DETAILED ACTION
Claims 13-24 are pending and currently under review.
Claims 1-12 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 .
Claim Interpretation
The term “biofuel” in claim 17 is interpreted to refer to any biodegradable fuel material that is not a fossil-fuel according to broadest reasonable interpretation.
The term “biological transformation” in claim 24 is interpreted to merely require any step that forms a biofuel according to broadest reasonable interpretation.
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.
Claims 13-24 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 13 recites the term “hot metal” which is indefinite because “hot” is a relative term of degree that is not further specified by the instant claims or specification. It is unclear whether “hot” requires some particular temperature, or merely pertains to a category of metals, or something else entirely. The examiner interprets the aforementioned term to be met by any interpretation of “hot” as would have been recognized by one of ordinary skill.
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.
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) 13-19 and 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nemeth (US 3,853,538), Uribe-Sato et al. (2017, A review of thermochemical processes and technologies to use steelworks off-gases), and either one or both of Liu et al. (CN206359550, machine translation referred to herein) and/or Knop et al. (DE102011112093, machine translation referred to herein).
Regarding claim 13, Nemeth discloses a method of obtained sponge iron (ie. direct reduced iron) by charging and reducing iron oxide material with a reducing gas [abstract, col.2, fig.1]. The furnace of Nemeth meets the limitation of a direct reduction furnace as explained above, and is further depicted to include a reduction zone (10), cooling zone (13), and area in between meets the limitation of a transition zone [fig.1].
Nemeth does not expressly teach operating said direct reduction furnace in a network of plants including a blast furnace with blast furnace top gas and a CO2 conversion step to produce a liquid carbon product which is added into the direction reduction furnace as claimed. However, the examiner submits that these features would have been obvious in view of the prior art. Firstly, Uribe-Soto et al. discloses that it is known to recycle off-gas from steelworking plants such as blast furnace off-gas (BFG), wherein said BFG can be further utilized to produce methanol as a high value product from separated and converted CO2 [abstract, p.813-817]. Furthermore, Liu et al. teaches that it is known to provide methanol to a direct reduction furnace to provide reducing agents through cracking [Liu et al. abstract, p.1]; and Knop et al. teaches utilizing methanol as a source of reducing agents in a direct reduction furnace [0038-0039]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Nemeth by additionally utilizing a blast furnace (which one of ordinary skill would readily recognize to inherently product molten, hot iron material) and resulting BFG to produce high value methanol (ie. liquid carbon product) as taught by Uribe-Soto et al., wherein said methanol can be further utilized added into the direct reduction furnace of Nemeth for reduction purposes as taught by Liu et al. and/or Knop et al.
Regarding claims 14-16, the aforementioned prior art discloses the method of claim 13 (see previous). Nemeth further discloses that it is known to introduce reducing gases at a bottom of a reducing zone (10), as well as into a cooling zone (13) [fig.1]. One of ordinary skill would understand that a bottom area of a reducing zone is located between the reducing zone (as depicted by Nemeth) and the cooling zone, which meets the limitation of a transition zone.
Regarding claims 17-19, the aforementioned prior art discloses the method of claim 13 (see previous). The examiner notes that methanol as taught by the prior art above meets the limitations of a liquid hydrocarbon, alcohol biofuel according to broadest reasonable interpretation.
Regarding claims 22-23, the aforementioned prior art discloses the method of claim 13 (see previous). Uribe-Soto et al. further teaches that the known main off-gases from which CO2 is recovered other than BFG are coke-oven off-gas and basic oxygen furnace off-gas [p.811, fig.1]. Accordingly, it would have been obvious to further incorporate a coke oven and basic oxygen furnace (ie. steelmaking plant) in the network of the prior art combination, wherein one of ordinary skill would readily recognize that a coke oven will naturally produce coke and a basic oxygen furnace will naturally produce molten steel.
Regarding claim 24, the aforementioned prior art discloses the method of claim 13 (see previous). The examiner notes that methanol is a biofuel as disclosed above and therefore the means of producing methanol as taught by Uribe-Soto et al. naturally meets the limitation of “biological transformation” according to broadest reasonable interpretation.
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nemeth (US 3,853,538) and others as applied to claim 13 above, and further in view of Weinberg et al. (US 2022/0389528).
Regarding claims 20-21, the aforementioned prior art discloses the method of claim 13 (see previous). The aforementioned prior art does not expressly teach a hydrogen amount as claimed. Weinberg et al. discloses a direct reduction furnace wherein that it is known to utilize at least 90% H2 for reducing gases in the reduction zone because H2 usage reduces greenhouse gas emissions [0012-0014]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by utilizing a reducing gas of at least 90% H2 for reduction for the aforementioned benefit taught by Weinberg et al. The examiner notes that the overlap between the disclosed H2 amount and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Claim(s) 17 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nemeth (US 3,853,538) and others as applied to claim 13 above, and further in view of Kuhl et al. (US 2016/0083810).
Regarding claims 17 and 24, the aforementioned prior art discloses the method of claim 13 (see previous). The aforementioned prior art does not expressly teach that CO2 conversion includes biological transformation to produce a biofuel as claimed. Kuhl et al. discloses that it is known to utilize blast furnace off-gas, and in particular CO2, for conversion into methanol by selection of appropriate microbes and/or algae as a desirable, sellable product [abstract, 0020, 0043]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by performing CO2 conversion through biological means for the aforementioned benefit. The examiner notes that conversion utilizing microbes and/or algae meets the limitation of “biological transformation” and a resulting biofuel as claimed.
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.
Claims 13-24 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-20 and 22-24 of copending Application No. 18/290,078 in view of the references relied upon in the above rejections. The only difference between the instant claims and co-pending claims is a recitation that the liquid carbon product is obtained from converted CO2 from a blast furnace top gas. Claims 22-24 further recite additional recitations of a coke oven, steelmaking oven, and the CO2 conversion being a biological transformation step. However, these features are disclosed by and would have been obvious over the prior art above for the aforementioned reasons.
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.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734