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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 67 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In this case, claim 67 recites “the first substance further comprises a fourth concentration of aluminum, the second substance (second substance comprising magnesium oxide and/or magnesium hydroxide and the second concentration of silicon) further comprises a fifth concentration of aluminum”, such limitation is not described in the original disclosure at all.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 63-67, 69 and 71, 73-75, 80 are rejected under 35 U.S.C. 103 as obvious over Burba (US20110182786) in view of Zhong (CN111394598) (for applicant’s convenience, Machine translation has been provided hereof for citations).
Burba teaches a process for recovering a valuable metal from a valuable metal-containing material using a mineral acid produced by an electrochemical acid generation process, such as a chloralkali cell or bipolar membrane electrodialysis system (item 116, 280, Fig. 2) (that is, a reactor), the process comprising (Fig. 2, para. [0016]-[0021], [0056], [0075], [0090]-[0094]): (a) contacting a valuable metal-containing material with a leaching solution to form a pregnant leach solution comprising a dissolved valuable metal (equivalent to dissolving a first substance in a first solution), wherein once dissolved, the valuable metal optionally is isolated from impurities, such as iron, by suitable technique, e.g. precipitation (para. [0054], Fig. 2);
(b) recovering the dissolved valuable metal to form a valuable metal product and a byproduct salt solution, wherein typically at least most of the byproduct salt solution is derived from a reaction of an acid with a base in one or both of the contacting and recovering steps; wherein the byproduct salt solution (item 224, Fig. 2) and salt solution (item 216, Fig .2) including a variety of polyvalent impurities (e.g. Ca, Mg, iron) (para. [0105]) and such polyvalent impurity can be removed from the byproduct salt solution by precipitation induced by a pH change from contact of the base with the byproduct salt solution (Fig. 2-3, para. [0105]-[0108], [0128]-[0130]);
(c) converting, by one or more of a chloralkai and bipolar membrane electrodialysis cell (i.e. an electrolyzer), the byproduct salt solution into the acid and base; and
(d) recycling at least most of the acid and base to the contacting and/or recovering steps (para. [0105]-[0108], Fig. 2-3).
Barbu further discloses: recycling at least most of the acid and base to the contacting and/or recovering steps (para [0011], lixiviant used for leaching may include other inorganic and organic acids. Once dissolved, the valuable metal is optionally isolated from impurities, such iron, by a suitable recovery technique, such as precipitation (para. [00 54]). Barbu teaches an example A: a determination of a multi-stage precipitation and ion exchange process for removing divalent and trivalent cations prior to a salt splitting process. M2 is the second precipitation stage (FIG. 3) where the metal carbonate slurry was contacted with a sodium hydroxide solution having about 8 wt.% NaOH to further raise the pH to a pH of from about pH 11 to about pH 12 and to further precipitate as hydroxides any of the metals identified above (such as magnesium, calcium, iron etc.) remaining in solution (para. [0128]-[0130]). Barbu further teaches impurity comprising silica (para [0105]).
Regarding claim 1, Barbu does not expressly teach dissolving a first substance comprising Mg and a first concentration of silicon.
However, Barbu also teaches the valuable metal-containing feed material (item 104) may comprise a mined ore, concentrate, tailings, metallurgical residue or a mixture thereof, such as minerals comprising valuable metals (para. [0049]). Barbu already teaches add acid during the process of dissolution (para. [0054], Fig. 2) and adding base to precipitate out magnesium hydroxide and calcium hydroxide [0105], [0106], [0128]-[0130, Fig. 2-3). Therefore, it would have been obvious for one of ordinary skill in the art to dissolving a first substance comprising magnesium using the acid produced by the electrolysis as a routine operation for extracting magnesium and calcium because applying a known technique of dissolving a first substance comprising magnesium a known method of recovering valuable metal for improvement would yield predictable result (See MPEP § 2143 KSR).
Zhong teaches magnesium or calcium carbonate containing ore (such as dolomite (noted dolomite containing silicon) (claim 1-5, para. [0084]) can be used to extract out magnesium and/or calcium.
It would have been obvious for one of ordinary skill in the art to adopt such magnesium and calcium containing ore as shown by Zhong to practice the mineral ore starting material of Burba because applying a known technique of dissolving a magnesium, calcium and silicon containing material as valuable metal feeding material to modify a known method of recovering valuable metal for improvement would yield predictable result (See MPEP § 2143 KSR).
Since Burba already teaches magnesium from such ore containing impurities of silica, i.e. comprising silicon being dissolved in an acid solution (i.e. a first substance comprising magnesium and a first concentration of silicon) while Zhong expressly teaches the first substance comprising magnesium and silicon, Burba disclosed acid dissolved solution then being precipitated as magnesium hydroxide and silicon from the dissolved ore material would remain in the solution (Fig. 2-3, para. [0105]-[0108], [0128]-[0130]); therefore, precipitating from the first substance, a second substance comprising magnesium hydroxide and a second concentration of silicon in a second solution is expected. As for the claimed second concentration impurity (i.e. silicon) being less than first concentration of impurity (silicon), since after dissolving step, some impurities already been removed from valuable metal solution, therefore, impurity (silicon) level in the valuable metal solution after separation is decreased. Furthermore, it would have been obvious for one of ordinary skill in the art to further precipitate and/or separate such silicon impurities thus obtaining a more purified valuable metal solution with decreased silicon impurities level through a routine operation (see MPEP §2144. 05 II), i.e. precipitated magnesium hydroxide having silicon impurities at decreased level of a second concentration of silicon in a second solution being as compared to the first concentration of the silicon impurities.
Regarding claim 63-64, Barbu already teaches impurities can include Ca and Mg, a base can be added to precipitate out such impurities (noted precipitated impurities- Ca(OH)2, Mg(OH)2 are insoluble solids), and such precipitated solids are separated from valuable metal solution; and using base to precipitate impurities (Ca, Mg) out as Ca(OH)2, Mg(OH)2 from combined salt solution (Fig. 2-3, para [0105]-[0106], [0128]-[0130]).
Regarding claim 65-67, Barbu already teaches to add acid during the process of dissolution and recovery, and addition of base may produce precipitation of magnesium hydroxide, calcium hydroxide and other impurities (Fig. 2-3, para. [0105]-[0106], [0109]-[0120], [0128]-[0130]), while Zhong already teaches a same or substantially the same first substance (magnesium and calcium containing ore, e.g. dolomite) as that of instantly claimed. It is well known in the art that the solubility product of magnesium hydroxide is smaller than calcium hydroxide, and magnesium hydroxide will precipitate prior to calcium hydroxide. Therefore, dissolving the first substance comprising magnesium and calcium in the first solution comprising the acid is a routine operation for extracting magnesium and calcium. It is a routine operation for purification that insoluble solids (magnesium hydroxide and/or calcium hydroxide) are removed from the first solution, the second, third and fourth substance comprising magnesium hydroxide and/or calcium hydroxide is removed from the second solution, the third substance and the fourth solution as that of instantly claimed are just routine operation of Barbu disclosed teachings. It would have been obvious for one of ordinary skill in the art to expect that the pH of a solution increases after adding the base. Since Barbu in view of Zhong already teaches a same or substantially the same process of dissolving a same or substantially the same first substance comprising magnesium and silicon, therefore, same or substantially the same first substance further comprising a fourth concentration of aluminum, the second substance comprising magnesium and the second concentration of silicon further comprises a fifth concentration of aluminum is expected. As for the claimed fifth concentration of aluminum being lower than the fourth concentration of aluminum in claim 67, it would have been obvious for one of ordinary skill in the art to further precipitate and/or separate such aluminum impurities thus obtaining a more purified valuable metal solution (magnesium) with decreased aluminum impurities level through a routine operation (see MPEP §2144. 05 II), i.e. magnesium hydroxide having aluminum impurities at decreased level of a fifth concentration with second concentration silicon in a second solution as compared to the fourth concentration of the aluminum and first concentration of silicon in the first solution.
Regarding claim 69, Burba does not expressly teach the first concentration of silicon in the first substance being less than 80wt.%.
Zhong further teaches magnesium or calcium carbonate containing ore (such as dolomite (claim 1-5, para. [0084]) comprising the weight concentration of such magnesium and calcium being 51 wt.%, therefore, the impurities of silicon concentration in such substance have to be less than 80 wt.%.
Regarding claim 71, since Barbu in view of Zhong already teaches using a same or substantially the same first substance going through a same or substantially the same first dissolving thus obtaining a same or substantially the same first solution having same or substantially the same first concentration of silicon impurity level, and same or substantially the same precipitating a same or substantially the same second solution, therefore, same or substantially the second concentration of silicon impurity being at least 90% lower on a mass basis, relative to the first concentration of silicon impurity, as that of instantly claimed is expected.
Regarding claim 73-74, Zhong already teaches such limitations as discussed above.
Regarding claim 75 and 80, Barbu already teaches such limitations as discussed above.
Claim(s) 70 is rejected under 35 U.S.C. 103 as obvious over Burba (US20110182786) in view of Zhong (CN111394598) (for applicant’s convenience, Machine translation has been provided hereof for citations) as applied above, and further in view of Farsad (WO2010104989).
Regarding claim 70, Burba in view of Zhong does not expressly teach the first substance comprising silicon concentration being greater than 50 wt.%.
Farsad teaches fly ashes comprising 40-60% by weight of SiO2 (can have more than 50 wt.% of) is well-known in the art (para. [0127]).
It would have been obvious for one of ordinary skill in the art to combine such well-known fly ash comprising more than 50 wt of silicon as shown by Farsad with the magnesium containing material of Burba in view of Zhong because combining such residue material into known valuable metal containing material according to known methods would yield predictable results (See MPEP § 2143 KSR).
Claim(s) 78 and 79 are rejected under 35 U.S.C. 103 as obvious over Burba (US 20110182786) in view of Zhong (CN111394598) as applied above, and further in view of Bullerjahn et al. (US9718731).
Regarding claim 78 and 79, Burba in view of Zhong does not expressly teaches using Ca(OH)2 in forming cement or add alumina and/or silica.
Bullerjahn et al. teaches Ca(OH)2 can be used as raw materials for forming cement material wherein silica and alumina can be added thereof as well (claim 1, 3, 27, col. 2 line 65-col. 3 line 5, col. 3 lines 42-46).
It would have been obvious to adopt Burba disclosed precipitated Ca(OH)2 and silica as raw material to practice the raw material of Bullerjahn et al. because by doing so can help providing high CaO content forming desired cement composition as suggested by Bullerjahn et al. (col. 2 49-53, col. 3 lines 42-46). Furthermore utilizing such precipitated out Ca(OH)2 and impurity material of silica for generating cement material can help efficiently re-utilizing materials and save cost for producing valuable cement materials.
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 1 and 63-67, 69-71, 73-75, 78-80 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12252442 in view of Burba (US20110182786) and Zhong (CN111394598). US’442 teaches a substantially the same method of as that of instantly claimed except dissolving a first substance comprise magnesium and a first concentration of silicon, precipitating with increase of pH and separating such precipitated-out material, wherein such limitations are taught by Burba and Zhong as discussed above. It would have been obvious for one of ordinary skill in the art to adopt such well-known first substance comprising magnesium and silicon as shown by Burba and Zhong to modify the US’442 because by doing so can help recovering magnesium and silicon as well.
Claims 1 and 63-67, 69-71, 73-75, 78-80 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12252795 in view of Burba (US20110182786) and Zhong (CN111394598). US’795 teaches a substantially the same method as that of instantly claimed except dissolving a first substance comprise magnesium and a first concentration of silicon, precipitating magnesium, wherein such limitations are taught by Burba and Zhong. It would have been obvious for one of ordinary skill in the art to adopt such well-known first substance comprising magnesium and silicon as shown by Burba and Zhong to modify the US’795 because by doing so can help recovering magnesium and silicon as well.
Claims 1 and 63-67, 69-71, 73-75, 78-80 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 12330989 in view of Burba (US20110182786) and Zhong (CN111394598). US’989 teaches a substantially the same method as that of instantly claimed except dissolving a first substance comprise magnesium and a first concentration of silicon, wherein such limitations are taught by Burba and Zhong. It would have been obvious for one of ordinary skill in the art to adopt such well-known first substance comprising magnesium and silicon as shown by Burba and Zhong to modify the US’989 because by doing so can help recovering magnesium and silicon as well.
Claims 1 and 63-67, 69-71, 73-75, 78-80 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 165-176 and 181-184 of co-pending Application No. 17/438,888 (reference application) in view of Burba (US20110182786) and Zhong (CN111394598). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’888 teaches a same or substantially the same method as that of instantly claimed except the material comprising magnesium or precipitating magnesium hydroxide wherein such limitations are taught by Burba and Zhong. It would have been obvious for one of ordinary skill in the art to adopt such well-known first substance comprising magnesium and silicon as shown by Burba and Zhong to modify the co-pending application ‘888 because by doing so can help recovering magnesium and silicon as well.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 63-67, 69-71, 73-75, 78-80 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of co-pending Application No. 18/395,403 in view of Burba (US20110182786) and Zhong (CN111394598). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’403 teaches a same or substantially the same method of acid dissolving metal containing compound comprising magnesium, precipitate metal hydroxide (calcium hydroxide) and using such precipitate forming cement material, except precipitating magnesium hydroxide wherein such limitations are taught by Burba and Zhong. It would have been obvious for one of ordinary skill in the art to adopt such well-known first substance comprising magnesium and silicon as shown by Burba and Zhong to modify the co-pending application ‘403 because by doing so can help recovering magnesium and silicon as well.
Claims 1 and 63-67, 69-71, 73-75, 78-80 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of co-pending Application No. 18/971,207 (reference application) of Burba (US20110182786) and Zhong (CN111394598). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’207 teaches a same or substantially the same method of acid dissolving metal containing compound, precipitate metal hydroxide (calcium hydroxide) and using such precipitate forming cement material as that of instantly claimed, except precipitating magnesium hydroxide, and the first substance comprising a first concentration of silicon, but such limitation are taught by Burba and Zhong. It would have been obvious for one of ordinary skill in the art to adopt such well-known first substance comprising magnesium and silicon as shown by Burba and Zhong to modify the co-pending application ‘403 because by doing so can help recovering magnesium and silicon as well.
Response to Arguments
Applicant’s arguments filed on 01/22/2026 have been fully considered but are moot in view of current rejections.
In response to applicant’s arguments about Barba not teaching precipitating “from the dissolved first substance”, Barbu already teaches acid dissolving the valuable metal-containing feed material (item 104) may comprise a mined ore, concentrate, tailings, metallurgical residue or a mixture thereof, such as minerals comprising valuable metals (para. [0049]). Barbu already teaches add acid during the process of dissolution (para. [0054], Fig. 2) and adding base to precipitate out magnesium hydroxide and calcium hydroxide [0105], [0106], [0128]-[0130, Fig. 2-3). Barbu further teaches impurity comprising silica (para [0105]). Therefore, precipitating from a dissolved first substance as that of instantly is envisioned from Barbu’s teachings.
Similar reasons for sustaining double patenting rejections as well.
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.
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/JUN LI/ Primary Examiner, Art Unit 1732