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 pages 8-11, filed 2 October 2025, with respect to the rejections under 35 USC§112 and 35 USC§102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, new ground(s) of rejection is made.
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 7-23 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 8 and 9 alternatively recite: (i) limitations directed to combinations of extractants, and (ii) limitations directed to the use of extractants for extraction and separation of metal ions. Because these limitations define the invention from different and inconsistent perspectives (composition vs. use), it is unclear what subject matter is being claimed. Therefore, claims 8 and 9 are indefinite.
Claim 9 further recites that, when the carboxylic acid compound represented by Formula I or a salt thereof is used as an extractant, the metal ions are defined as a “combination of at least one of … and at least one of ….” This recitation is internally inconsistent and grammatically unclear, such that the identity of the extracted metal ions cannot be reasonably understood. Accordingly, claim 9 is indefinite for this additional reason.
Claim 11 alternatively recites three unrelated defining features, including: (i) a molar ratio between the carboxylic acid compound and its salt, (ii) a diluent, and (iii) a molar or volume ratio of extractant to diluent. Because these limitations define the invention from different and uncoordinated viewpoints, the metes and bounds of claim 11 is unclear. Accordingly, claim 11 is indefinite.
Claim 13 alternatively recites numerous unrelated parameters, including: the identity of a metal ion, a molar ratio of acid to salt in an organic phase, the presence of a diluent, a phase volume ratio, agitation or shaking, extraction temperature, and extraction time. These parameters are not presented as a single coherent combination but rather as alternative defining features. As a result, the invention cannot be clearly understood.
Claim 15 alternatively recites: (i) the molar concentration of an aqueous acid solution, (ii) the identity of the acid in the aqueous solution, and (iii) a volume ratio between organic and aqueous phases. Because these limitations define the invention from different and unrelated perspectives, the scope of claim 15 is unclear. Claim 15 is therefore indefinite.
Claim 16 alternatively recites multiple, unrelated limitations from different conceptual viewpoints, including:
(i) a limitation specifying substituent R¹,
(ii) a limitation specifying substituent R², and
(iii) a limitation defining the claimed subject matter by a process feature, namely that “the salt of the carboxylic acid compound represented by Formula I is obtained by reacting the carboxylic acid compound represented by Formula I with a base at a molar ratio of 1:1.”
Because claim 16 simultaneously defines the invention by structural features and by a method of manufacture, without making clear which limitation is essential to the invention, the scope of claim 16 cannot be reasonably determined. As a result, one of ordinary skill in the art would not be able to ascertain the metes and bounds of the claimed invention.
Claim 18 recites “a method for preparing a carboxylic acid compound represented by Formula I according to Claim 7.” However, claim 7 is directed to a compound (product), not to a method. A method claim cannot properly depend from a product claim, resulting in an improper dependency and further indefiniteness. Accordingly, claim 18 is indefinite.
Claim 19 alternatively recites numerous unrelated parameters, including: the identity of a halogen, the identity of a solvent, a volume-to-mass ratio of solvent to a compound, a molar ratio of base to a compound, reaction temperature, and reaction time.
These parameters are presented as alternative defining features rather than coordinated limitations, rendering the scope of the claim unclear.
Claims 7–23 is directed to extractants or extraction methods; however, the claims fail to clearly specify the object of extraction or the intended use. Although claim 8 includes language stating “used as an extractant for extraction and separation of metal ions,” this limitation is presented only as an optional alternative and does not clearly define the scope of the invention.
Accordingly, claims 7–23 fail to clearly define whether the invention is directed to an extractant composition, an extraction method, or a particular application thereof, and are therefore indefinite.
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 -7:00 pm).
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/DEBORAH D CARR/ Primary Examiner, Art Unit 1691