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
Response to Applicants’ Arguments and Remarks
The Amendment/Request for Reconsideration After Non-Final Rejection filed 09/08/2026 has been entered. Claim 1 has been amended. Claims 2 and 4 have conformal amendments. Claim 5 has been canceled. Claims 1-4 and 6 remain pending.
Applicants’ Arguments with respect to claim(s) in the Non-Final rejection dated 06/09/2026 filed 09/08/2026 are persuasive with respect to the objections to the Specification, Drawings, and Claims except as specifically noted below.
Applicant' s arguments with respect to claims in the Non-Final rejection dated 06/09/2026 filed 09/08/2026 with respect to the rejection(s) of claim(s) 1-6 under Mennell and Noyes have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration of the amendment bringing the previous subject matter of claim 5 into claim 1, a new ground(s) of rejection is made which was previously applied in the rejection of claim 5. The Examiner will address applicable arguments.
Regarding Amended Claim 1 The Applicant argues that,
Applicant respectfully disagrees with the Examiner's interpretation of Mennell as applied to amended claim 1 (the amendment addition being formerly Claim 5). Mennell and Noyes, taken
individually and in combination, fail to teach or fairly suggest a method for producing iron ore pellets comprising the specific processing conditions that require the carbon in the solid carbon, which is produced from a specific group of gases (CO2, CO, and CH4,) is 10 mass% or more.
Mennell does not disclose the fraction of the carbon from the cited gases and applying Noyes to Mennell in the manner of the Office Action, a PHOSITA would not have been motivated to set the carbon fraction in the claimed range with a reasonable expectation of success.
Per the instant specification, the consumption of the cites gases contribute to i) carbon neutrality and ii) carbon produced from the cited gases to the cited fraction increases pellet strength. Mennell and Noyes do not recognize i) and ii). As such the Applicants production and its advantages are unexpected in view of prior art.
Regarding Claims 2-6 and 6 the Applicant argues that,
the arguments for dependent Claims 2-4 and 6 are the same as for Amended Claim 1.
In response to the Applicants’ argument regarding Amended Claim 1 the Examiner replies,
a) and b) Respectful disagreement. Noyes is not relied upon to teach a method for producing iron ore pellets. Mennell is relied upon to teach a method for producing iron ore pellets. Noyes is relied upon to teach aspect of producing the solid carbon constituent used in making iron ore pellets. Noyes discloses producing solid carbon from the gases carbon from CO, CO2 and a reducing agent where the reducing agent is preferred to be a hydrocarbon gas (natural gas, methane – both known to be or contain CH4) (Col 1 lines 50-56). Further, in Example 1, Noyes discloses using CO2 to produce carbon nanotubes, where the analysis of the carbon produced from Example 1 is shown in Fig. 5. Fig. 5 illustrates that the carbon produced contained 88.23 wt% carbon, which reads on the limitation of Amended Claim 1 of “ wherein a fraction of the carbon in the solid carbon is 10% mass% or more”. Regarding a PHOSITA would not have been motivated to set the carbon fraction in the claimed range with a reasonable expectation of success, a benefit of using the carbon producing method of Noyes is providing a “green” process by eliminating the emission of carbon dioxide into the atmosphere and providing an inexpensive material for use (Col 2 lines 5-11). While not reading the specification into the claims, a benefit of the invention in the instant application is the consumption of the cited gases contribute to carbon neutrality, which aligns with Noyes. It would have been obvious to one of ordinary skill in the art prior at the time of the effective filing date of the claimed invention that in order to reduce carbon emissions, the cited gases, especially CO2, are used to produce solid carbon. The process of Noyes inherently creates carbon fraction in the carbon of at least 10 wt% mass or more. To note, in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. Here, Noyes explicitly discloses the claimed “carbon fraction in the carbon of at least 10 wt% mass or more” and is a natural result of the Noyes process.
c) Respectful disagreement. As noted in a) and b) above, Noyes cites a benefit of using the carbon producing method of Noyes is providing a “green” process by eliminating the emission of carbon dioxide into the atmosphere and providing an inexpensive material for use (Col 2 lines 5-11), indicating that the benefit of carbon neutrality is not unexpected. Further, the process of Noyes producing solid carbon of 88.23 wt% is significantly above the claimed “carbon fraction of the carbon is 10% or more”. Obtaining a carbon fraction at this wt% is not an unexpected result.
Further, overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant' s showing of allegedly unexpected results does not satisfy these requirements. First the “unexpected result” of increased pellet strength could be influenced by other factors, such as the type of and amount of binder, or the type and amount of fluxing agent. The increased pellet strength can be affected by more than the wt% of carbon in the solid carbon claimed, so the attribution of this quality is not clear.
Second, the claims are not commensurate in scope. The claim is to a “solid carbon” wherein “the solid carbon includes carbon produced from one or more gases selected from the group consisting of CO2 gas, CO gas, and CH4 gas wherein a fraction of the carbon in the solid carbon is 10 mass% or more”, where the method is a one of comprising (other constituents not claimed could be part of the method) and where the solid carbon could be any form of solid carbon. Evidentiary Reference U.S. Patent 6,333,016 by Resasco et. al. details the use of carbon gases, including hydrocarbons such as methane and carbon monoxide (Col 5 lines 50-53) to produce solid carbon, where the solid carbon could be amorphous carbon, carbon nanotubes, or graphite using different catalysts (Col 12, Table II, lines 1-12). Yet, examples in the Specification do not appear to disclose any variation in the phase of carbon produced, only citing “carbon was produced” [0050] and “carbon replacement fraction” in Table 4 [0054]. The overarching term “comprising” in the preamble leaves room for many ingredients which could have an effect on the type of solid carbon formed, as well as the effects of strength on the pellet.
In response to the Applicants’ argument regarding Claims 2-4 and 6 the Examiner replies,
as the arguments for dependent Claims 2-4 and 6 are the same as for Amended Claim 1, the
response for Claims 2-4 and 6 is the same as for Amended Claim 1. Hence, the argument is
moot.
Claim Interpretation
The claim interpretations presented in the CTNF are maintained.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-4, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Canadian Patent
3,194,777A1 (as submitted in the IDS dated 08/28/2025) by Mennell et. al. (herein “Mennell”) in
further view of U.S. Patent 8,679,444 by Noyes (herein “Noyes”).
Regarding Claim 1 – Mennell teaches,
method of producing iron ore pellets; Claim 1, Claim 10, “A process for producing carbon-metal ore pellets…”, “…the process of any of the above claims, wherein the metal ore is iron ore.”
the method comprising,
a mixing process of mixing iron ore having a total Fe content of 63 mass% or less, solid carbon, binder, and auxiliary material to obtain a mixture; [0177], “…biogenic reagent…comprising carbon…and the metal ore are fed into carbon-metal ore mixing unit. Additive can be added to the carbon-metal ore mixing unit; [0238],[0235],[0236] “…an additive can be added before, during, or after any one or more steps of the process…”, “…the carbon metal pellets can comprise an additive, such as a binder…the additive can comprise a fluxing agent…” (auxiliary material).
a granulation process of granulating the mixture to obtain green pellets; [0540] – an embodiment cites “The…iron ore and biogenic reagent are combined…as a mixture of lumps and fines…then pelletized…to generate carbon-iron ore pellets”. Here, creating “lumps” of material from mixing is synonymous with granulating.
and a firing process of firing the green pellets to obtain iron ore pellets by burning CH4 gas to heat the green pellets from outside while burning the solid carbon to heat the green pellets from inside; [0244], [0542], [0272], [0273], “the chemically reducing co-utilizes a reducing gas from gasification...of light hydrocarbons. The light hydrocarbons can be derived from the pyrolysis off-gas…light hydrocarbons can include methane” (PHOSITA knows the chemical formula of methane is CH4), “…the carbon iron ore pellets are fed into a…reduction reactor”,” In the reduction reactor the Fe3O4 is reduced by reaction with… CO as well as with the solid carbon”, “By combining…iron oxide and the reductant (the biogenic reagent) within the briquette…the reaction kinetics are increased dramatically”. “The heat required to drive the reaction within the self-reducing briquettes…”, “…Inside the pellets, the following reactions take place at a very fast rate: FexOy + y CO → xFe +y CO2
y CO2 + y C = 2y CO
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
While Mennell discloses pyrolysis off-gas that contains light hydrocarbons (methane/CH4) and carbon monoxide (CO) ([0244], [0245]) and an iron oxide reduction reaction that produces carbon dioxide (CO2) ([0260[-[0262]), Mennell does not disclose,
wherein the solid carbon includes carbon produced from one or more gases selected from the group consisting of CO2 gas, CO gas, and CH4 gas.
In an analogous endeavor of producing carbon from combustion gases, process off-gases, and industrial sources of carbon oxides (Col 1 lines 31-35), Noyes discloses a method to produce solid carbon from CO, CO2 and a reducing agent where the reducing agent is preferred to be a hydrocarbon gas (natural gas, methane – both known to be or contain CH4) as the hydrocarbon gas is dual function – additional carbon source and a reducing agent for carbon oxides (Col 1 lines 50-56). Further, Noyes discloses a process that can be integrated with industrial processes and fossil fuel combustion processes to obtain solid carbon (Col 2 lines 17-37). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to incorporate the method of Noyes that produces solid carbon from combustion off-gases into the pyrolysis off-gas processes of Mennell in order to produce solid carbon feedstock that can be used as all or part of the solid carbon in the iron ore pellet making process of Mennell. One would have been motivated to do so for the purposes of providing a “green” process by eliminating the emission of carbon dioxide into the atmosphere and providing an inexpensive material for use , as noted by Noyes (Col 2 lines 5-11).
wherein,
a fraction of the carbon in the solid carbon is 10 mass% or more;
Noyes further discloses in Example 1,using CO2 to produce carbon nanotubes, where the analysis of the carbon produced from Example 1 is shown in Fig. 5. Fig. 5 illustrates that the carbon produced contained 88.23 wt% carbon, which reads on the limitation of Amended Claim 1 of “ wherein a fraction of the carbon in the solid carbon is 10% mass% or more”. It would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the claimed invention to use the method of Noyes to produce solid carbon where the solid carbon is used in the mixture of Mennell, as one would be motivated to do so for the purposes of providing a “green” process by eliminating the emission of carbon dioxide into the atmosphere and providing an inexpensive material for use , as noted by Noyes (Col 2 lines 5-11). The mass fraction of carbon in the solid carbon is 10 mass% of more is inherent in the method of Noyes, and whereina benefit of the invention in the instant application is the consumption of the cited gases contribute to carbon neutrality. To note, in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. Here, Noyes explicitly discloses the claimed “carbon fraction in the carbon of at least 10 wt% mass or more” and is a natural result of the Noyes process.
Regarding Claim 2 - Mennell and Noyes in the rejection of claim 1 above teach all of the limitations of
claim 1. Mennell teaches wherein,
the solid carbon includes the carbon produced from one or both of CO2 gas and CO gas; The instant claim is taught previously in Claim 1 by Noyes (Col 1 lines 50-56).
Regarding Claim 3 - Mennell and Noyes in the rejection of claim 1 above teach all of the limitations
of claim 1.
Mennell teaches wherein,
the CH4 gas used in the production of the carbon includes CH4 gas produced from one or both of CO2 gas and CO gas; ; [0244],[0245], “the chemically reducing co-utilizes a reducing gas from gasification...of light hydrocarbons. The light hydrocarbons can be derived from the
pyrolysis off-gas…light hydrocarbons can include methane (PHOSITA knows the chemical
formula of methane is CH4), “…the pyrolysis off-gas can comprise…carbon monoxide (CO)…”,
While Mennell discloses CH4 gas produced from does not disclose,
the CH4 gas used in the production of the carbon includes CH4 gas produced from one or both of CO2 gas and CO gas;
Noyes discloses a method to produce solid carbon from CO, CO2 and a reducing agent where the reducing agent is preferred to be a hydrocarbon gas (natural gas, methane – both known to be or contain CH4) as the hydrocarbon gas is dual function – additional carbon source and a reducing agent for carbon oxides (Col 1 lines 50-56). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to incorporate the concept of CH4 used in the production of carbon of Noyes, for the methane (CH4) derived from pyrolysis off-gas CO in the method of Mennell. One would be motivated to do so as methane itself is an economical choice of reducing gas for the process, as noted by Noyes (Col 10 lines 63-66).
Regarding Claim 4 - Mennell and Noyes in the rejection of claim 1 above teach all of the limitations
of claim 1.
Mennell discloses possible additives that can be added to the carbon-metal pellet [0024], where the
potential additives can be metals [0025] but does not disclose,
the carbon includes a carbon produced using iron as a catalyst;
Noyes further discloses a carbon producing reaction using methane (CH4) as the reducing agent (Col 10 lines 60-67) and the notes the reaction kinetics may be established through the use of a catalyst, such as iron (Col 11 lines 3-7). It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to use an iron catalyst for producing carbon per the method of Noyes for the carbon used in the method of Mennell. One would be motivated to do so for the purposes of capturing the benefit of lower temperatures and reduced time needed to obtain the carbon, as noted by Noyes (Col 11 lines 5-6).
Regarding Claim 6 - Mennell and Noyes in the rejection of claim 1 above teach all of the limitations
of claim 1.
Mennell teaches wherein,
the CH4 gas used in the firing process includes CH4 gas produced from one or both of CO2 and
CO gas; [0244],[0245], [0247] “the chemically reducing co-utilizes a reducing gas
from gasification...of light hydrocarbons. The light hydrocarbons can be derived from the
pyrolysis off-gas…light hydrocarbons can include methane (PHOSITA knows the chemical
formula of methane is CH4), “…the pyrolysis off-gas can comprise…carbon monoxide (CO)…”, “
…the chemically reducing can be conducted in a metal ore furnace…”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHRISTOPHER PAUL DAIGLER whose telephone number is (571)272-1066. The examiner can normally be reached Monday-Friday 7:30-4:30 CT.
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/CHRISTOPHER PAUL DAIGLER/ Examiner, Art Unit 1741 /ERIN SNELTING/Primary Examiner, Art Unit 1741
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