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 Office action is based on the 18/949426 application originally filed November 15, 2024.
Amended claims 1-10, 31-34 and 36-40, filed May 18, 2026, are pending and have been fully considered. Claims 11-30 and 35 have been canceled.
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive because Waanders fails to disclose or suggest that its source of coal fines has a lower volatile matter percentage than its source of biochar (see Table 1 of Waanders 23.5% VS. 21.9%). Therefore, the finality of the action dated March 19, 2026 is withdrawn. However, this new action clearly addresses all of the claims.
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.
Claim(s) 1, 2, 4-6, 10, 31-34, 36, 37, 38 and 40 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Martin et al. (US 3,173,769) hereinafter “Martin”.
Regarding Claims 1, 2, 4-6, 10, 31-34, 36, 37, 38 and 40
Martin discloses in column 1 lines 45-53, mixing finely divided carbon, which has been pre-processed in a particular way, with water, a binder such as starch or other essentially non-smoking, non-bituminous organic binder, and in some cases also with an ignition agent, forming the mixture in a roll-type briquetting press, extrusion press, or other suitable equipment, and then drying the briquets or other formed articles.
Martin further discloses in column 1 lines 57-63, mixing finely divided carbon which has been preprocessed in a particular way, with sodium carbonate as an ignition agent, starch, and water, forming the mixture in a roll-type briquetting press and then drying the briquets.
Martin discloses in column 1 lines 64-67, the preferred binder is corn starch but other binders may be used such as potato starch, molasses, natural gums, dextrins, or other organic binders which are essentially nonsmoking and free of odor during burning.
Martin discloses in column 2 lines 41-48, the product, sometimes referred to as "char," typically has a bulk density of 6-20 pounds per cubic foot, a particle size within the range of 5-1000 microns, and a volatile content of .3-18%.
Martin discloses in column 2 lines 49- column 3 lines 1-3, agents may be added or incorporated in the char-binder mixtures to promote combustion and/or lower the ignition temperature of the formed and dried products, and such materials are referred to as ignition agents in the claims. (If employed they will typically range from about 1 to about 8 parts-per 100 parts of char.) Such materials include the alkali carbonates, nitrates, chlorates, or chlorides, and the oxides of copper, lead, sodium (as sodium carbonate) or any other chemical listed as a combustion promoter or ignition accelerator. Minor amounts of other materials such as lime and hickory sawdust may also be incorporated in the mixtures before they are formed and dried. Blends of the processed carbonaceous particles of this invention with other combustible particles, such as charcoal, which blends are then mixed with binder, formed and dried.
It is to be noted, Martin does not disclose the briquette does not have a sulfur content and therefore Martin has met the limitation of the present invention of having less than 1 percent of sulfur content (less than 1 percent encompasses zero).
It is to be noted, Martin does not disclose the briquette does not have a airborne particles and therefore Martin has met the limitation of the present invention of having less than 1 percent of airborne particles (less than 1 percent encompasses zero).
Martin discloses in column 6 lines 64-71, the crushing strengths of the briquets were measured by placing them in a Dillon Dynamometer or Universal Tester, Model L, compressing them until they snapped apart and noting and recording the gage reading minus the zero reading. The briquets tested were held at room temperature at least 8 hours prior to testing and contained no more than 4% moisture.
Martin discloses in column 3 lines 41-51, the briquets made from starch (about 6 parts) and the herein specified processed finely divided carbon (100 parts) having a controlled low volatile content of about 3-7% can be ignited, even at high apparent densities, when used as a foundry fuel.
Martin discloses the product, sometimes referred to as "char," typically has a volatile content of .3-18%, meeting the claimed range of a plurality of coke pellets having a third volatile matter percentage less than 15%.
It is to be noted, claims 1 and 40 contains an intermediate step that is defined by a product-by-process. The final product of the pellet has a volatile matter percentage less than 15% and the claim is NOT defined by the “intermediate” step of determining the volatile matter of the biomass, char or set of materials being higher or lower due to the product will determine patentability. As shown by Martin, the product, sometimes referred to as "char," typically has a volatile content of .3-18%, meeting the claimed range of a plurality of coke pellets having a third volatile matter percentage less than 15%. “In order to establish that the claimed intermediate is a ‘contributing cause’ of the unexpectedly superior activity or property of an end product, an applicant must identify the cause of the unexpectedly superior activity or property (compared to the prior art) in the end product and establish a nexus for that cause between the intermediate and the end product.” Id. at 479. MPEP 716.02(b)(III).
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). [Emphasis added by examiner]
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
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.
Claim(s) 7-9 and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin et al. (US 3,173,769) hereinafter “Martin” in view of Jennissen et al. (US 2017/0130958) hereinafter “Jennissen”.
Regarding Claim 7-9 and 39
Martin discloses the composition of independent claim 1 of the present invention but fails to disclose the properties of dependent claims 7-9 and 39.
However, Jennissen discloses in paragraph 0021, the formation coal or cokes together with a secondary fuel comprising cellulose and plastic, in the form of pellets of a size larger than about 3 mm thickness, and having a caloric value of about 16 GJ/ton or more, is co-grinded to a powder with a particle size wherein about 95 wt % or more of the powder has a particle size smaller than 2 mm and wherein the d50 of the particle size distribution is between about 5 and about 100 μm.
Jennissen discloses in paragraph 0043, the bulk density (tapped) of the pellets is about 350 kg/m3 or higher, preferably about 400 kg/m3, such as for example about 430 or 450 kg/m3. Jennissen discloses in paragraph 0044, the strength of the pellets is about 5 kgf or more, preferably about 8 kgf or more, more preferably about 10 kgf or more. Jennissen discloses in paragraph 0046, the moisture content of the pellets relative to dry pellets is about 15 wt % or less. Jennissen discloses in paragraph 0047, the ash content of the pellets generally is about 20 wt % or less. Jennissen discloses in paragraph 0048, the pellets can be prepared from waste mixtures. Cellulose/plastic waste mixtures originate for example from industrial, domestic, urban or municipal waste.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art for the coke pellets of Martin to comprise the properties of the coke pellets of Jennissen. The motivation to do so is to create a pellet that reduces emission upon burning due to the specific properties.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The applied prior art failed to teach and/or suggest the claimed invention of independent claim 1 further comprising the first volatile matter percentage is between 20-80%, and wherein the second volatile matter percentage is between 1-10%. It is to be noted, independent claim 40 would be allowable if rewritten in independent form including all of the limitations of dependent claim 3 and any intervening claims applicant deemed as suitable limitations.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Latosha Hines/Primary Examiner, Art Unit 1771
