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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/26/2026 has been entered.
Status of the Claims
Claims 69-73, 76-78, 80-82, and 84-87 are pending in this application. Claims 1-68, 74-75, 79, 83, and 88 have been cancelled by applicant.
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 69-73, 76-78, 80-82, 84, and 86-87 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,024,756 B2 (US ‘756).
Regarding instant claims 69-73, 76-78, 80-82, 84, and 86-87, US ‘756 claims a method of extracting rare earth metals from a mixture of one or more rare earth metals by contacting an acidic solution with the one of the ionic liquids encompassed by the general structure below (US ‘756 claims 1 and 20) – same compounds as encompassed by the instant claims. US ‘756 claims their method further comprising a lower viscosity ionic liquid and/or an organic solvent (US ‘756 claim 21) – thus rendering the instant compositions obvious.
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Therefore, it would have been prima facie obvious to one of ordinary skill prior to the effective filing date of the claimed invention to prepare the instantly claimed ionic liquid composition comprising the compounds [cat+][X-], in a lower viscosity ionic liquid at the claimed concentrations, in view of US ‘756. One of ordinary skill would have been motivated to do so with a reasonable expectation of success because US ‘756 discloses their methods of rare earth metal extraction comprising contacting solutions with their ionic liquid compounds of the same formula as the instant invention.
While US ‘756 does not specifically disclose concentrations of 0.001-0.01 M; Applicant is advised that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. See 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). The courts have also found that where 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. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05-II. Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Furthermore, it is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter which there is reason to believe includes functions that are newly cited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter shown to be in the prior art does not possess the characteristic relied on”. In the present case, Applicant would need to show that claimed concentration ranges work exceptionally well for metal extractions compared to concentration values that deviate from claimed values.
Regarding instant claim 70, US ‘576 speaks to the method of making rare earth metal oxide wherein the nitrogen linking L1 to each L2 and one of the EDG of the ionic liquid both coordinate to a metal to form a 5- or 6-membered metallocycle (US ‘579 claim 13).
Claim 85 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,024,756 B2 (US ‘756); as applied to claims 69-73, 76-78, 80-82, 84, and 86-87; in view of Singer et al. (WO 2007/071028 A1 – From IDS).
The teachings of US ‘756 are disclosed above and incorporated herein.
While US ‘756 does not specifically mention wherein the ionic liquid anion content is less than 25% halides (claim 85); the teachings of Singer are relied upon for these disclosures.
Regarding claim 85, Singer discloses their related ionic liquids of Formula I wherein [X-] can be (CN)2N-, CH3COO-, CH3SO3-, NO3-, N3-, TsO- (tosylate), NsO- (nosylate), HSO42-, etc. (claim 1 of Singer) (reading on less than 25% halide and suggesting 0% halide content).
Therefore, it would have been prima facie obvious to one of ordinary skill to prepare the instantly claimed composition, since it is disclosed by US ‘756 in view of Singer’s ionic liquids without halides. One of ordinary skill would have been motivated to do so, with a reasonable expectation of success in view of the disclosures above.
Regarding the claimed range of < 25% halide, Applicant is reminded that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. The courts have also found that where 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.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Claims 69-73, 76-78, 80-82, 84, and 86-87 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,958,754 B2 (US ‘754).
Regarding instant claims 69-73, 76-78, 80-82, 84, and 86-87, US ‘754 claims a method of extracting rare earth metals from a mixture of one or more rare earth metals by contacting an acidic solution with the one of the ionic liquids below (US ‘754 claims 1 and 14); US ‘754 further claims their method further comprising a lower viscosity ionic liquid and/or an organic solvent; and wherein the cation and anion of the IL are present at 0.001 M (US ‘754 claim 17-18) – thus anticipating the instant compositions.
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Regarding instant claim 70, US ‘754 speaks to the method of making rare earth metal oxide wherein the nitrogen linking L1 to each L2 and one of the EDG of the ionic liquid both coordinate to a metal to form a 5- or 6-membered metallocycle (US ‘754 claim 7).
Claim 85 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,958,754 B2 (US ‘754); as applied to claims 69-73, 76-78, 80-82, 84, and 86-87; in view of Singer et al. (WO 2007/071028 A1 – From IDS).
The teachings of US ‘754 are disclosed above and incorporated herein.
While US ‘754 does not specifically mention wherein the ionic liquid anion content is less than 25% halides (claim 85); the teachings of Singer are relied upon for these disclosures.
Regarding claim 85, Singer discloses their compounds of Formula I wherein [X-] can be (CN)2N-, CH3COO-, CH3SO3-, NO3-, N3-, TsO- (tosylate), NsO- (nosylate), HSO42-, etc. (claim 1 of Singer) (reading on less than 25% halide and suggesting 0% halide content).
Therefore, it would have been prima facie obvious to one of ordinary skill to prepare the instantly claimed composition, since it is disclosed by US ‘754 in view of Singer’s ionic liquids without halides. One of ordinary skill would have been motivated to do so, with a reasonable expectation of success in view of the disclosures above.
Regarding the claimed range of < 25% halide concentrations, Applicant is reminded that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. The courts have also found that where 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.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Claims 69-73, 76-78, 80-82, 84, and 86-87 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,401,579 B2 (US ‘579).
Regarding instant claims 69-73, 76-78, 80-82, 84, and 86-87, US ‘579 claims a method of making a rare earth metal oxide comprising contacting an acidic solution of a metal mixture with an ionic liquid with one of the formulas below (US ‘579 claims 1 and 16); US ‘579 speaks to their method further comprising a lower viscosity ionic liquid and/or an organic solvent, and wherein the anion of the IL is present at least at 0.01 M (US ‘579 claim 18) – thus anticipating the instant composition.
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Regarding instant claim 70, US ‘579 claims method of making rare earth metal oxide wherein the nitrogen linking L1 to each L2 and one of the EDG of the ionic liquid both coordinate to a metal to form a 5- or 6-membered metallocycle (US ‘579 claim 10).
Claim 85 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,401,579 B2 (US ‘579); as applied to claims 69-73, 76-78, 80-82, 84, and 86-87; in view of Singer et al. (WO 2007/071028 A1 – From IDS).
The teachings of US ‘579 are disclosed above and incorporated herein.
While US ‘579 does not specifically mention wherein the ionic liquid anion content is less than 25% halides (claim 85); the teachings of Singer et al. are relied upon for these disclosures.
Regarding claim 85, Singer discloses their compounds of Formula I wherein [X-] can be (CN)2N-, CH3COO-, CH3SO3-, NO3-, N3-, TsO- (tosylate), NsO- (nosylate), HSO42-, etc. (claim 1 of Singer) (reading on less than 25% halide and suggesting 0% halide content).
Therefore, it would have been prima facie obvious to one of ordinary skill to prepare the instantly claimed composition, since it is disclosed by US ‘759 in view of Singer’s ionic liquids without halides. One of ordinary skill would have been motivated to do so, with a reasonable expectation of success in view of the disclosures above.
Regarding the claimed range of < 25% halide concentrations, Applicant is reminded that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. The courts have also found that where 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.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Claims 69-73, 76-78, 80-82, 84, and 86-87 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,396,684 B2 (US ‘684).
Regarding instant claims 69-73, 76-78, 80-82, 84, and 86-87, US ‘684 claims a method of extracting a rare earth metal oxide comprising contacting an acidic solution of a metal mixture with an ionic liquid with one of the formulas below (US ‘684 claims 1 and 19); US ‘684 claims their method further comprising a lower viscosity ionic liquid and/or an organic solvent, and wherein the IL is present in a concentration of at least 0.005M-0.01 M (US ‘684 claim 22) – thus anticipating the instant composition.
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Regarding instant claim 70, US ‘579 claims method of making rare earth metal oxide wherein the nitrogen linking L1 to each L2 and one of the EDG of the ionic liquid both coordinate to a metal to form a 5- or 6-membered metallocycle (US ‘579 claim 10).
Claim 85 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,396,684 B2 (US ‘684); as applied to claims 69-73, 76-78, 80-82, 84, and 86-87; in view of Singer et al. (WO 2007/071028 A1 – From IDS).
The teachings of US ‘684 are disclosed above and incorporated herein.
While US ‘684 does not specifically mention wherein the ionic liquid anion content is less than 25% halides (claim 85); the teachings of Singer et al. are relied upon for these disclosures.
Regarding claim 85, Singer discloses their compounds of Formula I wherein [X-] can be (CN)2N-, CH3COO-, CH3SO3-, NO3-, N3-, TsO- (tosylate), NsO- (nosylate), HSO42-, etc. (claim 1 of Singer) (reading on less than 25% halide and suggesting 0% halide content).
Therefore, it would have been prima facie obvious to one of ordinary skill to prepare the instantly claimed composition, since it is disclosed by US ‘684 in view of Singer’s ionic liquids without halides. One of ordinary skill would have been motivated to do so, with a reasonable expectation of success in view of the disclosures above.
Regarding the claimed range of < 25% halide concentrations, Applicant is reminded that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. The courts have also found that where 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.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Claims 69-73, 76-78, 80-82, 84, and 86-87 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 5-10, 12, 14-17, 20-23, and 25-27 of copending Application No. 17/252,255 (Copending ‘255). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claims 69-73, 76-78, 80-82, 84, and 86-87, Copending ‘255 claims a method of making the ionic liquid composition comprising the compound below (claim 1 of Copending ‘255). Copending ‘255 claims a method of extracting a rare earth metal with their IL, their method comprising a first IL and a second lower density IL, at concentrations of at least 0.001 M – anticipating the instant composition (claims 21 and 27 of Copending ‘255).
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 85 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 5-10, 12, 14-17, 20-23, and 25-27 of copending Application No. 17/252,255 (Copending ‘255); as applied to claims 69-73, 76-78, 80-82, 84, and 86-87; in view of Singer et al. (WO 2007/071028 A1 – From IDS).
The teachings of Copending ‘255 are disclosed above and incorporated herein.
While Copending ‘255 does not specifically mention wherein the ionic liquid anion content is less than 25% halides (claim 85); the teachings of Singer are relied upon for these disclosures.
Regarding claim 85, Singer discloses their compounds of Formula I wherein [X-] can be (CN)2N-, CH3COO-, CH3SO3-, NO3-, N3-, TsO- (tosylate), NsO- (nosylate), HSO42-, etc. (claim 1 of Singer) (reading on less than 25% halide and suggesting 0% halide content).
Therefore, it would have been prima facie obvious to one of ordinary skill to prepare the instantly claimed composition, since it is disclosed by Copending ‘255 in view of Singer’s ionic liquids without halides. One of ordinary skill would have been motivated to do so, with a reasonable expectation of success in view of the disclosures above.
Regarding the claimed range of < 25% halide, Applicant is reminded that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. The courts have also found that where 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.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Claims
Claim amendments are acknowledged and have been entered. No new matter has been introduced.
Claim Rejections - 35 USC § 103
In view of claim amendments, 35 USC § 103 rejections of record have been withdrawn.
Double Patenting
Applicant's arguments filed 06/26/2026 have been fully considered but they are not persuasive.
With regards to provisional NSDP rejections, Applicant argues that instant Application has an earlier patent term date, citing MPEP 804(1)(B)(1)(b)(i), which states: if a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earlier patent term filing date, the examiner should withdraw the rejection in the application having the earlier patent term filing date and permit that application to issue as a patent, thereby converting the provisional nonstatutory double patenting rejection in the other application into a nonstatutory double patenting rejection upon issuance of the patent.
In the present case, the provisional NSDP rejections mentioned are not the only remaining rejections, and are therefore maintained.
With regards to NSDP rejections over US ‘756; US ‘754; and US ‘579; Applicant argues these patents have ‘a later patent term filing date…and would expire later than the instant application’, citing Ex Parte Baurin Appeal 2024-002920).
This is not persuasive. Current guidance in MPEP 1504.06 clearly states: “The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). The submission of a terminal disclaimer in compliance with 37 CFR 1.321(b) to overcome a double patenting rejection ensures that a patent owner with multiple patents claiming obvious variations of one invention retains all those patents or sells them as a group. Van Ornum, 686 F.2d at 944-45, 214 USPQ at 767. Nonstatutory double patenting includes rejections based on anticipation, a one-way determination of "obviousness," or a two-way determination of "obviousness." It is important to note that the "obviousness" analysis for nonstatutory double patenting is "similar to, but not necessarily the same as, that undertaken under 35 U.S.C. 103." In re Braat, 937 F.2d 589, 592-93, 19 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887, 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on the equitable principle against permitting an unjustified timewise extension of patent rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968); see also MPEP § 804, subsection II.B.6.”
Rejections of record stand.
Upon further consideration, a NSDP rejection over US ‘684 has been raised in this non-final action as well.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKSON J HERNANDEZ whose telephone number is (571)272-5382. The examiner can normally be reached Mon - Thurs 7:30 to 5.
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/JACKSON J HERNANDEZ/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
