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 .
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.
Claims 1, 9, 11, 13-14, 18, 20, 22, and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Brewer (US 2017/0275732 A1) in view of JP 6017914 B2 (JP’914).
Regarding claim 1, Brewer teaches a method for extracting and separating rare earth elements (Brewer, Abstract), wherein the method comprises leaching a rare earth material including light and/or heavy rare earth elements (i.e., light or heavy rare earth) with a mineral acid, such as nitric acid or hydrochloric acid to form a leach solution. The leach mixture contains the leach solution which includes at least rare earth ions and a solid material, wherein the solid material is separated from the solution by adjusting the pH to about 1 to about 4, and then magnesium carbonate (i.e., the reagent comprises a carbonate salt) is added to the solution to titrate at a pH of 7 which generates a rare earth carbonate (Brewer, [0004]; [0009]; [0010]; [0011]), and wherein it is obvious that the treatment takes an amount of time, i.e., a first predetermined period of time (i.e., (a) treating a first solution having a predetermined pH and comprising a first quantity of one or more rare earth elements (REEs) with a reagent under conditions effective to form a salt of one or more rare earth elements, wherein the salt comprises carbonate of the one or more rare earth elements for a first predetermined period of time; wherein the one or more rare earth elements present in the first solution at the first stage comprises at least one or more of light rare earth elements (LREEs), at least one or more of heavy rare earth elements (HREEs), or a combination thereof; (b) adjusting the first predetermined pH of the first solution to reach a second predetermined pH, wherein the second predetermined pH is higher than the first predetermined pH (from about 1-4 to about 7)).
Brewer further teaches the titration generates rare earth carbonate concentrates which are precipitated as rare earth compounds (i.e., solid fraction comprising at least one of the one or more rare earth element salts) (Brewer, [0011]), it is clear that precipitation would take an amount of time, i.e., aging, and the result of the precipitation is a liquid fraction and solid fraction.
Further, Brewer teaches the rare earth elements are separated from the solution by means of an electrowinning process (Brewer, [0016]) (i.e., separating the first solid fraction from the first liquid fraction).
However, Brewer does not explicitly teach (a) repeating the steps for n time and wherein n is at least two stages, and (b) wherein: a first solution in step a) of each subsequent stage is substantially similar to a first liquid fraction formed in step d) of each preceding stage; wherein a first predetermined pH at step a) of each subsequent stage is higher than a first predetermined pH at step a) of each preceding stage; and wherein a second predetermined pH in step b) of each subsequent stage is higher than the first predetermined pH at step a) of the same stage.
With respect to the difference (a), JP’914 teaches a technique for separating rare earth elements from a composition containing a plurality of types of rare earth elements (JP’914, p. 1, Technical-Field). JP’914 further teaches the method comprises precipitating the rare earth elements as a carbonate (JP’914, p. 8, Paragraph 3). Further, JP’914 specifically teaches repeatedly performing the separation method (JP’914, p. 8, Paragraph 5) (i.e., at least two times).
As JP’914 expressly teaches, by repeatedly performing the separation method, the separation rate between the first group of rare earth elements and the second group of rare earth elements can be further improved (JP’914, p. 8, Paragraph 5).
JP’914 is analogous art as it is drawn to a method for separating rare earth elements from a composition including precipitating the rare earth elements as a carbonate (JP’914, p. 1, Technical-Field; p. 8, Paragraph 3).
In light of the motivation of repeating the separation process as disclosed by JP’914, it therefore would have been obvious to one of ordinary skill in the art to perform the separation method of Brewer repeatedly in order to improve the separation rate of the rare earth elements in the solution, and thereby arrive at the claimed invention.
Further, as repeating the process would include using the supernatant that is left behind after removing the rare earth element precipitates, the supernatant (i.e., first liquid fraction) would be used as the first solution in step a) and would therefore be the same solution (i.e., a first solution in step a) of each subsequent stage is substantially similar to a first liquid fraction formed in step d) of each preceding stage).
Additionally, as the pH increases throughout the process, the supernatant used as the first solution would have a higher pH than the first predetermined pH at step a) of each preceding stage. Further, as titration in the process of Brewer requires the pH to increase, the pH of step b) would be higher than the pH of step a) of the same stage.
Further, given that Brewer in view of JP’914 discloses the method that overlaps the presently claimed method, including using a carbonate, it therefore would be obvious to one of ordinary skill in the art, to use the magnesium carbonate, which is both disclosed by Brewer in view of JP’914 and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Further, Brewer in view of JP’914 teaches one or more rare earth compounds are precipitated (Brewer, [0011]), and wherein when there are more than one rare earth compounds, there would necessarily be more than one quantity of rare earth metals (i.e., a second quantity of the one or more rare earth elements). Further, it would be obvious to one of skill in the art to measure the amount of precipitate formed (i.e., measuring the second quantity of the one or more rare earth elements at the first stage and at each subsequent stage).
Further, one of ordinary skill in the art could define an amount of the precipitate in each stage to be a second quantity and wherein the total second quantity would be the sum of all of the second quantities measured at each stage. Further, as any amount of the precipitate may be defined as the second quantity in each stage, the total second quantity overlaps with the range of at least 70% of the first quantity of the one or more rare earth elements present in the first solution in the first stage.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 9, Brewer in view of JP’914 teaches the method of claim 1, wherein exemplary light rare earth elements include La, Ce, Pr, and Nd, and exemplary heavy rare earth elements include Tb, Dy, Ho, Er, Tm, Yb, Lu, and Y (Brewer, [0004]).
Regarding claim 11, Brewer in view of JP’914 teaches the method of claim 1, wherein the solution to be leached comprises ore or tailings (Brewer, [0009]) (i.e., industrial waste residue, mining and processing waste streams).
Regarding claim 13, Brewer in view of JP’914 teaches the method of claim 1, wherein the pH starts out at about 1 to about 4 (Brewer, [0011]), which falls within the claimed range; and the pH is raised to 7 for titration to generate the rare earth carbonate concentrate (Brewer, [0011]), which falls within the claimed range for the predetermined pH of step b).
Regarding claim 14, Brewer in view of JP’914 teaches the method of claim 1, wherein magnesium carbonate (i.e., a solid base) is added to the solution (Brewer, [0011]) (i.e., step b) of the first stage and each subsequent stage comprises adding a base, wherein the base comprises a solid).
Regarding claim 18, Brewer in view of JP’914 teaches the method of claim 1, wherein the amount of time to treat the leach mixture is not limited, but would necessarily be a time greater than zero, therefore, the treatment time (i.e., first predetermined time in step a) of the first stage and a first predetermined time in step a) of each subsequent stage is the same or different) would fall within or overlap with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 20, Brewer in view of JP’914 teaches the method of claim 1, but does not explicitly teach the second predetermined pH of the nth stage is from about 8 to about 14.
However, although there are no disclosures on the second predetermined pH being about 8 to about 14 at the nth stage as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the pH range, including over the amounts presently claimed, in order to precipitate the maximum amount of rare earth elements out of the solution, and thereby arrive at the claimed invention.
Regarding claim 22, Brewer in view of JP’914 teaches the method of claim 5, wherein the precipitate is formed at a pH of 7 (i.e., including both first and second quantities of the rare earth elements) (Brewer, [0011]), therefore the total second quantity of the one or more rare earth elements is collected at a stage having a second predetermined pH of 7, which falls within the claimed range.
Regarding claim 25, Brewer in view of JP’914 teaches the method of claim 5, wherein as the method of Brewer in view of JP’914 is substantially identical to the claimed method, it is clear that in the method of Brewer in view of JP’914 at least 70% of the total second quantity of the one or more rare earth elements is collected at a stage having a second predetermined pH at least 0.5 unit lower when compared to substantially identical reference method that does not comprise step a) of treating the first solution with the reagent.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 26, Brewer in view of JP’914 teaches the method of claim 1, wherein the solid material in the leach mixture is iron and is removed as a solid (Brewer, [0009]; [0010]) (i.e., wherein the first solid fraction in the first stage and the first solid fraction in each subsequent stage further comprises iron).
Response to Arguments
In response to applicant’s amendments, the previous claim objections are withdrawn from the record.
Applicant primarily argues:
“Brewer discloses a method for extracting and separating rare earth elements from a rare earth element-containing source. Brewer's method steps can be summarized as follows: a) providing ore; b) grinding; c) leaching with a mineral acid; d) separating solids from the leach solution; e) precipitating unwanted metal ions from the leach solution with MgO at pH of 1-4 (these unwanted metal ions are separated from the leach solution); f) then precipitating REE with oxalic acid or MgO; g) calcinating REE precipitate; h) converting them to anhydrous salts; i) dissolving anhydrous salts in aqueous solution, and then j) electrowinning to separate the REEs. In Brewer, once REEs are precipitated (step f), the leach solution is discarded.
Brewer neither repeats the REE precipitation step on that liquor, nor suggests reusing the remaining liquor as feed to subsequent precipitation stages, nor discloses any stage-to-stage pH design in which the first pH of a later stage is expressly higher than the first pH of an earlier stage. There is likewise no disclosure of within-stage pH pairing in which each stage's second predetermined pH is intentionally selected to be higher than its first predetermined pH to achieve a particular allocation of REE recovery across stages.
Applicant further asserts that Miyata fails to remedy this deficiency. Miyata is directed to a method of separating a rare earth element from REE oxides at a high separation rate. Importantly, Miyata is interested in separating heavy rare-earth elements (HREE) from light rare-earth elements (LREE). To achieve this goal, Miyata discloses the formation of REE chlorides through a first heat treatment step with ammonium chloride, followed by the selective formation of a first group of REE (LREEs) chlorides and a second group of REE (HREEs) acid chlorides through an acidification heat treatment step. In doing so, the first group of REE chlorides can be solubilized and selectively separated from the second group of REE acid chlorides. While, Miyata may repeat its sequence for the purpose of enhancing LREEs separation from HREEs, it does not disclose or suggest: (i) the claimed reuse of the liquid fraction from the immediately preceding stage as the first solution of the subsequent stage in the specific way recited; (ii) any requirement that the first predetermined pH of each subsequent stage be higher than the first predetermined pH of the preceding stage; or (iii) the particular within-stage relationship that the second predetermined pH in each stage is higher than that stage's first predetermined pH, tied to the claimed overall recovery results. Applicant again reiterates that Miyata's aim is to separate LREEs from HREEs, not to achieve bulk recovery of REEs from the waste liquid stream as claimed.”
Remarks, p. 11-12
The examiner respectfully traverses as follows:
Firstly, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Brewer does not expressly teach the claimed repetition of steps or the pH of each repeated step. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Brewer does not disclose the entire claimed invention. Rather, JP’914 is relied upon to teach claimed elements missing from Brewer. See items #9-12 above.
Secondly, while applicant argues that JP’914 does not remedy this deficiency because it is drawn to LREE separation from HREEs, it is the examiner’s position that as JP’914 teaches a separation method that includes extraction of rare-earth elements from a solvent using a similar method to Brewer, and repeats the separation method in order to improve the separation rate, it is clear that repeating the method of Brewer would increase the separation rate.
Further, repeating the process to increase the separation rate would necessarily include repeating the steps on the final liquid fraction, otherwise, no separation rate would improve as it would be on an entirely different starting liquid. Therefore, using the final liquid fraction would also mean starting at a higher pH because the final liquid fraction is at a higher pH.
Applicant further argues:
“Further, Applicant notes that there is also no reason or motivation to combine Brewer with Miyata. The skilled person would readily understand that Brewer's and Miyata's disclosures are conceptually different. The Office clearly understand that because it tries to fill the gaps of Brewer's disclosure by arguing that if Brewer's method were "repeated," the supernatant left after REE precipitation would "necessarily" be used as the first solution of the next stage and would "necessarily" have a higher starting pH than the previous stage's first solution, and that titration within each stage "necessarily" produces a second predetermined pH higher than the first predetermined pH. Applicant respectfully notes that these statements are conclusory and unsupported by the cited disclosures, and appear to improperly rely on inherence. Applicant respectfully submits that it is improper for the Office Action to make assumptions and, in turn, rejections that are premised on information a reference fails to disclose.
Neither Brewer nor Miyata describes reusing Brewer's post-precipitation liquor as feed to additional precipitation stages, nor do they require that such reuse occur without intermediate re-acidification or other conditioning. Even if one assumed, for the sake of argument, that some liquor could be reused, there is still no teaching to design the process so that each subsequent stage is deliberately started from a higher first predetermined pH than the preceding stage, and that each second predetermined pH is coordinated with that first predetermined pH as required by claim 1.
Applicant notes that inherency cannot be based on possibilities or conjecture; a fact must be inevitable from the prior art disclosure. (See MPEP 2112.IV). The Office fails to provide evidentiary support that Brewer alone, or in combination with Miyata, would render the claimed pH requirements inevitable.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court held that the motivation to combine references needs not be found expressly in the prior art itself but may be explained by the fact finder using common sense. However, the KSR Court wrote that it "can be important to identify a reason that would have prompted [person of ordinary skill in the art] to combine the elements in the way the claimed new invention does." Extending that decision, in Cutsforth, Inc. v. MotivePower, Inc., the Federal Circuit determined that the basis of such findings must be developed and explained, stating that "[broad], conclusory statements are not enough to satisfy the ... obligation to provide reasoned explanation for [a] decision." Additionally, in Arendi v. Apple, Inc., the Federal Circuit determined "that references to 'common sense'-whether to supply a motivation to combine or a missing limitation-cannot be used as a wholesale substitute for reasoned analysis and evidentiary support ..." Furthermore, In Re NuVasive, the Federal Circuit vacated an obviousness decision of the Patent Trial and Appeal Board for "[failing] to articulate a reason why the PHOSITA would have been motivated to modify" the prior art.
Here, the Office fails to provide this articulated reasoning, with any rational
underpinning, as to why the skilled person would have modified Brewer in view of Miyata, or why such a person would have arrived at the specific claimed pH requirements that appear in neither Brewer nor Miyata. While Brewer and Miyata, in some degree, are related generally to the separation and recovery of REEs, this fact alone only represents a "conclusory statement" that is "not enough to satisfy the ... obligation to provide reasoned explanation for [a] decision" to combine references. Miyata's solid-state, halide-based chemistry is fundamentally different from the aqueous, CO2-mediated process claimed in the present application. The skilled person would not have been motivated to look into Miyata to modify Brewer. The Office fails to provide any reasoning for why the skilled person, arguendo, would have combined these references, would also have conceived the repetitive steps of extraction and separation as claimed (including the specific pH structure and the reuse of the liquid phase obtained in each step).
Applicant notes that the Office's assertion of such steps is based entirely on improper hindsight reconstruction of Applicant's own disclosure. In other words, without Applicant's disclosure, there is no apparent reason to select this particular combination of method claims from among the many possible ways to "repeat" a precipitation step.”
Remarks, p. 12-13
The examiner respectfully traverses as follows:
Firstly, as stated in item #10 above, the motivation to combine Brewer with JP’914 is to improve the separation rate by repeating the separation method (JP’914, p. 8, Paragraph 5).
Secondly, in order to improve the separation rate by repeating the separation method, the supernatant would be used in order to remove more of the rare-earth metals. Further, as Brewer teaches the pH increases, the supernatant would have a higher pH than the starting solution, and therefore, when used as the starting solution, would have a higher pH than the previous iteration.
Further, while the applicant argues that there are no teachings of reuse without reacidification or other conditioning, there are also no teachings against reuse without these conditioning measures. Therefore, it is the examiner’s position that the teachings of repeating a separation method in JP’914 with Brewer would have a reasonable expectation of success. It is well settled that obviousness does not require absolute predictability of success; all that is required is a reasonable expectation of success. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009); In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). See MPEP 2143E.
Finally, it is the Examiner’s position that hindsight was not used given both Brewer and JP’914 are drawn to a method for separating rare earth elements from a composition including precipitating the rare earth elements as a carbonate (Brewer, Abstract; [0004]; [0009]; [0010]; [0011]; JP’914, p. 1, Technical-Field; p. 8, Paragraph 3), and given that the motivation to combine JP’914 with Brewer comes from JP’914 itself, namely, in order to improve the separation rate of the rare earth metals, as set forth above in item #10.
Applicant further argues:
“The Office also attempts to characterize the claimed pH relationships and nth-stage pH range as nothing more than routine optimization of a result-effective variables (Office Action, page 12). Applicant again disagrees. The routine optimization applies only when the prior art discloses the same process and identifies a specific parameter (e.g., the number of extractions or a specific pH range) that affects the result. Here, however, the Office has not first shown that the prior art teaches the same multi-stage, liquid-recycle process structure or recognizes the stage-to- stage first pH relationships and the within-stage first/second pH pairing as process variables within that structure. Brewer discloses a single carbonate precipitation to about pH 7, and Miyata discusses repeating its own group-separation method, but neither reference treats consistent, stage-to-stage-increasing first predetermined pH, coupled with the claimed reuse of the prior stage's liquid as a variable to be tuned. But since neither Brewer nor Miyata recognizes the claimed steps as necessary to achieve the desirable results, it appears that the Office, again, uses hindsight to dismiss portions of the invention as simple optimization.
Applicant clearly demonstrated (see Examples) that the claimed methods provide higher recovery of REEs when compared with the conventional methods, and this recovery is clearly dependent on the pH.”
Remarks, p. 14
The examiner respectfully traverses as follows:
Firstly, the nth stage can be the second stage based on the claims, which is taught by the combination of Brewer in view of JP’914, and as Brewer teaches the pH increases throughout the process, a person of ordinary skill in the art would tailor the pH increase in subsequent steps including the range presently claimed based on the starting pH of each subsequent step.
Secondly, while applicant argues that JP’914 does not teach increasing the pH n each stage, JP’914 is only used as teaching reference in order to teach repeating the separation method. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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