DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election without traverse of species i and vi (claim 35), and species vii (claim 39) in the reply filed on 7/2/2025 is acknowledged.
Species ii (claims 36-37), iii (claim 32), iv (claim 33), v (claim 34) and viii (claim 40) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/2/2025.
Claim 28 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/7/2024.
Species of carboxylic acids and sulfonic acids in claim 27, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/11/2025.
Response to Amendment
The amendment filed on 2/5/2026 has been entered. Claim(s) 25 is/are currently amended. Claim(s) 1-24 has/have been cancelled. Claims 41-43 are new. Claim(s) 25-43 is/are pending with claim(s) 28, 32-34, 36-37 and 40 withdrawn from consideration. Claim(s) 25-27, 29-31, 35, 38-39 and 41-43 is/are under examination in this office action.
Response to Arguments
Applicant's argument, filed on 2/5/2026, with respect to 103 rejection has been fully considered but is moot in view of the new grounds of rejection presented below.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 25-27, 29-31, 35, 38-39 and 41-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kumar et al (“Solid–liquid extraction of heavy rare-earths from phosphoric acid solutions using Tulsion CH-96 and T-PAR resins”, Chemical Engineering Journal 160 (2010) 138–144) in view of Yadav et al (“Studies on separation of rare earths from aqueous media by polyethersulfone beads containing D2EHPA as extractant”, Separation and Purification Technology 118 (2013) 350–358).
Regarding claims 25-27, 29-31, 35 and 41-42, Kumar teaches an ion exchange method for extraction of heavy rare-earths using T-PAR iron exchange resin, a phosphoric acid resin [p.138 abstract, p.139 Introduction]. T-PAR resin reads on the claimed polymer resin having anion functional groups as recited in claims 31, 35 and 41-42.
Kumar does not teach the claimed extractant.
In the same field of endeavor, Yadav teaches a polyethersulfone beads containing di-2-ethyl hexyl phosphoric acid (D2EHPA) as extractant for extraction of rare earths [abstract]. D2EHPA reads on the recited extractant in claims 26, 27 and 29.
Kumar’s T-PAR and Yadav’s D2EHPA both serve the same purpose, i.e. as extractants for extraction of rare earths. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose" In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), MPEP 2144.06.I). Since T-PAR and D2EHPA are recognized as equivalents for the same purpose for extraction of rare earths, one of ordinary skill at the time of filing would be able to combine these two in the same composition.
Iron exchange resins are art recognized as being porous, as Yadav teaches [p.352 section 3.1].
The recited “for extracting rare earth metals from an acid-leaching slurry or solution comprising iron ions” represents a statement of intended use that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
The recited “the composite selectively uptakes rare earth metal ions from the acid-leaching slurry or solution over the iron ions” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 38, the recited composite density depends on the composite composition. Applicant teaches that the composite extractant-enhanced polymer resin may contain 80 wt.% or less of the extractant, for example, 60 wt.% or less of the extractant, or 50 wt.% or less of the extractant [0036 spec.]. Kumar in view of Yadav teaches the same composite extractant-enhanced polymer resin as stated above. Yadav also teaches extractant and polymer in about similar weight ratio [p.353 Fig.3]. Therefore, the claimed density is expected from the composite of the prior art.
Regarding claim 39, the recited at least 200 wt. ppm of rare earth metal loaded to the composite is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 43, the recited “the acid-leaching slurry or an acid-leaching solution further comprises titanium ions, and the composite selectively uptakes the rare earth metal ions from the acid-leaching slurry or solution over the titanium ions” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Claim(s) 25-27, 29-31, 38-39 and 41-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berry et al (US 20150167120 A1).
Regarding claims 25-27, 29-31 and 41-42, Berry teaches a continuous ion exchange resin system for recovering rare earth materials from an acid solution [abstract]. The ion exchange resin system comprises di-2-ethylhexyl phosphoric acid as an extractant [0016, 0029, 0062], and a cationic exchange resin such as PUROLITE SST-60TM comprised of gel polystyrene crosslinked with divinylbenzene (DVB) and a sulfonic acid functional group [0011].
Di-2-ethylhexyl phosphoric acid (DEHPA) reads on the claimed recited extractant in claims 26, 27 and 29.
PUROLITE SST-60TM reads on the recited polymer resin having anion functional groups as recited in claims 31 and 41-42.
Iron exchange resins are art recognized as being porous.
The recited “for extracting rare earth metals from an acid-leaching slurry or solution comprising iron ions” represents a statement of intended use that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
The recited “the composite selectively uptakes rare earth metal ions from the acid-leaching slurry or solution over the iron ions” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 38, the recited composite density is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 39, the recited at least 200 wt. ppm of rare earth metal loaded to the composite is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Regarding claim 43, the recited “the acid-leaching slurry or an acid-leaching solution further comprises titanium ions, and the composite selectively uptakes the rare earth metal ions from the acid-leaching slurry or solution over the titanium ions” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berry et al (US 20150167120 A1) as applied to claim 31 above, further in view of Panz et al (US 20140079620 A1).
Regarding claim 35, Berry teaches the composite extractant in claim 31. Berry teaches PUROLITE SST-60TM which reads on the recited polymer resin having anion functional groups as recited in claims 31. Berry does not teach that the anion functional group is phosphoric acid.
In the same field of endeavor, Panz teaches phosphonate ion exchangers for rare-earth metals [0020], comprising Purolite S957 [0028].
Berry’s Purolite SST-60 and Panz’ Purolite S957 both serve the same purpose, i.e. as extractants for extraction of rare earths. It is prima facie obvious to substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06. Since Purolite SST-60 and Purolite S957 are recognized as equivalents for the same purpose for extraction of rare earths, it would have been obvious for one of ordinary skilled in the art at the time of filing to substitute Purolite SST-60 with Purolite S957 in Berry’s composition.
Purolite S957 reads on the claimed polymer resin having phosphoric acid as the anion functional group, as evidenced by the applicant [0015 spec.].
Conclusion
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/JIANGTIAN XU/Examiner, Art Unit 1762