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 .
Response to Arguments
Applicant’s arguments, see page 7, filed 30 March 2026, with respect to the rejections under 35 USC§112 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Upon, further consideration, a new 35 USC § 112 grounds of rejection is/are being made
(NEW) 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.
Claims 11, 13, 20-22 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.
Claims 11 and 13 recite “Escaid 110” as one of the diluents. “Escaid 110” appears to be a trademark, trade name, or commercial product designation. A trademark or trade name identifies the source of goods and not the goods themselves. Accordingly, a trademark or trade name does not define the chemical composition, structure, properties, or technical characteristics of the material with sufficient precision to establish the metes and bounds of the claim.
In the present case, the term “Escaid 110” is used to identify or describe a diluent in the claimed extraction composition and extraction method. Because the claim does not define the diluent by its chemical composition or other definite technical characteristics, one of ordinary skill in the art would not be able to determine with reasonable certainty what material is required when “Escaid 110” is selected. The scope of claims 11 and 13 is therefore unclear.
Claim 20 depends from claim 8 and recites “wherein the metal ion is one or a mixture of Ni2+, Co2+ and Mn2+.” However, claim 8 is directed to an extractant and does not recite or otherwise introduce a metal ion. Thus, the phrase “the metal ion” in claim 20 lacks proper antecedent basis.
Claims 21 and 22 depend directly or indirectly from claim 20 and further recite “the metal ion.” Because claim 20 lacks proper antecedent basis for “the metal ion,” claims 21 and 22 inherit the same defect. In addition, claim 22 recites “wherein and the metal ion further comprises Mg2+ and/or Li+,” which is grammatically unclear.
The absence of proper antecedent basis renders the scope of claims 20-22 unclear. Because the claims depend from an extractant claim, it is not clear whether the recited metal ion is intended to be part of the extractant, an intended use of the extractant, a component of an aqueous phase, or a limitation of an extraction method. Therefore, one of ordinary skill in the art would not be able to determine the metes and bounds of claims 20-22 with reasonable certainty.
Accordingly, claims 20-22 are indefinite under 35 U.S.C. § 112(b).
The rejection of claims 20-22 may be overcome by amending the claims to provide proper antecedent basis for “the metal ion” and to clearly define the relationship between the extractant and the recited metal ion. For example, the claims may be rewritten to depend from an extraction method claim that introduces a metal ion, such as claim 12 or claim 13, if appropriate. The rejection of claims 11 and 13 may be overcome by replacing the trade name “Escaid 110” with definite generic terminology supported by the original disclosure, or by deleting the trade name from the claims.
Allowable Subject Matter
Claims 7-10, 12, 14-19, 23 are allowable over the prior art of record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEBORAH D CARR whose telephone number is (571)272-0637. The examiner can normally be reached Monday-Friday (10:30 am -6:30 pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached at 572-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEBORAH D CARR/ Primary Examiner, Art Unit 1691
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