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 10 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Nakon (AU 5447401 A).
Regarding claim 10, Nakon teaches a process for the extraction of metals in the form of metal ions (i.e., a metal ion extraction method) (Nakon, Title; Abstract).
Nakon further teaches the process comprising preparing an extractant solution with the use of an organic extractant (i.e., the extracting organic phase) (Nakon, Abstract; p. 4, lines 9-18; claims 1 and 10); separating the extractant solution from the aqueous solution, contacting the extractant solution with an aqueous solution containing metal ions to give a solution of the extractant loaded with some or all the metal ions int eh organic solvent and to give an aqueous solution (i.e., extracting a metal ion containing phase to be extracted) (Nakon, Abstract; p. 4, lines 9-18; claims 1 and 10); and separating the aqueous solution from the solution of the loaded organic extractant (Nakon, Abstract; p. 5, lines 6-13; claims 1 and 10).
Nakon further teaches contacting the loaded organic extractant with an aqueous acid solution, where the metal ions associated with the extractant are stripped (i.e., back-extracting an obtained loaded organic phase) from the organic phase to the aqueous phase (i.e., to obtain a metal ion enriched solution, which leave the extractant in the organic phase (i.e., a regenerated organic phase) that can then be recycled (Nakon, p. 23, lines 4-10).
Nakon further teaches the organic extractant (i.e., an extracting organic phase) being carboxylic acids, e.g., 2-hexyl-decanoic acid and 2-octyl-dodecanoic acid (Nakon, p. 5, lines 18-23; p. 13, lines 7-8 and 14-15; p. 14, lines 22-23), which correspond to the third and seventh carboxylic acid compounds as claimed.
Nakon further discloses buffers suitable for aiding the loading of calcium and magnesium into organic cation exchange extractants (Nakon, p. 10, Table 1), wherein an example of the buffers is ammonia (Nakon, p. 10, Table 1; p. 19 lines 1-5; p. 39 – Example 9),
and when the buffer solution (with some portion of the buffer in its basic form) is contacted with the organic phase, hydrogen ions that are expelled from the organic phase (as a. consequence of calcium loading) are neutralised by the buffer (Nakon, p. 10, lines 6-13) (i.e., the extracting organic phase is saponified by ammonia).
Given that Nakon teaches the method of extraction that overlaps the presently claimed method, including 2-hexyl-decanoic acid and 2-octyl-dodecanoic acid as the carboxylic acid and ammonia as a buffer, it therefore would be obvious to one of ordinary skill in the art, to use the 2-hexyl-decanoic acid and 2-octyl-dodecanoic acid as the carboxylic acid and ammonia as a buffer, which is both disclosed by Nakon and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 14, Nakon teaches the metal ion extraction method according to claim 10, wherein the acid used to the acid stripping (i.e., back extractant for the back-extracting) being sulphuric acid or hydrochloric acid (Nakon, p. 23, lines 5-10).
Regarding claims 15 and 16, Nakon teaches the metal ion extraction method according to claim 10, wherein excess strong acid is used to ensure near complete stripping of copper loaded organic phase (Nakon, p. 41, lines 11-12).
Although there are no disclosures on the concentration of the back extractant (e.g., hydrochloric acid or sulfuric acid) used for the back-extracting 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 concentration of the back extractant (e.g., hydrochloric acid or sulfuric acid) used for back-extracting, including over the amounts presently claimed, in order to achieve near complete stripping of the loaded organic phase, and thereby arrive at the claimed invention.
Regarding claim 17, Nakon teaches the metal ion extraction method according to claim 10, wherein the calcium loaded organic extractant formed (i.e., the extracting organic phase) being contacted with the aqueous solution containing metal ions (i.e., the metal ion containing phase to be extracted) using an organic to aqueous ratio of roughly 1:1, which falls within the claimed range (Nakon, p. 37, lines 1-9).
Regarding claim 18, Nakon teaches the metal ion extraction method according to claim 10, wherein magnesium loaded organic (i.e., the loaded organic phase) being stripped with sufficient hydrochloric acid (i.e., back extractant) solution to ensure complete magnesium and calcium stripping (i.e., back-extracting an obtained loaded organic phase) (Nakon, p. 31, lines 3-5).
Although there are no disclosures on the volume ratio of the loaded organic phase and the back extractant 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 volume ratio of the loaded organic phase and the back extractant, including over the amounts presently claimed, in order to achieve complete back-extracting an obtained loaded organic phase, and thereby arrive at the claimed invention.
Response to Arguments
In response to applicant’s amendments to claims 14 and 17-18, the previous claim objections are withdrawn from the record.
In response to applicant amendment to claim 10 and approved terminal disclaimer filed 1/28/2026, the previous nonstatutory double patenting rejection over copending application no. 18/026,560 is withdrawn from the record.
Applicant primarily argues:
“Nakon has disclosed the extraction and separation of metal ions using extractant 2-hexyldecanoic acid (2-HDA), in Example 7, the extractant 2-hexyldecanoic acid was saponified by calcium hydroxide, resulting in extraction rates of 91.46%, 81.83%, and 60.06% for Ni, Co, and Mn, respectively; and in Example 8, the extractant 2-hexyldecanoic acid was saponified by magnesium oxide, resulting in extraction rates of 88.74%, 80.91%, and 50.54% for Ni, Co, and Mn, respectively. It can be seen that the extractant 2-hexyldecanoic acid disclosed in Nakon did not use saponification agents other than calcium hydroxide and magnesium oxide for saponification, that is, Nakon did not teach the use of sodium hydroxide for saponification treatment of the extractant 2-hexyldecanoic acid.
However, the method for extracting and separating metal ions described in the present application uses sodium hydroxide, potassium hydroxide, or ammonia to saponify the extractant, achieving efficient extraction and separation of Ni, Co, and Mn. For example, referring to Example 3 of the present application, sodium hydroxide was used to saponify the Extractant 196 for extracting and separating Ni/Co/Mn/Ca/Mg mixed ions in a battery
material solution. When the O/A (the organic phase (O) and the aqueous phase (A)) is 8:1, Ni, Co and Mn can be almost completely extracted from the battery material solution system, while Ca and Mg have low extraction rate (see FIG. 4).
Therefore, the metal ion extraction method of the present application uses a special saponification agent of "sodium hydroxide, potassium hydroxide, or ammonia" to saponify the extractant, achieving better extraction effects than Nakon, which cannot be reasonably expected by those skilled in the art based on Nakon.”
Remarks, p. 8-9
The examiner respectfully traverses as follows:
While Nakon does not explicitly refer ammonia to be “saponifying agent” or the extracting organic phase being “saponified” by ammonia, Nakon recognized the criticality of using ammonia in the process for the extraction of metals from an aqueous solution of metals in the form of their metal ions. Specifically, Nakon explicitly teaches using ammonia as a buffer for aiding the loading of calcium and magnesium into organic cation exchange extractants (Nakon, p. 10, Table 1; p. 19 lines 1-5; p. 39 – Example 9). Nakon also explicitly teaches, when the buffer solution (with some portion of the buffer in its basic form) is contacted with the organic phase, hydrogen ions that are expelled from the organic phase (as a. consequence of calcium loading) are neutralised by the buffer (Nakon, p. 10, lines 6-13). Therefore, Nakon does teach the extracting organic phase being saponified by ammonia, as presently claimed, absent evidence to the contrary.
Applicant further argues:
“Therefore, the metal ion extraction method, of the present application employs specific carboxylic acid compounds as extractants for extracting and separating metal ions, achieving excellent extraction performance that would not be reasonably expected by a person skilled in the art based on Nakon.”
Remarks, p. 10-11
The examiner respectfully traverses as follows:
Firstly, regarding employing specific carboxylic acid compounds as extractants for extracting and separating metal ions, achieving excellent extraction performance over Nakon, applicant has not provided sufficient evidence (i.e., data) to support for the position.
Secondly, given that Nakon teaches both 2-hexyldecanoic acid and 2-octyldodecanoic acid to be carboxylic acids in the extracting organic phase, which are both claimed in claim 1, it is the examiner’s position that Nakon would be expected to achieve the same excellent extraction performance as the present application using those carboxylic acids, absent evidence to the contrary.
Applicant further argues:
“The specific carboxylic acid compounds as extractants defined in the amended claim 1 has low cost and promising application prospects, which can be used in various systems such as ternary battery recycling and battery-grade nickel sulfate preparation.
In fact, the achievement of above beneficial effects requires that those skilled in the art spend a lot of time and effort, as well as inventive labor. The performance of products in the field of organic compounds cannot be directly inferred from their structure, and sometimes compounds with similar structures have significantly different properties. In the prior art in this field, there is no direct and simple correspondence between the structure of the extractant and the technical effect of the present invention. Moreover, whether extractants can be beneficially applied to industry requires comprehensive consideration of various performance indicators of extractants, and improving one performance cannot be achieved at the expense of sacrificing other aspects of performance. For example, for the carboxylic acid extractant of the present application, it is necessary to have low water solubility to ensure its concentration in the organic phase, high separation coefficient to separate the desired metal from other metals, as well as reverse extraction efficiency and oxidation resistance to nickel and cobalt. Therefore, after comprehensive consideration, it is a technical challenge to determine which structure of extractant can achieve the technical effect of the present application, and it is impossible to obtain it through conventional technical means.
Therefore, the metal ion extraction method, defined in the amended claim 10 of the present application, which uses the specifically saponified carboxylic acid compound as the extraction organic phase for extracting and separating metal ions, possesses inventive step.”
Remarks, p. 11-12
The examiner respectfully traverses as follows:
Firstly, regarding the claimed invention having beneficial effects over Nakon, applicant has not provided sufficient evidence (i.e., data) to support for the position.
Secondly, Nakon recognized the criticality of using the claimed carboxylic acid. Nakon explicitly teaches preferably both 2-hexyl-decanoic acid and 2-octyl-dodecanoic acid to be carboxylic acids in the extracting organic phase (Nakon, p. 5, lines 18-23; p. 13, lines 7-8 and 14-15; p. 14, lines 22-23), which are both claimed in claim 1. Therefore, Nakon would be expected to achieve the same beneficial effects as the present application, absent evidence to the contrary.
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 Coris Fung whose telephone number is (571)270-5713. The examiner can normally be reached Mon-Fri 8:00 a.m. - 4:00 p.m..
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/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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