DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/21/25 has been entered.
Response to Amendment
2. In response to the amendment received on 3/3/26:
claims 1-15 are presently pending
all prior art grounds of rejection are withdrawn
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-15 are 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.
Specifically, it doesn’t appear that there is support for the negative claim limitations of independent claim 1 requiring the electroplating to occur “without intermediate precipitation, solvent extraction, or conversion of the ammonium carbonate leach chemistry” as claimed. While the examiner acknowledges a portion of the specification indicating that the ammonium carbonate process “avoids the complexity and cost of the many stages used in traditional solvent extraction methods” (see Specification at ¶9), this statement wouldn’t seem to provide support for a negative limitation excluding solvent extraction of the filtrate before electroplating or the intermediate precipitation or conversion of the ammonium carbonate leach chemistry as currently claimed. Additionally, while the Specification also teaches the process and shows the filtrate being further processed via the electroplating (see e.g. Specification at Fig. 1 and Fig. 2), the mere absence of a positive recitation of any further processing cannot be the basis for an exclusion (see MPEP 2173.05(i), third paragraph).
As such, it is the examiner’s opinion that the specification would not have reasonably conveyed to one of ordinary skill in the art that the inventor was in possession of the method as currently claimed excluding those specific types of processing before the electroplating.
The examiner would suggest one way of overcoming the current rejection would be to remove the limitations including and after “without intermediate …” so as to effectively delete the limitations of the last two lines of the claim.
Response to Arguments
Applicant’s arguments, see Remarks, filed 12/21/26, with respect to the prior art rejection of claim 1 have been fully considered and are persuasive. The prior art rejections of 11/4/25 have been withdrawn. Specifically, the examiner finds Applicants’ arguments persuasive that the prior art fails to teach a process as claimed including the steps of treating the converted permanent magnet material with an aqueous solution of ammonium carbonate occurs which is then filtered and then electroplated in which the step of “electroplating the cobalt directly from the filtrate onto a cathode” occurs as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bryan D. Ripa whose telephone number is (571)270-7875. The examiner can normally be reached Mon-Fri 8:00AM-4:00PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN D. RIPA/Primary Patent Examiner, Art Unit 1794
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