DETAILED ACTION
Claims 1-5, 8-9, 12, and 21 are pending and currently under review.
Claims 6-7, 10-11, and 13-20 are cancelled.
Claim 21 is newly added.
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 Amendment
The amendment filed 11/20/2025 has been entered. Claims 1-5, 8-9, and 12, and newly submitted claim(s) 21 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome some of the 112(b) rejections previously set forth in the Non-Final Office Action mailed 8/20/2025.
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 2-3 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 2-3 recite the term “suitable… for the mixing step (b)”, which is indefinite because it is unclear as to what particular structure, if any, is required by the term “suitable”. The examiner notes that virtually anything can be mixed at least in some degree, and therefore it is unclear as to whether “suitable” requires some improvement to particle mixing properties, some particular powder size or shape, or something else entirely. The examiner interprets the aforementioned claims to be met by anything that is capable of being mixed.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4, 8-9, 12, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kohr (US 2002/0194963) in view of either one of Liu (US 2011/0150729) or Bouffard (2005, Review of agglomeration practice and fundamentals in heap leaching).
Regarding claim 1, Kohr discloses a method of recovering precious metals from refractory sulfide ores, which one of ordinary skill would understand to naturally be a mined material [abstract]. The method of Kohr includes forming a mixture (ie. mixing) of crushed ore and pyrite, wherein said pyrite is a pyrite concentrate derived from mine tailings [fig.1], which corresponds to steps (a) and (b) as claimed. The examiner notes that the recitation of “wherein the pyrite…has capacity to generate acid and heat…” is an instance of functional language which recites a mere function of the pyrite rather than any particular structure. See MPEP 2173.05(g). Accordingly, the examiner notes that the pyrite of Kohr (which is the same as that as claimed) would be entirely capable of achieving the claimed function of being able to generate acid and heat to facilitate leaching and reduce an amount of added acid.
Kohr further teaches a subsequent step of bioleaching (ie. using leach liquor and microbes) to oxidize the iron sulfide particles and subsequent extraction (ie. recovering) of precious metals through conventional means such as lixiviation, which meets steps (c) and (d) as claimed [0037-0038]. The examiner notes that considerations of “forming a pregnant leach liquor”, “pyrite generating acid and heat…”, and “oxidizing ferrous iron to ferric iron” are merely instances of functional language which would naturally be met by the disclosure of Kohr because these features would have naturally been expected to occur in the leaching and lixiviation steps of Kohr as recognized by one of ordinary skill. See MPEP 2173.05(g).
Kohr does not expressly teach that the mixing of step (b) further includes forming of agglomerates of the metal sulfide containing material and pyrite as claimed. Liu discloses that it is known to precondition ore to be suitable for heat leaching by performing mixing and agglomeration [0051, 0054-0056]. Therefore, it would have been obvious to modify the method of Kohr by performing mixing and agglomeration for the aforementioned benefit. Alternatively, Bouffard discloses that it is well-known and conventional to perform mixing and agglomeration prior to heap leaching to improve metal recovery [abstract, “introduction”, p.14, 19, 24]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Kohr by performing mixing and agglomeration for the aforementioned benefits and because it would be well-known to one of ordinary skill.
Regarding claims 2-4, the aforementioned prior art discloses the method of claim 1 (see previous). Kohr further teaches initial crushing of the ore, which one of ordinary skill would understand to meet the limitations of being “processed to be suitable…” and “comminuting” to produce a reduced, suitable particle size for agglomeration [fig.1]. Liu and Bouffard also both teach that it is known to perform crushing prior to agglomeration [0054 & “introduction”, respectively].
Regarding claims 8-9, the aforementioned prior art discloses the method of claim 1 (see previous). Kohr further that the pyrite is a pyrite concentrate derived from mine tailings, wherein said mine tailings are processed by removing pyrite and forming: 1) a pyrite concentrate and 2) subsequent further tailings which would naturally be less reactive (ie. inert stream) [fig.1].
Regarding claim 12, the aforementioned prior art discloses the method of claim 1 (see previous). Kohr further teaches heap leaching [abstract, fig.1]. Liu and Bouffard are also both directed to heap leaching [titles, respectively].
Regarding claim 21, the aforementioned prior art discloses the method of claim 1 (see previous). Kohr further teaches recovering metals such as copper, zinc, or nickel, among others [0023, claims 17-18].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kohr (US 2002/0194963) and others as applied to claim 1 above, and further in view of either one of Pincheira et al. (US 5,356,457) or Pereira et al. (US 2007/0209481).
Regarding claim 5, the aforementioned prior art discloses the method of claim 3 (see previous). The aforementioned prior art does not teach multiple crushing steps as claimed. Pincheira et al. discloses that it is conventionally known to crush ore for subsequent heap leaching through primary, secondary, and tertiary crushing methods [abstract, col.6 ln.42-50]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by including multiple crushing steps because multiple crushing steps are well-known and conventional as taught by Pincheira et al. Alternatively, Pereira et al. discloses that it is known to crush ores for heap leaching, wherein crushing can include tertiary and even quaternary crushing steps to provide larger reaction surfaces [0065, fig.2]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by including multiple crushing steps for the aforementioned benefit.
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 1-5, 8-9, 12, and 21 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,236,407. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlap between the scope of the patented claims and the instant claims is prima facie obvious.
Response to Arguments
Applicant's arguments filed 11/20/2025 regarding the 112(b) rejections regarding the term “suitable” have been fully considered but they are not persuasive.
Applicant argues that the term “suitable for agglomeration” is a known, specific technique that requires a “key” particle size. The examiner cannot concur insomuch as the rejection still pertains to the amended phase “suitable for…mixing”. As stated previously, virtually any material can be mixed at least to some degree, such that it is unclear to the examiner as to how “suitable for…mixing” is intended to limit the claim scope. Applicant appears to be of the position that the claim requires some parameter of particle size. However, it is unclear as to what constitutes a “key” particle size, which further bolsters the above determination of indefiniteness.
Applicant's arguments filed 11/20/2025 regarding the 103 rejections have been fully considered but they are not persuasive.
Applicant argues that Kohr does not teach agglomeration of the concentrate. In response, the examiner notes that this point was never alleged in the previous rejections. The previous rejections expressly rely upon secondary references as noted above to establish the obviousness of including an agglomeration step of the metal sulfide containing material and pyrite as claimed. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant's arguments filed 11/20/2025 regarding the double patenting rejections have been fully considered but they are not persuasive.
Applicant argues that there is no overlap in claim scope because the earlier patented claims do not recite obtaining pyrite from pyrite tailings, etc. The examiner cannot concur. The earlier patented claims expressly recite this feature (see for example patented claim 1 which recites a pyrite containing slurry from a mine).
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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734