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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in the Republic of India on 11/03/2020. It is noted, however, that applicant has not filed a certified copy of the Indian application as required by 37 CFR 1.55.
Status of Claims
Claims 1, 2, and 4-10 are currently amended and Claim 3 is as originally filed.
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.
Claims 1-10 are 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 Claim 1, the limitation of “a niacin concentration in a range from 10mM to 100 mM” in lines 6 and 7 was not recited in the disclosure as originally filed.
In Claim 2, the limitation of “a raw material waste sample selected from the group consisting of …” in line 2 does not have support in the disclosure as originally filed for the limiting transitional term “consisting of.”
In Claim 5, the limitation “one or more of commonly coexisting ions selected from the group consisting of …” in lines 2 and 3 does not have support in the disclosure as originally filed for the limiting transitional term “consisting of.”
In Claim 9, the limitation “a derivative of niacin selected from the group consisting of …” in lines 2 and 3 does not have support in the disclosure as originally filed for the limiting transitional term “consisting of.”
In Claim 10, the limitation “a precious metal having a square planar complex selected from the group consisting of …” in lines 2-4 does not have support in the disclosure as originally filed for the limiting transitional term “consisting of.”
Claims dependent on any of the rejected claims are likewise rejected under this statute.
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 1-10 are 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.
Claim 1 recites “concentrated HCl and HNO3” in line 3. It is not clear if applicant intends to recite a form of HCl and HNO3 in a 3:1 ratio like aqua regia (see specification at [0053]) or if the HCl and HNO3 are in a 3:1 ratio in a concentrated aqueous solution.
Claims dependent on any of the rejected claims are likewise rejected under this statute.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by the document by Nag et al including the “Supporting Information for Publication” linked in the document.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Nag et al teaches a method for the rapid co-precipitation of [AuCl4]-[2Niacin+H]+ in water from gold-containing acidic mixtures by a saturated solution of niacin. After three days, blue crystals were obtained (page 2130). Figure 5 on page 2133 shows adding concentrated HNO3 and HCL to gold bearing material, filtering the precipitate, adding a reducing agent and recovering gold. Niacin as the ability to precipitate gold down to 320 ppb (page 2130). Nag et al anticipates the claimed invention.
Regarding Claim 2, the gold bearing material includes chemical waste, nonwasted, and electronic waste (page 2133).
Regarding Claim 3, the reductant is Na2S2O5, or sodium metabisulfite (page 2133).
Regarding Claim 4, the method occurs at room temperature (page 2130).
Regarding Claim 5, the method includes excluding Ni2+, Cu2+, Zn2+, Na+, K+, Mg2+, and Ca2+ (page 2130).
Regarding Claim 6, NaCl is added to slow down precipitation.
Regarding Claim 7, 96.5% of gold was recovered (page 2133) from a waste containing Ni, Au, and Cu (page S13 of Supporting Document).
Regarding Claim 8, niacin precipitates copper from a solution including gold and copper with ethanol (page 2133).
Allowable Subject Matter
Claims 9 and 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding Claim 9, the cited prior art does not suggest including ethionamide or nicotinamide with niacin. Regarding Claim 10, the cited prior art does not suggest precipitating precious metals as complexes such as PdCl42- and PtCl42-.
Response to Arguments
Applicant's arguments filed 01/07/2026 have been fully considered but they are not persuasive. Applicant argues that November 3, 2020, is the priority date of the instant application. However, applicant has not filed the Indian application with this date as indicated above.
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 Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith D. Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733
Prosecution Insights