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 Status
Claims 1-20 are pending and examined.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) received on 11/17/2023 and 3/13/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 10-11 are objected to because of the following informalities:
Regarding claim 10, Ln. 2 recites, “an inorganic compound selected from K4P2O7 and Na4P207”. However, both recited chemical formulae do not use numeric subscripts, which is improper. Further, the “07” in “Na4P207” appears to be a typo of “O7”. Therefore, the above limitation needs to be amended to recite, “an inorganic compound selected from K4P2O7 and Na4P2O7” to be proper.
Regarding claim 11, Ln. 2 recite, “1 -propanol”. There is a space between “1” and “-propanol”, which is grammatically incorrect. This space should be deleted to make the limitation grammatically correct.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The subject matter eligibility test for the claims is shown below:
Subject Matter Eligibility Test, Step 1
Independent claim 1 is drawn to a method, which is a statutory category.
Subject Matter Eligibility Test, Step 2A Prong One
In Step 2A Prong One, it is determined if the claims recite an abstract idea, law of nature, or natural phenomenon. Independent claim 1 recites “analyzing the liquid phase from step (a) to determine a degree of coal oxidation”. Analyzing a liquid phase to determine a degree of coal oxidation is an evaluation/determination mental process-type abstract idea, that can be practically performed in the human mind.
Subject Matter Eligibility Test, Step 2A Prong Two
In step 2A Prong Two, it is determined if the claims recite additional elements that integrate the judicial exception into a practical application. Independent claim 1 further recites: “mixing a coal sample with an organic solvent and an inorganic solvent, to extract oxidised coal species from the coal sample into a liquid phase”. This step is performed to allow data to be collected during the analysis/determination of step b), and amounts to mere data gathering. See MPEP 2106.05(g). Accordingly, the additional elements recited do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
Subject Matter Eligibility Test, Step 2B
In step 2B, it is determined if the claim recites additional elements that amount to significantly more than the judicial exception. In this case, independent claim 1 recites a) a mixing step of mixing a coal sample with an organic solvent and an inorganic solvent to extract oxidized coal species from the coal sample into a liquid phase, and b) analyzing the liquid phase to determine a degree of coal oxidation. These elements are well-known and conventional within the art. Further, as previously stated, step a) is a data-gathering step, and step b) is the mental process-type abstract idea. Further, the application of these mental processes into a laboratory environment for sample analysis is nothing more than generally linking the mental process judicial exception to a particular technological environment or field of use. See MPEP 2106.05(d) and 2106.05(e).
Further, with regards to the generically recited steps of a) mixing a coal sample with an organic solvent and an inorganic solvent to extract oxidized coal species from the coal sample into a liquid phase, and b) analyzing the liquid phase to determine a degree of coal oxidation being nothing more than well-understood, routine, and conventional components that are well-known in the art, the following prior art is relied upon to show that the above elements are well-understood, routine, and conventional:
Opeida, “The Kinetics of Oxidation of Humic Coals in Dimethyl Sulfoxide”, 2010, Solid Fuel Chemistry, Vol. 44, No. 2, Pgs. 41-46 (already of record on the IDS received 3/13/2024) teaches mixing a coal sample with an organic solvent and an inorganic solvent to extract oxidized coal species from the coal sample into a liquid phase (Pg. 104 Col. 1 Last Para., a 0.1 g portion of ground coal, 0.2 g of sodium hydroxide, and 1mL of DMSO are placed in a reactor, and the mixture is agitated by shaking the reactor, Pg. 107 Col. 1 2nd-3rd Paras., following the oxidation of coal with oxygen in the presence of alkali in DMSO, the solvent is distilled off from the reaction mixture, the mixture is washed with water, centrifuged to remove coal, and acidified with hydrochloric acid, and precipitated humic acids are isolated by centrifugation, dried, and weighed), and b) analyzing the liquid phase to determine a degree of coal oxidation (Pg. 104 Col. 1 Last Para., Pg. 107 Col. 1 2nd-3rd Paras., the weighing of humic acids is considered an analysis of the degree of coal oxidation. Further, see Pg. 107 Col. 1 4th Para., which states that the yield of humic acids from oxidized coal is higher, suggesting that humic acid yield is correlated to coal oxidation).
Hefner, Jr. (US Pat. No. 4,253,944; hereinafter Hefner) teaches determining a degree of coal oxidation (Col. 6 Lns. 33-46).
McKenny et al. (US Pat. No. 5,443,158; hereinafter McKenny) teaches mixing coal with a solvent (Col. 4 Lns. 31-45).
Claims 2-20 are rejected under 35 U.S.C. 101 as depending on a rejected claim.
Examiner’s Note: although Claims 19 and 20 recite determining a degree of oxidation, and controlling a ratio of non-polar collector to polar collector in a coal flotation process in response to the determined degree of oxidation of coal, which is an attempt to make the subject matter patent eligible by integrating the judicial exception into a patent application, the step of controlling the ratio of non-polar collect to polar collector in the coal flotation process is recited very generally. There are no specifics to control based on any particular ratio, and there is no comparison of a particular degree of oxidation. Therefore, this is recited at such a high level of generality that it amounts to just generally applying the abstract idea per MPEP 2106.05(f), and also is just generally linking the abstract idea to a field of use per MPEP 2106.05(h), which are not particular practical applications. Further amendments are needed to sufficiently integrate the judicial exception into a practical application to render the claimed subject matter eligible.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Opeida.
Regarding claim 1, Opeida discloses a method for determining oxidation of coal (Pg. 104 Col. 1 Last Para., a 0.1 g portion of ground coal, 0.2 g of sodium hydroxide, and 1mL of DMSO are placed in a reactor, and the mixture is agitated by shaking the reactor, Pg. 107 Col. 1 2nd-3rd Paras., following the oxidation of coal with oxygen in the presence of alkali in DMSO, the solvent is distilled off from the reaction mixture, the mixture is washed with water, centrifuged to remove coal, and acidified with hydrochloric acid, and precipitated humic acids are isolated by centrifugation, dried, and weighed. The weighing of humic acids is considered an analysis of the degree of coal oxidation. Further, see Pg. 107 Col. 1 4th Para., which states that the yield of humic acids from oxidized coal is higher, suggesting that humic acid yield is correlated to coal oxidation). The method comprises:
a) mixing a coal sample with an organic solvent and an inorganic solvent, to extract oxidised coal species from the coal sample into a liquid phase (Pg. 104 Col. 1 Last Para., Pg. 107 Col. 1 2nd-3rd Paras.).
b) analysing the liquid phase from step (a) to determine a degree of coal oxidation (Pg. 104 Col. 1 Last Para., Pg. 107 Col. 1 2nd-3rd Paras., the weighing of humic acids is considered an analysis of the degree of coal oxidation. Further, see Pg. 107 Col. 1 4th Para., which states that the yield of humic acids from oxidized coal is higher, suggesting that humic acid yield is correlated to coal oxidation).
Regarding claim 2, Opeida discloses the method of claim 1, wherein the extracted oxidised coal species in step (a) dissolve in the organic solvent (Pg. 104 Col. 1 Last Para., Pg. 107 Col. 1 2nd-3rd Paras.).
Regarding claim 16, Opeida discloses the method of claim 1, wherein the liquid phase from step (a) is separated from the coal sample prior to step (b) (Pg. 104 Col. 1 Last Para., Pg. 107 Col. 1 2nd-3rd Paras.).
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.
Claims 3-7, 11, 13-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Opeida.
Regarding claim 3, Opeida discloses the method of claim 1. Opeida further discloses the inorganic solvent (Pg. 104 Col. 1 Last Para., Pg. 107 Col. 1 2nd-3rd Paras.).
Opeida fails to explicitly disclose that the inorganic solvent comprises an aqueous solution of an inorganic compound.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide the inorganic solvent as an aqueous solution of an inorganic compound, as providing the inorganic solvent in aqueous solution form would result in a means of distributing the inorganic compound that can be metered accurately, thereby ensuring that a sufficient amount of inorganic compound is administered to the liquid phase to be effective in extracting oxidized coal species.
Regarding claim 4, modified Opeida discloses the method of claim 3. Opeida further discloses that the inorganic solvent and the organic solvent are miscible (Pg. 104 Col. 1 Last Para., Pg. 107 Col. 1 2nd-3rd Paras.).
Regarding claim 5, Opeida discloses the method of claim 1, and all limitations recited therein.
Opeida fails to explicitly disclose that step (a) is conducted at ambient temperature.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to conduct step (a) at ambient temperature, as selecting an optimum temperature to perform the mixing step at is a matter of routine experimentation. The motivation would have been to conduct the mixing at a temperature that will optimize mixing while simultaneously reducing energy expenditures on heating/cooling.
Regarding claim 6, modified Opeida discloses the method of claim 5, and all limitations recited therein.
Modified Opeida fails to explicitly disclose that in step (a) there is a contact time of less than 5 minutes between the coal sample and the liquid phase.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have step (a) use a contact time of less than 5 minutes between the coal sample and the liquid phase, as selecting an optimum contact time to perform the mixing step is a matter of routine experimentation. The motivation would have been to conduct the mixing for a sufficient time to ensure thorough mixing of the coal sample and solvents, while reducing the contact time in order to optimize throughput of the process.
Regarding claim 7, modified Opeida discloses the method of claim 5. Opeida further discloses that step (a) is performed with shaking or agitation (Pg. 104 Col. 1 Last Para., Pg. 107 Col. 1 2nd-3rd Paras.).
Regarding claim 11, modified Opeida discloses the method of claim 3. Opeida further discloses that the organic solvent is selected from one or more of ethanol, methanol, 1-propanol, 2-propanol, dioxane, dimethyl sulfoxide, tetrahydrofuran, and dimethylformamide (Pg. 104 Col. 1 Last Para., Pg. 107 Col. 1 2nd-3rd Paras.).
Regarding claim 13, Opeida discloses the method of claim 1, and all limitations recited therein.
Opeida fails to explicitly disclose that step (a) produces a mixture in which the coal to liquid ratio is from 1 wt% to 5 wt%.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have step (a) produce a mixture in which the coal to liquid ratio is from 1 wt% to 5 wt%, as selecting an optimum coal to liquid ratio to perform the mixing step is a matter of routine experimentation. The motivation would have been to provide a coal to liquid ratio that ensure that the coal can be thoroughly mixed into the liquid phase.
Regarding claim 14, modified Opeida discloses the method of claim 13, and all limitations recited therein.
Modified Opeida fails to explicitly disclose that step (a) produces a mixture in which the concentration of inorganic compound is 0.005M to 0.5M.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have step (a) produce a mixture in which the concentration of inorganic compound is 0.005M to 0.5M, as selecting an optimum concentration of inorganic compound in the mixing step is a matter of routine experimentation. The motivation would have been to provide a sufficient concentration of inorganic compound in order to optimize the extraction of oxidized coal species from the coal sample.
Regarding claim 15, modified Opeida discloses the method of claim 13, and all limitations recited therein.
Modified Opeida fails to explicitly disclose that step (a) produces a mixture in which the volume of the organic solvent is from about 3 vol% to about 40 vol%.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to have step (a) produce a mixture in which the volume of the organic solvent is from about 3 vol% to about 40 vol%, as selecting an optimum volume of organic solvent in the mixing step is a matter of routine experimentation. The motivation would have been to provide a sufficient volume of organic solvent in order to optimize the extraction of oxidized coal species from the coal sample.
Regarding claim 17, Opeida discloses the method of claim 1, and all limitations recited therein.
Opeida fails to explicitly disclose that step (b) uses UV/VIS spectrophotometry to determine the concentration of extracted species in the liquid phase.
However, It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to choose UV/VIS spectrophotometry to determine the concentration of extracted species in the liquid phase from a finite number of identified, predictable ways to analyze species concentration in a liquid phase, i.e., it would have been obvious to try UV/VIS spectrophotometry, in order to select an analysis technique that can be used to identify and quantify compounds of interest in a sample.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Opeida as applied to claims 1-2 and 16 above, and further in view of McKenny.
Regarding claim 8, Opeida discloses the method of claim 1, and all limitations recited therein.
Opeida fails to explicitly disclose that the coal sample comprises a coal slurry.
McKenny is in the analogous field of coal flotation processes (McKenny Col. 1 Lns. 5-9). McKenny teaches a coal slurry (McKenny Col. 3 Lns. 3-19). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of Opeida with the teachings of McKenny so that the coal sample comprises a coal slurry, as McKenny teaches that a coal slurry can be used as a vehicle for separation of coal species from coal (McKenny Col. 3 Lns. 5-19).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over modified Opeida as applied to claims 3-7, 11, 13-15, and 17 above, and further in view of Zhou et al. (Translation of CN Pub. No. 101580851; hereinafter Zhou).
Regarding claim 9, modified Opeida discloses the method of claim 3, and all limitations recited therein.
Modified Opeida fails to explicitly disclose that the inorganic solvent comprises an inorganic compound comprising a carbonate, a pyrophosphate, or a tetraborate; or mixtures thereof.
Zhou is in the analogous field of coal processing (Zhou Pg. 1 1st Para.). Zhou teaches an inorganic solvent comprising a pyrophosphate, where the inorganic solvent comprises Na4P2O7 (Zhou Pg. 7 1st Para., sodium pyrophosphate). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of modified Opeida with the teachings of Zhou so that the inorganic solvent comprises an inorganic compound comprises a pyrophosphate, as Zhou teaches that pyrophosphates can be used as an alkaline extraction solution for coal (Zhou Pg. 7 1st Para.).
Regarding claim 10, modified Opeida discloses the method of claim 3, and all limitations recited therein.
Modified Opeida fails to explicitly disclose that the inorganic solvent comprises an inorganic compound selected from K4P2O7 and Na4P2O7, or mixtures thereof.
Zhou teaches Na4P2O7 as an inorganic solvent (Zhou Pg. 7 1st Para., sodium pyrophosphate has the claimed chemical formula). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of modified Opeida with the teachings of Zhou so that the inorganic solvent comprises Na4P2O7, as Zhou teaches that this solvent can be used as an alkaline extraction solution for coal (Zhou Pg. 7 1st Para.).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over modified Opeida as applied to claims 3-7, 11, 13-15, and 17 above, and further in view of McGarry et al. (EP Pub. No. 0219569; hereinafter McGarry; already of record on the IDS received 11/17/2023).
Regarding claim 12, modified Opeida discloses the method of claim 11, and all limitations recited therein.
Modified Opeida fails to explicitly disclose that the organic solvent is ethanol.
McGarry is in the analogous field of coal processing (McGarry Col. 1 Lns. 1-4). McGarry teaches ethanol as an organic solvent (McGarry Col. 8 Lns. 41-58). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of modified Opeida with the teachings of McGarry so that the organic solvent is ethanol, as McGarry teaches that ethanol can be used to facilitate contact of a surface of coal particles with a desired substance (McGarry Col. 8 Lns. 41-58).
Claims 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Opeida as applied to claims 1-2 and 16 above, and further in view of Hefner.
Regarding claim 18, Opeida discloses the method of claim 1, and all limitations recited therein.
Opeida fails to explicitly disclose that the analysis of step (b) provides a value of the degree of surface oxidation of the coal.
Hefner is in the analogous field of coal treatment (Hefner Col. 1 Lns. 7-14). Hefner teaches determining a degree of surface oxidation of coal (Hefner Col. 6 Lns. 33-46). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of Opeida with the teachings of Hefner so that the analysis of step (b) provides a value of the degree of surface oxidation of the coal, as Hefner teaches that determining a degree of surface oxidation of coal can be used to determine the optimal loading of a polar collector in combination with a fuel oil collector required in order to optimize the recovery of coal in a flotation process (Hefner; Col. 6 Ln. 33-Col. 8 Ln. 14, particularly at Table I at Col. 7 Lns. 30-40; Col. 1 Ln. 33-Col. 2 Ln. 24, particularly at formula I, which shows a polar collector having a hydroxy head and an aliphatic tail, Col. 4 Lns. 46-60, the amount of conditioner present is based on the degree of oxidation of the coal feed).
Regarding claim 19, Opeida discloses the method of claim 1, and all limitations recited therein.
Opeida fails to explicitly disclose a method for controlling collector used in a coal flotation process, the method comprising determining a degree of oxidation of coal by the method of claim 1 and controlling a ratio of non-polar collector to polar collector in the coal flotation process in response to the determined degree of oxidation of coal.
Hefner is in the analogous field of coal treatment (Hefner Col. 1 Lns. 7-14). Hefner teaches a method for controlling collector used in a coal flotation process by basing a ratio of non-polar collector to polar collector in a coal flotation process in response to a determined degree of oxidation of coal (Hefner; Col. 6 Ln. 33-Col. 8 Ln. 14, particularly at Table I at Col. 7 Lns. 30-40; Col. 1 Ln. 33-Col. 2 Ln. 24, particularly at formula I, which shows a polar collector having a hydroxy head and an aliphatic tail, Col. 4 Lns. 46-60, the amount of conditioner present is based on the degree of oxidation of the coal feed). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the methos of Opeida with the teachings of Hefner to provide a method for controlling collector used in a coal flotation process, the method comprising determining a degree of oxidation of coal by the method of claim 1 and controlling a ratio of non-polar collector to polar collector in the coal flotation process in response to the determined degree of oxidation of coal, as Hefner teaches that controlling the ratio of non-polar collector to polar collector based on a degree of coal oxidation in a coal flotation process will optimize the recovery of coal in a flotation process (Hefner; Col. 6 Ln. 33-Col. 8 Ln. 14, particularly at Table I at Col. 7 Lns. 30-40; Col. 1 Ln. 33-Col. 2 Ln. 24, particularly at formula I, which shows a polar collector having a hydroxy head and an aliphatic tail, Col. 4 Lns. 46-60).
Regarding claim 20, modified Opeida discloses the method of claim 18, and all limitations recited therein.
Modified Opeida fails to explicitly disclose a method for controlling collector used in a coal flotation process, the method comprising determining a degree of surface oxidation of coal by the method of claim 18 and controlling a ratio of non-polar collector to polar collector in the coal flotation process in response to the determined degree of surface oxidation of the coal.
Hefner further teaches a method for controlling collector used in a coal flotation process by basing a ratio of non-polar collector to polar collector in a coal flotation process in response to a determined degree of surface oxidation of coal (Hefner; Col. 6 Ln. 33-Col. 8 Ln. 14, particularly at Table I at Col. 7 Lns. 30-40; Col. 1 Ln. 33-Col. 2 Ln. 24, particularly at formula I, which shows a polar collector having a hydroxy head and an aliphatic tail, Col. 4 Lns. 46-60, the amount of conditioner present is based on the degree of oxidation of the coal feed). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the method of modified Opeida with the further teachings of Hefner to provide a method for controlling collector used in a coal flotation process, the method comprising determining a degree of surface oxidation of coal by the method of claim 18 and controlling a ratio of non-polar collector to polar collector in the coal flotation process in response to the determined degree of surface oxidation of the coal, as Hefner teaches that controlling the ratio of non-polar collector to polar collector based on a degree of coal oxidation in a coal flotation process will optimize the recovery of coal in a flotation process (Hefner; Col. 6 Ln. 33-Col. 8 Ln. 14, particularly at Table I at Col. 7 Lns. 30-40; Col. 1 Ln. 33-Col. 2 Ln. 24, particularly at formula I, which shows a polar collector having a hydroxy head and an aliphatic tail, Col. 4 Lns. 46-60).
Conclusion
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/JOHN MCGUIRK/Examiner, Art Unit 1798
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