DETAILED CORRESPONDENCE
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-3 and 5-23 are pending in the application.
Applicant’s amendment to the claims, filed on March 21, 2025, is acknowledged. This listing of the claims replaces all prior versions and listings of the claims.
Applicant’s remarks, filed on March 21, 2025 in response to the non-final rejection mailed on November 22, 2024 have been fully considered.
The text of those sections of Title 35 U.S. Code not included in the instant action can be found in a prior Office action.
Election/Restrictions
In response to the requirement for restriction mailed on March 29, 2023, the applicant elected without traverse species A1) the other REE is lanthanum (La), species B1), the non-REE component is iron (Fe), and species C1) the microbes are embedded into silicon dioxide (SiO2) in the reply filed on May 24, 2023.
Claim 10 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim.
Claims 1-3, 5-9, and 11-23 are being examined on the merits.
Claim Objections
The objection to claim 20 is withdrawn in view of the instant amendment to replace “AL” with “Al.”
Claim Rejections - 35 USC § 112(b)
Claim 20 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 20 recites the limitation "the non-REE containing material.” There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112(a)
The rejections of claims 1-3, 5-9, and 11-23 under 35 U.S.C. 112(a) as failing to comply with the enablement and written description requirements are withdrawn in view of the instant amendment to claim 1.
Claim Rejections - 35 USC § 103
Claims 1-3, 5-9, 11-16, 19-21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Reed et al. (US 2018/0195147 A1; cited on Form PTO-892 mailed on July 14, 2023; hereafter “Reed”) in view of
Tsuruta, T. (Colloids and Surfaces B: Biointerfaces 52:117-122, 2006; cited on Form PTO-892 mailed on July 14, 2023; hereafter “Tsuruta”)
Avdibegović et al., RSC Adv. 7:49664-49674, 2017, cited on the IDS filed on December 13, 2021; hereafter “Avdibegović”), and
Thomas et al. (Chemosphere 96:57-66, 2014; cited on the attached Form PTO-892; hereafter “Thomas”), and
as evidenced by Dong et al. (Environ. Sci. Technol. 55:6320-6328, April 2, 2021; cited on Form PTO-892 mailed on July 14, 2023; hereafter “Dong”).
As amended, the claims are drawn to a method for separating scandium (Sc) from a rare earth element (REE) containing material comprising the steps of:
(a) contacting microbes with the REE containing material at a pH between 3 to 4 to form Sc-microbe complexes, wherein in the contacting step (a) Sc is absorbed by the microbes to form the Sc-microbe complexes; and
wherein the REE containing material includes Sc at a concentration ranging from 1 µM to 3 mM, and
wherein the REE containing material includes one or more REEs, other than Sc, at a concentration ranging from 1 mM to 3 mM;
(b) separating the Sc from the microbes by contacting the Sc-microbe complexes with a solution comprising an organic chelator,
wherein the microbes are Arthrobacter nicotianae (A. nicotianae) microbes, and
wherein numerical designations are varied by no more than ± 2%.
Regarding claims 1, 8, and 9, Reed teaches a method for extracting rare earth elements (REE) from a material comprising the steps of:
a. providing genetically engineered microbes comprising an exogenous nucleic acid sequence encoding at least one REE binding ligand, wherein the REE binding ligand comprises two lanthanide binding tags (LBT) that form a double LBT (DLBT);
b. contacting the genetically engineered microbes with a REE containing material, whereupon the REE binding ligand specifically binds at least a portion of the REE to form a microbe-REE complex;
c. separating the microbe-REE complex from at least a portion of the material;
d. separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes; and
e. optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c) (claim 16).
Reed teaches the REE is scandium (paragraph [0020]).
Reed teaches conducting experiments to determine adsorption specificity by preloading the genetically engineered microbes with 10 µM of a REE and Ca2+ followed by addition of various metal ions (including Cu, Zn, and Co) at concentrations of 1 mM or REE ions (including Ce, Y, and La) with concentrations up to 352 µM (paragraph [0039], Example 3 beginning at paragraph [0129], and Figures 3A-3D). However, Reed does not teach the REE-containing material includes REE ions other than Sc at a concentration of 1 mM.
Thomas teaches that the term “rare earth element” is misleading as it does not reflect the element’s relative crustal abundances, noting the example of the average abundancies of Ce, Y, and La in the Earth’s crust are comparable to common metals such as Cu, Zn, and Co (p. 58, column 2, top).
In view of Reed and Thomas, it would have been obvious to one of ordinary skill in the art before the effective filing date for the REE-containing material of the method of Reed to comprise REE ions other than Sc at a concentration of 1 mM. One would have been motivated to and would have had a reasonable expectation of success to do this because Reed taught the REE is Sc, Reed taught adsorption specificity experiments using the REE ions Ce, Y, and La, Thomas taught average abundances of Ce, Y, and La in the Earth’s crust are comparable to common metals such as Cu, Zn, and Co, and Reed taught conducting adsorption specificity experiments using metal ions including Cu, Zn, and Co at a concentration of 1 mM.
Reed teaches adsorbing the REE to the microbe at pH 4 (paragraph [0125]), acknowledges the pH-dependent precipitation of the REE, and further acknowledges adsorbing the REE at a pH below the pH at which the REE precipitates (paragraph [0128]).
Reed teaches adsorbing the REE to the microbe at pH 4 (paragraph [0125]).
Reed teaches the microbe is Arthrobacter spp. (paragraph [0069]), however, Reed does not teach the microbe is Arthrobacter nicotianae.
Tsuruta teaches the use of Arthrobacter nicotianae for accumulation of REEs (p. 121, Figures 6(A) 7(A)). Tsuruta teaches the accumulation of the REE samarium is affected by the pH of the solution, sharply increasing between pH 3.0-4.0 (p. 118, column 2, bottom; p. 119, Figure 2).
Tsuruta acknowledges the pH-dependent precipitation of the REE and acknowledges adsorbing the REE at a pH below the pH at which the REE precipitates (p. 118, column 2, bottom). Before the effective filing date, the prior art acknowledges keeping the pH of a solution below 4 to prevent precipitation of scandium (see Avdibegović at p. 49668, column 2, middle).
In view of Reed, Tsuruta, and Avdibegović, it would have been obvious to one of ordinary skill in the art before the effective filing date for the Arthrobacter ssp. of the method of Reed to be Arthrobacter nicotianae. One would have been motivated to and would have had a reasonable expectation of success to use Arthrobacter nicotianae as the Arthrobacter ssp. in the method of Reed because Tsuruta teaches that Arthrobacter nicotianae accumulates REEs.
Regarding claims 2, 3, and 21, Reed discloses the REE of the microbe-REE complex is separated from the microbe by citrate (paragraphs [0032] and [0113]). Reed discloses a 5 mM citrate solution (pH 6) for recovering absorbed REE (paragraph [0046]).
Regarding claims 5-7, the combination of cited references does not teach or suggest incrementally adjusting the pH as recited in claims 5-7. However, given that Tsuruta teaches a sharp increase in REE accumulation at increments between pH 3-4 (p. 119, Figure 2), while Reed teaches recovering absorbed REE at increments between pH 5-6 (paragraphs [0040] and [0046]; Figure 4A), it would have been obvious before the effective filing date to slowly and incrementally increase the pH from 3-4 for REE absorption and to incrementally increase the pH from 5-6 for REE recovery. One would have been motivated to do this in order to avoid increasing the pH beyond the desired value. One would have had a reasonable expectation of success to do this because incremental adjustments of pH were within the level of ordinary skill in the art before the effective filing date.
Regarding claim 11, Reed teaches the REE extraction may prove useful for waste streams with relatively low REE content such as bauxite (paragraph [0141]) and Avdibegović teaches bauxite residue (red mud) is a potentially valuable scandium resource (p. 49664, column 1, middle) and teaches bauxite residue comprises Fe (p. 49670, column 2, middle). As such, it would have been obvious to one of ordinary skill in the art for the REE containing material of Reed to comprise Fe. The combination of cited prior art does not teach or suggest Arthrobacter nicotianae separates Sc from Fe, however, evidentiary reference Dong is cited in accordance with MPEP 2131.01.III to show that Arthrobacter nicotianae adsorbs Sc with negligible Fe adsorption (p. 6323, column 2).
Regarding claim 12, step e. of Reed’s method is optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c) (claim 16).
Regarding claims 13 and 14, Reed teaches about 20%, about 30%, about 40%, about 50%, about 60%, about 70%, about 80%, about 90%, about 91%, about 95%, about 97%, about 98%, about 99%, or 100% of the REE in the REE-containing material (e.g., mixed metal solution) is extracted in a single step (paragraph [0112]). Reed discloses the steps comprise separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes (claim 16) and discloses that a portion of the steps can be executed more than once, for example, 2, 3, 4, 5, or more times (paragraph [0107]).
Regarding claims 15 and 16, Reed discloses the microbes can be encapsulated into a polymer such as acrylamide (paragraph [0101]).
Regarding claim 19, Reed discloses the microbes are attached to a solid support, which comprises a column (paragraphs [0024] and [0025]).
Regarding claim 20, as stated above, Reed teaches the REE extraction may prove useful for waste streams with relatively low REE content such as bauxite (paragraph [0141]) and Avdibegović teaches bauxite residue (red mud) is a potentially valuable scandium resource (p. 49664, column 1, middle) and that in bauxite residue leach solutions, the concentration of Sc is only a few ppm compared to the thousands of ppm for major elements including Fe and Al (p. 49668, column 2, bottom). As such, it would have been obvious to one of ordinary skill in the art for the REE containing material of Reed to comprise Fe and Al at three orders of magnitude greater than the concentration of Sc.
Regarding claim 23, the combination of cited prior art does not teach or suggest Arthrobacter nicotianae binds to Sc due to a stronger ionic interaction of Sc relative to other Rees or non-REE components, however, evidentiary reference Dong is cited in accordance with MPEP 2131.01.III to show that Arthrobacter nicotianae selectively adsorbs Sc relative to REEs and non-REEs at low pH (p. 6321, column 1, bottom) and the selectivity is likely attributed to the ability of cell surface hard ligands to form strong complexes with Sc(III) ions, which has a smaller ionic radius and stronger Lewis acid characteristics compared to that of the lanthanides (p. 6323, column 2, middle).
Therefore, the method of claims 1-3, 5-9, 11-16, 19-21, and 23 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Reed in view of Tsuruta, Avdibegović, and Thomas and as evidenced by Dong as applied to claims 1-3, 5-9, 11-16, 19-21, and 23 above, and further in view of Mutlu et al. (J. Sol-Gel Technol. 74:823-8, 2015; cited on Form PTO-892 mailed on July 14, 2023; hereafter “Mutlu”).
Regarding claim 17, Reed discloses the microbes can be encapsulated into a polymer such as silicone (paragraph [0101]). Reed does not disclose encapsulating cells with silicone dioxide (SiO2) at a cell density of 1 or 2 mg/mL as recited in claims 17-18.
Mutlu teaches encapsulating bacterial cells in a silica gel by adding cells at a density of 1 g/mL to a SNP sol (p. 825, paragraph bridging columns 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Reed, Tsuruta, Avdibegović, and Mutlu to further modify Reed by encapsulating cells into a silica gel at a density of 1 g/mL. One would have been motivated to and would have had a reasonable expectation of success to do this because Reed discloses the microbes can be encapsulated into a polymer such as silicone, and Mutlu teaches encapsulating bacterial cells in a silica gel by adding cells at a density of 1 g/mL to a SNP sol.
Regarding claim 18, the combination of Reed, Tsuruta, Avdibegović, Thomas, and Mutlu does not teach or suggest encapsulating cells with silicone dioxide (SiO2) at a cell density of 2 mg/mL. However, given that Reed acknowledges varying the inoculum size to determine optimal conditions (paragraph [0098]) and the accumulated amount of REE is related to the mass or amount of A. nicotianae cells (Tsuruta at p. 118, column 2), it would have been obvious to one of ordinary skill in the art to increase the density of A. nicotianae cells to 2 g/mL. One would have been motivated to and would have had a reasonable expectation of success to do this in order to optimize the accumulation of Sc by routine experimentation.
Therefore, the method of claims 17 and 18 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Reed in view of Tsuruta, Avdibegović, and Thomas and as evidenced by Dong as applied to claims 1-3, 5-9, 11-16, 19-21, and 23 above, and further in view of Adam et al. (US 2014/0255413 A1; cited on Form PTO-892 mailed on July 14, 2023; hereafter “Adam).
Regarding claim 22, Reed discloses a 5 mM citrate solution (pH 6) for recovering absorbed REE (paragraph [0046]). Reed does not disclose a 25 mM citrate solution as recited in claim 22.
Adam teaches a 25 mM sodium citrate buffer, pH 6 (paragraph [0059]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to combine Reed, Tsuruta, Avdibegović, Thomas, and Adam to modify Reed by substituting Reed’s 5 mM citrate solution at pH 6 with Adam’s 25 mM sodium citrate buffer at pH 6. Given that Reed’s 5 mM citrate solution and Adam’s 25 mM sodium citrate buffer are both at pH 6, one of ordinary skill in the art would have recognized that Reed’s 5 mM citrate solution at pH 6 could have been substituted with Adam’s 25 mM sodium citrate buffer at pH 6 with predictable results.
Therefore, the method of claim 22 would have been obvious to one of ordinary skill in the art before the effective filing date.
Claim Rejections - 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 1-3, 5-9, 11-16, 19-21, and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 10,196,708 B2 in view of Reed, Tsuruta, Avdibegović, Thomas, and as evidenced by Dong.
Claim 14 of the patent recites a method for extracting rare earth elements (REE) from a material comprising the steps of:
a. providing genetically engineered microbes comprising an exogenous nucleic acid sequence encoding at least one REE binding ligand, wherein the REE binding ligand comprises between 2 and 6 copies of double lanthanide binding tags (dLBTs);
b. contacting the genetically engineered microbes with a REE containing material, whereupon the REE binding ligand specifically binds at least a portion of the REE to form a microbe-REE complex;
c. separating the microbe-REE complex from at least a portion of the material;
d. separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes; and
e. optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c).
Claim 14 of the patent does not recite all limitations of claims 1-3, 5-9, 11-16, 19-21, and 23 of this application.
Regarding claims 1, 8, and 9 of this application, Reed teaches a method for extracting rare earth elements (REE) from a material comprising the steps of:
a. providing genetically engineered microbes comprising an exogenous nucleic acid sequence encoding at least one REE binding ligand, wherein the REE binding ligand comprises two lanthanide binding tags (LBT) that form a double LBT (DLBT);
b. contacting the genetically engineered microbes with a REE containing material, whereupon the REE binding ligand specifically binds at least a portion of the REE to form a microbe-REE complex;
c. separating the microbe-REE complex from at least a portion of the material;
d. separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes; and
e. optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c) (claim 16).
Reed teaches the REE is scandium (paragraph [0020]).
Reed teaches conducting experiments to determine adsorption specificity by preloading the genetically engineered microbes with 10 µM of a REE and Ca2+ followed by addition of various metal ions (including Cu, Zn, and Co) at concentrations of 1 mM or REE ions (including Ce, Y, and La) with concentrations up to 352 µM (paragraph [0039], Example 3 beginning at paragraph [0129], and Figures 3A-3D). However, Reed does not teach the REE-containing material includes REE ions other than Sc at a concentration of 1 mM.
Thomas teaches that the term “rare earth element” is misleading as it does not reflect the element’s relative crustal abundances, noting the example of the average abundancies of Ce, Y, and La in the Earth’s crust are comparable to common metals such as Cu, Zn, and Co (p. 58, column 2, top).
In view of Reed and Thomas, it would have been obvious to one of ordinary skill in the art before the effective filing date for the REE-containing material of the claim of the patent to comprise REE ions other than Sc at a concentration of 1 mM. One would have been motivated to do this because Reed taught adsorption specificity experiments using the REE ions Ce, Y, and La, Thomas taught average abundances of Ce, Y, and La in the Earth’s crust are comparable to common metals such as Cu, Zn, and Co, and Reed taught conducting adsorption specificity experiments using metal ions including Cu, Zn, and Co at a concentration of 1 mM.
Reed teaches adsorbing the REE to the microbe at pH 4 (paragraph [0125]), acknowledges the pH-dependent precipitation of the REE, and further acknowledges adsorbing the REE at a pH below the pH at which the REE precipitates (paragraph [0128]).
Reed teaches adsorbing the REE to the microbe at pH 4 (paragraph [0125]).
Reed teaches the microbe is Arthrobacter spp. (paragraph [0069]).
Tsuruta teaches the use of Arthrobacter nicotianae for accumulation of REEs (p. 121, Figures 6(A) 7(A)). Tsuruta teaches the accumulation of the REE samarium is affected by the pH of the solution, sharply increasing between pH 3.0-4.0 (p. 118, column 2, bottom; p. 119, Figure 2).
Tsuruta acknowledges the pH-dependent precipitation of the REE and acknowledges adsorbing the REE at a pH below the pH at which the REE precipitates (p. 118, column 2, bottom). Before the effective filing date, the prior art acknowledges keeping the pH of a solution below 4 to prevent precipitation of scandium (see Avdibegović at p. 49668, column 2, middle).
In view of Reed, Tsuruta, and Avdibegović, it would have been obvious to one of ordinary skill in the art before the effective filing date for the microbe of the claim of the patent to be Arthrobacter nicotianae. One would have been motivated to and would have had a reasonable expectation of success to use Arthrobacter nicotianae as the microbe in the claim of the patent because Tsuruta teaches that Arthrobacter nicotianae accumulates REEs.
Regarding claims 2, 3, and 21 of this application, Reed discloses the REE of the microbe-REE complex is separated from the microbe by citrate (paragraphs [0032] and [0113]). Reed discloses a 5 mM citrate solution (pH 6) for recovering absorbed REE (paragraph [0046]).
Regarding claims 5-7 of this application, the claim of the patent does not recite and the combination of cited references does not teach or suggest incrementally adjusting the pH as recited in claims 5-7. However, given that Tsuruta teaches a sharp increase in REE accumulation at increments between pH 3-4 (p. 119, Figure 2), while Reed teaches recovering absorbed REE at increments between pH 5-6 (paragraphs [0040] and [0046]; Figure 4A), it would have been obvious before the effective filing date to slowly and incrementally increase the pH from 3-4 for REE absorption and to incrementally increase the pH from 5-6 for REE recovery. One would have been motivated to do this in order to avoid increasing the pH beyond the desired value. One would have had a reasonable expectation of success to do this because incremental adjustments of pH were within the level of ordinary skill in the art before the effective filing date.
Regarding claim 11 of this application, Reed teaches the REE extraction may prove useful for waste streams with relatively low REE content such as bauxite (paragraph [0141]) and Avdibegović teaches bauxite residue (red mud) is a potentially valuable scandium resource (p. 49664, column 1, middle) and teaches bauxite residue comprises Fe (p. 49670, column 2, middle). As such, it would have been obvious to one of ordinary skill in the art for the REE containing material of the claim of the patent to comprise Fe. The claim of the patent does not recite and the combination of cited prior art does not teach or suggest Arthrobacter nicotianae separates Sc from Fe, however, evidentiary reference Dong is cited in accordance with MPEP 2131.01.III to show that Arthrobacter nicotianae adsorbs Sc with negligible Fe adsorption (p. 6323, column 2).
Regarding claim 12 of this application, step e. of Reed’s method is optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c) (claim 16).
Regarding claims 13 and 14 of this application, Reed teaches about 20%, about 30%, about 40%, about 50%, about 60%, about 70%, about 80%, about 90%, about 91%, about 95%, about 97%, about 98%, about 99%, or 100% of the REE in the REE-containing material (e.g., mixed metal solution) is extracted in a single step (paragraph [0112]). Reed discloses the steps comprise separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes (claim 16) and discloses that a portion of the steps can be executed more than once, for example, 2, 3, 4, 5, or more times (paragraph [0107]).
Regarding claims 15 and 16 of this application, Reed discloses the microbes can be encapsulated into a polymer such as acrylamide (paragraph [0101]).
Regarding claim 19 of this application, Reed discloses the microbes are attached to a solid support, which comprises a column (paragraphs [0024] and [0025]).
Regarding claim 20 of this application, as stated above, Reed teaches the REE extraction may prove useful for waste streams with relatively low REE content such as bauxite (paragraph [0141]) and Avdibegović teaches bauxite residue (red mud) is a potentially valuable scandium resource (p. 49664, column 1, middle) and that in bauxite residue leach solutions, the concentration of Sc is only a few ppm compared to the thousands of ppm for major elements including Fe and Al (p. 49668, column 2, bottom). As such, it would have been obvious to one of ordinary skill in the art for the REE containing material of the claim of the patent to comprise Fe and Al at three orders of magnitude greater than the concentration of Sc.
Regarding claim 23 of this application, the claim of the patent does not recite and the combination of cited prior art does not teach or suggest Arthrobacter nicotianae binds to Sc due to a stronger ionic interaction of Sc relative to other Rees or non-REE components, however, evidentiary reference Dong is cited in accordance with MPEP 2131.01.III to show that Arthrobacter nicotianae selectively adsorbs Sc relative to REEs and non-REEs at low pH (p. 6321, column 1, bottom) and the selectivity is likely attributed to the ability of cell surface hard ligands to form strong complexes with Sc(III) ions, which has a smaller ionic radius and stronger Lewis acid characteristics compared to that of the lanthanides (p. 6323, column 2, middle).
Therefore, claims 1-3, 5-9, 11-16, 19-21, and 23 are unpatentable over the claim of the patent in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong.
Claims 17 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 10,196,708 B2 in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong as applied to claims 1-3, 5-9, 11-16, 19-21, and 23 above, and further in view of Mutlu.
Claim 14 of the patent does not recite the limitations of claims 17 and 18 of this application.
Regarding claim 17 of this application, Reed teaches the microbes can be encapsulated into a polymer such as silicone (paragraph [0101]).
Mutlu teaches encapsulating bacterial cells in a silica gel by adding cells at a density of 1 g/mL to a SNP sol (p. 825, paragraph bridging columns 1-2).
In view of the additional teachings of Reed and Mutlu, it would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the method of claim 14 of the patent to encapsulate the genetically engineered microbe into a silica gel at a density of 1 g/mL. One would have been motivated to and would have had a reasonable expectation of success to do this because Reed teaches the microbes can be encapsulated into a polymer such as silicone, and Mutlu teaches encapsulating bacterial cells in a silica gel by adding cells at a density of 1 g/mL to a SNP sol.
Regarding claim 18 of this application, the combination of Reed, Tsuruta, Avdibegović, Thomas, and Mutlu does not teach or suggest encapsulating cells with silicone dioxide (SiO2) at a cell density of about 2 mg/mL. However, given that Reed acknowledges varying the inoculum size to determine optimal conditions (paragraph [0098]) and the accumulated amount of REE is related to the mass or amount of A. nicotianae cells (Tsuruta at p. 118, column 2), it would have been obvious to one of ordinary skill in the art to increase the density of A. nicotianae cells to about 2 g/mL. One would have been motivated to and would have had a reasonable expectation of success to do this in order to optimize the accumulation of Sc by routine experimentation.
Therefore, claims 17 and 18 are unpatentable over the claim of the patent in view of Reed, Tsuruta, Avdibegović, Thomas, and Mutlu and as evidenced by Dong.
Claim 22 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 10,196,708 B2 in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong as applied to claims 1-3, 5-9, 11-16, 19-21, and 23 above, and further in view of Adam.
Claim 14 of the patent does not recite a 25 mM citrate solution.
Reed teaches a citrate solution at pH 6 for recovering absorbed REE (paragraph [0046]).
Adam teaches a 25 mM sodium citrate buffer, pH 6 (paragraph [0059]).
In view of the noted teachings of Reed and Adam, it would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the method of claim 14 of the patent to use a 25 mM sodium citrate buffer, pH 6 for recovering absorbed REE. One would have been motivated to and would have had a reasonable expectation of success to do so because Reed teaches a citrate solution at pH 6 for recovering absorbed REE, and Adam teaches a 25 mM sodium citrate buffer, pH 6.
Therefore, claim 22 is unpatentable over the claim of the patent in view of Reed, Tsuruta, Avdibegović, and Adam and as evidenced by Dong.
Claims 1-3, 5-9, 11-16, 19-21, and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 11,230,750 B2 in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong.
Claim 17 of the patent recites a method for extracting rare earth elements (REE) from a material comprising the steps of:
(a) providing the genetically engineered microbe of claim 1;
(b) contacting the genetically engineered microbe with a REE containing material, whereupon the REE binding ligand specifically binds at least a portion of the REE to form a microbe-REE complex;
(c) separating the microbe-REE complex from at least a portion of the material; and
(d) separating the REE from the genetically engineered microbe to produce regenerated genetically engineered microbes,
wherein the genetically engineered microbe comprises an exogenous nucleic acid sequence encoding a rare earth element (REE) binding ligand, wherein the REE binding ligand comprises more than 6 copies of double lanthanide binding tags (dLBTs) connected by a flexible and hydrophilic linker.
Claim 17 of the patent does not recite all limitations of claims 1-3, 5-9, 11-16, 19-21, and 23 of this application.
Regarding claims 1, 8, and 9 of this application, Reed teaches a method for extracting rare earth elements (REE) from a material comprising the steps of:
a. providing genetically engineered microbes comprising an exogenous nucleic acid sequence encoding at least one REE binding ligand, wherein the REE binding ligand comprises two lanthanide binding tags (LBT) that form a double LBT (DLBT);
b. contacting the genetically engineered microbes with a REE containing material, whereupon the REE binding ligand specifically binds at least a portion of the REE to form a microbe-REE complex;
c. separating the microbe-REE complex from at least a portion of the material;
d. separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes; and
e. optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c) (claim 16).
Reed teaches the REE is scandium (paragraph [0020]).
Reed teaches conducting experiments to determine adsorption specificity by preloading the genetically engineered microbes with 10 µM of a REE and Ca2+ followed by addition of various metal ions (including Cu, Zn, and Co) at concentrations of 1 mM or REE ions (including Ce, Y, and La) with concentrations up to 352 µM (paragraph [0039], Example 3 beginning at paragraph [0129], and Figures 3A-3D). However, Reed does not teach the REE-containing material includes REE ions other than Sc at a concentration of 1 mM.
Thomas teaches that the term “rare earth element” is misleading as it does not reflect the element’s relative crustal abundances, noting the example of the average abundancies of Ce, Y, and La in the Earth’s crust are comparable to common metals such as Cu, Zn, and Co (p. 58, column 2, top).
In view of Reed and Thomas, it would have been obvious to one of ordinary skill in the art before the effective filing date for the REE-containing material of the claim of the patent to comprise REE ions other than Sc at a concentration of 1 mM. One would have been motivated to do this because Reed taught adsorption specificity experiments using the REE ions Ce, Y, and La, Thomas taught average abundances of Ce, Y, and La in the Earth’s crust are comparable to common metals such as Cu, Zn, and Co, and Reed taught conducting adsorption specificity experiments using metal ions including Cu, Zn, and Co at a concentration of 1 mM.
Reed teaches adsorbing the REE to the microbe at pH 4 (paragraph [0125]), acknowledges the pH-dependent precipitation of the REE, and further acknowledges adsorbing the REE at a pH below the pH at which the REE precipitates (paragraph [0128]).
Reed teaches adsorbing the REE to the microbe at pH 4 (paragraph [0125]).
Reed teaches the microbe is Arthrobacter spp. (paragraph [0069]).
Tsuruta teaches the use of Arthrobacter nicotianae for accumulation of REEs (p. 121, Figures 6(A) 7(A)). Tsuruta teaches the accumulation of the REE samarium is affected by the pH of the solution, sharply increasing between pH 3.0-4.0 (p. 118, column 2, bottom; p. 119, Figure 2).
Tsuruta acknowledges the pH-dependent precipitation of the REE and acknowledges adsorbing the REE at a pH below the pH at which the REE precipitates (p. 118, column 2, bottom). Before the effective filing date, the prior art acknowledges keeping the pH of a solution below 4 to prevent precipitation of scandium (see Avdibegović at p. 49668, column 2, middle).
In view of Reed, Tsuruta, and Avdibegović, it would have been obvious to one of ordinary skill in the art before the effective filing date for the microbe of the claim of the patent to be Arthrobacter nicotianae. One would have been motivated to and would have had a reasonable expectation of success to use Arthrobacter nicotianae as the microbe in the claim of the patent because Tsuruta teaches that Arthrobacter nicotianae accumulates REEs.
Regarding claims 2, 3, and 21 of this application, Reed discloses the REE of the microbe-REE complex is separated from the microbe by citrate (paragraphs [0032] and [0113]). Reed discloses a 5 mM citrate solution (pH 6) for recovering absorbed REE (paragraph [0046]).
Regarding claims 5-7 of this application, the claim of the patent does not recite and the combination of cited references does not teach or suggest incrementally adjusting the pH as recited in claims 5-7. However, given that Tsuruta teaches a sharp increase in REE accumulation at increments between pH 3-4 (p. 119, Figure 2), while Reed teaches recovering absorbed REE at increments between pH 5-6 (paragraphs [0040] and [0046]; Figure 4A), it would have been obvious before the effective filing date to slowly and incrementally increase the pH from 3-4 for REE absorption and to incrementally increase the pH from 5-6 for REE recovery. One would have been motivated to do this in order to avoid increasing the pH beyond the desired value. One would have had a reasonable expectation of success to do this because incremental adjustments of pH were within the level of ordinary skill in the art before the effective filing date.
Regarding claim 11 of this application, Reed teaches the REE extraction may prove useful for waste streams with relatively low REE content such as bauxite (paragraph [0141]) and Avdibegović teaches bauxite residue (red mud) is a potentially valuable scandium resource (p. 49664, column 1, middle) and teaches bauxite residue comprises Fe (p. 49670, column 2, middle). As such, it would have been obvious to one of ordinary skill in the art for the REE containing material of the claim of the patent to comprise Fe. The claim of the patent does not recite and the combination of cited prior art does not teach or suggest Arthrobacter nicotianae separates Sc from Fe, however, evidentiary reference Dong is cited in accordance with MPEP 2131.01.III to show that Arthrobacter nicotianae adsorbs Sc with negligible Fe adsorption (p. 6323, column 2).
Regarding claim 12 of this application, step e. of Reed’s method is optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c) (claim 16).
Regarding claims 13 and 14 of this application, Reed teaches about 20%, about 30%, about 40%, about 50%, about 60%, about 70%, about 80%, about 90%, about 91%, about 95%, about 97%, about 98%, about 99%, or 100% of the REE in the REE-containing material (e.g., mixed metal solution) is extracted in a single step (paragraph [0112]). Reed discloses the steps comprise separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes (claim 16) and discloses that a portion of the steps can be executed more than once, for example, 2, 3, 4, 5, or more times (paragraph [0107]).
Regarding claims 15 and 16 of this application, Reed discloses the microbes can be encapsulated into a polymer such as acrylamide (paragraph [0101]).
Regarding claim 19 of this application, Reed discloses the microbes are attached to a solid support, which comprises a column (paragraphs [0024] and [0025]).
Regarding claim 20 of this application, as stated above, Reed teaches the REE extraction may prove useful for waste streams with relatively low REE content such as bauxite (paragraph [0141]) and Avdibegović teaches bauxite residue (red mud) is a potentially valuable scandium resource (p. 49664, column 1, middle) and that in bauxite residue leach solutions, the concentration of Sc is only a few ppm compared to the thousands of ppm for major elements including Fe and Al (p. 49668, column 2, bottom). As such, it would have been obvious to one of ordinary skill in the art for the REE containing material of the claim of the patent to comprise Fe and Al at three orders of magnitude greater than the concentration of Sc.
Regarding claim 23 of this application, the claim of the patent does not recite and the combination of cited prior art does not teach or suggest Arthrobacter nicotianae binds to Sc due to a stronger ionic interaction of Sc relative to other Rees or non-REE components, however, evidentiary reference Dong is cited in accordance with MPEP 2131.01.III to show that Arthrobacter nicotianae selectively adsorbs Sc relative to REEs and non-REEs at low pH (p. 6321, column 1, bottom) and the selectivity is likely attributed to the ability of cell surface hard ligands to form strong complexes with Sc(III) ions, which has a smaller ionic radius and stronger Lewis acid characteristics compared to that of the lanthanides (p. 6323, column 2, middle).
Therefore, claims 1-3, 5-9, 11-16, 19-21, and 23 are unpatentable over the claim of the patent in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong.
Claims 17 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 11,230,750 B2 in view of Reed, Tsuruta, and Avdibegović and as evidenced by Dong as applied to claims 1-3, 5-9, 11-16, 19-21, and 23 above, and further in view of Mutlu.
Claim 17 of the patent does not recite the limitations of claims 17 and 18 of this application.
Regarding claim 17 of this application, Reed teaches the microbes can be encapsulated into a polymer such as silicone (paragraph [0101]).
Mutlu teaches encapsulating bacterial cells in a silica gel by adding cells at a density of 1 g/mL to a SNP sol (p. 825, paragraph bridging columns 1-2).
In view of the additional teachings of Reed and Mutlu, it would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the method of claim 17 of the patent to encapsulate the genetically engineered microbe into a silica gel at a density of 1 g/mL. One would have been motivated to and would have had a reasonable expectation of success to do this because Reed teaches the microbes can be encapsulated into a polymer such as silicone, and Mutlu teaches encapsulating bacterial cells in a silica gel by adding cells at a density of 1 g/mL to a SNP sol.
Regarding claim 18 of this application, the combination of Reed, Tsuruta, Avdibegović, and Mutlu does not teach or suggest encapsulating cells with silicone dioxide (SiO2) at a cell density of about 2 mg/mL. However, given that Reed acknowledges varying the inoculum size to determine optimal conditions (paragraph [0098]) and the accumulated amount of REE is related to the mass or amount of A. nicotianae cells (Tsuruta at p. 118, column 2), it would have been obvious to one of ordinary skill in the art to increase the density of A. nicotianae cells to about 2 g/mL. One would have been motivated to and would have had a reasonable expectation of success to do this in order to optimize the accumulation of Sc by routine experimentation.
Therefore, claims 17 and 18 are unpatentable over the claim of the patent in view of Reed, Tsuruta, Avdibegović, and Mutlu and as evidenced by Dong.
Claim 22 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 11,230,750 B2 in view of Reed, Tsuruta, and Avdibegović and as evidenced by Dong as applied to claims 1-3, 5-9, 11-16, 19-21, and 23 above, and further in view of Adam.
Claim 17 of the patent does not recite a 25 mM citrate solution.
Reed teaches a citrate solution at pH 6 for recovering absorbed REE (paragraph [0046]).
Adam teaches a 25 mM sodium citrate buffer, pH 6 (paragraph [0059]).
In view of the noted teachings of Reed and Adam, it would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the method of claim 17 of the patent to use a 25 mM sodium citrate buffer, pH 6 for recovering absorbed REE. One would have been motivated to and would have had a reasonable expectation of success to do so because Reed teaches a citrate solution at pH 6 for recovering absorbed REE, and Adam teaches a 25 mM sodium citrate buffer, pH 6.
Therefore, claim 22 is unpatentable over the claim of the patent in view of Reed, Tsuruta, Avdibegović, and Adam and as evidenced by Dong.
Claims 1-3, 5-9, 11-16, 19-21, and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,713,493 B2 (cited on the attached Form PTO-892) in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong.
Claim 1 of the patent recites a method for preferentially separating an individual rare earth element (REE) from an REE containing material, the method comprising the steps of:
a) contacting genetically engineered microbes encoding at least one REE binding ligand with the REE containing material to form a microbe REE-complex;
b) introducing a tunable solution to the microbe REE-complex; and
c) separating the individual REE from the microbe-REE complex based on affinity of the individual REE for the tunable solution compared to affinity of the REE for the at least one REE binding ligand, wherein the REE containing material includes a plurality of different REEs and the individual REE is separated from the plurality of different REEs.
Claim 1 of the patent does not recite all limitations of claims 1-3, 5-9, 11-16, 19-21, and 23 of this application.
Regarding claims 1, 8, and 9 of this application, Reed teaches a method for extracting rare earth elements (REE) from a material comprising the steps of:
a. providing genetically engineered microbes comprising an exogenous nucleic acid sequence encoding at least one REE binding ligand, wherein the REE binding ligand comprises two lanthanide binding tags (LBT) that form a double LBT (DLBT);
b. contacting the genetically engineered microbes with a REE containing material, whereupon the REE binding ligand specifically binds at least a portion of the REE to form a microbe-REE complex;
c. separating the microbe-REE complex from at least a portion of the material;
d. separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes; and
e. optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c) (claim 16).
Reed teaches the REE is scandium (paragraph [0020]).
Reed teaches conducting experiments to determine adsorption specificity by preloading the genetically engineered microbes with 10 µM of a REE and Ca2+ followed by addition of various metal ions (including Cu, Zn, and Co) at concentrations of 1 mM or REE ions (including Ce, Y, and La) with concentrations up to 352 µM (paragraph [0039], Example 3 beginning at paragraph [0129], and Figures 3A-3D). However, Reed does not teach the REE-containing material includes REE ions other than Sc at a concentration of 1 mM.
Thomas teaches that the term “rare earth element” is misleading as it does not reflect the element’s relative crustal abundances, noting the example of the average abundancies of Ce, Y, and La in the Earth’s crust are comparable to common metals such as Cu, Zn, and Co (p. 58, column 2, top).
In view of Reed and Thomas, it would have been obvious to one of ordinary skill in the art before the effective filing date for the REE-containing material of the claim of the patent to comprise REE ions other than Sc at a concentration of 1 mM. One would have been motivated to do this because Reed taught adsorption specificity experiments using the REE ions Ce, Y, and La, Thomas taught average abundances of Ce, Y, and La in the Earth’s crust are comparable to common metals such as Cu, Zn, and Co, and Reed taught conducting adsorption specificity experiments using metal ions including Cu, Zn, and Co at a concentration of 1 mM.
Reed teaches adsorbing the REE to the microbe at pH 4 (paragraph [0125]), acknowledges the pH-dependent precipitation of the REE, and further acknowledges adsorbing the REE at a pH below the pH at which the REE precipitates (paragraph [0128]).
Reed teaches adsorbing the REE to the microbe at pH 4 (paragraph [0125]).
Reed teaches the microbe is Arthrobacter spp. (paragraph [0069]).
Tsuruta teaches the use of Arthrobacter nicotianae for accumulation of REEs (p. 121, Figures 6(A) 7(A)). Tsuruta teaches the accumulation of the REE samarium is affected by the pH of the solution, sharply increasing between pH 3.0-4.0 (p. 118, column 2, bottom; p. 119, Figure 2).
Tsuruta acknowledges the pH-dependent precipitation of the REE and acknowledges adsorbing the REE at a pH below the pH at which the REE precipitates (p. 118, column 2, bottom). Before the effective filing date, the prior art acknowledges keeping the pH of a solution below 4 to prevent precipitation of scandium (see Avdibegović at p. 49668, column 2, middle).
In view of Reed, Tsuruta, and Avdibegović, it would have been obvious to one of ordinary skill in the art before the effective filing date for the microbe of the claim of the patent to be Arthrobacter nicotianae. One would have been motivated to and would have had a reasonable expectation of success to use Arthrobacter nicotianae as the microbe in the claim of the patent because Tsuruta teaches that Arthrobacter nicotianae accumulates REEs.
Regarding claims 2, 3, and 21 of this application, Reed discloses the REE of the microbe-REE complex is separated from the microbe by citrate (paragraphs [0032] and [0113]). Reed discloses a 5 mM citrate solution (pH 6) for recovering absorbed REE (paragraph [0046]).
Regarding claims 5-7 of this application, the claim of the patent does not recite and the combination of cited references does not teach or suggest incrementally adjusting the pH as recited in claims 5-7. However, given that Tsuruta teaches a sharp increase in REE accumulation at increments between pH 3-4 (p. 119, Figure 2), while Reed teaches recovering absorbed REE at increments between pH 5-6 (paragraphs [0040] and [0046]; Figure 4A), it would have been obvious before the effective filing date to slowly and incrementally increase the pH from 3-4 for REE absorption and to incrementally increase the pH from 5-6 for REE recovery. One would have been motivated to do this in order to avoid increasing the pH beyond the desired value. One would have had a reasonable expectation of success to do this because incremental adjustments of pH were within the level of ordinary skill in the art before the effective filing date.
Regarding claim 11 of this application, Reed teaches the REE extraction may prove useful for waste streams with relatively low REE content such as bauxite (paragraph [0141]) and Avdibegović teaches bauxite residue (red mud) is a potentially valuable scandium resource (p. 49664, column 1, middle) and teaches bauxite residue comprises Fe (p. 49670, column 2, middle). As such, it would have been obvious to one of ordinary skill in the art for the REE containing material of the claim of the patent to comprise Fe. The claim of the patent does not recite and the combination of cited prior art does not teach or suggest Arthrobacter nicotianae separates Sc from Fe, however, evidentiary reference Dong is cited in accordance with MPEP 2131.01.III to show that Arthrobacter nicotianae adsorbs Sc with negligible Fe adsorption (p. 6323, column 2).
Regarding claim 12 of this application, step e. of Reed’s method is optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c) (claim 16).
Regarding claims 13 and 14 of this application, Reed teaches about 20%, about 30%, about 40%, about 50%, about 60%, about 70%, about 80%, about 90%, about 91%, about 95%, about 97%, about 98%, about 99%, or 100% of the REE in the REE-containing material (e.g., mixed metal solution) is extracted in a single step (paragraph [0112]). Reed discloses the steps comprise separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes (claim 16) and discloses that a portion of the steps can be executed more than once, for example, 2, 3, 4, 5, or more times (paragraph [0107]).
Regarding claims 15 and 16 of this application, Reed discloses the microbes can be encapsulated into a polymer such as acrylamide (paragraph [0101]).
Regarding claim 19 of this application, Reed discloses the microbes are attached to a solid support, which comprises a column (paragraphs [0024] and [0025]).
Regarding claim 20 of this application, as stated above, Reed teaches the REE extraction may prove useful for waste streams with relatively low REE content such as bauxite (paragraph [0141]) and Avdibegović teaches bauxite residue (red mud) is a potentially valuable scandium resource (p. 49664, column 1, middle) and that in bauxite residue leach solutions, the concentration of Sc is only a few ppm compared to the thousands of ppm for major elements including Fe and Al (p. 49668, column 2, bottom). As such, it would have been obvious to one of ordinary skill in the art for the REE containing material of the claim of the patent to comprise Fe and Al at three orders of magnitude greater than the concentration of Sc.
Regarding claim 23 of this application, the claim of the patent does not recite and the combination of cited prior art does not teach or suggest Arthrobacter nicotianae binds to Sc due to a stronger ionic interaction of Sc relative to other Rees or non-REE components, however, evidentiary reference Dong is cited in accordance with MPEP 2131.01.III to show that Arthrobacter nicotianae selectively adsorbs Sc relative to REEs and non-REEs at low pH (p. 6321, column 1, bottom) and the selectivity is likely attributed to the ability of cell surface hard ligands to form strong complexes with Sc(III) ions, which has a smaller ionic radius and stronger Lewis acid characteristics compared to that of the lanthanides (p. 6323, column 2, middle).
Therefore, claims 1-3, 5-9, 11-16, 19-21, and 23 are unpatentable over the claim of the patent in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong.
Claims 17 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,713,493 B2 in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong as applied to claims 1-3, 5-9, 11-16, 19-21, and 23 above, and further in view of Mutlu.
Claim 1 of the patent does not recite the limitations of claims 17 and 18 of this application.
Regarding claim 17 of this application, Reed teaches the microbes can be encapsulated into a polymer such as silicone (paragraph [0101]).
Mutlu teaches encapsulating bacterial cells in a silica gel by adding cells at a density of 1 g/mL to a SNP sol (p. 825, paragraph bridging columns 1-2).
In view of the additional teachings of Reed and Mutlu, it would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the method of claim 17 of the patent to encapsulate the genetically engineered microbe into a silica gel at a density of 1 g/mL. One would have been motivated to and would have had a reasonable expectation of success to do this because Reed teaches a method that is encompassed by claim 1 of the patent, Reed discloses the microbes can be encapsulated into a polymer such as silicone, and Mutlu teaches encapsulating bacterial cells in a silica gel by adding cells at a density of 1 g/mL to a SNP sol.
Regarding claim 18 of this application, the combination of Reed, Tsuruta, Avdibegović, and Mutlu does not teach or suggest encapsulating cells with silicone dioxide (SiO2) at a cell density of about 2 mg/mL. However, given that Reed acknowledges varying the inoculum size to determine optimal conditions (paragraph [0098]) and the accumulated amount of REE is related to the mass or amount of A. nicotianae cells (Tsuruta at p. 118, column 2), it would have been obvious to one of ordinary skill in the art to increase the density of A. nicotianae cells to about 2 g/mL. One would have been motivated to and would have had a reasonable expectation of success to do this in order to optimize the accumulation of Sc by routine experimentation.
Therefore, claims 17 and 18 are unpatentable over the claim of the patent in view of Reed, Tsuruta, Avdibegović, and Mutlu and as evidenced by Dong.
Claim 22 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,713,493 B2 in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong as applied to claims 1-3, 5-9, 11-16, 19-21, and 23 above, and further in view of Adam.
Claim 1 of the patent does not recite a 25 mM citrate solution.
Reed teaches a citrate solution at pH 6 for recovering absorbed REE (paragraph [0046]).
Adam teaches a 25 mM sodium citrate buffer, pH 6 (paragraph [0059]).
In view of the noted teachings of Reed and Adam, it would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the method of claim 1 of the patent to use a 25 mM sodium citrate buffer, pH 6 for recovering absorbed REE. One would have been motivated to and would have had a reasonable expectation of success to do so because Reed teaches a method that is encompassed by claim 1 of the patent, Reed teaches a citrate solution at pH 6 for recovering absorbed REE, and Adam teaches a 25 mM sodium citrate buffer, pH 6.
Therefore, claim 22 is unpatentable over the claim of the patent in view of Reed, Tsuruta, Avdibegović, and Adam and as evidenced by Dong.
Claims 1-3, 5-9, 11-16, 19-21, and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 97 of co-pending application no. 18/570,543 (reference application) in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong.
Claim 97 of the reference application recites a method for separating rare earth elements (REE) from non-REE elements present in a REE containing material comprising the steps of:
a) providing a protein that can selectively bind one or more REEs;
b) contacting an amount of the protein with the REE-containing material, wherein the protein binds at least a portion of the one or more REEs to form one or more protein-REE complexes and an REE-depleted material;
c) separating the one or more protein-REE complexes from at least a portion of the REE-depleted material; and
d) separating the one or more REEs from the protein to produce a purified fraction of the one or more REEs and a regenerated protein.
Claim 97 of the reference application does not recite all limitations of claims 1-3, 5-9, 11-16, 19-21, and 23 of this application.
Regarding claims 1, 8, and 9 of this application, Reed teaches a method for extracting rare earth elements (REE) from a material comprising the steps of:
a. providing genetically engineered microbes comprising an exogenous nucleic acid sequence encoding at least one REE binding ligand, wherein the REE binding ligand comprises two lanthanide binding tags (LBT) that form a double LBT (DLBT);
b. contacting the genetically engineered microbes with a REE containing material, whereupon the REE binding ligand specifically binds at least a portion of the REE to form a microbe-REE complex;
c. separating the microbe-REE complex from at least a portion of the material;
d. separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes; and
e. optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c) (claim 16).
Reed teaches the REE is scandium (paragraph [0020]).
Reed teaches conducting experiments to determine adsorption specificity by preloading the genetically engineered microbes with 10 µM of a REE and Ca2+ followed by addition of various metal ions (including Cu, Zn, and Co) at concentrations of 1 mM or REE ions (including Ce, Y, and La) with concentrations up to 352 µM (paragraph [0039], Example 3 beginning at paragraph [0129], and Figures 3A-3D). However, Reed does not teach the REE-containing material includes REE ions other than Sc at a concentration of 1 mM.
Thomas teaches that the term “rare earth element” is misleading as it does not reflect the element’s relative crustal abundances, noting the example of the average abundancies of Ce, Y, and La in the Earth’s crust are comparable to common metals such as Cu, Zn, and Co (p. 58, column 2, top).
In view of Reed and Thomas, it would have been obvious to one of ordinary skill in the art before the effective filing date for the REE-containing material of the claim of the patent to comprise REE ions other than Sc at a concentration of 1 mM. One would have been motivated to do this because Reed taught adsorption specificity experiments using the REE ions Ce, Y, and La, Thomas taught average abundances of Ce, Y, and La in the Earth’s crust are comparable to common metals such as Cu, Zn, and Co, and Reed taught conducting adsorption specificity experiments using metal ions including Cu, Zn, and Co at a concentration of 1 mM.
Reed teaches adsorbing the REE to the microbe at pH 4 (paragraph [0125]), acknowledges the pH-dependent precipitation of the REE, and further acknowledges adsorbing the REE at a pH below the pH at which the REE precipitates (paragraph [0128]).
Reed teaches adsorbing the REE to the microbe at pH 4 (paragraph [0125]).
Reed teaches the microbe is Arthrobacter spp. (paragraph [0069]).
Tsuruta teaches the use of Arthrobacter nicotianae for accumulation of REEs (p. 121, Figures 6(A) 7(A)). Tsuruta teaches the accumulation of the REE samarium is affected by the pH of the solution, sharply increasing between pH 3.0-4.0 (p. 118, column 2, bottom; p. 119, Figure 2).
Tsuruta acknowledges the pH-dependent precipitation of the REE and acknowledges adsorbing the REE at a pH below the pH at which the REE precipitates (p. 118, column 2, bottom). Before the effective filing date, the prior art acknowledges keeping the pH of a solution below 4 to prevent precipitation of scandium (see Avdibegović at p. 49668, column 2, middle).
In view of Reed, Tsuruta, and Avdibegović, it would have been obvious to one of ordinary skill in the art before the effective filing date for the microbe of the claim of the patent to be Arthrobacter nicotianae. One would have been motivated to and would have had a reasonable expectation of success to use Arthrobacter nicotianae as the microbe in the claim of the patent because Tsuruta teaches that Arthrobacter nicotianae accumulates REEs.
Regarding claims 2, 3, and 21 of this application, Reed discloses the REE of the microbe-REE complex is separated from the microbe by citrate (paragraphs [0032] and [0113]). Reed discloses a 5 mM citrate solution (pH 6) for recovering absorbed REE (paragraph [0046]).
Regarding claims 5-7 of this application, the claim of the patent does not recite and the combination of cited references does not teach or suggest incrementally adjusting the pH as recited in claims 5-7. However, given that Tsuruta teaches a sharp increase in REE accumulation at increments between pH 3-4 (p. 119, Figure 2), while Reed teaches recovering absorbed REE at increments between pH 5-6 (paragraphs [0040] and [0046]; Figure 4A), it would have been obvious before the effective filing date to slowly and incrementally increase the pH from 3-4 for REE absorption and to incrementally increase the pH from 5-6 for REE recovery. One would have been motivated to do this in order to avoid increasing the pH beyond the desired value. One would have had a reasonable expectation of success to do this because incremental adjustments of pH were within the level of ordinary skill in the art before the effective filing date.
Regarding claim 11 of this application, Reed teaches the REE extraction may prove useful for waste streams with relatively low REE content such as bauxite (paragraph [0141]) and Avdibegović teaches bauxite residue (red mud) is a potentially valuable scandium resource (p. 49664, column 1, middle) and teaches bauxite residue comprises Fe (p. 49670, column 2, middle). As such, it would have been obvious to one of ordinary skill in the art for the REE containing material of the claim of the patent to comprise Fe. The claim of the patent does not recite and the combination of cited prior art does not teach or suggest Arthrobacter nicotianae separates Sc from Fe, however, evidentiary reference Dong is cited in accordance with MPEP 2131.01.III to show that Arthrobacter nicotianae adsorbs Sc with negligible Fe adsorption (p. 6323, column 2).
Regarding claim 12 of this application, step e. of Reed’s method is optionally, reusing the regenerated genetically engineered microbes of step (d) to carry out steps (a)-(c) (claim 16).
Regarding claims 13 and 14 of this application, Reed teaches about 20%, about 30%, about 40%, about 50%, about 60%, about 70%, about 80%, about 90%, about 91%, about 95%, about 97%, about 98%, about 99%, or 100% of the REE in the REE-containing material (e.g., mixed metal solution) is extracted in a single step (paragraph [0112]). Reed discloses the steps comprise separating the REE from the genetically engineered microbes to produce regenerated genetically engineered microbes (claim 16) and discloses that a portion of the steps can be executed more than once, for example, 2, 3, 4, 5, or more times (paragraph [0107]).
Regarding claims 15 and 16 of this application, Reed discloses the microbes can be encapsulated into a polymer such as acrylamide (paragraph [0101]).
Regarding claim 19 of this application, Reed discloses the microbes are attached to a solid support, which comprises a column (paragraphs [0024] and [0025]).
Regarding claim 20 of this application, as stated above, Reed teaches the REE extraction may prove useful for waste streams with relatively low REE content such as bauxite (paragraph [0141]) and Avdibegović teaches bauxite residue (red mud) is a potentially valuable scandium resource (p. 49664, column 1, middle) and that in bauxite residue leach solutions, the concentration of Sc is only a few ppm compared to the thousands of ppm for major elements including Fe and Al (p. 49668, column 2, bottom). As such, it would have been obvious to one of ordinary skill in the art for the REE containing material of the claim of the patent to comprise Fe and Al at three orders of magnitude greater than the concentration of Sc.
Regarding claim 23 of this application, the claim of the patent does not recite and the combination of cited prior art does not teach or suggest Arthrobacter nicotianae binds to Sc due to a stronger ionic interaction of Sc relative to other Rees or non-REE components, however, evidentiary reference Dong is cited in accordance with MPEP 2131.01.III to show that Arthrobacter nicotianae selectively adsorbs Sc relative to REEs and non-REEs at low pH (p. 6321, column 1, bottom) and the selectivity is likely attributed to the ability of cell surface hard ligands to form strong complexes with Sc(III) ions, which has a smaller ionic radius and stronger Lewis acid characteristics compared to that of the lanthanides (p. 6323, column 2, middle).
Therefore, claims 1-3, 5-9, 11-16, 19-21, and 23 are unpatentable over the claim of the reference application in view of Reed, Tsuruta, and Avdibegović and as evidenced by Dong. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 17 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 97 of co-pending application no. 18/570,543 (reference application) in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong as applied to claims 1-3, 5-9, 11-16, 19-21, and 23 above, and further in view of Mutlu.
Claim 97 of the reference application does not recite the limitations of claims 17 and 18 of this application.
Regarding claim 17 of this application, Reed teaches the microbes can be encapsulated into a polymer such as silicone (paragraph [0101]).
Mutlu teaches encapsulating bacterial cells in a silica gel by adding cells at a density of 1 g/mL to a SNP sol (p. 825, paragraph bridging columns 1-2).
In view of the additional teachings of Reed and Mutlu, it would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the method of claim 97 of the reference application to encapsulate the genetically engineered microbe into a silica gel at a density of 1 g/mL. One would have been motivated to and would have had a reasonable expectation of success to do this because the method of Reed is encompassed by claim 97 of the reference application, Reed discloses the microbes can be encapsulated into a polymer such as silicone, and Mutlu teaches encapsulating bacterial cells in a silica gel by adding cells at a density of 1 g/mL to a SNP sol.
Regarding claim 18 of this application, the combination of Reed, Tsuruta, Avdibegović, and Mutlu does not teach or suggest encapsulating cells with silicone dioxide (SiO2) at a cell density of about 2 mg/mL. However, given that Reed acknowledges varying the inoculum size to determine optimal conditions (paragraph [0098]) and the accumulated amount of REE is related to the mass or amount of A. nicotianae cells (Tsuruta at p. 118, column 2), it would have been obvious to one of ordinary skill in the art to increase the density of A. nicotianae cells to about 2 g/mL. One would have been motivated to and would have had a reasonable expectation of success to do this in order to optimize the accumulation of Sc by routine experimentation.
Therefore, claims 17 and 18 are unpatentable over the claim of the reference application in view of Reed, Tsuruta, Avdibegović, and Mutlu and as evidenced by Dong. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 22 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 97 of co-pending application no. 18/570,543 (reference application) in view of Reed, Tsuruta, Avdibegović, and Thomas and as evidenced by Dong as applied to claims 1-3, 5-9, 11-16, 19-21, and 23 above, and further in view of Adam.
Claim 17 of the patent does not recite a 25 mM citrate solution.
Reed teaches a citrate solution at pH 6 for recovering absorbed REE (paragraph [0046]).
Adam teaches a 25 mM sodium citrate buffer, pH 6 (paragraph [0059]).
In view of the noted teachings of Reed and Adam, it would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the method of claim 97 of the reference application to use a 25 mM sodium citrate buffer, pH 6 for recovering absorbed REE. One would have been motivated to and would have had a reasonable expectation of success to do so because the method of Reed is encompassed by claim 97 of the reference application, Reed teaches a citrate solution at pH 6 for recovering absorbed REE, and Adam teaches a 25 mM sodium citrate buffer, pH 6.
Therefore, claim 22 is unpatentable over the claim of the reference application in view of Reed, Tsuruta, Avdibegović, and Adam and as evidenced by Dong. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Status of the claims:
Claims 1-3 and 5-23 are pending.
Claim 10 is withdrawn from consideration.
Claims 1-3, 5-9, and 11-23 are rejected.
No claim is in condition for allowance.
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.
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/David Steadman/Primary Examiner, Art Unit 1656
