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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 14 January 2026 has been entered.
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 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over CN 105039691 A to Yuan et al. (Yuan) in view of WO 2016/130675 A1 to Tyagi et al. (Tyagi).
As to claim 1, Yuan teaches a method of recovery near pure lead from an impure metal comprising a target metal, the method comprising combining the impure metal with an electrolyte, for example sodium hydroxide, to form a slurry, the slurry comprising a mixture of the impure metal material and the electrolyte such that the electrolyte does not dissolve the target metal in the impure metal material before performing solid-sate electrolysis (i.e. the metal stays in a slurry), performing solid state electrolysis on the slurry to form target metal deposits, sponge lead, and mechanically separating the target metal from substantially all of the electrolyte and at least some of the residual components by washing and compacting (Paragraphs 0012, 0014, 0017, 0020). However, Yuan fails to teach that the target metal deposits are melting until the target metal is near pure without smelting, instead teaching the use of smelting (Paragraph 0020).
However, Tyagi also discusses the production of lead ingots and teaches that smelting is hazers, polluting and energy intensive (Paragraph 0003) and teaches that instead of smelting compacted spongy lead can be melted recovering any remaining electrolyte as dross and converted into high purity ingots (Paragraph 0045). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the method of Yuan with the step of melting the target metal deposits and drawings off dross such that the remaining melted target metal is near-pure without smelting in order to avoid the hazardous, polluting and energy intensive smelting step as taught by Tyagi.
As to claim 2, the combination of Yuan and Tyagi teaches the method of claim 1. Yuan further teaches that the method comprises adding at least one supplement chemical, activator, to the slurry prior to performing the slid-state electrolysis (Paragraphs 0012 and 0017).
As to claim 3, the combination of Yuan and Tyagi teaches the method of claim 2. Tyagi further teaches that the dross is mechanically separated, tapped, dissolved and sent through resins, to separate the dross into component materials for additional processing (Paragraphs 0045-0047).
As to claims 4, 5 and 6, the combination of Yuan and Tyagi teaches the method of claim 3. However, Yuan fails to teach that the impure metal material comprises more than one form, instead teaching merely lead oxide (Paragraph 0043). However, Tyagi also teaches the electrolytic generation of high purity lead from waste sources and teaches that a known waste source is used batteries and that this source would comprise all of lead monoxide, lead dioxide and free lead (Paragraph 0026). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the method of Yuan to the battery material of Tyagi as a known source of lead in need of purification, and thus a lead source when the lead formed during electrolysis is drawn from at least three impure forms, lead monoxide, lead dioxide, lead sulfate and free lead.
As to claim 21, Yuan teaches a method of recovery near pure lead from an impure metal comprising a target metal, the method comprising combining the impure metal with an electrolyte, for example sodium hydroxide, to form a slurry, the slurry comprising a mixture of the impure metal material and the electrolyte such that the electrolyte does not dissolve the target metal in the impure metal material before performing solid-sate electrolysis (i.e. the metal stays in a slurry), performing solid state electrolysis on the slurry to form target metal deposits, sponge lead, and mechanically separating the target metal from substantially all of the electrolyte and at least some of the residual components by washing and compacting (Paragraphs 0012, 0014, 0017, 0020).
However, Yuan fails to further teaches that the method comprises desulfurizing the impure metal, nor any specific need for desulfurization. However, Tyagi also discusses the electrolytic recovery of high purity lead and teaches that a known waste source is used batteries and that this source comprises all of lead monoxide, lead dioxide, lead sulfate and free lead (Paragraph 0026). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the method of Yuan to the battery material of Tyagi as a known source of lead in need of purification, and thus a lead source when the lead is present as lead monoxide, lead dioxide, lead sulfate and free lead. Tyagi teaches that the lead monoxide, lead dioxide and free lead are electrolytically recovered and teaches that the lead sulfate should be transformed prior to electrolysis via desulfurization (Paragraphs 0035-0038). Therefore, it would further have been obvious to one of ordinary skill in the art at the time of filing add a desulfurization step prior to electrolysis to the method in order to ensure recovery form the lead sulfate form of the lead as taught by Tyagi.
As to claim 22, the combination of Yuan and Tyagi teaches the method of claim 21. Yuan further teaches that the method comprises adding at least one supplement chemical, activator, to the slurry prior to performing the slid-state electrolysis (Paragraphs 0012 and 0017).
As to claims 23, 24 and 25, the combination of Yuan and Tyagi teaches the method of claim 22. As discussed above, Tyagi teaches a lead source when the lead formed during electrolysis is drawn from at least three impure forms, lead monoxide, lead dioxide, lead sulfate and free lead.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Yuan in view of Tyagi and further in view of US 2019/0301031 A1 to Clarke et al. (Clarke).
As to claim 29, Yuan teaches a method of recovery near pure lead from an impure metal comprising a target metal, the method comprising combining the impure metal with an electrolyte, for example sodium hydroxide, to form a slurry, the slurry comprising a mixture of the impure metal material and the electrolyte such that the electrolyte does not dissolve the target metal in the impure metal material before performing solid-sate electrolysis (i.e. the metal stays in a slurry), performing solid state electrolysis on the slurry to form target metal deposits, sponge lead, and mechanically separating the target metal from substantially all of the electrolyte and at least some of the residual components by washing and compacting (Paragraphs 0012, 0014, 0017, 0020).
However, Yuan fails to teach that the impure metal material comprises more than one form, instead teaching merely lead oxide (Paragraph 0043). However, Tyagi also discusses the electrolytic recovery of high purity lead and teaches that a known waste source is used batteries and that this source comprises all of lead monoxide, lead dioxide, lead sulfate and free lead (Paragraph 0026). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to apply the method of Yuan to the battery material of Tyagi as a known source of lead in need of purification, and thus a lead source when the lead is present as lead monoxide, lead dioxide, lead sulfate and free lead. Tyagi teaches that the lead monoxide, lead dioxide and free lead are electrolytically recovered and teaches that the lead sulfate should be transformed prior to electrolysis via desulfurization (Paragraphs 0035-0038). Therefore, it would further have been obvious to one of ordinary skill in the art at the time of filing add a desulfurization step prior to electrolysis to the method in order to ensure recovery form the lead sulfate form of the lead as taught by Tyagi.
However, the combination fails to further teaches that the third impure form of metal comprises lead hydroxide. However, Clarke also discusses the desulfurization of lead acid battery components by contacting lead sulfate with sodium hydroxide to form sodium sulfate and a lead material (as in Tyagi) and teaches that this reaction forms lead hydroxide (Paragraph 0011). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing that the method of Tyagi would, at least in part, form lead hydroxide as a third impure form of the lead as taught by Clarke.
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 1-10 and 21-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/862,162 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21, 22 and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/232,853 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21, 22, 23, 24 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/142,567 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21, 22 and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/142,547 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21, 22 and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/142,511 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21, 22 and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/142,534 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 7-10, 26-28 and 30 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims and if the Double Patenting rejections were overcome.
The following is a statement of reasons for the indication of allowable subject matter: The primary reason for the indication of allowable subject matter is the inclusion of the limitations, in a slurry electrolytic process with three impure forms of the target metal, the inclusion of three separate supplemental chemicals that enable solid state electrolysis of the respective impure forms.
Response to Arguments
Applicant’s arguments, filed 14 January 2026, with respect to the claims as newly amended have been fully considered and are persuasive. The rejections of the Office Action of 14 August 2025 have been withdrawn.
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794