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 .
This application is a 371 of PCT/JP2022/043012 11/21/2022, with FOREIGN APPLICATIONS: JAPAN 2021-194375 11/30/2021.
DETAILED ACTION
Claims 1-10 remain for examination, wherein claim 1 is an independent claim.
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 1, 3, and 8-9 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. In the instant case, The term “high-temperature reducing step” on line 3 in claim 1; on line 3 of claim 3; on line 4 of claim 8; and on line 4 of claim 9 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is noted that claim 5 indicates reducing temperature range, which is suggested to be added into the corresponding independent claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, claim 7 depends on claim 6 and claim 6 depends on claim 5. Claim 5 indicates T in reducing step.. It is unsure the “T1” in claim 7 refer to the T in claim 5 or not. Therefore, claim 7 fails to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. since claim 7 needs further amendment/clarification, Claim 7 is not included in the following examination.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SUgiyama et al (US-PG-pub 2011/0265603 A1, listed in IDS filed on 5/23/2026, thereafter PG’603).
Regarding claim 1-3, PG’603 teaches a manufacturing process for producing granular iron comprising: charging agglomerates formed from a raw material mixture containing an iron oxide-containing substance and a carbonaceous reducing agent onto a carbonaceous material spread on the hearth of a furnace with specific temperature and oxygen partial pressure. (abstract of PG’603) and the phosphorus contained in the reduced iron is oxidized, and this phosphorus moves to the slag, and this decreases the phosphorus content of the granular iron. (par.[0021] and [0027] of PG’603), which reads on the claimed heating a raw material with iron oxide and phosphorus under reducing gas atmosphere, and slag including phosphorus (cl.1), iron ore (cl.2), and temperature and oxygen partial pressure control to allow phosphorus oxide contained in the slag phase (cl.3). Since PG’603 teaches all of essential process steps as claimed in the instant claims 1-3, Claims 1-3 are anticipated by PG’603.
Regarding claim 4, PG’603 provides examples in table 4 having ratio of CaO/SiO2 in raw material within the claimed ratio range.
Regarding claim 9, PG’603 teaches applying agglomeration including iron oxide and slag, and further separation. (par.[0038]-[0041] and [0044] of PG’603).
Claim Rejections - 35 USC § 103
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.
Claim(s) 5-6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over PG’603.
Regarding claim 5, the claimed oxygen partial pressure [Expression 1] is recognized as general formula fully depended on the reducing temperature T and the ratio of CaO/SiO2 in raw material. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary. PG’603 provides examples in table 4 having ratio of CaO/SiO2 in raw material within the claimed ratio range and PG’603 specify that: “wherein the temperature of the agglomerates in the furnace is set in a range between 1200oC. and 1500oC; the oxygen partial pressure in atmospheric gas under which the agglomerates are heated is set to 2.0x1013 atm or more at standard state; and the linear speed of the atmospheric gas in the furnace is set to 4.5 cm/second or more.” (claims, examples and Abstract of PG’603), which overlaps the claimed operation reducing temperature. Therefore, the selection of the proportions of proper oxygen pressure and reducing temperature from PG’603 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Regarding claim 6, PG’603 teaches applying agglomeration including iron oxide and slag. (par.[0038]-[0041] of PG’603). Since the temperature of the agglomerates in the furnace is set in a range between 1200oC. and 1500oC disclosed by PG’603 (claims, examples and Abstract of PG’603) overlap the claimed temperature range. MPEP 2144 05 I. the claimed effect in the instant claim would be highly expected in the process of PG’603. MPEP 2112 01 and 2145 II.
Regarding claim 10, PG’603 specify that “the basicity is preferably 1.3 or more, and more preferably 1.4 or more. However, too high slag basicity causes too high melting point of the slag, and the resulting slag does not melt when the reduced iron is melted, making it difficult to separate the granular iron from the slag. As a result, the slag ends up being mixed in the granular iron, and this degrades in quality of the granular iron. Therefore, the basicity is preferably 1.6 or less.” (par.[0047), which overlaps the claimed basicity of slag (CaO/SiO2) as claimed in the instant claim, which creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the basicity of slag as claimed from the disclosure of PG’603 since PG’603 teaches the same manufacturing process for producing granular iron throughout whole disclosing range.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over PG’603 in view of KOBAYASHI ISAO et al (JP 2014181369 A, with on-line translation, thereafter JP’369).
Regarding claim 8, PG’603 does not specify applying crushing and separating to separate metallic iron and slag phase as claimed in the instant claim. However, applying crushing and separating the reduced iron product and slag is recognized as a well-known technique as demonstrated by JP’369. JP’369 teaches a method of producing reduced iron which can melt rapidly byproduct slag of reduction of iron oxide even when an iron ore containing Al2O3 is used and heated at e.g. 1,500°C or lower and reduce the reaction time of reduction of iron oxide(Abstract of JP’369). JP’369 specify that: “The reduced iron and slag thus obtained is cooled and solidified , the reduced iron product and the reduced iron which solidified granular as well as crushed slag were sorted by magnetic separation or a sieve, or separated into hot metal and slag by the difference in specific gravity heat melting.” (par.[0002] of JP’369). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the well-known technique, that is crushing and separating the reduced iron product and slag, as demonstrated by JP’369 in the process of PG’603 in order to obtain the separating materials (par.[0002] of JP’369).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-6 and 8-10 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-11 of copending application No. 18/855418 (US-PG-pub 2026/0185171 A1).
Regarding instant Claims 1-6 and 8-10, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-11 of copending application No. 18/855418 (US-PG-pub 2026/0185171 A1) teaches the same manufacturing process for the same reduced iron material with all of the similar manufacturing process steps and similar CaO/SiO2 ratio range, which overlaps the claimed steps and ratio ranges as claimed in the instant claims. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the process steps and parameters from the disclosure of Claims 1-11 of copending application No. 18/855418 (US-PG-pub 2026/0185171 A1) since Claims 1-11 of copending application No. 18/855418 (US-PG-pub 2026/0185171 A1) teaches the same manufacture process for reduced iron material as claimed throughout whole disclosing range. Thus, no patentable distinction was found in the instant claims compared with the Claims 1-11 of copending application No. 18/855418 (US-PG-pub 2026/0185171 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Claims 1-6 and 8-10 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-13 of copending application No. 18/857019 (US-PG-pub 2025/0283185 A1).
Regarding instant Claims 1-6 and 8-10, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-13 of copending application No. 18/857019 (US-PG-pub 2025/0283185 A1) teaches the same manufacturing process for the same reduced iron material with all of the similar manufacturing process steps and similar CaO/SiO2 ratio range, which overlaps the claimed steps and ratio ranges as claimed in the instant claims. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the process steps and parameters from the disclosure of Claims 1-13 of copending application No. 18/857019 (US-PG-pub 2025/0283185 A1) since Claims 1-13 of copending application No. 18/857019 (US-PG-pub 2025/0283185 A1) teaches the same manufacture process for reduced iron material as claimed throughout whole disclosing range. Thus, no patentable distinction was found in the instant claims compared with the Claims 1-13 of copending application No. 18/857019 (US-PG-pub 2025/0283185 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
