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 .
Status of Amendment
The amendment filed on 21 January 2026 fails to place the application in condition for allowance.
Claims 1-5 and 17-20 are currently pending and under examination.
Status of Rejections
The previous rejections of claims 1-11, 13-15, and 17-20 under 35 U.S.C. 103 are herein maintained over Nutzel and Kawamura.
New rejections are provided over claim 12 is herein provided due Applicant’s amendment via the incorporation of previous claim 16 into claim 1, thus altering the scope of previously dependent claim 12.
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 1-3, 7-9, 11, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Nützel et al (US 4,349,423) in view of Wu et al (Shizhao Wu et al 2022 Nanotechnology 33 155607).
As to claims 1, 3, 7, and 8, Nützel discloses a method for recovering metals from tungsten- containing metallic material (Title), comprising the steps of:
providing a cathode (Fig. 1 “ carbon Cathode” #18) and the tungsten-containing metallic material serving as an anode (Fig. 1 hard metal scrap 14 described as a tungsten carbide scrap in Abstract and throughout) in an electrolyte solution which has a pH value not greater than 3 (col. 2 lines 7-10 using 5-15 % HNO3 which equates to a pH of less than 3 as required by instant claim 8); and
subjecting the tungsten-containing metallic material to an electrolysis process under a power density on the anode so that a passivation layer formed on the anode during the electrolysis process is broken down to permit the tungsten-containing metallic material to be continuously dissolved and oxidized, and a tungsten- containing compound is formed in the electrolyte solution (Examples 1 and 2 15 A at 12 V). Nützel discloses forming tungsten trioxide that precipitates (See claim 8, col. 4 lines 1-2 as required by instant claim 3)
As to the recitation of “power density that is greater than 3 W/cm2” and 3-35 W/cm2 in instant claim 7, Nützel discloses performing the voltage at 12V and a current of 2 or 5 amps (See Examples 1 and 2), which calculates out to a power density of at most 60 W but fails to explicitly disclose the specific power density.
Wu discloses forming tungsten trioxide via rapid breakdown anodization (Abstract) using an acidic electrolyte (Section 2.1) using a current density and potential to provide a power density greater than 3 W/cm2 (Fig. 4 calculated from current density and the applied voltage). Wu discloses using the current and potentials at the particular values results in more soluble substances readily for precipitation (pg. 5 col. 1 lines 1-10) and an efficient method to fabricate the tungsten trioxide (Summary).
Wu is of analogous art of forming tungsten trioxide via oxidation of a tungsten containing sample.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a potential of 25V which results in a power density of greater than 3 W/cm2 as taught by Wu in the method of Nützel because the breakdown of the dielectric improves the reaction rate and production of soluble substances ready for precipitation in the formation of tungsten trioxide (Wu pg. 5 col. 1 lines 1-10).
Nützel discloses heating during electrolysis at an elevated temperature (col. 2 lines 10-15). Nützel fails to disclose the explicit range of 60 to 80 °C.
However, Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention as filed to have optimized the elevated temperature with the range of above ambient as disclosed in Nützel through routine optimization of providing external heating to the electrolyte. See MPEP 2144.05 II A.
As to claim 2, the recitation of “wherein the anode is dissolved in a dissolution rate of not less than 13 mg/min during the electrolysis process.” Is interpreted to be a result of the process performed using the parameters as claimed with an anode material the same as those discloses, that of a cemented tungsten, thus the results is deemed inherent to the process using the same parameters as those claimed in the prior art. See MPEP 2112 II.
As to claims 9, the limitations further limit formation of options of the selection of the pH, thus not further limiting the selection of a pH of no more than 2.
As to claim 11, Nützel discloses wherein the tungsten containing material is cemented tungsten carbide (col. 3 lines 12-14 WC with Co).
Claims 4-6, 10, 17, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura (US 2018/0087166 A1) in view of Vadasdi et al (HU 190811 B with citation drawn to the translation provided via IP.com).
As to claims 10 and 18, Kawamura discloses a method for recovering metals from tungsten- containing metallic material (Title), comprising the steps of:
providing a cathode (Fig. 1 “Cathode”) and the tungsten-containing metallic material serving as an anode (Fig. 1 titanium basket with raw metal mixture which contains tungsten [0032]) in an electrolyte solution which has a pH value not less than 10 ([0038] “10 more more”); and
subjecting the tungsten-containing metallic material to an electrolysis process under a power density on the anode so that a passivation layer formed on the anode during the electrolysis process is broken down to permit the tungsten-containing metallic material to be continuously dissolved and oxidized, and a tungsten- containing compound is formed in the electrolyte solution ([0040]-[0041]).
As to the recitation of “power density that is greater than 3 W/cm2” and 3-35 W/cm2 in instant claim 7, Kawamura discloses performing the voltage at 20V or less and a current density at 500 A/dm2, which calculates out to a power density of at most 100 W/cm2 thus overlapping the instantly claimed range of 3 W/cm2 and thus prima facie obvious to use a power density in the range at instantly claimed. See MPEP 2144.05 I.
Kawamura fails to explicitly disclose wherein the electrolyte solution having the pH value of not less than 10 is prepared with the use of sodium carbonate or potassium carbonate for the electrolyte solution.
Vadasdi discloses potassium or sodium carbonate as suitable for the disintegration of sintered metal carbides, particularly tungsten (Abstract, Examples, Field of the invention) using potassium or sodium carbonate (pg. 3 “In our experiments we were surprised to find that using carbonate-containing electrolyte for the anodic oxidation of the carbide scrap resulted in an increased dissolution rate and a lower specific energy requirement for the solution compared to the known oxidation process using an alkali hydroxide electrolyte.”).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used sodium or potassium carbonate as taught by Vadasdi to adjust the pH in Kawamura because both sodium and potassium carbonate are recognized as chemical for use with the electrolytic recovery of tungsten and thus amounts to an obvious substitution of suitable chemicals recognized for their intended use of the electrolytic recovery of tungsten compounds, See MPEP 2143 B and 2144.07, which provided higher oxidation and dissolution rates compared to alkali hydroxides and ammonia hydroxide because the carbonate ions is strongly oxidizing (pg. 3 paragraphs 5, 8, and 9 Vadasdi).
As to claim 4, Kawamura further discloses wherein the pH value of the electrolyte solution in the providing step is not less than 10 ([0038]), and the tungsten-containing compound formed during the electrolysis process includes tungstate that dissolves in the electrolyte solution ([0039], [0041]).
As to claims 5 and 6, Kawamura further discloses further comprising, after the electrolysis process, the step of lowering the pH of the electrolyte solution to convert tungstate to tungsten oxide that precipitates from the electrolyte solution by adding an acidic electrolyte substance ([0041]).
As to claim 17, the recitation of “wherein the anode is dissolved in a dissolution rate of not less than 13 mg/min during the electrolysis process.” Is interpreted to be a result of the process performed using the parameters as claimed with an anode material the same as those discloses, that of a cemented tungsten, thus the results is deemed inherent to the process using the same parameters as those claimed in the prior art. See MPEP 2112 II.
As to claim 19, Kawamura further discloses wherein the metallic material is doped tungsten ([0045]).
As to claim 20, Kawamura further discloses wherein the temperature is performed at 20-80°C, preferably greater than 60°C which overlaps the instantly claimed range (See MPEP 2144.05 A) and a specific example at 70°C ([0049]).
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kawamura, as modified by Vadasdi, as applied to claim 5 above, in further view of Vanderpool et al (US 4,385,972).
As to claims 13-15, Kawamura, as modified by Vadasdi, wherein the sample comprises tungsten and cobalt and further recovering cobalt ([0056] Kawamura) but fails to explicitly disclose a cemented tungsten carbide comprising tungsten and cobalt, and during the electrolysis process, a cobalt compound is formed and precipitates from the electrolyte solution, the cobalt compound comprising one of cobalt oxide, cobalt hydroxide, and a combination thereof.
Vanderpool recovering tungsten and cobalt from cemented carbides (Abstract) wherein during the electrolysis process, a cobalt compound is formed and precipitates from the electrolyte solution, the cobalt compound comprising one of cobalt oxide, cobalt hydroxide, and a combination thereof. (col. 2 lines 7-10) wherein the cobalt is collected from the electrolyte solution via filtering (col. 2 lines 50-56 which reads on claim 15).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a specific cemented tungsten carbide with cobalt as taught by Vanderpool in the method of Kawamura, as modified by Vadasdi, because such an exchange amount to an obvious selection of raw material to purify where both method separate the binder phase from the tungsten phase for efficient recover via electrochemical methods. See MPEP 2143 B. Further, selection as to when the cobalt is collected, i.e. before or after the lowering of the pH solution as required by instant claim 14 would be prima facie obvious selection of an appropriate time as to when to perform separation from a limited number of options and thus obvious to try and remove the cobalt before lowering of the ph. See MPEP 2143 E.
Claim 12 rejected under 35 U.S.C. 103 as being unpatentable over Nützel, as modified by Wu, as applied to claim 3 above, in further view of Vanderpool et al (US 4,385,972).
As to claim 12, Nützel, as modified by Wu, wherein the sample comprises tungsten and cobalt and further recovering cobalt where the tungsten oxide is produced in a hydrated form having a purity of not less than 90% (col. 2 line 63-col. 3 line 6 “free of binding metal”) but fails to explicitly disclose a cemented tungsten carbide comprising tungsten and cobalt, and during the electrolysis process, a cobalt compound is formed and precipitates from the electrolyte solution, the cobalt compound comprising one of cobalt oxide, cobalt hydroxide, and a combination thereof.
Vanderpool recovering tungsten and cobalt from cemented carbides (Abstract) wherein during the electrolysis process, a cobalt compound is formed and precipitates from the electrolyte solution and deposited on the cathode (Abstract), the cobalt compound comprising one of cobalt oxide, cobalt hydroxide, and a combination thereof. (col. 2 lines 7-10) wherein the cobalt is collected from the electrolyte solution via filtering (col. 2 lines 50-56).
Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a specific cemented tungsten carbide with cobalt as taught by Vanderpool in the method of Kawamura, as modified by Vadasdi, because such an exchange amount to an obvious selection of raw material to purify where both method separate the binder phase from the tungsten phase for efficient recover via electrochemical methods. See MPEP 2143 B. Further, selection as to when the cobalt is collected, i.e. before or after the lowering of the pH solution as required by instant claim 14 would be prima facie obvious selection of an appropriate time as to when to perform separation from a limited number of options and thus obvious to try and remove the cobalt before lowering of the ph. See MPEP 2143 E.
As to the recitation of “wherein the anode is dissolved in a dissolution rate of not less than 15 mg/min during the electrolysis process.” Is interpreted to be a result of the process performed using the parameters as claimed with an anode material the same as those discloses, that of a cemented tungsten, thus the results is deemed inherent to the process using the same parameters as those claimed in the prior art. See MPEP 2112 II.
Response to Arguments
Applicant's arguments filed 21 January 2026 have been fully considered but they are not persuasive.
In response to Applicant’s arguments presented pg. 6-7 regarding the allegation of unexpected results, this argument is not persuasive in light of MPEP 716.02(d) because at best, the Table shows a specific pH of 0 and not “greater than 2”. as well as using specific electrolytes of each pH 0 and 7, much more narrow than the scope of instant claim 1.
As to the discussion of the direct precipitation of tungsten oxide on pg. 7, this argument is not persuasive in light of the prior art because the prior art discloses explicitly recovering tungsten trioxide precipitate from the electrolysis procedure in Nutzel, see for example col. 3 line 64 “…a yellow precipitate of WO3…”. Again, this statement is not commensurate in scope with the instant claims as claim 1 merely recites “a tungsten containing compound” and does not require direct precipitation from the tungsten containing metallic material, just that a tungsten containing compound is formed in the electrolyte solution.
In response to Applicant’s argument on pg. 7 with respect to Nutzel’s use of nitric acid, Applicant does not contend the Examiner position that the 5-15% HNO3 results in a pH of less than 2 explicitly based on the depend claim 8 which recited nitric acid as a suitable acid for use. Thus, since HCl is not explicitly required by instant claim 1, the argument is deemed not persuasive with respect to the rejection of record.
In response to applicant's argument that Wu 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, Wu is explicitly tied to the same field of endeavor of the anodization of tungsten which results in the formation of tungsten oxide precipitated directly from the anodization of the tungsten containing anode. This powder is clearly recovered in Wu. This teach is analogous to the field of endeavor of forming the tungsten oxide based anodization at higher voltage, i.e. breakdown anodization, of Wu.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both references are directly concerned about the formation of tungsten containing compounds via the anodization of a tungsten containing anode. Wu does not disclose that hydrocholoric acid is the only acid that may be used, just that the HCL may be used with HCl. Wu does not discourage similar use with different electrolytes. Alternatively, and while not postulated in the rejection, one of ordinary skill in the art could look to Wu to rectify the drawbacks of using HCl in Nutzel because using the breakdown anodization technique results int eh fast and efficient growth of the tungsten oxide from the anode
In response to Applicant’s arguments about the claimed temperature, this argument is not persuasive because Nutzel already teaches using an elevated temperature, but not explicitly within said ranges. The rejection addresses this as routine optimization within the prior art parameters so as to be obvious to one of ordinary skill in the art. While Applicant briefly discusses the temperature, the discussion does not address the rational for optimizing the temperature in light of being elevated in the prior art, nor does the discussion provide compliance of unexpected results in accordance with MPEP 716.02.
In response to Applicant’s arguments presented pg. 9-10 regarding the allegation of unexpected results of the pH range of not less than 10, this argument is not persuasive in light of MPEP 716.02(d) because at best, the Table shows a specific pH of 12 and not “less than 10”. as well as using specific electrolyte, much narrower than the scope of instant claim 10.
In response to Applicant’s argument that Kawamura discloses a weakly alkaline electrolyte, it is noted that Kawamura explicitly cites the pH being “more preferably 10 or more” ([0038]) thus explicitly reading on the instant claim language. With respect to the use of an alcohol amine, it is noted the claims do not preclude such additives within the electrolytic solution.
In response to Applicant’s argument that Vadasdi discloses the current application in terms of A/kg, which relies upon “chemical oxidation”, this argument is not persuasive because Vadasda is not cited as provided the power density or physical breakdown. Rather, Vadasdi discloses using the carbonate in alkaline electrolytic solutions.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the use of the carbonate as cited in Vadasdi is recognized to achieve the goals of Kawamura, that of high purity tungsten recovery a control over the process via favorable power consumption and favorable oxidation conditions (See pg. 3 last 2 paragraphs of the translation).
No further arguments are presented.
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 LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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/LOUIS J RUFO/Primary Examiner, Art Unit 1795