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 .
Priority
Provisional application, 62/149,015 (Pro’015) has disclosure for “a method of recovering
copper from a copper sulphide mineral” (emphasis added) (p. 6, lines 1-2) but does not provide
disclosure for broadly claimed “a method of recovering at least one copper ion from at least one
copper sulfide in a material” (emphasis added), recited in claim 60.
Therefore, the present claims 60-100 and 102-129 do not benefit from the filing date of
01/17/2015.
Further, Pro’015 does not provide disclosure for “the thiocarbonyl functional group of the
reagent has a sulfur that bears a partial negative charge, bears a negative electrostatic potential
surface, and has an empty n*-antibonding orbital as its lowest unoccupied molecular orbital”,
recited in claim 61.
Pro’015 provides disclosure for “In methods disclosed herein, thiourea is first dissolved in an acidic sulphate solution. In the presence of an oxidant such as ferric sulphate, thiourea will
oxidize partially to formamidine disulfide (FDS} according to the following half-cell reaction:
…in the presence of FDS and ferric sulphate (or another suitable oxidant)”, but does not provide
disclosure “wherein the acidic solution comprises at least one oxidizing agent” (emphasis added), recited in claim
62.
Pro’015 provides disclosure for,
Particular embodiments of the claimed invention relate to methods of recovering
copper from chalcopyrite (i.e., specific material comprising copper sulfide), the
methods comprising: contacting the chalcopyrite with an acidic sulphate solution
containing thiourea, or a decomposition product of thiourea, wherein the
concentration of thiourea in the acidic sulphate solution is about 30 mM or less, to
produce a pregnant solution containing copper ions; and recovering copper from
the pregnant solution. The initial concentration of thiourea in the acidic sulphate
solution may be about 10 mM or less, about 5 mM or less, about 1 mM or less, or
about 0.1 mM or less (p. 3) and
a method comprising contacting the chalcopyrite (i.e., specific material) with an
acidic sulphate solution containing formamidine disulfide (FDS) (i.e., specific
thiourea)…The concentration of FDS in the acidic sulphate solution may be about
15mM 10 or less, about 5 mM or less. about 4 mM or fess, about 3 mM or less,
about 2.5 mM or less, about 2 mM or less, about 1 mM or jess, about 0.9 mM or
less, about G.8 mM or less, about 0.7 mM or less, about 0.6 mM or lass, about 0.5
mM or less, about 0.4 mM or less, 0.38 mM or less, 0.2 mM or less, about 0.1
mM or less, or about 0.05 mM or less. (p. 4)
However, Pro’015does not provide support for the concentration of the reagent (i.e., any type of thiourea) to be used in copper sulfide in any type of material in a range of about 0.002 mM to about 50mM, as recited in claim 63.
Pro’015does not provide disclosure for the concentration of the reagent (i.e., any type of
thiourea) in a range of about 0.2 mM to about 60mM, 50mM, recited in claims 73-74.
Pro’015 does not provide disclosure for the concentration of the reagent (i.e., any type of
thiourea) in a range of about 2 mM to about 60mM or 50mM, , recited in claims 80-81,
Pro’015 does not provide disclosure for the concentration of the reagent (i.e., any type of
thiourea) in a range of about 10 mM to about 60mM and 50mM recited in claims 86-87,
Pro’015 does not any concentration recited in claims 90-91.
Pro’015does not provide disclosure for the concentration of the reagent (i.e., any type of
thiourea) in a range of about 0.001 mM to about 100mM or 60mM, recited in claims 128 and
129.
There are no disclosure to broadly recite for claims 92 (i.e., any sources of ferric ion), 94, 95 (i.e., any sulfate solution), and 97-100.
While there is disclosure in Pro’015 for copper sulphide being a chalcopyrite, there is no
disclosure for covellite, bornite, enargite, a copper sulfide of the formula CuxSy wherein the x:y
ratio is between 1 and 2, or a combination thereof.
PCT/CA2016/050444 (PCT’444) does not disclose “the acidic solution comprises at least
one oxidizing agent”, recited in claim 62.
While PCT’444 discloses, “The concentration of the reagent maybe in the range of about 0.2 mM to about 30 mM” (p. 3), there is no disclosure for broadly claimed concentration recited in claims 63-74, 80-81, 86-87, 90-91, and 128-129.
Further, there is no disclosure in PCT’444 for claim 125.
For at least the reasons above, claims 62-74, 80-81,86-87, 90-91 and 128-129 do not benefit the filing date of 04/15/2016.
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 60, 63-89, 92, 94-95, 97-98, 102-111, 113-125, and 128-129 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-38 of U.S. Patent No. No. 10,781,502 B2 (Dixon). Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
The present claims require a method of recovering at least one copper ion from at least one copper sulfide in a material, the method comprising: contacting the material with an acidic solution comprising reagent having a thiocarbonyl functional group, wherein the reagent is thiourea (Tu) to produce a pregnant solution comprising copper ions; and recovering the at least one copper ion from the pregnant solution (claim 60).
While Dixon requires a method of recovering at least one base metal from at least one base metal sulfide in a material, the method comprising: contacting a material comprising at least one base metal sulfide with an acidic sulfate solution comprising formamidine disulfide (FDS) to produce a pregnant solution containing base metal ions; and recovering the base metal from the at least one base metal sulfide from the pregnant solution (Dixon, claim 1); and wherein the concentration of FDS in the acidic sulfate solution is sufficient to provide sufficient thiourea to increase the rate of the base metal ion extraction relative to an acidic sulfate solution that does not contain the reagent to produce the pregnant solution containing the base metal ions (Dixon, claim 12) (i.e., corresponds to the reagent having a thiocarbonyl functional group, wherein the reagent is thiourea); and wherein the at least one base metal sulfide includes at least one copper sulfide (Dixon, claim 13).
Therefore, the limitations of Dixon correspond to the limitations of present claim 60.
Further, claims 3-11 of Dixon have overlapping ranges with the present claims 63-89 and 128-129. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Further, the present claims in Dixon correspond to claims in the present application:
claim 30 of Dixon corresponds to claims 62, 92, 97, and 98 of the present application;
claim 31 of Dixon corresponds to claim 94 of the present application;
claim 12 of Dixon corresponds to claim 95 of the present application;
claims 14-21 of Dixon correspond to claims 102-110 of the present application;
claim 22 of Dixon corresponds to claim 111 of the present application;
claim 23 of Dixon corresponds to claim 112 of the present application;
claim 24 of Dixon corresponds to claim 113 of the present application;
claim 25 of Dixon corresponds to claim 114 of the present application;
claim 26 of Dixon corresponds to claim 115 of the present application;
claim 27 of Dixon corresponds to claim 116 of the present application;
claim 28 of Dixon corresponds to claim 117 of the present application;
claims 32-36 of Dixon correspond to claims 118-123 of the present application;
claim 37 of Dixon corresponds to claim 124 of the present application; and
claim 38 of Dixon corresponds to claim 125 of the present application.
Allowable Subject Matter
Claims 61-62, 90-91, 93, 96, 99-100, and 126-127 are 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.
Response to Arguments
In response to page 14 of Remarks, while applicant states a terminal disclaimer has been filed in order to overcome the non-statutory double rejection over US 10,781,502 B2 on page 14 of Remarks, no terminal disclaimer was found in the file. At this time, the non-statutory double rejection remains until a proper terminal disclaimer is filed.
Upon further considering Young and applicant’s remarks regarding Young, it is agreed that Young does not teach all the limitations of claim 60, such as “contacting the material with an acidic solution comprising a reagent having a thiocarbonyl functional group, wherein the reagent is thiourea (Tu), to produce a pregnant solution comprising copper ions”. Therefore, the previous 35 U.S.C. 103 over Young, Young in view of Alvarez, Young in view of Sullivan, Young in view of Rivera, and Young in view of Kodali are withdrawn from the record.
Applicant primarily argues:
“Copper deposits can form a number of different sulfides in the same material, such as chalcopyrite, bornite, chalcocite, covellite, etc.”
Remarks, p. 10
The examiner respectfully traverses as follows:
While copper is capable of forming a number of different sulfides, Pro’015 does not provide such a disclosure.
Applicant further argues:
“Here, a person skilled in the art would have no reason to interpret a copper sulphide mineral differently than at least one copper sulfide, nor has the Examiner provided any rationale to support an alternative interpretation. Copper sulfide is understood to be a mineral by a person skilled in the art, with or without the additional qualifying language of "mineral" added to the end of “copper sulphide.””
Remarks, p. 11The examiner respectfully traverses as follows:
The fact remains, a person skilled in the art would have no reason to interpret a copper sulphide mineral (i.e., singular) to be necessarily equivalent to at least one copper sulfide (i.e., broadly encompassing plural copper sulphides).
Further, if copper sulfide is understood to be a mineral by a person skilled in the art, with or without the additional qualifying language of "mineral" added to the end of "copper sulphide”, then it is unclear why “mineral” is added, given that the addition of “mineral” appears to make the claim language redundant.
Applicant further argues:
“Pro'015 does provide disclosure as recited in claim 61. Again, the correct interpretation of claim 61 is as it would be interpreted by one of ordinary skill in the art. A person skilled in the art would understand a portion of thiourea in an acidic solution would feature a sulfur with a partial negative charge and an empty n*-antibonding orbital as its lowest unoccupied molecular orbital (LUMO); these features make the sulfur of thiourea reactive. It would be clear to one skilled in the art from the disclosure of the Pro'015, that thiourea is reacting with chalcopyrite to leach copper into solution, as seen in Figure 2. Although this effect is enhanced by the addition of ferric ions, addition of thiourea without another oxidant still shows enhanced copper leaching rates over the control. Pro'015 at Figure 2. Based on these results, it would be understood by a person skilled in the art that the enhanced oxidation of chalcopyrite is accompanied by the reduction of thiourea. Therefore, a person skilled in the art would reasonably conclude that some percentage of the thiourea present in solution would feature a sulfur with a partial negative charge and an empty n*-antibonding orbital as its lowest unoccupied molecular orbital (LUMO) in order to catalyze such a reaction.”
Remarks, p. 11
The examiner respectfully traverses as follows:
It is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding enhanced oxidation of chalcopyrite is accompanied by the reduction of thiourea must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Further, even if one of ordinary skill in the art would understand the enhanced oxidation of chalcopyrite is accompanied by the reduction of thiourea, this still would not provide support for claim 61, given this is drawn to a specific example.
Applicant further argues:
“The Applicant disagrees that claims 62, 92, 94-95, and 97-100 are not supported by Pro'015. Pro'015 discloses that ferric ions, provided by a ferric sulfate solution, oxidizes chalcopyrite and reduces the ferric ions to ferrous ions. Pro'015 at page 1, II. 23 to page 2, II. 5, Figure 2. A person skilled in the art would understand that a ferric sulfate solution would comprise ferric ions, as ferric sulfate is highly soluble in water. Support for ferric sulfate in the acidic solution as an oxidant is found in Pro'015 at page 6, II. 31 to page 6, II. 16, which states in relevant part, "[...] [i]n the presence of an oxidant such as ferric sulphate, thiourea will oxidize partially to formamidine disulfide [...] [i]n the presence of FDS and ferric sulfate (or another suitable oxidant) [...] with oxidation of the chalcopyrite by either FDS or ferric, respectively." Furthermore, Pro'015 states "[i]n the methods described above, ferric ions may be used to oxidize the chalcopyrite. The ferric ions may be generated at least in part by bacteria." Pro'015 at page 4, II. 16-17. Furthermore, although the Examiner states that claim 95 is not supported "(i.e., any sulfate solution)," Example 1 of Pro'015 clearly includes both H2SO4 and Fe2SO4 along with thiourea in the electrolyte solution. Pro'015 at page 10, II. 25-26. Accordingly, Applicant submits that claims 62, 92, 94-95, and 97-100 properly claim priority to Pro'015.”
Remarks, p. 11-12
The examiner respectfully traverses as follows:
The fact remains, Pro'015 only provides disclosure for "In methods disclosed herein, thiourea is first dissolved in an acidic sulphate solution. In the presence of an oxidant such as ferric sulphate, thiourea will oxidize partially to formamidine disulfide (FDS) according to the following half-cell reaction…in the presence of FDS and ferric sulphate (or another suitable oxidant)" (i.e., singular oxidizing agent), but does not provide disclosure for "wherein the acidic solution comprises at least one oxidizing agent" (i.e., can be two or more of any type of oxidizing agent).
Applicant further argues:
“Pro'015 discloses acidic solutions comprising ferric sulfate with thiourea added in the range of 0 mM - 100mM. Pro'015 at 10 (Example 1) and 16 (Table 2). Claims 63-74, 80-81, 86-87, 90-91, and 128-129 all recite ranges that fall within this stated range.”
Remarks, p. 12
The examiner respectfully traverses as follows:
The fact remains, there is no evidence how the thiourea added in the range of 0 mM - 100mM in Pro'015 at 10 (Example 1) and 16 (Table 2) in FIG 1 of Pro’015 would correspond to the claimed percentages. Clarification is requested.
Applicant further argues:
“The Applicant disagrees with the Examiner that claims 62-74, 80-81,86-87, 90-91 and 128-129 cannot claim priority to PCT'444. The Examiner states that PCT'444 "does not disclose 'the acidic solution comprises at least one oxidizing agent', recited in claim 62." PCT'444 states "[t]he method involves contacting the ore with an acidic sulfate solution containing ferric sulfate and a reagent having a thiocarbonyl group to extract metal ions from the at least one metal sulfide [...]" PCT'444 at 2. PCT'444 further states "[f]erric ions may be used to oxidize the metal sulfide. In the method above, the ferric ions may be generated at least in part by bacteria." PCT'444 at 4. PCT'444 clearly discloses an oxidizing agent (i.e. ferric ions) in the acidic solution. Furthermore, the acidic solution comprises ferric sulfate, which is understood by a person skilled in the art to be a compound that is soluble in an aqueous solution, and thus would provide a source of ferric ions as an oxidizing agent in the acidic solution. Accordingly, the Applicant submits that claim 62 properly claims priority to PCT'444.”
Remarks, p. 13
The examiner respectfully traverses as follows:
The fact remains, PCT’444 does not disclose “at least one oxidizing agent”, i.e., encompassing two or more oxidizing agents. Applicant points to specific embodiments for support; however, the specific embodiments do not state that there may be more than one oxidizing agent.
Applicant further argues:
“PCT'444 discloses acidic solutions comprising ferric sulfate with thiourea added in the range of 0 mM - 100mM. PCT'444 at 19 (Example 1) and 27 (Table 2). Claims 63-74, 80-81, 86-87, 90-91, and 128-129 all recite ranges that fall within this stated range.
There is adequate disclosure and support for claims 63-74, 80-81, 86-87, 90-91, and 128-129, as clear upper and lower limits of the range of thiourea are stated in Example 1 of PCT'444, and clear upper and lower limits of the range of thiourea are recited in claims 63-74, 80-81, 86-87, 90-91, and 128-129 of the present application which fall within the range recited in PCT'444. Figure 1 of PCT'444 also clearly discloses a thiourea concentration range between 0 mM and 100 mM. Accordingly, the Applicant submits that claims 63-74, 80-81, 86-87, 90-91, and 128-129 properly claim priority to PCT'444.”
Remarks, p. 13-14
The examiner respectfully traverses as follows:
The fact remains, PCT’444 discloses, “The concentration of the reagent may be in the range of about 0.2 mM to about 30 mM” (p. 3), which does not provide support for the broad concentration ranges recited in claims 63-64, 80-81, 86-87, 90-91, and 128-129.
Applicant further argues:
“PCT'444 discloses maintaining the operating potential of the acidic solution above 500 m V vs Ag/ AgCl in Figure 8, Example 1.3, Example 6, and Figure 24, as recited in claim 125. Accordingly, the Applicant submits that claim 125 properly claims priority to PCT'444.”
Remarks, p. 14
The examiner respectfully traverses as follows:
While applicant points to embodiments as support for the limitations of claim 125, the embodiments have specific variables (i.e., specific materials in specific concentrations) that do not support the broad method of claim 60 (i.e., any concentrations), which claim 125 depends on, having the claimed operating potential.
Therefore, the examiner maintains the position that claims 60-100 and 102-109 do not benefit from the filing date of 01/17/2015 and claims 62-74, 80-81, 86-87, 90-91, and 128-129 do not benefit from the filing date of 04/15/2016.
Conclusion
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 Coris Fung whose telephone number is (571)270-5713. The examiner can normally be reached Mon-Fri 8:00 a.m. - 4:00 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s director, Alexa Neckel can be reached at (571)272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CORIS FUNG/
Supervisory Patent Examiner, Art Unit 1732