DETAILED ACTION
Claims 3-5 are pending, and claim 3 is currently under review.
Claims 1-2 are cancelled.
Claims 4-5 are withdrawn.
Claims 4-5 are newly added.
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 .
Election/Restrictions
Applicant’s election without traverse of group II, claim 3, in the reply filed on 3/27/2026 is acknowledged.
Claims 4-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/27/2026.
Response to Amendment
The amendment filed 3/27/2026 has been entered. Claims 3 and newly submitted claim(s) 4-5 remain(s) pending in the application.
Claim Interpretation
The term “iron ore material” is interpreted to refer to any mineral ore material containing iron as defined in [0021 instant spec.] as instantly filed.
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.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ibaraki (US 2010/0199806) alone or further in view of either one of Sato et al. (WO2011108466, machine translation referred to herein) or Anyashiki et al. (2009, Development of carbon iron composite process).
Regarding claim 3, Ibaraki et al. discloses a material for producing pig iron which includes a mixture of a cast of reduced iron powder made by compression molding (ie. reduced iron molded products) as well as iron ore (ie. iron ore material) [abstract, 0001, 00280029].
Said powder cast of Ibaraki et al. can take any desirable shape but can also be a rectangle having a thicker center portion (ie. bulge) relative to the edges [0075]. The examiner notes that the recitations of a length ratio and chamfered shape in a plan view as claimed are prima facie obvious because recitations of a particular size and shape are mere engineering design choices that would have been obvious to one of ordinary skill. See MPEP 2144.04(IV)(A-B). Specifically, one of ordinary skill would have been entirely capable of selecting any desired compact shape/size depending on a furnace size or desired amount of pig iron to be processed. The examiner’s position is further bolstered by the express teaching of Ibaraki et al. that any desirable size may be chosen [0075].
Alternatively, Sato et al. further teaches that it is known in the art to provide molded iron powder briquettes for iron processing [p.1]; wherein a rectangular chamfered shape having a length of 30 mm and width of 25 mm to achieve good productivity, which corresponds to a length ratio of 1.2 [p.2, fig.1]. Therefore, it would have been obvious to modify the compact shape of Ibaraki to have the particular dimensions of Sato et al. for the aforementioned benefit.
Alternatively, Anyashiki et al. discloses iron ore briquettes for blast furnace applications (ie. molded compacts for producing pig iron) [abstract, p.2]; wherein said compacts have a “pillow” shape or “ovoid” shape which are depicted to be rectangularly shaped having chamfered corners in plan view and a center portion being thicker than a peripheral portion [p.2, photos 1-4]. The briquettes of Anyashiki et al. are disclosed to achieve desirable properties such as suppression of powdering and good strength [p.4-5]. The photos of Anyashiki et al., which one of ordinary skill would readily understand to be to-scale, expressly depict rectangular shapes having an aspect ratio of less than 1.5. Therefore, it would have been obvious to one of ordinary skill to modify the compacts of Ibaraki eta l. to have a shape as taught by Anyashiki et al. for the aforementioned benefits. Alternatively, the examiner notes that all of the claimed features are disclosed in the prior art, although not necessarily in a single reference, wherein it would have been obvious to one of ordinary skill to combine the prior art features to arrive at the predictable result of a reduced iron compact (as taught by Ibaraki) having a particular dimension (as taught by Sato et al. or Anyashiki et al.) for desired iron charging of good productivity compacts when producing pig iron. See MPEP 2143(I)(A).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,545,970 in view of either one of Sato et al. (WO2011108466, machine translation referred to herein) or Anyashiki et al. (2009, Development of carbon iron composite process). Claim 1 of the aforementioned patent recites a method of producing pig iron using a material mixture of iron ore material and compression molded reduced iron. The only distinction present in the instant claim is the recitation of the reduced iron molded product shape features. However, these features would have been an obvious engineering design shape choice or would have been obvious in view of the aforementioned prior art as explained in the previous rejection sections.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/551,306 in view of either one of Sato et al. (WO2011108466, machine translation referred to herein) or Anyashiki et al. (2009, Development of carbon iron composite process). Claim 1 of the copending application recites a method of producing pig iron using a material mixture of iron ore material and compression molded reduced iron. The only distinction present in the instant claim is the recitation of the reduced iron molded product shape features. However, these features would have been an obvious engineering design shape choice or would have been obvious in view of the aforementioned prior art as explained in the previous rejection sections.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
Prosecution Insights