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 .
Response to Amendment
The amendment filed 12/22/2025 has been entered. Claims 1-7, 9-14, 16, 19-25, and 27 are pending in this application and examined herein. Claims 1, 21, and 24 are amended. Claims 8, 15, and 17-18, and 26 are cancelled. Claim 27 is new.
The rejections under 35 USC 112(a) to claims 1-14, 16, and 19-26 are withdrawn in view of the amendments to claims 1 and 24, and the cancellation of claim 26.
The rejection under 35 USC 112(b) to claim 26 is withdrawn in view of the cancellation of claim 26.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 27 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 27 recites “wherein the amount of water to moisten the REE containing ore is recycled process water”. The instant specification discloses “mixing the liquid into the ore to ensure all particles were moistened.. with the addition of water” at [00103], and “In certain embodiments, the acid for the acid soaking step is provided in whole or in part from a recycled waste leachate following an REE extraction process, such as the present process. The waste leachate stream can be recycled in order to move toward a zero-waste or low waste process.” at [0059] (i.e., the acid may be from a recycled waste leachate stream), however the instant specification does not disclose the amount of water used to moisten the ore is recycled process water and therefore does not describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor invented the claimed invention at the time of filing.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 27 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 27 recites the limitation "wherein the amount of water to moisten the REE containing ore is recycled process water”. The limitation is indefinite as it is unclear whether the amount of water used is somehow related to or commensurate with a recycled process water; or if the water used is further specified to be “recycled process water”, and does not restrict the quantity of water used.
Claim Rejections - 35 USC § 103
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.
Claims 1-7, 13, 16, 19-21, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 102534269 A, machine translation and original document supplied herein) in view of Pingitore (US 20160138133 A1, cited in Office Action dated 05/03/2024) and Zhao et al. (CN 104862502 A, machine translation and original document supplied herein).
Regarding claim 1, Wang teaches a process for extracting rare earth element (REE) from rare earth materials (i.e., REE containing ore) (Title, [0002). Wang teaches mixing REE containing ore with sulfuric acid (i.e., soaking the REE containing ore with strong acid) [0052], with a concentration of greater than 98% (i.e., greater than about 36 N) [0054]. Wang teaches mixing at a ratio of strong acid to REE containing ore of 200 g of ore to 170.81 mL of sulfuric acid by weight, a ratio of strong acid to the REE containing ore of 17.1:20 (Examples 1 and 2), which is within the claimed range. Wang teaches mixing at a temperature of room temperature [0078], which would be recognized by one of ordinary skill to be 20-25 °C (i.e., take place at a temperature of less than about 100 °C, wherein the REE containing ore is maintained at a temperature below 100 °C). Wang teaches leaching the REE (i.e., dissolvable REE) with an aqueous leaching solution to obtain a leachate comprising extracted REE [0053, 0079].
Wang does not teach a soak time.
Pingitore teaches methods for extraction and recovery of rare earth elements by leaching with sulfuric acid (Title, abstract); thus, Wang and Pingitore are analogous as processes for recovering rare earth elements using sulfuric acid. Pingitore teaches the ore is treated with sulfuric acid for several weeks, months, or up to several years depending on the ore [0035], which is within the “at least 2 weeks” range of the instant claim.
Because Wang is silent with respect to a soak time of the ore, in order to carry out the invention of Wang one of ordinary skill in the art would necessarily look to the art for a reference teaching a soak time suitable for use within the process of Wang, such as that of several weeks, months, or years as taught by Pingitore. As Wang and Pingitore both relate to recovery of rare earth elements from ore using sulfuric acid, one of ordinary skill would have been motivated to use the processing times of Pingitore when performing the process for extracting rare earth elements disclosed by Liu.
Wang in view of Pingitore does not teach contacting the REE containing ore with an amount of water to moisten the REE containing ore.
Zhao teaches a clean smelting process for mixed rare earth concentrate of bastnaesite and monazite (Title), where a residue (analogous to REE containing ore) is leached with sulfuric acid (analogous to soaking and leaching with an aqueous leaching solution) to recover rare earths [0017], thus Zhao and Wang are analogous to the instant application as both are directed processes for recovering rare earth elements using sulfuric acid. Zhao teaches prior to leaching with sulfuric acid, washing the REE containing ore with water (i.e., contacting the REE containing ore with an amount of water) [0016], which would moisten the REE containing ore. Zhao teaches the washing removes a large amount of phosphorous and a small amount of fluorine, which is beneficial to the leaching of rare earths during the acid leaching process [0019].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have contacted the REE containing ore with an amount of water prior to soaking as taught by Zhao in the process of Wang as doing so would remove a large amount of any phosphorous present and a small amount of any fluorine present in the REE containing ore, improving leaching as taught by Zhao.
Regarding claim 27, Zhao teaches the REE containing ore is washed with water twice [0032, 0051, 0058], where the water from the first washing used to perform further washing would comprise recycled process water, thus Zhao teaches wherein the amount of water to moisten the REE containing ore is recycled process water as best can be examined in view of the rejections of claim 27 under 35 USC 112(a) and (b) above.
Claims 2-7, 13, 16, and 19-21 remain rejected as set forth in the Office Action dated 08/27/2025. Claims 2-3, 5-7, 13, 16, and 19-20 have not been amended since that time, and the amendments to claims 4 and 21 are of an editorial nature and do not materially affect any statements made in the rejection in the prior Office Action. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claims.
Claims 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Pingitore and Zhao as applied to claim 1 above, and further in view of Cui et al. (CN 106319247 A, machine translation supplied with Office Action dated 05/03/2024).
Claims 9-12 remain rejected as set forth in the Office Action dated 08/27/2025. Claims 9-12 have not been amended since that time, therefore the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claims.
Claims 14 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Pingitore and Zhao as applied to claim 1 above, and further in view of Dreisinger et al. (US 20170204499 A1, cited in Office Action dated 08/27/2025).
Claims 14 and 22-23 remain rejected as set forth in the Office Action dated 08/27/2025. Claims 14 and 22-23 have not been amended since that time, therefore the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claims.
Claims 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of Pingitore and Zhao as applied to claim 1 above, and further in view of Vaisanen et al. (US 20150211094 A1, cited in Office Action dated 08/27/2025).
Claims 24-25 remain rejected as set forth in the Office Action dated 08/27/2025. Claim 25 has not been amended since that time, and the amendments to claim 24 are of an editorial nature and do not materially affect any statements made in the rejection in the prior Office Action. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claims.
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that one of ordinary skill would not consider Zhao for contacting the REE containing ore with an amount of water to moisten the REE containing ore, as Zhao is allegedly entirely limited to smelting while claim 1 requires the REE containing ore is maintained at a temperature below 100 °C (see pg. 7-9 of remarks), the Examiner respectfully disagrees.
While as Applicant notes, Zhao discloses smelting, Zhao is not relied upon to e.g., add a smelting operation to the process of Wang in view of Pingitore. Instead, Zhao is relied upon only to suggest contacting the REE containing ore of Wang with an amount of water prior to soaking in strong acid as taught by Zhao, as Zhao teaches such a step to remove phosphorous and fluorine impurities present in the ore, and would therefore remove any phosphorous or fluorine in the ore of Wang.
As the process of Wang does not teach a temperature at or above 100 °C, and the modifications suggested by Pingitore (using a soak time in accord with the method as claimed) and Zhao (a washing step that would comprise contacting the REE containing ore with an amount of water to moisten the REE containing ore) also do not suggest steps that would require a temperature at or above 100 °C, Wang in view of Pingitore and Zhou teaches wherein the REE containing ore is maintained at a temperature below 100 °C as claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733