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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/09/2025 has been entered.
Claim Interpretation – 35 USC §112(f)
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a releasing mechanism arranged to provide a force to disrupt the chemical bond between the mineral particles and the surface” in claim 5.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification, listed as a stirrer, a sonic source, a heat source, and/or a light beam (Page 5, Lines 6-7) as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, and 5-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Rothman et al (US Patent No. 20170232451 A1) hereinafter Rothman.
Regarding Claim 1, Rothman discloses a bead recovery processor (i.e., an apparatus comprising a body; Fig. 1, #50) with a flotation cell or column (i.e., a lower portion; Fig. 1, #54), a top part (i.e., upper portion; Fig. 1, #57), piping to receive enriched polymer bubbles or beads (i.e., a first input configured to receive loaded engineering media; Fig. 1, #56), suitable piping for providing reclaimed water (i.e., a second input configured to receive a releasing agent; Fig. 1, #64) back to the column where the column contains a release rich environment (Fig. 1, #54; Paragraph 0214), a reclaimed polymer bubble or bead outlet (i.e., a first output located on the upper portion configured to discharge recovered engineering media; Fig. 1, #52), and piping to provide concentrated minerals to a thickener (i.e., a second output located on the lower portion configured to discharge a concentrate; the concentrate comprises the mineral particles removed; Fig. 1, #58 Paragraphs 0213-0215). Rothman further teaches that the synthetic beads carrying mineral particles comprise a plurality of molecules attached to the surface, the molecules comprising a functional group having a chemical bond for attracting or attaching mineral particles to the molecules (i.e., for removing and recovering mineral particles from loaded engineering media in a mining operation; wherein the loaded engineered media comprise engineered media, each of the engineered media made of a synthetic material having a surface with a functionalized coating to attract and attach mineral particles to the surface; Paragraph 0045) and interrupting the chemical bond of the functional group so as to remove the mineral particles from the synthetic beads (i.e., the releasing agent is arranged to remove the mineral particles from the functionalized coating of the surface to provide the recovered engineering media; Paragraph 0045) where the step of interrupting is carried out in a surfactant solution (i.e., wherein the releasing agent comprises a surfactant; Paragraph 0041; Claim 27) which is carried out in water (i.e., wherein the releasing agent comprises a chemical solvent; Fig. 1). Rothman further discloses that a chemical method of releasing the valuable material can be added to the reclaimed water (i.e., the releasing agent being received in the second input; Fig. 8, #168, 170) in which a surface active agent (i.e., surfactant) is introduced which interferes with the adhesive bond between the particles and the surface (Paragraphs 0241-0242).
Regarding Claim 3, Rothman anticipates the apparatus of Claim 1. Rothman further discloses that the initial mixture for the first column is made up of water, valuable material, and unwanted material (Paragraph 0207) which then receives synthetic bubbles or beads that attach to the valuable material and form enriched synthetic bubbles or beads (Paragraph 0207) which then feed the bead recovery processor and maintain the aforementioned water (i.e., wherein the loaded engineering media are mixed with an aqueous solution in the body; Paragraph 0213).
Regarding Claim 5, Rothman anticipates the apparatus of Claim 1. Rothman further discloses that the releasing apparatus may include a stirrer configured to provide mechanical agitation so as to interrupt the chemical bond of the functional group (i.e., a releasing mechanism arranged to provide a force to disrupt the chemical bond between the mineral particles and the surface; Paragraph 0035).
Regarding Claim 6, Rothman anticipates the apparatus of Claim 5. Rothman further discloses that the releasing apparatus may include a stirrer configured to provide mechanical agitation so as to interrupt the chemical bond of the functional group (i.e., wherein the releasing mechanism is selected from a stirrer, a sonic source, a heat source, and a light beam; Paragraph 0035).
Regarding Claim 7, Rothman anticipates the apparatus of Claim 5. Rothman further discloses that the engineered collection media may include a coating configured with a hydrophobic chemical selected from a group consisting of polysiloxanates, poly(dimethylsiloxane) and fluoroalkylsilane (i.e., wherein the surface has a coating for providing the molecules, and the coating is made of a hydrophobic material selected from poly(dimethylsiloxane), polysiloxanates and fluoroalkylsilane; Paragraph 0034).
Regarding Claim 8, Rothman anticipates the apparatus of Claim 1. Rothman further discloses that the engineered collection media comprises a solid phase body (Paragraph 0038) that may comprise plastic, ceramic, carbon fiber or metal (i.e., wherein the synthetic material comprises a polymer-based material, silica-based material or ceramic-based material; Paragraph 0163).
Regarding Claim 9, Rothman anticipates the apparatus of Claim 1. Rothman further discloses that the synthetic beads are made from a low-density material so as to be buoyant when submerged in the mixture (i.e., wherein the engineered media comprise synthetic beads having the surface, and wherein the synthetic beads are made of a material having a density smaller than density of water; Paragraph 0085).
Regarding Claim 10, Rothman anticipates the apparatus of Claim 1. Rothman further discloses that the engineered collection media comprises a solid phase body (Paragraph 0038) where the solid-phase body is configured with a three-dimensional open-cell structure to provide a plurality of collection surfaces (Paragraph 0157) that may comprise polyurethane, polyester urethane, polyether urethane, reinforced urethanes, PVC coated PV, silicone, polychloroprene, polyisocyanurate, polystyrene, polyolefin, polyvinylchloride, epoxy, latex, fluoropolymer, polypropylene, phenolic, EPDM, and nitrile (i.e., wherein the surface of the engineered media comprises a three-dimensional open-cell structure, and the engineered media is made of a material selected from the group consisting of polyester urethanes, polyether urethanes, reinforced urethanes, composites like PVC coated PU, carbon fiber foams and hard plastics; Paragraph 0159).
Regarding Claim 11, Rothman anticipates the apparatus of Claim 5. Rothman further discloses a functionalized coated conveyor belt (i.e., wherein the engineered media comprise one or more moving conveyor belts; Fig. 18, #420; Paragraph 0167) which is configured to attach the valuable material in a first processor (Fig. 18, #402) and release the valuable material in a second processor (i.e., having the surface; Fig. 18, #404) by mechanical agitation such as a brush or stirring (i.e., and the releasing mechanism comprises a brush arranged to contact the surface to provide the force to disrupt the chemical bond; Paragraphs 0167-170).
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.
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Rothman in view of Lal et al (US Patent No. 7341985 B2) hereinafter Lal.
Regarding Claim 2, Rothman anticipates the apparatus of Claim 1. Rothman does not teach wherein the chemical solvent is selected from the group consisting of hexane, decamethylcyclopentasiloxane, isopropyl alcohol, methyl ethyl ketone, cyclohexane, tetrahydrofuran, i-nonyl alcohol, i-decyl alcohol, 2-butoxy ethanol and toluene, or a combination thereof; Col. 5, Lines 39-49) for the purpose of achieving low surface tension at low use levels and to affect foaming performance.
However, Lal teaches a surfactant composition (Abstract) that includes a solvent including isopropanol, ethanol, methanol, acetonitrile, ethylene glycol, propylene glycol, combinations of water and acetonitrile, combinations of water and methanol, combinations of water and isopropanol, combinations of water and ethanol, and mixtures thereof (; Col. 5, Lines 39-49) Lal further teaches that the second component of the surfactant may consist of nonvolatile organic materials (Col. 6, Lines 40-50) with an example rinse aid including isopropyl alcohol (Col. 9, Lines 1-25) and a hard surface cleaner with lower alcohols (i.e., wherein the chemical solvent is selected from the group consisting of isopropyl alcohol, i-nonyl alcohol, i-decyl alcohol, 2-butoxy ethanol, or a combination thereof; Col. 8, Lines 15-33) and that the second component benefits from the surface active properties of the primary surfactant (Col. 6, Lines 24-39) with the benefit of the whole composition being to achieve low surface tension at low use levels and to affect foaming performance (Col. 1, Lines 32-37).
Lal is analogous to the claimed invention because it pertains to a surfactant composition (Abstract) that has foaming characteristics that may be desirable in applications such as ore flotation and cleaning (Col. 1, Lines 41-49). It would have been obvious to one of ordinary skill in the art to modify the surfactant taught by Rothman with the surfactant composition containing the solvent taught by Lal because it would reduce surface tension at low levels of use and affect foaming performance.
Regarding Claim 4, Rothman anticipates the apparatus of Claim 1. Rothman does not teach wherein the surfactant comprises a nonionic surfactant in the aqueous solution, the nonionic surfactant selected from alkoxylated alcohols, Guerbet alcohols and their alkoxylates, glycol ethers, copolymers of polyethylene glycol and polypropylene glycol and acetylenic diols and their alkoxylates, and polyether modified-silicones.
However, Lal teaches a surfactant composition (Abstract) that includes a variety of surfactants including a nonionic surfactant of a alcohol alkoxylate (Col. 8, Table 5) and varieties of glycol ethers (i.e., wherein the surfactant comprises a nonionic surfactant in the aqueous solution, the nonionic surfactant selected from alkoxylated alcohols, Guerbet alcohols and their alkoxylates, glycol ethers, copolymers of polyethylene glycol and polypropylene glycol and acetylenic diols and their alkoxylates, and polyether modified-silicones; Col. 4, Lines 10-33) for the purpose of achieving low surface tension at low use levels and to affect foaming performance (Col. 1, Lines 32-37).
It would have been obvious to one of ordinary skill in the art to modify the surfactant taught by Rothman with the surfactant composition taught by Lal because it would reduce surface tension at low levels of use and affect foaming performance.
Response to Amendment
The amendment filed on 06/09/2025 has been entered.
In view of the amendment to the claims, the amendment of claim 1 has been acknowledged.
In view of the amendment to the claims, the claim objections have been withdrawn.
Response to Arguments
Applicant’s arguments filed on 06/09/2025 have been fully considered.
Applicant argues, regarding claim 1, that Rothman does not teach a releasing agent with both a chemical solvent and a surfactant (Arguments filed 06/09/2025, Page 9).
Applicant argues, regarding claim 2, that because claim 1 does not teach a solvent, the rationale to combine Lal with Rothman does not exist and the uses cited for the solvent and surfactant combination do not apply to mining, and thus is non-analogous art (Arguments filed 06/09/2025, Pages 10-11).
The Examiner respectfully disagrees.
Regarding Applicant’s arguments for claim 1, Rothman does teach a surfactant solution (Claim 27) and the rejection above has been modified for clarity. Furthermore, the original rejection includes water as a solvent which reads upon the limitation of a “releasing agent with comprising a chemical solvent and a surfactant” from the instant claim 1.
Regarding Applicant’s argument for claim 2, Rothman does teach a solvent and thus the rationale of a different solvent with the cited benefits as taught by Lal is a valid combination. Furthermore, the rejection of claim 2 has been adjusted to show that Lal teaches that a second component can include a solvent and has examples for compositions of surfactants and solvents that are used to rinse and remove particles from surfaces. Combining the teaching by Lal that these types of surfactants and solvents can be used for mining operations and the fact that the combinations clearly clean dirt and minerals from surfaces, it would be obvious to try to use such compositions to remove minerals from the surface of a loaded engineered media.
In response to applicant's argument that Lal et al (US Patent No. 7341985 B2) hereinafter Lal is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Lal pertains to surfactant compositions to reduce surface tension in water-based systems (Col. 1, Lines 5-10), of which the flotation of mineral ores is a water-based system, and teaches specifically that the compositions can be used for ore flotation and cleaning because of the foaming characteristics of surfactants (Col. 1, Lines 40-49).
Applicant’s arguments have been fully considered but are not persuasive. All other arguments have been indirectly addressed.
Conclusion
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/A.A.G./Examiner, Art Unit 1777
/VICKIE Y KIM/Supervisory Patent Examiner, Art Unit 1777