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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 18, 2026 has been entered.
Response to Amendment and Status of Claims
Applicant’s amendments to the claims, filed March 18, 2026, is acknowledged. Claim 1 is amended and Claims 3 and 5 are cancelled. No new matter has been added.
Claim 1 is pending and considered in this office action.
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 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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (previously cited, US 20180187287 A1) in view of Kawashiro (previously cited, US 20180002781 A1), Bender (previously cited, US 20210381079 A), McGrew (previously cited and cited by Applicant in IDS filed February 22, 2022, US 4557759 A), Hatano138 (previously cited, US 20120234138 A1), Wojnicki (PL 228374 B1, English Machine translation) and Hatano066 (US 20170356066 A1).
Regarding Claim 1, Sato discloses a method for processing ores containing copper or refining intermediates containing copper, the refining intermediate being obtained by subjecting the ores to a refining process (Abstract), wherein the method comprises:
a leaching step of leaching copper from the ores or the refining intermediates using a sulfate solution containing iodide ions and iron (III) ions as a leaching solution (Abstract; sulfuric acid solution reads on sulfate solution; see also para. [0074] wherein ferric sulfate is added),
wherein an iodine concentration in the leaching solution is 100-300mg/L, which reads on the claimed 50-1000 mg/L (para. [0028]),
an iron (III) ion concentration in the leaching solution is 5g/L (5000mg/L), which reads on the claimed 2000-10000mg/L (para. [0058]), and
the iron (III) ion concentration in the leaching solution is 16.7-50 times or more the iodine concentration in weight ratio, which reads on the claimed 20 times or more (see para. [0028] and [0058], 5g/L is 16.7-50 times more than 100-300 mg/L).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Sato further discloses an adsorption step of passing the leachant solution through activated carbon to adsorb iodine (Abstract; para. [0010]; Fig. 1, step S12; para. [0059]),
an iodine separation step of separating iodine from the activated carbon using sulfurous acid solution (Fig. 1, step after S12, aqueous solution containing separated iodine after recovery; Fig. 2, step after S22, iodine-containing aqueous solution after separation; para. [0059]; [0075]),
wherein the solution after iodine separation (after activated carbon treatment) comprises iron (II) ions, which are then oxidized (Abstract, “iron(II) ions existing in the solution after iodine treatment” - see Fig. 1, step S12 activated carbon treatment and iodine separation step; see also para. [0021], wherein iron (II) ions are generated by the copper leaching step and therefore pass through the activated carbon during the iodine separation step), and
a step of recovering the copper component from the post-activated carbon treatment solution using either electrowinning or a cementation treatment, which reads on a copper separation step of separating copper from an adsorbed solution obtained in the adsorption step (para. [0041]; para. [0060]).
The claimed ‘adsorbed solution’ is interpreted as the solution which is collected after passing through the activated carbon, and synonymous with the post-activated carbon treatment solution disclosed by Sato. Therefore, of ordinary skill in the art would appreciate that iron (II) ions are present in the adsorbed (post-activated carbon treatment) solution, as claimed (see above), and one of ordinary skill in the art would also appreciate that copper ions are present in the adsorbed (post-activated carbon treatment) solution, as claimed, in order to successfully use electrowinning and/or cementation for copper recover. Further, one of ordinary skill in the art would appreciate that because the copper recovery occurs after activated carbon treatment, the copper is not absorbed on the activated carbon, as claimed, and passes through the activated carbon in solution.
Sato fails to disclose 0.15-15% by weight sulfite ion concentration in the sulfurous acid solution used to elute the iodine from the activated carbon.
Kawashiro teaches using a sulfurous acid solution comprising a concentration of 1-100 times the weight of sulfurous acid ions with respect to the amount of iodine eluted from activated carbon (para. [0043]; para. [0047]; one of ordinary skill in the art would appreciate that sulfurous acid ions would be referring to sulfite ions because the sulfurous acid would be dissociated in solution – see also para. [0043]).
For example, Kawashiro teaches a final concentration of iodine of 100mg/L after reaction (see para. [0054]), and Sato teaches wherein 10mg/L, and further less than 1mg/L, of iodine is present in the leachant solution after passing through activated carbon adsorption (i.e., activated carbon would adsorb 90mg/L, or further 99mg/L or more, of the iodine present after leaching) (see Sato, para. [0007]-[0008]; para. [0031]).
Therefore, an appropriate amount of sulfite ion concentration in the sulfurous acid solution according to Kawashiro and Sato would be at least 1-100 times 90mg/L of iodine, or about 0.009% to about 0.9% by weight of sulfite ions in a sulfurous acid solution (calculated using densities of sulfurous acid and water), which reads on the claimed 0.15-15% by weight.
Kawashiro therefore also teaches that the sulfite ion concentration is a result effective variable, with the result being elution and recovery of iodine, such that the amount of sulfite ion concentration in the sulfurous acid is modified to elute a particular weight of iodine from the activated carbon.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used 1-100 times the weight of sulfite ions (sulfurous acid ions) to the weight of iodine to be eluted from the activated carbon, such as 0.09-0.9wt% sulfite ions in a sulfurous acid solution, in order to elute at least 90mg/l of iodine, as taught by Kawashiro and Sato, for the invention disclosed by Sato. One would be motivated to use these amounts of sulfite ion concentrations in the sulfurous acid solution in order to successfully elute the desired amount of iodine from the leaching solution and from the activated carbon for reuse (see teaching by Kawashiro and Sato above).
Further, Kawashiro demonstrates wherein the sulfite ion concentration is result effective variable, wherein the result is the amount of iodine recovered. Thus, it would be obvious to one of ordinary skill in the art to use the appropriate amount of sulfite ions, and the amount within the claimed range, in order to elute the necessary amount of iodine which is adsorbed on the activated carbon. It has been held that discovering an optimum value or a result effective variable (sulfite ion concentration, see teachings by Kawashiro above) involves only routine skill in the art. See MPEP 2144.05.II.A-B.
Sato discloses the iodine-iodide leaching method is suitable for processing ores and/or refining intermediates containing copper, such as chalcopyrite, and for leaching copper, but fails to disclose processing ores or refining intermediates containing gold and leaching gold.
Bender teaches wherein ore comprising copper sulfides commonly comprise gold (para. [0002]). Bender teaches using a leaching solution, such as an iodine-based leaching solution, to extract both gold and additional metals such as copper which are present in ore (para. [0068]; para. [0079]).
McGrew also teaches using the iodine-iodide system for leaching gold, and for processing ores containing gold and also copper, including processing chalcopyrite, and wherein the gold is recovered on activated charcoal (Abstract; see Col. 3, lines 24-25, wherein ore comprises chalcopyrite which is a copper sulfide containing ore; Col. 3, lines 22-30; Col. 3, see equation 3, wherein solution is formed with iron ions (Fe+2), sulphate 2(SO4-) and iodide ions (14I-); Col. 3, lines 64-66).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the iodine-iodide system of Sato to similarly process, leach and recover gold on activated charcoal (carbon) from ore which comprises gold-containing minerals, as taught by Bender and McGrew. One would be motivated to do this in order to recover multiple metals (e.g., gold and copper – see teaching by Bender) from ore which includes minerals already processed by Sato (see teachings by McGrew above and Sato para. [0010], wherein both process chalcopyrite), while maximizing processing efficiency by using the same leaching solution, and because McGrew demonstrates that gold is readily obtained by oxidizing iodide to iodine in a sulfate solution comprising iron ions (the system of Sato) and by forming metal-iodine complexes with recovery on activated carbon (as also disclosed by Sato).
McGrew teaches wherein up to 95% of gold is recovered (see Table 2), but does not disclose the gold concentration in the leached solution prior to recovery on activated carbon.
Hatano138 teaches wherein separation of metals according to the wet process including activated carbon adsorption is adoptable for solution having a metal concentration of several grams per liter or lower, and specifically teaches that activated carbon is adopted to separate gold from a copper leachate with leachate solutions comprising a gold concentration of about 10mg/l, which reads on the claimed concentration of 0.1-100mg/l (para. [0009]-[0010]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have comprised a leachate with a gold concentration of 10mg/l or less, which reads on the claimed range of 0.1-100mg/l, as taught by Hatano138, for the invention disclosed by Sato and McGrew, in order to successfully use the activated carbon adsorption method (see teaching by Hatano138 above).
Additionally, the leaching solution of Sato is the same as claimed, and one of ordinary skill in the art would appreciate the leaching solution of Sato to result in the claimed amount of 0.1-100mg/l gold when used to process gold containing ore, as taught by McGrew. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Sato discloses separating iodine from the activated charcoal using sulfurous acid solution (para. [0041]; para. [0059]-[0060]) and Kawashiro teaches wherein the sulfurous acid solution comprises 0.01-1% by weight sulfite ion concentration (see above), and McGrew and Hatano138 similarly disclose recovering gold by means of activated charcoal (Col. 2, lines 34-35).
Sato, Kawashiro and McGrew fail to disclose wherein the iodine separation step, which removes iodine from the activated carbon with the sulfurous acid solution, does not also remove the adsorbed gold from the activated carbon.
However, the leaching solution (disclosed by Sato), the solution after leaching (disclosed by Sato and Hatano138), and the sulfurous acid solution used to separate the iodine from the activated carbon (disclosed by Sato and Kawashiro), are the same as the claimed invention, and one of ordinary skill in the art would appreciate that the sulfurous acid solution would behave the same as the instant invention, and leave gold on the activated carbon that has undergone the adsorption step, as claimed. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Further, while Sato discloses removing the iodine from the activated carbon and one of ordinary skill in the art would appreciate the gold to remain on the activated carbon (see above), McGrew is silent towards treating the activated carbon with a first separation process to remove adsorbed components other than gold, prior to gold removal.
Wojnicki teaches adsorbing multiple components, including gold, onto activated carbon, and selectively removing a component from the activated carbon prior to removing the gold (para. [0016]). Specifically, Wojnicki adsorbs palladium and gold onto activated carbon, and rinses the activated carbon with a solution which selectively targets the Pd (II) ions, desorbing the palladium from the activated carbon and passing the Pd (II) ions into solution (para. [0011]-[0012]; para. [0016]). Wojnicki teaches modifying the solution pH for specific element desorption, wherein gold remains on the surface of the absorbent in ionic and/or metallic form (para. [0016]). Wojnicki teaches wherein gold is then separated from the activated carbon in subsequent processing steps, and wherein the process allows for both the recovery of elements and the ability to separate them (para. [0002]; para. [0011]-[0012]; para. [0016]). While Wojnicki removes Pd ions rather than iodine ions from the activated carbon, one of ordinary skill in the art would appreciate the mechanism of removing Pd(II) ions by targeted desorption solutions is the same concept of removing the iodine ions as disclosed by Sato, and therefore the teachings of Wojnicki are particularly relevant to the invention of Sato.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have treated the activated carbon in a first separation step to remove components other than gold from the activated carbon prior to the elution of gold from the activated carbon, as taught by Wojnicki, for the invention disclosed by Sato and McGrew. One would be motivated to do this in order to separately recover different elements (see teaching by Wojnicki), such as the iodine desired to be removed by Sato for iodine recycling. Thus, Sato in view of McGrew and Wojnicki disclose separating iodine from the activated carbon through desorption of iodine ions while leaving gold on the activated carbon, followed by separating the gold from the activated carbon, as claimed.
McGrew is silent towards the details for separating the gold from the activated charcoal and fails to disclose eluting the gold by bringing the activated carbon into contact with a cyan solution containing cyan ions, or a solution containing thiosulfate, as claimed.
Hatano066 teaches wherein the gold adsorbed on to the activated carbon is efficiently eluted by cyanide solutions reads on cyan solution containing cyan ions, and thiosulfate solutions (para. [0031]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to eluted gold from the activated carbon using a cyan solution containing cyan ions or a thiosulfate solution, as taught by Hatano066, for the invention disclosed by Sato and McGrew, in order to efficiently elute/separate the gold from the activated carbon (see teaching above).
Response to Arguments
Applicant’s arguments, filed March 18, 2026, with respect to Claim 1, and dependents thereof, rejected under 35 U.S.C. 103 over Sato in view of Kawashiro, McGrew, Bender and Hatano138, and over McGrew in view of Kawashiro, Manabe and Hatano138, have been fully considered and are persuasive in view of Applicant’s amendments to the claims further limiting leaching solution composition. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Sato in view of Kawashiro, McGrew, Bender, Hatano138, Wojnicki and Hatano066, as detailed above.
Applicant’s arguments directed to the amendments are deemed moot in view of the new grounds of rejection.
Regarding Sato and Kawashiro:
Applicant argues that Kawashiro is silent about gold, and is silent towards activated carbon in the disclosed example 1 recited in the rejection.
Applicant argues that the adsorption stability of Au decreases with increasing sulfite ion concentration in the sulfurous acid.
This argument is not found persuasive.
Kawashiro discloses the amount of iodine present after leaching (100mg/L), and wherein the amount of sulfite ions is a result effective variable for the amount of iodine present on the adsorbed carbon. Sato discloses the desired amount of iodine present in the leaching solution after passing through the adsorbed carbon (10mg/L). Thus, Kawashiro and Sato teach an amount of iodine to be adsorbed and eluted from the activated carbon (90mg/L), and it would be obvious to use the claimed amount of sulfite ions taught by Kawashiro and based on this amount of iodine (90mg/L), which overlaps with the claimed range (see rejection above), to achieve the desired values of iodine leftover in the leachant solution and eluted from the activated carbon. Thus, while Kawashiro does not expressly disclose 100 mg/L is the amount of iodine actually collected by the activated charcoal, Sato teaches wherein the amount adsorbed and based on the values taught by Kawashiro in the leaching solution, should be at least 90mg/L.
Further, Kawashiro demonstrates wherein the sulfite ion concentration is result effective variable, wherein the result is the amount of iodine recovered. Thus, it would be obvious to one of ordinary skill in the art to use the appropriate amount of sulfite ions, and the amount within the claimed range, in order to elute the necessary amount of iodine which is adsorbed on the activated carbon.
In regards to Kawashiro lacking disclosure of leaching gold, this feature is taught by Bender and McGrew. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to Applicant’s argument of Kawashiro failing to acknowledge the implications of sulfite ion concentration on the stability of gold on the activated carbon, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Batnasan (previously cited, “Leaching and Adsorption of Gold from Waste Printed Circuit Boards Using Iodine-Iodide Solution and Activated Carbon”): teaches wherein iodine-gold complexes form elemental gold and iodine ions after adsorption onto activated carbon (pg. 39, equations 8 and 9), and teaches removing iodine and gold by stripping with NaOH, sulfuric acid, ammonia or hydrochloric acid, followed by reducing and oxidizing agents (Pg. 39, conclusions).
Batnasan teaches wherein the pH influences if gold is in ionic (acidic solutions) or elemental form (high pH range) on the activated carbon (Pg. 36-37, Effect of pH on the Gold Adsorption).
Teirlinck (previously cited, “The nature of gold-iodide adsorption onto coconut-shell carbon”): teaches wherein gold complexes are reduced to elemental gold after adsorption onto activated carbon (Abstract).
Liang (previously cited, “Recovery of gold in iodine-iodide system – a review”): teaches the leaching of gold using a leaching solution with an oxidant in order to form gold complexes with iodine (Pg. 1057, Col. 1, para. 1-2; pg. 1060, auxiliary additives).
Yin (previously cited, “Comparison of Leaching Processes of Gold and Copper from Printed Circuit Boards of Waste Mobile Phone”): teaches leaching of gold and copper from PCB waste using selectively tailored concentrations of solutions comprising sulfuric acid-hydrogen peroxide (oxidant) and iodine (complexing agent) (Abstract; Pg. 2745, Leaching tests, (2)).
Nguyen (“Simultaneous Recovery of Gold and Iodine from the Waste Rinse Water of the Semiconductor Industry Using Activated Carbon”): teaches adsorbing both iodine and gold on activated carbon, wherein NaOH then elutes iodine and ionic gold (about 4%) from the activated carbon while leaving elemental gold (Pg. 763, Elution of gold and iodine from loaded carbon).
McGrew (previously cited and cited by Applicant in IDS filed February 22, 2022, US 4557759 A, further teachings): discloses leaching gold from ore using a sulfate solution comprising iodide and iron ions, wherein an iodine concentration in the leaching solution 3000mg/L, and wherein the leaching solution is passed through activated carbon to recover gold, and the iodine is recycled (Abstract; Col. 3, lines 22-30; Col. 3, see equation 3, wherein solution is formed with iron ions (Fe+2), sulphate 2(SO4-) and iodide ions (14I-); Col. 3, lines 64-66; Col. 4, lines 1-2; Col. 3, lines 15-20; see 3g/L , or 3,000 mg/L).
Manabe (previously cited, US 20110041654 A1): teaches an iodide-iodine leaching solution comprising 8-100mg/L iodine and 2-5g/L ferric (III) ions, wherein the Fe (III) concentration to iodine concentration is specifically 20 times or more, in order to tailor the amount of ferrous (II) ions relative to the amount of Fe present from the ore thereby functioning as a catalyst for enhanced oxidation of iodide to iodine (Abstract; para. [0012]-[0016]; para. [0023]-[0025]; para. [0028]-[0032]).
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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/ Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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