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
In response to the amendment received on 10/03/2025:
claims 1-15 are currently pending;
claims 7-15 are withdrawn;
the 112(b) rejection to claim 4 is withdrawn in light of the amendments to the claim. New 112(b) rejections are outlined below; and
all prior art grounds of rejection are withdrawn in light of the narrowing amendments to the complexing agent and diaminotetracarboxylic acid in independent claim 1; however, new grounds of rejection are presented based on the same references as set forth herein.
Claim Rejections - 35 USC § 112
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.
Claims 1-6 are 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 1 lines 4-5 recite “an organic acid… a diaminotetracarboxylic acid”. The recitation is indefinite because “the boundaries of the protected subject matter are not clearly delineated and the scope is unclear… for example, a genus claim that could be interpreted in such a way that it is not clear which species are covered would be indefinite (e.g., because there is more than one reasonable interpretation of what species are included in the claim)” (see MPEP 2173.04). In this instance, it is not clear if the protected subject matter is “an organic acid” or “a diaminotetracarboxylic acid” because “diaminotetracarboxylic acid” is a specie of the genus “organic acid” as evidenced by Williams (Organic Acid Review) (“Williams” hereinafter) (see Williams at page 1 paragraph 1 evidencing the most common organic acids are carboxylic acids).
Examiner will treat the limitation as written.
Examiner suggests amending the claim to either: include the limitations of claim 2 in claim 1, or ii) some other clarifying amendment so as to remove the ambiguity as set forth above.
Claims 2-6 are rejected due to their dependency on claim 1.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Mujicic et al. (US 2016/0298209 A1) (“Mujicic” hereinafter).
Regarding claim 1, Mujicic teaches a method of preparation of an excavation material (see Mujicic at [0030] teaching disclosed are methods of improving leaching efficiency form metal-bearing material in extractive metallurgy processes… the methods include treating the metal-bearing material (e.g., an ore material) with a surfactant composition… the metal-bearing material may be treated with the surfactant composition at any suitable point in an extraction process, preferably before and/or during treatment with a leaching composition, see Mujicic at [0031] teaching in certain embodiments, the methods include treating a raw ore material with a surfactant composition… and leaching one or more selected metals from the comminuted, treated ore material). Additionally, MPEP states that the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results” (see MPEP § 2144.04.IV.C). The method as taught by Mujicic is taken to meet the claimed method of preparation of an excavation material because there is necessarily a preparation of excavation method in the treatment method of the ore material, and the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. The metal-bearing material or ore material is taken to meet the claimed excavation material, comprising the following step:
a) inerting the excavation material in order to obtain an inerted material; step a) being carried out by addition… of a diaminotetracarboxylic acid (see 112 rejection, see Mujicic at [0033] teaching Fig. 1 is a flow chart depicting an exemplary extraction process and optional points of addition of surfactant composition in the exemplary process… a surfactant composition may be delivered to an ore material prior to and/or during an in-situ leaching process (addition point F), see Mujicic at [0056]-[0057] teaching suitable additives that may be utilized in the leaching composition include, but are not limited to… a chelating agent… a chelating agent may be utilized to a sequester a desired metal for metal recovery… examples of chelating or sequestering agents which may be used include, but are not limited to… ethylenediaminetetraacetic acid). Ethylenediaminetetraacetic acid is taken to meet the claimed limitations based on the specification at [0053] disclosing according to a second specific embodiment, the inerting step a) is carried out with EDTA, see specification at [0047] disclosing ethylenediaminetetraacetic acid (EDTA)). Additionally, ethylenediaminetetraacetic acid is expected to be capable of the claimed step a) inerting the excavation material in order to obtain an inerted material,
the diaminotetracarboxylic acid is added to the excavated material so that the ratio by weight of the diaminotetracarboxylic acid to the excavated material is between 0.01 mg/kg and 20 mg/kg (see Mujicic at [0057] teaching the amount of a chelating agent added may vary depending on, for example, compositional makeup of the metal-bearing material… a chelating agent may be added in the amount of from about 0.04 to about 2 pounds (or about 18,143.69 to about 907,185 mg) of chelating agent per ton (or 907.185 kg) of metal-bearing material (e.g., ore). The ratio of the chelating agent (or diaminotetracarboxylic acid) to metal-bearing material (or excavated material) is 20 mg/kg to 1000 mg/kg (or (18,143.69 mg to 907,185 mg) ÷ 907.185 kg) (see MPEP 2144.05(I)).
Alternatively, Mujicic teaches a) inerting the excavation material in order to obtain an inerted material; step a) being carried out by addition… of a complexing agent… the complexing agent being chosen from… a cationic surface-active agent (see Mujicic at [0033] teaching Fig. 1 is a flow chart depicting an exemplary extraction process and optional points of addition of surfactant composition in the exemplary process… a surfactant composition may be delivered to a raw ore material (addition point A), see Mujicic at [0041] teaching the surfactant compositions include at least one of… a quaternary ammonium compound). Quaternary ammonium compound is taken to meet the claimed limitations based on the specification at [0043] disclosing the cationic surface-active agent can be chosen from… quaternary ammoniums. Additionally, quaternary ammonium is expected to be capable of the claimed step a) inerting the excavation material in order to obtain an inerted material,
wherein the complexing agent is added to the excavated material so that the ratio by weight of the complexing agent to the excavated material is between 0.01 mg/kg and 20 mg/kg (see Mujicic at [0053] teaching the surfactant composition may be dosed to the metal-bearing material in an amount of from about 1 part per million (ppm) to about 10,000 ppm… referring to the dosage of the surfactant composition, the term “part(s) per million” (i.e., “ppm”) refers to grams of surfactant per metric ton of metal bearing material (e.g., ore) treated). The ratio of the surfactant (or complexing agent) to metal-bearing material (or excavated material) is 1 mg/kg to 1000 mg/kg (or 1 g/metric ton to 1000 g/metric ton) (see MPEP 2144.05(I)).
Regarding claims 2 and 4, Mujicic teaches the limitations as applied to claim 1 above, and Mujicic further teaches the limitations as recited by claims 2 and 4 (see claim 1 rejection, wherein the claimed “diaminotetracarboxylic acid”; alternatively, “complexing agent… the complexing agent being chosen from… a cationic surface-active agent) are met by Mujicic (see MPEP 2111.04.II)).
Regarding claim 3, Mujicic teaches the limitations as applied to claim 1 above, and Mujicic further teaches in which the diaminotetracarboxylic acid from ethylenediaminetetraacetic acid (EDTA) (see Mujicic at [0057] teaching examples of chelating or sequestering agents which may be used include, but are not limited to… ethylenediaminetetraacetic acid).
Regarding claim 5, Mujicic teaches the limitations as applied to claim 1 above, and Mujicic further teaches in which the cationic surface-active agent is chosen from… quaternary ammoniums (see Mujicic at [0041] teaching the surfactant compositions include at least one of… a quaternary ammonium compound).
Regarding claim 6, Mujicic teaches the limitations as applied to claim 1 above, and Mujicic further teaches in which the excavation material is to be analysed and step a) is carried out on a sample of the excavation material in order to obtain an inerted material sample (see Mujicic at [0088] teaching a gold containing ore was treated with… a surfactant composition… the amount of gold extracted and measured… surfactant blend product was added to gold containing ore… and evaluated using a standard bottle roll test). Additionally, MPEP states that the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results” (see MPEP § 2144.04.IV.C). The method as taught by Mujicic is taken to meet the claimed limitations because the ore sample is measured/evaluated/analysed, the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, and the method as taught by Mujicic is expected to be capable of obtaining an inerted material in the absence of new or unexpected results.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Mujicic as applied to claim 1 above, and further in view of Wilson et al. (US 2018/0036743 A1) (“Wilson” hereinafter); as evidenced by Biesterfeld (Citric Acid) (“Biesterfeld” hereinafter) with respect to claim 2 only.
Examiner notes that the rejections below are alternatives to the rejection for claims 2 and 4 outlined above.
Regarding claim 2, Mujicic teaches the limitations as applied to claim 1 above, but Mujicic does not explicitly teach an organic acid, in which the organic acid is chosen from benzoic acid, ethanoic acid, methanoic acid, 3-carboxy-3- hydroxypentanedioic acid, 2-hydroxypropanoic acid, propanoic acid, butanoic acid, pentanoic acid, hexanoic acid, octanoic acid, heptanoic acid, nonanoic acid, decanoic acid, undecanoic acid, dodecanoic acid, tridecanoic acid, tetradecanoic acid, pentadecanoic acid, hexadecanoic acid, heptadecanoic acid, octadecanoic acid, nonadecanoic acid, eicosanoic acid, docosanoic acid, 2-hydroxybenzoic acid, 2-mercaptopropanoic acid and their mixtures.
Like Mujicic, Wilson teaches a method of treating an ore material comprising surfactants and leaching/chelating materials (see Wilson at [0071] teaching according to exemplary embodiments, a flotation process may use the chelating agents, collecting agents… described herein… flotation is a commonly used process for separating or concentrating desirable minerals from ore, see Wilson at [0048] teaching in certain embodiments, the collecting agents are surfactants).
Wilson also teaches in exemplary embodiments, the one or more chelating agents are selected from neutral sequestering agents… in exemplary embodiments, the one or more chelating agents are selected from the group consisting of… ethylenediaminetetraacetic acid (EDTA)… citric acid (see Wilson at [0041]). Citric acid is taken to meet the claimed an organic acid, in which the organic acid is chosen from… 3-carboxy-3-hydroxypentanedioic acid.
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that citric acid is a suitable chelating agent, and it is within the ability of one skilled in the art, with the benefit of Mujicic and Wilson, to select a suitable chelating agent for a method of treating an ore material comprising surfactants and leaching/chelating materials.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to select citric acid as a chelating agent as taught by Wilson in the method of treating an ore material comprising surfactants and leaching/chelating materials as taught by Mujicic because citric acid is a suitable chelating agent.
Regarding claim 4, Mujicic teaches the limitations as applied to claim 1 above, but Mujicic does not explicitly teach the complexing agent being chosen from a sugar alcohol, in which the sugar alcohol is chosen from alditol, glycerol, functionalized glucitol and their mixtures (see claim 2 rejection based on Wilson as it is incorporated herein).
Wilson also teaches in some exemplary embodiments; the one or more depressants comprise depressants that are useful in mineral flotation… the exemplary depressants may be used to change the flotation characteristics… to improve the separation process (see Wilson at [0053]). Wilson also further teaches in exemplary embodiments, the one or more depressants comprises at least one depressant having one or more types of polysaccharides comprising one or more types of pentosan units… exemplary pentosan units are monosaccharides having five carbon atoms, including, for example, xylose, ribose, arabinose (see Wilson at [0056]).
Additionally, MPEP states that “a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities” (see MPEP § 2144.09.I). In this instance, the depressant having one or more types of polysaccharides comprising one or more types of pentosan units as taught by Wilson is taken to meet the claimed “sugar alcohol is chosen from… alditol” because the polysaccharides comprising one or more types of pentosan units contains polyols, which have very close structural similarities to alditol, which also contains polyols, and thus similar utilities in a method of treating an ore material comprising surfactants and leaching/chelating materials.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add depressant having one or more types of polysaccharides comprising one or more types of pentosan units as taught by Wilson in a method of treating an ore material comprising surfactants and leaching/chelating materials as taught by Mujicic so as to improve the separation process, and because the polysaccharides comprising one or more types of pentosan units contains polyols, which have very close structural similarities to alditol, which also contains polyols, and thus similar utilities.
Response to Arguments
Applicant’s amendments that narrows the claim limitations have obviated the previous rejection. However, upon further consideration, a new ground of rejection is set forth using the same reference Mujicic. Thus, relevant arguments are addressed below.
Applicant discusses that the principal aim of the present application significantly differs from Mujicic because the present application is directed to inerting of excavation materials to ensure that the concentration by weight of inorganic elements in a leachate accurately reflects the true concentration in the original material, while Mujicic is focused on improving the efficiency of metal extraction from metal-bearing materials… with no concern for either matching leachate concentrations to the original content or for environmental inerting (see Applicant’s arguments at page 7 paragraphs 3-4).
Examiner acknowledges the arguments and respectfully notes that the “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results” (see MPEP § 2144.04.IV.C). The method as taught by Mujicic is taken to meet the claimed method of preparation of an excavation material recited in independent claim 1 because there is necessarily a preparation of excavation method in the treatment method of the ore material, and the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results… the metal-bearing material or ore material is taken to meet the claimed excavation material (see previous office action and above for details). As such, the rejection of independent claim 1 is maintained.
Applicant discusses that independent claim 1 requires the ratio by weight of complexing agent or diaminotetracarboxylic acid to the excavation material… that Mujicic does not teach (see Applicant’s arguments at page 7 paragraph 5 to page 9 paragraph 3).
Examiner acknowledges the arguments and respectfully notes that Mujicic does teach the claimed ratio by weight of complexing agent or diaminotetracarboxylic acid to the excavation material (see claim 1 rejection above for details). As such, the rejection of independent claim 1 is maintained.
Applicant discusses that the rejection of claims 2 and 4 over Mujicic in view of Wilson is traversed because the documents do not remedy Mujicic (see Applicant’s arguments at page 9 paragraphs 4-5).
Examiner respectfully notes that the rejection of independent claim 1 is maintained. As such, the rejection of dependent claims 2 and 4 are also maintained.
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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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731