DETAILED ACTION
Status of Claims
Claims 2-12, 15-16, 18-19, 22 and 24-27 are pending.
Claims 1, 13-14, 17, 20-21 and 23 are cancelled.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 November 2025 has been entered.
Examiner’s Note
The following changes were made to the claims without appropriate markings to indicate an amendment was made:
Claim 2: “process” the P is lowercase
Claim 2: deleted comma after ‘12’
Claim 2: added “an”
Claim 2: added “to”
Claim 2: added “acid”
Claim 3: added “acid”
Claim 3: added “to”
Claim 3 deleted hyphen
Claims 4, 8, 12, 16: added hyphen to “acid-laden”
Claim 6: a comma was added between acid and the
Claim 6: salt was deleted
Claims 12 and 16: the letters “a” “b” “c” do not include paratheses
Claim 12: “so as” was added
Claim 12: “or” was added
Claim 15: “and” was added
Claim 16: the hyphen was removed from tributyl
Claim 16: “ionic” was changed from “ion”
Claim 24: “P” in process is not capitalized
Specification
The disclosure is objected to because of the following informalities:
[0075] “amine comprising 18-36 carbon units” may be more appropriately written with “atoms” instead of “units”.
[0077] appears to have a typo with “Typically”
Appropriate correction is required.
The amendment filed 12 November 2025 (and 6 December 2024) is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
[0045] “amines containing 18-36 carbon atoms”
[0075] “amine comprising 18-36 carbon units”
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
Claims 3 and 4 are objected to because of the following informalities: the claims do not have a period at the end. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-12, 15-16, 18-19, 22 and 24-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 12 and 16, the phrase “with a solvent containing a long chain amine of 18-36 carbon atoms” contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The original specification includes the range of 18-24 carbon atoms. Although the specification includes the compounds tri-lauryl and tri-dodecyl amine which include 36 carbons, the specification does not provide support beyond the two compounds such that the range is fully supported. The claims may include the two examples in the original specification that are explicitly stated, however, the range is not fully supported.
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 3, 6-7, 16, 18-19, 22 and 25-27 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.
Claim 3 recites the limitation "the acid" in line 1. There is insufficient antecedent basis for this limitation in the claim. The term should be introduced in the claim without the use of “the”.
Claim 6 recites the limitation "the amino acid lysine" in line 2. There is insufficient antecedent basis for this limitation in the claim. The claim can state “lysine” without the usage of “the”.
Regarding claim 7, it appears that all of the compounds (e.g. tri-capryl amine, tri-octyl amine, etc.) are included as the solvent in the format that they are currently listed. The claim should be more clearly written such that a selection of one or the compounds is present. For example, “the solvent used comprises tri-capryl amine.. or ionic liquids”.
Claim 16 recites the limitation "the purified alkali metal hydroxide solution" in line 14. There is insufficient antecedent basis for this limitation in the claim. The terms should be previously stated in the claim for example to produce a purified alkali metal hydroxide solution.
Claim 18 recites the limitation "the salt" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 18 depends on claim 16. Claim 16 includes multiple salts and it is unclear which salt is being referred to.
Claim 25 recites the limitation "the raffinate stream" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 25 depends on claim 12. Claim 12 refers to “a raffinate”. Claim 25 would be more appropriately presented without the term “stream”.
Allowable Subject Matter
The claims are free of the prior art.
Response to Arguments
Applicant's arguments filed 12 November 2025 have been fully considered.
On page 2 the phase “amines containing 18-36 carbon atoms” is discussed. The remarks state that since the examples “tri-capryl amine” and “tri-dodecyl amine” are in the original specification, that support is present for the range 18-38 carbon atoms. The Examiner respectfully disagrees with this analysis. The specification supports the two examples provided. The specification does not support the full range. The claims may include the two specific examples.
On page 4 remarks are directed towards the rejection of claim 6 to “the amino acid lysine”. The claim may be amended to state “solvent is lysine”.
On page 4 the remarks are directed to claim 7 and the term “comprises”. The Examiner acknowledges the use of “comprises”, however as currently stated it appears that all of the components are present. The phrasing does not include a term such as “or” to indicate that only one solvent is present. The phrase should more appropriately include the term “or” (e.g. the solvent used comprises tri-capryl amine…or ionic liquids”.
On page 4 the remarks are directed towards claim 16 in regards to “the purified alkali metal hydroxide solution”. The rejection is based on lacking antecedent basis. To overcome the rejection the claim merely needs to previously state “a purified alkali metal hydroxide solution”.
On page 4 the remarks are directed to claim 18. The term “the salt” should more appropriately identify which salt is being referred to.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEFANIE S WITTENBERG whose telephone number is (571)270-7594. The examiner can normally be reached Monday - Friday, 7:00 am -4:00 pm EST.
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/Stefanie S Wittenberg/Primary Examiner, Art Unit 1795