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 .
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.
Election/Restrictions
Claim 43 stands withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 July 2025.
Information Disclosure Statements
The Information Disclosure Statements filed on 28 April 2026 and 20 October 2025 have been received and considered by the Examiner.
Amendments
Applicants amendments to the abstract and specification filed 2 March 2026 have been entered. The prior objections to the specification are withdrawn.
Claim Interpretation
The claim interpretations set forth in the prior Office action mailed 19 August 2025 continue to be used in interpreting the claims of the instant application.
Response to Arguments
Applicant's arguments, page 8-9 of the reply filed 2 March 2026, with respect to the rejections under 35 USC § 102 have been fully considered but they are not persuasive.
Applicant argues that there is a distinction between instant claim 27 and the prior art because WVU does not teach “isolating the rare earth element oxide from the one or more solvent extraction steps.” In particular, Applicant argues on p. 9 that WVU teaches “a precipitation step that is separate from and subsequent to the solvent extraction step.” While it is true that WVU teaches the precipitation subsequent to the solvent extraction, it is not wholly separate from the solvent extraction. WVU provides a flow chart that shows the solvent extraction as providing two outputs: a “Raffinate” fraction as one output, and a second fraction that subsequently undergoes precipitation to provide the “REE Oxalate” following a precipitation step as the other. Accordingly, the “precipitation” that is referenced on the right side in WVU is interpreted as a distinct step that is performed on an output of the solvent extraction process as a means of isolating the rare earth element oxide from the one or more solvent extraction steps.
Applicant’s reply, page 9 ¶ 2, makes reference to [0108] of the specification, but this passage was found to only repeat the phrase “isolating the rare earth element oxide from the one or more solvent extraction steps” without providing any more clarity or supporting a different interpretation of the claim language than the one used by Examiner. Furthermore, specification [0723] also supports that precipitation can be interpreted as a means of isolating the rare earth element oxide from a solvent extraction step, as taught by WVU:
Upon completion of the SX [solvent extraction] plant run, the stripped aqueous product was processed using the precipitation module to convert the REE cations to oxalates. Next, the REE oxalate solids were calcined to transform the oxalates to oxides. After calcination, multiple washing stages were required to separate the REEs from gangue elements; therefore, increasing the grade of the final product. As a result of these procedures, a 62% mixed rare earth oxide material was acquired from the ALSX plant.
If Applicant would like to limit the “isolating” to using only non-precipitation methods, such limitations must be included in the claim with support from the as- filed specification. It is noted, however, that the Examiner was unable to find discussion in the specification of any particular means of isolating from the solvent extraction step other than precipitation.
Applicant further argues on p. 10-11 against the combination of WVU with the secondary references of Zhang, Brewer and Sugita. These arguments are also not persuasive.
In each case, Applicant argues the ways in which the feedstocks used by Zhang, Sugita and Brewer are different from those used by WVU (and each other). However, it must be noted that the WVU, Zhang, Sugita, and Brewer are all directed toward isolating rare earth elements from leachates and all use, or suggest using, at least one of the additional isolation steps (solvent extraction and/or precipitation) taught by WVU. These methods therefore are all in the same field and are all directed to the same problem of isolating REEs from leachates or precipitates in which they are contained. Therefore it would have been obvious to one of ordinary skill working in the field of rare earth metal recovery and isolation to combine the methods of Zhang, Brewer, and/or Sugita with WVU, even though the starting feedstocks differ. Specific motivations for each combination are provided below.
Further regarding the combination with Zhang, Zhang specifically teaches that their methods are applicable to recovering REEs from AMD, the same goal as WVU: “The recovery of REEs … from AMD using selective concentration method is an important focus of this study”, p. 190, col. 2, ¶ 2 (emphasis added).
For these reasons, the prior rejections of all claims are maintained.
Applicant discusses the non-statutory double-patenting rejection and asks that it be held in abeyance, page 12, but makes no arguments against the non-statutory double-patenting rejection at this time. Therefore, the rejection is maintained.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 27-28, 31-33, 36, and 39-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WVU (“Recovery of Rare Earth Elements (REEs) from Coal Mine Drainage,” 2016 NETL Crosscutting Technology Research Review Meeting, April 2016.) The relevant figure from this work is copied below.
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Regarding claims 27 and 33, WVU discloses a method for making a rare earth element oxide (Rare Earth Oxalate) comprising the steps of providing a rare earth element oxide feedstock material (Acid Leachate);subjecting the rare earth element oxide feedstock material to one or more solvent extraction steps (Solvent Extraction); and isolating the rare earth element oxide from the one or more solvent extraction steps (Precipitation); wherein the rare earth element oxide feedstock material comprises a pregnant leach solution (Acid Leachate, 0.1-1% REE).
Regarding claims 28 and 31, WVU discloses the method of claim 27 where the rare earth element feedstock (Acid Leachate) is obtained from an acid mine drainage (AMD Sludge) associated with a coal mine (title of poster).
Regarding claims 32 and 36, under the interpretation where these claims do not require the use of a hydraulic pre-concentrate and only further limit the hydraulic pre-concentrate when it is used to meet the limitations of claim 27, because WVU anticipates claim 27 with use a pregnant leach solution, WVU also anticipates claims 32 and 36.
Regarding claims 39 and 40, WVU discloses the method of claim 27 wherein the rare earth element oxide is a rare earth element oxalate (Rare Earth Oxalate), a type of rare earth element carboxylate.
Claim Rejections - 35 USC § 103
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.
Claims 29, 34, 35, 37,38, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over by WVU (“Recovery of Rare Earth Elements (REEs) from Coal Mine Drainage,” 2016 NETL Crosscutting Technology Research Review Meeting, April 2016), as applied to claim 27 above, and further in view of Zhang et al. (International Journal of Coal Geology 195 (2018) 189-199).
Regarding claim 29, WVU teaches the method of claim 28, but does not explicitly teach the rare earth element feedstock comprising the seventeen elements recited in the claim where the total rare earth element concentration is about 5 mg/L to about 500 mg/L.
However, Zhang teaches the recovery of a rare earth element feedstock from acid mine drainage (natural leachate; Section 2), and that this rare earth element feedstock contains sixteen of the seventeen elements recited in the claim (Table 1); the presence of the seventeenth element, promethium, will be considered met based on the presence of europium in the material (see Claim Interpretation). The total rare earth concentration in the natural leachate taught by Zhang is 6.14 mg/L (6.14 ppm; p. 196, column 2, paragraph 1 and Table 1), which falls in the instantly claimed range of about 5 mg/L to about 500 mg/L.
Furthermore, Zhang teaches that solvent extraction and selective precipitation, including the method of WVU, are appropriate techniques to purify leachates such as the one described by Zhang (REEs are dissolved from the solid material due to the exposure to the natural leachate, which presents the opportunity for rare earth recovery using hydrometallurgical techniques such as selective precipitation and solvent extraction; p. 190, column 1, paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the feedstock of Zhang in the method of WVU. One of ordinary skill would have been motivated to do so because Zhang teaches that the method of WVU can be used for recovery of rare earth elements.
Regarding claim 34, WVU teaches the method of claim 33, does not explicitly teach the rare earth element feedstock comprising the seventeen elements recited in the claim where the total rare earth element concentration is about 5 mg/L to about 500 mg/L.
However, Zhang teaches the recovery of a rare earth element feedstock from a pregnant leach solution (natural leachate; Section 2), and that this rare earth element feedstock contains sixteen of the seventeen elements recited in the claim (Table 1); the presence of minute amounts of promethium will be considered present based on the presence of europium in the material (see Claim Interpretation). The total rare earth concentration in the pregnant leach solution taught by Zhang is 6.14 mg/L (6.14 ppm p. 196, column 2, paragraph 1 and Table 1), which falls in the instantly claimed range of about 5 mg/L to about 500 mg/L.
Furthermore, Zhang teaches that solvent extraction and selective precipitation, including the method of WVU, are appropriate techniques to purify leachates such as the one described by Zhang (REEs are dissolved from the solid material due to the exposure to the natural leachate, which presents the opportunity for rare earth recovery using hydrometallurgical techniques such as selective precipitation and solvent extraction; p. 190, column 1, paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the feedstock of Zhang in the method of WVU. One of ordinary skill would have been motivated to do so because Zhang teaches that the method of WVU can be used for recovery of rare earth elements.
Regarding claim 35, WVU teaches the method of claim 27, but does not teach the feedstock material comprising thorium and uranium in an aggregate concentration of less than about 1 mg/L.
However, Zhang teaches a rare earth element oxide feedstock material comprising uranium at 0.2 mg/L (0.2 ppm; Table 5) and thorium at 0.5 mg/L (0.5 ppm; p. 192, column 2, paragraph 3), which corresponds to an aggregate concentration of 0.7 mg/L, meeting the claim limitation of less than about 1 mg/L.
Furthermore, Zhang teaches that solvent extraction and selective precipitation, including the method of WVU, are appropriate techniques to purify leachates such as the one described by Zhang (REEs are dissolved from the solid material due to the exposure to the natural leachate, which presents the opportunity for rare earth recovery using hydrometallurgical techniques such as selective precipitation and solvent extraction; p. 190, column 1, paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the feedstock of Zhang in the method of WVU. One of ordinary skill would have been motivated to do so because Zhang teaches that the method of WVU can be used for recovery of rare earth elements.
Regarding claim 37, WVU teaches the method of claim 27, but is silent with respect to the pH of the pregnant leach solution.
However, Zhang teaches the recovery of a rare earth element feedstock from a pregnant leach solution (natural leachate; Section 2) and that this pregnant leach solution has a pH of 2.70 (a natural leachate …with a pH value of 2.70; abstract), which falls in the instantly claimed pH range of from about 2.0 to about 4.0.
Furthermore, Zhang teaches that solvent extraction and selective precipitation, including the method of WVU, are appropriate techniques to purify leachates such as the one described by Zhang (REEs are dissolved from the solid material due to the exposure to the natural leachate, which presents the opportunity for rare earth recovery using hydrometallurgical techniques such as selective precipitation and solvent extraction; p. 190, column 1, paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use in the method of WVU a pregnant leach solution with a pH of 2.70, which falls in the instantly claimed range. One of ordinary skill would have been motivated to do so because Zhang teaches a leachate with this pH and that the method of WVU can be used to recover rare earth elements.
Regarding claim 38, WVU teaches the method of claim 27, but is silent with respect to the pH of the pregnant leach solution.
However, Zhang teaches the recovery of a rare earth element feedstock from a pregnant leach solution (natural leachate; Section 2). This pregnant leach solution has an initial pH of 2.70 (abstract), but Zhang also teaches that the pH of the leachate can be adjusted upward to selectively precipitate certain impurities (p. 191, column 1, paragraph 2; p. 192, column 2, paragraph 4; and Table 4). Zhang further teaches that the major impurities of aluminum and iron are removed by pH 4.5 (iron and aluminum, which were removed in narrow pH ranges of 2.0 to 3.0 and 3.5 to 4.5, respectively; p. 195, column 1, paragraph 1; Fig. 9(a)) while rare earth elements are maintained until higher pH (the removal of lanthanum [a model REE] increased gradually as the solution pH value was elevated; p. 195, column 1, paragraph 1; Fig. 9(b).
Furthermore, Zhang teaches that solvent extraction and selective precipitation, including the method of WVU, are appropriate techniques to purify leachates such as the one described by Zhang (REEs are dissolved from the solid material due to the exposure to the natural leachate, which presents the opportunity for rare earth recovery using hydrometallurgical techniques such as selective precipitation and solvent extraction; p. 190, column 1, paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use in the method of WVU a pregnant leach solution with a pH of 4.5, which falls in the instantly claimed range of from about 4 to about 4.5. One of ordinary skill would have been motivated to do so because Zhang teaches that raising the pH of a natural leachate to this pH removes most iron and aluminum impurities while maintaining desirable rare earths and because Zhang teaches that the method of WVU can be used to recover rare earth elements.
Regarding claim 41, WVU teaches the method of claim 27, but does not teach a method of preparing a pre-concentrate.
However, Zhang teaches a method of preparing a hydraulic pre-concentrate comprising (a) contacting a raw material with a first base (the solution pH [of the natural leachate] was gradually increased by adding 2 M sodium hydroxide solution; p. 191, column 1, paragraph 2) in an amount sufficient to adjust the pH to 4.85 (Section 3.2 and Table 2 teach adjusting the pH of a natural leachate to 4.85 leaves most REEs in solution), thereby forming a mixture comprising a first aqueous phase and a first solid concentrate (bulk precipitate was generated due to the pH increase; p. 191, column 1, paragraph 2); (b) separating the first aqueous phase from the first solid concentrate (bulk precipitate was generated due to the pH increase which was recovered by filtration; p. 191, column 1, paragraph 2); (c) contacting the first aqueous phase with a second base (filtrate was subjected to further pH incremental increases’ p. 191, column 1, paragraph 2) in an amount sufficient to adjust the pH to a value of 8.55 (Section 3.2 and Tables 2 and 3 teach adjusting the pH of a natural leachate to 8.55 precipitates most REEs in solution), which falls in the claimed range of about 7.0 to about 9.0, thereby forming a mixture comprising a second aqueous phase and a hydraulic pre-concentrate (bulk precipitate was generated due to the pH increase; p. 191, column 1, paragraph 2); (d) removing the second aqueous phase and collecting the hydraulic pre- concentrate (bulk precipitate was generated due to the pH increase which was recovered by filtration; P8 and P9 are considered the hydraulic preconcentrate; bulk precipitate was generated due to the pH increase; p. 191, column 1, paragraph 2); wherein the raw material comprises rare earth elements (the natural leachate comprises raw earth elements; Table 1); and wherein the hydraulic pre-concentrate is enriched in rare earth elements and critical minerals (leaching and staged precipitation process enriched both the critical and heavy REE fractions; abstract; see also Tables 2 and 3 which shows that rare earth elements and critical elements are enriched in P8 and P9).
Furthermore, Zhang teaches that the precipitate fractions enriched in REEs (P8 and P9) require further upgrading to be commercially marketable (p. 196, column 1, paragraph 1) and that the method of WVU can be used to recover rare earth elements (p. 190, column 1, paragraph 3).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of WVU to include the method of the Zhang for preparing a hydraulic preconcentrate. One of ordinary skill in the art would have been motivated to do so because Zhang teaches that further purification of the hydraulic pre-concentrates are necessary and also that solvent extraction including the method of WVU are appropriate techniques for recovery of rare earth metals. It would therefore have been obvious to subject the hydraulic preconcentrate prepared by Zhang to the method of WVU for further purification, as taught appropriate by Zhang.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over by WVU (“Recovery of Rare Earth Elements (REEs) from Coal Mine Drainage,” 2016 NETL Crosscutting Technology Research Review Meeting, April 2016), as applied to claim 27 above, and further in view of Brewer (US 2017/0275732 A1).
Regarding claim 30, WVU teaches the method of claim 27, but does not teach the method further comprising a step of reducing the rare earth element oxide.
However, Brewer also teaches a method for extracting and separating rare earth elements (abstract) comprised of leaching, selective removal of ions from the leach solution and precipitating rare earth oxalates ([0020]), analogous to the method disclosed by WVU. Brewer also teaches the further step of separating rare earth elements from an aqueous solution by means of an electrowinning process wherein the rare elements are plated out as metals ([0037]), which represents a reduction from the oxide. Brewer also teaches that such a process, when repeated, produces a 99.9% pure rare earth element ([0039]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of WVU to include an step of reducing the rare earth element oxide to a reduced rare earth element oxide, wherein the reduction is carried out using an electrowinning process, as taught by Brewer. One of ordinary skill would have been motivated to do so because Brewer teaches that this additional step can be used to produce very pure rare earth elements.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over by WVU (“Recovery of Rare Earth Elements (REEs) from Coal Mine Drainage,” 2016 NETL Crosscutting Technology Research Review Meeting, April 2016), as applied to claim 27 above, and further in view of Zhang et al. (International Journal of Coal Geology 195 (2018) 189-199) and Sugita et al. (US 2016/0251739 A1).
Regarding claim 42, WVU teaches the method of claim 27, but does not teach the pregnant leach solution being prepared by a method comprising the steps recited in the instant claim.
However, Zhang teaches a method of preparing a pregnant leach solution comprising (a) contacting a raw material containing rare earth elements (REEs) with a first base to form waste solids and an aqueous phase and discarding the waste solids; (the solution pH [of the natural leachate] was gradually increased by adding 2 M sodium hydroxide solution; p. 191, column 1, paragraph 2 (b) contacting the aqueous phase with a second base to form an REE-enriched preconcentrate and an effluent and discharging the effluent (bulk precipitate was generated due to the pH increase which was recovered by filtration; P8 and P9 are considered the preconcentrate; p. 191, column 1, paragraph 2); (c) contacting the REE-enriched preconcentrate with an acid to form an acidic preconcentrate (Precipitate material identified as P8 and P9 in Table 3 were mixed together and re-dissolved using 10 M HNO3; p. 196, column 1, paragraph 1); (d) filtering the acidic preconcentrate to form an acidic filtrate (indissoluble material was removed using a 0.45 μm pore size filter paper; ; p. 196, column 1, paragraph 1). Zhang also teaches this solution being enriched in REEs (Table 7 vs. Table 1) and essentially free of solids (indissoluble material was removed using a 0.45 μm pore size filter paper; ; p. 196, column 1, paragraph 1).
Zhang does not teach contacting the acidic filtrate with a third base and filtering to form a pregnant leach solution.
However, Sugita also teaches a method of recovering rare-earth elements (title) and further teaches that the pH of a leachate or pretreated leachate to be brought into contact with an extraction treatment liquid in an extraction step needs to be set to 1.0 or more and 1.7 or less and is recommended to be preferably 1.2 or more and 1.6 or less ([0035]). Sugita also teaches that filtering of the leachate prevents a third phase in the extraction step ([0039]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of use the method of Zhang for preparing a pregnant leach solution and to use this solution in the method of WVU. One of ordinary skill in the art would have been motivated to do so because Zhang teaches that further purification of the hydraulic pre-concentrates precursor to the pregnant leach solution is necessary and also that solvent extraction including the method of WVU are appropriate techniques for recovery of rare earth metals. It would therefore have been obvious to subject the pregnant leach prepared by Zhang to the method of WVU for further purification, as taught appropriate by Zhang.
It would have also been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to further modify the method of WVU to include contacting the acidic filtrate obtained by Zhang with a third base and filtering to form the pregnant leach solution, as taught by Sugita. One of ordinary skill in the art would have been motivated to do so because Sugita teaches that the pH of the leach solution affects the effectiveness of the solvent extractions, such as those used in the method of WVU, and that pHs in the range of 1.2-1.6 are preferable. Because Zhang teaches using 10 M HNO3 to prepare the pregnant leach solution, it would be necessary to add a base to bring the pH into the desired range. One of ordinary skill would have been additionally motivated to filter the pregnant leach solution to avoid formation of a third phase in the extraction steps, as taught by Sugita.
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 27 and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 10,954,582 B2 in view of Belova (Theor. Found. Chem. Eng., 2017, 51(4), 599–609).
Regarding claims 27 and 42, claim 19 of the ‘582 patent teaches a method of producing a rare earth resource comprising at least 50% REE with all the limitations of claim 27 and claim 42, with the exception of isolating a rare earth element oxide material from the one or more solvent extraction steps.
However, Belova teaches that rare earth element oxides can be isolated following purification by solvent extraction (Fig. 2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to isolate the rare earth element oxide from the solvent extraction step. One of ordinary skill would have been motivated to do so by the desire to actually possess the rare earth element oxide they worked to purify.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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