DETAILED ACTION
Claims 3-4 are pending, and claim 3 is currently under review.
Claim 4 is withdrawn.
Claims 1-2 and 5 are cancelled.
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 8/05/2026 has been entered. Claims 3-4 remain(s) pending in the application.
Claim Rejections - 35 USC § 112
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.
Claim 3 is 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 3 recites that “a contour of a cross section… bulges…”, which is indefinite because it is unclear as to what particular shape, if any, is required by the term “bulges.” This is not a commonly used or recognized term in the field of iron processing and applicant further does not define this term. The examiner interprets the claim to be met by any arcuate shape with respect to a rectangular shape.
Claim 3 is 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 3 recites the term “substantially parallel”, which is indefinite because it is unclear as to what the term “substantially” is meant to convey. It is unclear as to what particular quantitative degree of deviation from parallel, if any, is allowed for by the claimed term. The examiner interprets the claim to be met by any orientation that is not perpendicular.
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 Sato et al. (WO2011108466, machine translation referred to herein) and/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 lump iron ore [abstract, 0001, 0028-0029, 0077]. Ibaraki et al. further teaches that the particle size of the reduced iron powder that is compression molded can be 100 microns or less and the iron oxide (ie. iron ore) can have a size of 5 to 100 microns [0058, 0066]. The examiner notes that these ranges overlap with the claimed grain size ratio because the particle size of the compressed molding will correspond to a grain size of the molded material. See MPEP 2144.05(I). Ibaraki et al. further expressly teaches away from sizes of greater than 100 microns, which one of ordinary skill would understand to mean that no sizes above 100 microns exist (ie. 0% above 100 microns) which meets the claimed range [0058, 0066].
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 length, width, and thickness ranges, a length ratio, chamfered shape in a plan view, and cross-sectional shapes 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, width of 25 mm, and thickness of 18 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. The shape of Sato et al. is clearly depicted such that cross sections perpendicular and parallel to a longer side are shown to arc upwardly and downwardly (ie. bulge) as claimed, wherein a center is thicker and parallel to the rectangular face of cross-sectional area BxL [fig.1]. The aforementioned length and width dimensions of Sato et al. further meet the claimed ranges, and the examiner submits that the thickness of 18mm of Sato et al. is substantially close to the claimed range such that prima facie obviousness exists because similar properties would be achieved. See MPEP 2144.05(I). Alternatively, Sato et al. does not teach the specific thickness dimensions as claimed. However, as stated previously, Sato et al. already teaches controlling briquette dimensions to achieve good productivity, and where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04(IV)(A). Sato et al. further already discloses that controlling briquette dimensions serves to influence productivity as stated above, and "[w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II). Therefore, the claimed dimensions are not considered to be patentable over the prior art disclosure.
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]. This shape is also clearly depicted such that cross sections perpendicular and parallel to a longer side are shown to arc upwardly and downwardly (ie. bulge) as claimed, wherein a center is thicker and parallel to the rectangular face of the largest cross-sectional area of Anyashiki et al. [fig.1]. 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, and Anyashiki et al. further teaches dimensions of 60x46x14mm which overlaps with the claimed range [p.2, fig.1]. See MPEP 2144.05(I). As determined by the examiner for example, the aforementioned dimensions of Anyashiki et al. result in a volume of 38,640 mm3, which makes up 70% of a 60x46x20mm volume within the claimed range and meets the range of at least 50% of the claimed dimensional ranges. Therefore, it would have been obvious to one of ordinary skill to modify the compacts of Ibaraki et al. to have a shape as taught by Anyashiki et al. for the aforementioned benefits. Furthermore, as explained above, Anyashiki et al. already discloses controlling briquette dimensions to achieve desirable properties such as suppression of powdering and good strength, and "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II). Therefore, the claimed dimensions are not considered to be patentable over the prior art disclosure. 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 and grain size 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 and grain size 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.
Response to Arguments
Applicant's arguments filed 8/05/2026 regarding the 103 rejections have been fully considered but they are not persuasive.
Applicant argues that the prior art does not teach the newly added claimed amendments. The examiner cannot concur for the reasons explained in the above rejection sections.
Applicant argues that the claimed shape and dimension limitations achieve improved properties and are critical in view of the data that an aspect ratio of 1.43 achieves better segregation properties vs. an aspect ratio of 2.86. The examiner cannot concur. Evidence of criticality must be commensurate in scope with the entire claimed range and should compare a sufficient number of tests both inside and outside the claimed range. See MPEP 716.02. The examiner cannot consider two data points to be a sufficient number of tests, and said two data points are further not commensurate in scope with the entire claimed range of 1.5 or less (emphasis added).
Applicant repeatedly argues against the references individually. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant's arguments filed 8/05/2026 regarding the double patenting rejections have been fully considered but they are not persuasive.
Applicant argues that the double patenting rejections should be withdrawn in view of the arguments presented above. However, the examiner cannot concur for the reasons stated above.
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 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.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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