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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 17 December 2025 is acknowledged. The traversal is on the grounds that the prior art does not teach the common technical feature. Applicants specifically arguing that the prior art fails to teach forming hydrogen peroxide form oxygen in the aqueous solution, reacting the leaching agent precursor with the formed hydrogen peroxide to form a leaching agent and to obtain a leaching solutions, and recoverin the soluble metal complexes as well as being silent on generating reactive species by electrochemical oxygen reduction. However, this is not found persuasive because these elements are not required by each group and thus are not the common technical feature, particularly in view of the fact that an apparatus need merely be capable of performing the claimed function. The Examiner maintains that CN 101260461 A does teach the corresponding technical features required by each group. Furthermore, as can be seen below, additional art also teaches the corresponding technical features.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 6, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Further as to claim 6, the claim recites the limitation “an electrode”. However, electrodes are already recited in claim 1, upon which claim 6 is dependent. Therefore, it is unclear as to if the limitation of claim 6 intends to refer back to the limitation of claim 1 or to a new and separate limitation. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
Further as to claim 6, the claim recites the limitation "the electrodes”. There is insufficient antecedent basis for this limitation in the claim.
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4, 5, 7 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0024361 A1 to Schwartzel et al. (Schwartzel).
As to claims 1, 2, 4, 5 and 7, Schwartzel teaches a method for recovering metal from metal containing material by leaching the method comprising providing an aqueous solution containing leaching agent precursor, such as chloride salts, providing boron doped diamond or glassy carbon electrodes, some connected with an external source of DC energy for providing traditional electrolysis reactions and at least one connected with a source of ultrasound energy, such that the aqueous solution is treated with external energy providing electrochemical reactions generating reactive species, hydrogen peroxide from electrochemical oxygen reduction, and the leaching agent precursor is reacted with the formed hydrogen peroxide to form a leaching agent and obtain a leaching solution, the leaching solution provided to metal containing material to leach the metals and obtain soluble metal complexes specifically for recovery of the metal (Paragraphs 0002, 0027, 0050, 0052-0055, 0058, 0062, 0063, 0067, 0089 and 0123).
As to claim 8, Schwartzel teaches the method of claim 1. Schwartzel further teaches that the method comprising measuring the level of the leaching agent in the aqueous solution and adjusting the external energy to maintain the leaching agent concentration at a predetermined value (Paragraph 0063 and 0072).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Schwartzel as applied to claim 1 above, and further in view of “Removal, recovery and enrichment of metals from aqueous solutions using carbon nanotubes” to Yu et al. (Yu).
As to claim 3, Schwartzel teaches the method of claim 1. Schwartzel teaches that the metals being recovered are precious metals (Paragraph 0123). However, Schwartzel is silent as to specific recovery means from the leached solution. However, Yu also discusses the recovery of precious metals and teaches that adsorbing precious metal from solution utilizing carbon nanotubes is highly effective (Abstract; Recovery of precious metals). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide the soluble metal complexes in solution to a scavenger material comprising carbon nanotubes in order to utilize a highly effective method of recovering precious metals form the solution as taught by Yu.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Schwartzel as applied to claim 1 above, and further in view of US 2011/0139629 A1 to Weber et al. (Weber).
As to claim 6, Schwartzel teaches the method of claim 1. However, Schwartzel fails to further teach that the electrodes are further provided with a catalyst immobilized thereon. However, Weber also discusses electrodes operating in a chlorine/chloride environment and teaches that coating carbon electrodes such as glassy carbon with a platinum and silver catalyst the electrode is highly stable (Paragraph 0054). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the electrodes of Schwartzel with a platinum and silver catalyst immobilized thereon in order to ensure that the electrodes are highly stable in the chlorine/chloride environment as taught by Weber.
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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