
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to bind the biomass material of NPL Tam et al. with a sodium hydroxide binder in order to form a strong fuel pellet and prevent breakage based on the teachings of NPL Piret et al. at (Pages 215-216).
The process of NPL Kakela modified with the binder of NPL Piret et al. and macadamia nut shell activated carbon blast furnace additions (meeting the limitation for a taconite pellet addition composition) of NPL Tam et al. meets the limitations of instant Claims 1-2 and 4-5.
Regarding Claim 3, modified NPL Kakela teaches the limitations set forth above. NPL Kakela further teaches a taconite pellet comprising taconite ore powder (Page 96). Any furnace addition can be considered an “addition composition” or additive provided to the furnace in the steelmaking process. In that way, the taconite pellets, comprising taconite ore powder, meet the limitation of the instant claim for a taconite pellet addition composition comprising taconite ore powder.
Regarding Claim 6, modified NPL Kakela teaches the limitations set forth above. NPL Kakela further teaches a taconite pellet comprising taconite ore powder (Page 96). As set forth above, NPL Tam et al. teaches macadamia nut shell activated carbon blast furnace additions, meeting the limitations of the instant Claim for the taconite pellet addition composition being free of fossil fuel.
Regarding Claim 7, modified NPL Kakela teaches the limitations set forth above. NPL Tam et al. teaches macadamia nut shell activated carbon blast furnace additions, meeting the limitation for the total carbon consisting of biogenic carbon.
Response to Arguments
Applicant's arguments filed 08/24/2026 have been fully considered but they are not persuasive.
Applicant argues the cited reference taught the addition of a compound that has been removed from a list of alternatives via amendment. Applicant’s instant Specification details at [00378] “In fact, certain embodiments incorporate additives as binders or other modifiers to enrich final properties for a particular application.” Taconite ore powders have been benefacted with chemical compounds for decades within industry prior to the time of filing the invention. NPL Piret et al. teaches at (Page 215) binding pelletized taconite powder used as blast furnace charge with a sodium hydroxide binder and it would have been obvious to one having ordinary skill in the art at the time of filing the invention to bind the biomass material of NPL Tam et al. with a sodium hydroxide binder in order to form a strong fuel pellet and prevent breakage based on the teachings of NPL Piret et al. at (Pages 215-216). See MPEP 2141.01(a) I. “[A] reference need not be from the same field of endeavor as the claimed invention in order to be analogous art.” Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2993759 A teaches chlorinating taconite ores with hydrogen chloride.
US 3779782 A teaches a known bentonite binder composition comprising magnesium oxide.
US 2833642 A teaches sodium or potassium hydroxide as binder addition to taconite pellets.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORIAH S. SMOOT whose telephone number is (571)272-2634. The examiner can normally be reached M-F 8:30am - 5pm EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
