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 .
DETAILED ACTION
This Final Office action is based on the 18/774942 application originally filed July 17, 2024.
Amended claims 1-20, filed October 30, 2025, are pending and have been fully considered. Claims 12-20 are withdrawn from consideration due to being drawn to a nonelected invention.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,624,036. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the current application and U.S. Patent ‘036 are drawn a method of creating a natural charcoal briquette, the method comprising: collecting hardwood sawdust; removing non-wood impurities from the sawdust; drying the sawdust at a first temperature to reach a predetermined moisture level; compressing the dried sawdust in a shaped mold at a second temperature to form a charcoal briquette; carbonizing the charcoal briquette at a third temperature for a first time period; and cooling the charcoal briquette for a second time period prior to use or packaging.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,065,621. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the current application and U.S. Patent ‘036 are drawn a method of creating a natural charcoal briquette, the method comprising: collecting hardwood sawdust; removing non-wood impurities from the sawdust; drying the sawdust at a first temperature to reach a predetermined moisture level; compressing the dried sawdust in a shaped mold at a second temperature to form a charcoal briquette; carbonizing the charcoal briquette at a third temperature for a first time period; and cooling the charcoal briquette for a second time period prior to use or packaging.
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 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 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Metsarinta (EP 2714863 B1) in view of Han (KR 20180085159 A).
Regarding Claims 1-11
Metsarinta discloses in paragraph 0012, a method for a continuous production of briquetted bio-coke.
Metsarinta discloses in the paragraph 0013, the method for continuous production of bio-coke to be used in metallurgical industry comprises:
- providing biomass raw material,
- removing mechanical impurities from the biomass raw material,
- pre-comminuting the biomass raw material,
- pre-drying the biomass raw material,
- comminuting the biomass raw material into a homogeneous particle-like form,
- drying the biomass comminuted into a particle-like form at a temperature of 100-200°C and the moisture content is typically 10 to 20% (see paragraph 0020), and
- carbonizing the biomass raw material at a temperature of 650°C to 1000°C to obtain bio-coke.
Metsarinta discloses in paragraph 0050, wood coke is one type of bio-coke. The material used for producing bio-coke is typically biomass or vegetal materials. These include various nutshells, waste generated in wood processing such as sawing waste, sawdust or bark.
Metsarinta discloses in paragraph 0054, the impurities are removed throughout the method, particularly mechanically and through carbonization. Metsarinta discloses in paragraph 0064, the impurities and ash components of the biomass raw material, including calcium, silicon, magnesium, potassium, sodium, iron, phosphorus and sulphur, are concentrated in the finer bio-coke fraction. The ash rich finest fraction is removed from the cooled bio-coke as required by screening (12). This allows the ash content of the final product to be controlled. The bio-coke product may continue to briquetting.
Metsarinta discloses in paragraph 0063, the hot bio-coke that is formed is cooled in a cooling reactor (11) by means of a cooling agent. In indirect cooling the cooling agent may be water or air and in direct cooling an inert gas.
Metsarinta discloses in paragraph 0036, the cooled and purified bio-coke is ground, mixed with a binder and water, pressed into briquettes and dried.
It is to be noted, Metsarinta discloses in paragraph 0021, the biomass raw material is comminuted to processing fineness before it is carbonized. Typically, the size of the biomass raw material particles is 0.1 to 50 mm, more typically 5 to 20 mm. Metsarinta discloses the bio-coke may be formed into briquettes (see paragraph 0045) but fails to teach compressing/molding the material before carbonizing.
However, it is known in the art to dry wood material to reduce the moisture content, in order to further compress/mold the wood material that is then carbonized, as taught by Han. Han discloses in the abstract, a method for converting plant-based biomass, wherein biomass can be classified into woody biomass, carbohydrate biomass, starchy biomass, and herbaceous biomass, that is turned into fuel. The method comprises: (a) collecting and crushing plant-based biomass; (b) firstly compressing the plant-based biomass, which was crushed in step (a), until the moisture content becomes 40% or lower; (c) adding moisture and a moisturizing agent to the plant-based biomass from which a portion of moisture has been removed in step (b); (d) neutralizing the plant-based biomass containing moisture after step (c) by adding a counteractive agent to the plant-based biomass; (e) secondly compressing the plant-based biomass, which was neutralized in step (d), until the moisture content becomes 45% or lower; (f) drying the plant-based biomass from which a portion of moisture has been removed in step (e) until the moisture content becomes 20% or lower; and (g) performing semi-carbonization of the plant-based biomass, which was dried in step (f), by heating the herb-based biomass. It is to be noted, Han discloses the compressing of the biomass may occur before carbonization in order to control the moisture content (see pages 2 and 3 of Han).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to compress/mold or comminute the dried wood material before carbonization in order to control the moisture content of the wood material, as taught by both Han and Metsarinta.
It is to be noted, Metsarinta modified by Han disclose in the examples it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to adjust the reaction temperature and time of the process in order to achieve a desired moisture content and reduced impurity component of the briquette. The applicant is reminded that where 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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235.
Response to Arguments
Applicant's arguments filed October 30, 2025 have been fully considered but they are not persuasive.
Applicants argued: “Applicant again respectfully points out that Metsarinta relates to "a method for the continuous production of bio-coke suitable for use in metallurgical industry" (see the Abstract in Metsarinta). It is respectfully submitted that coke is not the same thing as charcoal. Moreover, even if the beginning biomasses are similar, patentably distinct methods of production may be used to produce distinguishable end products, or even patentably distinct methods that result in the same or substantially similar end products. Applicant submits that the end product in the present invention is different from the end products in Metsarinta and Han.”
Applicants arguments are not deemed persuasive. The present claims are directed to biomass that is processed into a charcoal briquette. The present disclosure states the charcoal briquette consist of biomass, such as sawdust, husks, shells, wood pulp or other natural, organic matter (see paragraph 0021 of the current specification). Therefore, it is maintained Metsarinta overlaps the claimed invention of biomass (sawdust) formed into a briquetted bio-coke.
Applicants argued: “Applicant agrees with the Examiner that Metsarinta fails to teach compressing/molding the material before carbonizing. The Examiner, in this statement appears to use the term "molding" as a verb. However, in claim 1, the claim language in claim 1 clearly references a shaped "mold" as a noun. Neither Metsarinta nor Han disclose this step nor disclose molds at all. Applicant respectfully points out that this paragraph does not disclose a "shaped mold" used to generate the briquette. Furthermore, the word "mold" appears nowhere in Metsarinta. Because there are other ways that a briquette could be generated other than a shaped mold, this shaped mold feature cannot be considered to be inherently disclosed by Metsarinta. Moreover, as noted by the Examiner, Metsarinta fails to disclose compressing the material into a shaped mold. Han also fails in this regard and Han does not make up for the deficiencies of Metsarinta. The word "mold" also appears nowhere in Han. Applicant respectfully notes that a screw press is vastly different than compressing into a shaped mold. A screw press in no way is considered to be a "shaped mold". The screw press often contains an opening for extracting or a means of being able to extract water or oil from the product that is being compressed and a shaped mold does not. Stated differently, a screw press is not a shaped mold.”
Applicants arguments are not deemed persuasive. Applicants only claim the dried biomass is compressed and does NOT claim a particular structure or device to complete compression. Therefore, Metsarinta has met the claim limitation by teaching, particularly in paragraph 0036, pressing the bio-coke into briquettes.
Applicants argued: “Applicant notes that the claimed range in claim 2 has no overlap with the moisture range recited in Metsarinta.”
Applicants arguments are not deemed persuasive. As stated in the above rejection, Metsarinta and Han disclose drying the biomass to achieve a desired moisture content level. It is maintained, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to adjust the reaction temperature and time of drying biomass in order to achieve a desired moisture content and reduced impurity component of the briquette. It is to be noted, the teachings of Metsarinta and Han overlap the present teaching in the current specification of drying the biomass in order to reach the desired moisture content (see paragraphs 0021 and 0023 of the current specification).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 2006-306925 A discloses in the abstract, to provide a formed charcoal for a fuel, equipped with an equivalent or a higher performance in calorific value and long lasting property than those of the charcoal produced by using natural woods such as oak or Japanese oak, especially a "bincho charcoal" called as a high grade charcoal and found to be useful in cooking or the bincho charcoal produced in China, and also the same having the calorific value, long lasting property, igniting performance and further radiation heat value.
KR 2009-0029502 A discloses in the abstract, the coal briquettes which have a main body part and the ignition part distinguished from this main body part, an air hole are formed, and the lower surface is curved are disclosed. The air hole is preferably an air hole that penetrates in a vertical direction consistent throughout the ignition portion and the body portion, and at least a portion of the air hole may be formed so that the inlet is in the concave portion of the lower surface curve.
THIS ACTION IS MADE FINAL. 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 LATOSHA D HINES whose telephone number is (571)270-5551. The examiner can normally be reached Monday thru Friday 9:00 AM - 6:00 PM.
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/Latosha Hines/
Primary Examiner, Art Unit 1771