DETAILED ACTION
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 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.
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.
Claim(s) 1-2, 6-7, 9-14, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanzer et al. (Tanzer et al.,"Can bioenergy with carbon capture and storage result in carbon negative steel? 100:15, International Journal of Greenhouse Gas Control (publication date: July 24, 2020), as cited in the IDS dated 7/31/2023, hereinafter “Tanzer.”
Regarding claim 1, Tanzer discloses of a carbon-negative metal product (abstract: "This paper explores the potential of achieving negative emissions in steelmaking routes, including blast furnace and Hisarna smelt reduction, and Midrex and ULCORED direct reduction") that is characterized by a carbon intensity less than O kg CO2e per metric ton of the carbon-negative metal product (page 13 col 2 para 4: "Aggressive deployment of both bioenergy and CCS in the high BECC case resulted in estimates of... slightly negative net CO2 (-0.2 to -0.5 t CO2/t HRC) for Hisarna-BOF, Midrex DRI-EAF, and ULCORED DRI-EAF"; see table 10, Midrex DRI-EAF has a carbon intensity of- 0.5 tons of CO2e, this is about -453.59 kg CO2e per ton of steel), wherein the carbon-negative metal product contains from about 50 wt% to about 100 wt% of one or more metals and optionally one or more alloying elements (abstract: "This paper explores the potential of achieving negative emissions in steelmaking ... "; page 12 col 1 para 5: "The base model assumed the production of unalloyed carbon steel"; carbon steel is an iron-based alloy that can comprise from about 0.05 up to 2.1 percent by weight C (alloying element), if unalloyed the metal product would comprise about 97.9 to 99.95% Fe).
Regarding claim 2, Tanzer further discloses of the carbon-negative metal product of claim 1, wherein the carbon intensity is less than about -100 kg CO2e, -200 kg CO2e, -300 kg CO2e, or -400 kg CO2e per metric ton of the carbon-negative metal product (page 13 col 2 para 4: "Aggressive deployment of both bioenergy and CCS in the high BECC case resulted in estimates of... slightly negative net CO2 (-0.2 to -0.5 t CO2/t HRC) for Hisarna-BOF, Midrex DRI-EAF, and ULCORED DRI-EAF"; see table 10, Midrex DRI-EAF has a carbon intensity of-0.5 tons of CO2e, this is about-453.59 kg CO2e per ton of steel).
Regarding claims 6-7 and 9-13, Tanzer teaches "The base model assumed the production of unalloyed carbon steel" (Abstract, page 12 col 1 para 5) Note that carbon steel is an iron-based alloy that can comprise from about 0.05 up to 2.1 percent by weight C (alloying element), if unalloyed the metal product would comprise about 97.9 to 99.95% Fe. Note that 0.05-2.1 wt.% carbon overlaps with the range recited in claim 9. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. Regarding claims 12-13, a carbon range of about 0.05 up to 2.1 percent weight C overlaps with the instantly claimed range of 1-10% C and is thus considered to overlap equilibrium and non-equilibrium concentrations when calculated at 25°C and 1 bar.
Regarding claim 14, Tanzer teaches wherein the carbon is derived from biomass characterized by a negative net CO2 (Abstract, pp. 1-4), which reads on derived from a carbon-negative carbon product that is characterized by a carbon-product carbon intensity less than 0 Kg CO2e per metric ton of the carbon-negative carbon product.
Regarding claim 25, Tanzer teaches that the carbon-negative metal product may be in a form of a coil (Fig. 2, p. 3).
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 1-2, 7, 10-11, and 15-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,851,723. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 of U.S. Patent No. 11,851,723 discloses a carbon-negative metal product with the same or overlapping features as that recited in the instant claims 1-2, 7, 10-11, and 15-24.
Claims 1-2, 6-7, 9-10, 15-17, 19, 21, 23, and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,655,487. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 of U.S. Patent No. 12,655,487 discloses a carbon-negative metal product with the same or overlapping features as that recited in the instant claims 1-2, 6-7, 9-10, 15-17, 19, 21, 23, and 25.
Claims 1-2, 7, 9-10, and 15-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,398,435. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-10 of U.S. Patent No. 12,398,435 discloses a carbon-negative metal product with the same or overlapping features as that recited in the instant claims 1-2, 7, 9-10, and 15-24.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY M LIANG whose telephone number is (571)272-0483. The examiner can normally be reached M-F: 9:00am-5:00pm.
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/ANTHONY M LIANG/Primary Examiner, Art Unit 1734
