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 domestic benefit to Provisional U.S. Application 63/118,677 (“’677”) under 35 U.S.C. 119(e). However, as best understood by the Examiner, ‘677 does not provide support for the mineral feedstock of claim 1 being “nickel saprolite”. The effective filing date of the instant claims is therefore November 26th, 2021, corresponding to the effectively filed date of international publication PCT/IB2021/061024, to which the instant application claims benefit and which provides support for the mineral feedstock of claim 1 being “nickel saprolite”.
Claim Objections
Claims 1, 3, and 16 are objected to because of the following informalities:
In line 4 of claim 1, hydrochloric acid appears to be written as “HCI”, i.e., with a capital ‘I’ rather than a lowercase ‘l’. The chemical formula should be edited to read, “HCl”.
In line 22 of claim 1 (step d)), it is assumed that “manganese” should not be struck through, such that the limitation should begin, “precipitating manganese from the Ni/Co depleted solution”. This instance of “manganese” should be re-introduced into the claim where it has been deleted.
In lines 35-36 of claim 1 (step f)), “Cl2(g)” should be written as “Cl2(g)”, and “H2(g)” should be written as “H2(g)”, with ‘(g)’ written in normal script instead of subscript.
In line 2 of claim 16, “Cl2(g)” should be written as “Cl2(g)”, with ‘(g)’ written in normal script instead of subscript.
In lines 5-6 of claim 3, it is assumed that part or all of the phrase “one or more of the alkali metal carbonate or bicarbonate precipitants” is redundant and should be removed from the claim, as the claim immediately continues thereafter, “an alkali metal carbonate or bicarbonate comprising NaHCO3 or Na2CO3”.
In line 6 of claim 3, “Na2CO3” should be edited to read, “Na2CO3”, i.e., with a subscript 2 in the chemical formula.
Appropriate correction is required.
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 4 and 22 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 4 recites the limitation "the scrubbing solution" in line 4. There is insufficient antecedent basis for this limitation in the claim. For purposes of examination, any scrubbing solution will be interpreted to read on “the scrubbing solution”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Claim 22 recites the limitation "the step of precipitating iron and aluminum" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, upon which claim 22 depends, contains antecedent basis for a step of “precipitating iron and/or aluminum” in line 6, but not ‘iron and aluminum’. For purposes of examination either ‘and/or’ or ‘and’ will be considered to read on the respective claim limitation, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
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.
Claims 1, 16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hyvärinen (WO 2007/039665 A1), in view of Fournier (U.S. 2017/0159190), and further in view of Roque´-Rosell (“The accumulation of Ni in serpentines and gernierites from the Falcondo Ni-laterite deposit (Dominican Republic) elucidated by means of μXAS”, 2017).
Regarding claim 1, Hyvärinen teaches a process for processing a nickel mineral feedstock (Hyvärinen, Fig. 1, Page 17, line 13 – Page 20, line 22, sulphidic nickel concentrate), comprising:
precipitating magnesium from a Fe/Al depleted solution with addition of a NaOH alkali hydroxide precipitant, to produce a Mg-depleted solution and a magnesium hydroxide precipitate product (Hyvärinen, Fig. 1, Page 19, line 29 – Page 20, line 2);
subjecting the Mg-depleted solution to a chloroalkali process producing a NaOH alkali hydroxide precipitant, a Cl2(g) product and a H2(g) product, further comprising reacting the Cl2(g) product and the H2(g) to product HCl as an HCl acid leachant (Hyvärinen, Page 20, lines 12-22).
Hyvärinen does not teach that the nickel mineral feedstock is a comminuted nickel saprolite mineral feedstock or that the Fe/Al depleted solution is a Fe/Al/Mn depleted solution produced from the claimed steps a)-d). However, Fournier teaches a process for obtaining a substantially similar solution from the claimed steps a)-d) starting from a comminuted nickel mineral feedstock (Fournier, [0058]-[0059]), which would have been considered to be suitable for conducting claimed steps e) and f) and which could similarly use the NaOH and HCl produced from steps e) and f) taught by Hyvärinen (Fournier, [0017], [0052]-[0088]):
leaching iron, aluminum, nickel, cobalt, manganese, and magnesium metal values (Fournier, Table 6) from the comminuted mineral feedstock with an HCl acid leachant (Fournier, [0017], [0066]-[0067]), to produce a solid siliceous residue and a loaded leach solution (Fournier, [0068]);
precipitating iron from the loaded leach solution with the addition of a first NaOH alkali hydroxide precipitant (Fournier, [0069]-[0071], iron impurities removed by adjusting pH to 3-4 and adding oxidizing agent; [0031], [0073], [0076], sodium hydroxide is a suitable base), to produce an Fe/Al depleted solution and an iron-containing precipitate product (Fournier, [0072]);
precipitating nickel and cobalt from the Fe/Al depleted solution (Fournier, Table 6), wherein the precipitating is with addition of a second NaOH alkali hydroxide precipitant (Fournier, [0073]-[0074], [0108]), to produce a Ni/Co depleted solution (Fournier, [0073], solution after filtration) and a nickel and cobalt (Fournier, Table 6) mixed hydroxide (Fournier, [0073], “nickel in chloride solution can also be precipitated as an hydroxide”) product; and
precipitating from the Ni/Co depleted solution with addition of an oxidant and with addition of a third NaOH alkali hydroxide precipitant, to produce an Fe/Al/Mn depleted solution and a manganese-containing precipitate product (Fournier, [0076], [0110]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have produced a Fe/Al/Mn depleted solution from the claimed steps a)-d) taught by Fournier and used this solution to enact steps e) and f) taught by Hyvärinen. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, the solution at this point of Fournier is an aqueous MgCl2 solution containing NaCl (Fournier, [0077]-[0079]), which would have been considered to be suitable for the corresponding steps of Hyvärinen. The fact that Fournier starts from a different ore than Hyvärinen does not alter the principle of Hyvärinen’s process, as Hyvärinen is directed generally to processing nickel ore (Hyvärinen, Page 1, lines 5-7, “The invention relates to a method for processing nickel containing raw material such as sulphidic nickel concentrate or nickel ore in chloride-based leaching for obtaining a nickel product” (emphasis added)), and alternative starting materials subject to chloride-based leaching would therefore also be considered suitable to conduct steps e) and f) directed to processing the resulting chloride solutions.
Further, It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have used the NaOH and HCl produced in step f) of Hyvärinen as precipitant and leachant in the earlier steps a)-d) taught by Fournier, as Hyvärinen already teaches that recycling these reagents for these purposes is advantageous (Hyvärinen, Page 4, line 29 – Page 5, line 15; Page 20, lines 12-22).
Fournier does not explicitly teach that the iron-containing precipitate product is an iron oxide and/or hydroxide. However, it has been held that where claimed and prior art products are produced by identical or substantially similar methods, a prima facie case of anticipation or obviousness has been established. MPEP 2112.01, citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In other words, if the prior art teaches or at least suggests the claims' positive method steps, it matters not whether the prior art also teaches or suggests the features of the intended result of performing said steps. It would not be reasonable to expect different results when performing identical or at least substantially similar steps. Accord, MPEP 2145 II, citing, e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (stating that “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention”). See also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (stating the “general rule that merely discovering and claiming a new benefit of an old process cannot render the [old] process again patentable”). In the instant case, as Fournier precipitates iron in a substantially similar process of increasing the pH, it would necessarily precipitate in the same form of an iron hydroxide or oxide as claimed.
Fournier does not explicitly teach that the manganese-containing precipitate product is a manganese hydroxide precipitate product. However, by the same logic as presented above for iron, the manganese-containing precipitate product would necessarily be the same as the claimed manganese hydroxide precipitate product.
Fournier does not explicitly teach that the comminuted nickel mineral feedstock is a nickel saprolite mineral feedstock. However, Fournier teaches that the comminuted nickel mineral feedstock is serpentine (Fournier, [0018]), and Roque´-Rosell teaches that Ni-bearing serpentine is a major component of saprolite (Roque´-Rosell, Abstract, “The Fe K-edge μXANES demonstrated that Fe in the Ni-poor primary serpentine is mostly in the Fe2+ form, whereas in the Ni-bearing serpentine constituting the bulk of the saprolite and in the Fe-bearing garnierite Type I Fe was in the form of Fe3+.”).
It would have been obvious for Fournier’s serpentine to be a saprolite mineral feedstock, given that Roque´-Rosell teaches that Ni-bearing serpentines can comprise saprolite, and recovery of Ni is a shared objective of both Hyvärinen (Hyvärinen, Page 19, lines 15-19) and Fournier (Fournier, [0108]). A saprolite mineral feedstock would have therefore been considered a suitable mineral feedstock for recovering Ni by a person having ordinary skill in the art. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Regarding claim 16, modified Hyvärinen renders the process of claim 1 obvious, as discussed above wherein the oxidant is H2O2 (Hyvärinen, [0110]), which differs from the claimed chlorine gas (Cl2(g)) or sodium hypochlorite (NaOCl). However, Hyvärinen teaches that chlorine gas is also a suitable oxidant (Hyvärinen, [0028]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have substituted H2O2 as an oxidant for chlorine gas. Substitution of equivalents known for the same purpose has been held to be a prima facie case of obviousness. See Smith v. Hayashi, 209 USPQ 754. See also MPEP § 2144.06.II. In the instant case, both H2O2 and chlorine gas were known for the same purpose as an oxidant (Fournier, [0028]), so it would have been obvious to substitute one for the other.
Regarding claim 18, modified Hyvärinen renders the process of claim 1 obvious, as discussed above, further comprising magnetically separating material from the comminuted mineral feedstock (Fournier, [0022], [0058]-[0059]). It would have been obvious to incorporate this step of Fournier because it is part of the process used to obtain the Fe/Al/Mn depleted solution rendered obvious to use in step e) of claim 1.
Regarding claim 19, modified Hyvärinen renders the process of claim 1 obvious, as discussed above, further comprising subjecting the loaded leach solution to a resin in leach process so as to selectively remove nickel values from the loaded leach solution, to obtain a purified nickel product (Fournier, [0073]-[0075]). It would have been obvious to incorporate this step of Fournier because it is part of the process used to obtain the Fe/Al/Mn depleted solution rendered obvious to use in step e) of claim 1 and because a person having ordinary skill in the art would recognize the commercial value of recovering nickel.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hyvärinen (WO 2007/039665 A1), in view of Fournier (U.S. 2017/0159190), and further in view of Roque´-Rosell (“The accumulation of Ni in serpentines and gernierites from the Falcondo Ni-laterite deposit (Dominican Republic) elucidated by means of μXAS”, 2017), as applied to claim 1 above, and further in view of Yablonsky (U.S. 2015/0202568).
Regarding claim 3, modified Hyvärinen renders the process of claim 1 obvious, as discussed above, but does not teach reacting the NaOH alkali hydroxide product of the electrolysis process with a CO2 containing gas, thereby scrubbing carbon dioxide from the CO2 containing gas to produce one or more of an alkali metal carbonate or bicarbonate comprising NaHCO3 or Na2CO3. However, Yablonsky teaches the same (Yablonsky, Fig. 2, [0043]-[0046]). Yablonsky is analogous to the instant claims because it is directed to a chlor-alkali process of producing NaOH, Cl2, and H2 from a NaCl solution (Yablonsky, [0049]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have reacted the NaOH alkali hydroxide product of the electrolysis process with a CO2 containing gas, thereby scrubbing carbon dioxide from the CO2 containing gas to produce one or more of an alkali metal carbonate or bicarbonate comprising NaHCO3 or Na2CO3, as Yablonsky teaches that this is an effective means of producing NaHCO3 for decarbonation of gas pollutants (Yablonsky, [0008]-[0011], [0046]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Hyvärinen (WO 2007/039665 A1), in view of Fournier (U.S. 2017/0159190), and further in view of Roque´-Rosell (“The accumulation of Ni in serpentines and gernierites from the Falcondo Ni-laterite deposit (Dominican Republic) elucidated by means of μXAS”, 2017), as applied to claim 1 above, and further in view of Yablonsky (U.S. 2015/0202568), as applied to claim 3 above, and further in view of Shaikh (“In situ observation of the conversion of sodium carbonate to sodium carbonate monohydrate in aqueous suspension”, 2005).
Regarding claim 4, modified Hyvärinen renders the process of claim 3 obvious, as discussed above, but does not explicitly teach that scrubbing carbon dioxide from the CO2 containing gas comprises precipitating Na2CO3 hydrates from the scrubbing solution in a crystallization process to produce a solid Na2CO3 crystallizer product. However, Yablonsky teaches that formation of carbonate and bicarbonate precipitants can be conducted over a wide range of temperatures, and manipulation of temperature provides control over the precipitation processes (Yablonsky, [0072]). On the other hand, Shaikh teaches that sodium carbonate in suspension spontaneously converts to sodium carbonate monohydrate in a temperature-dependent fashion (Shaikh, Abstract). Thus, in the manipulation of temperature taught by Yablonsky, the formation and quantity of Na2CO3 hydrates would be an expected and result-effective variable depending on said temperature, and the presence of Na2CO3 hydrates cannot be considered critical in the absence of a convincing showing of criticality.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Hyvärinen (WO 2007/039665 A1), in view of Fournier (U.S. 2017/0159190), and further in view of Roque´-Rosell (“The accumulation of Ni in serpentines and gernierites from the Falcondo Ni-laterite deposit (Dominican Republic) elucidated by means of μXAS”, 2017), as applied to claim 1 above, and further in view of Morris (WO 2015/058239 A1).
Regarding claim 20, modified Hyvärinen renders the process of claim 1 obvious, as discussed above, but does not explicitly teach washing and/or alkalization of the solid siliceous residue. However, Fournier states that the siliceous residue has good purity and is potentially economically important (Fournier, [0068]).
Recognizing the potential salability of the siliceous residue, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have rinsed it. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.). In the instant case, it was known that rinsing a siliceous residue from an HCl leaching process would remove residual acid from the silica (Morris, [0039]), which could then be used in an economically relevant process such as that tought by Morris.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Hyvärinen (WO 2007/039665 A1), in view of Fournier (U.S. 2017/0159190), and further in view of Roque´-Rosell (“The accumulation of Ni in serpentines and gernierites from the Falcondo Ni-laterite deposit (Dominican Republic) elucidated by means of μXAS”, 2017), as applied to claim 1 above, and further in view of Liu (WO 2015/192762 A1) (the attached machine translation is referenced below).
Regarding claim 21, modified Hyvärinen renders the process of claim 1 obvious, as discussed above, but does not explicitly teach washing and/or alkalization of the iron and/or aluminum hydroxide or oxide precipitate product. However, Liu teaches that an iron hydroxide that has been precipitated from a hydrochloric acid leach can be washed and used to prepare iron red (Liu, [0091]-[0092]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have washed the iron-containing precipitate of modified Hyvärinen, as Liu suggests that this material would be valuable (Liu, [0020]), and Liu teaches washing the precipitate as part of the process that would allow the recycling of the iron values therefrom (Liu, [0091]-[0092]).
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Hyvärinen (WO 2007/039665 A1), in view of Fournier (U.S. 2017/0159190), and further in view of Roque´-Rosell (“The accumulation of Ni in serpentines and gernierites from the Falcondo Ni-laterite deposit (Dominican Republic) elucidated by means of μXAS”, 2017), as applied to claim 1 above, and further in view of Aguilar (WO 2013/188922 A1).
Regarding claim 22, modified Hyvärinen renders the process of claim 1 obvious, as discussed above, but does not teach adding a hematite seed material to the step of precipitating iron. However, Aguilar teaches adding a hematite seed to a saprolite hydrochloric acid leachate (Aguilar, Page 8, lines 17-25, Page 9, lines 18-31; Page 13, lines 7-16)
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have further modified Hyvärinen’s process by adding a hematite seed material to the step of precipitating iron, as Aguilar teaches that this facilitates precipitation of the iron in a crystalline form which is compact and which can be readily stacked in a tailings site (Aguilar, Page 13, lines 13-16).
Regarding claim 23, modified Hyvärinen renders the process of claim 1 obvious, as discussed above. As discussed above for claim 22, it would have been obvious to add hematite as a seed material in view of Aguilar. Further, Aguilar teaches recirculating the hematite which is precipitated to the step of precipitating iron so as to seed the precipitation of a hematite product (Aguilar, Page 13, lines 11-13, “A portion of hematite containing underflow (15) from
thickener (13) is returned as stream (17) to tank (7) to act as a continuous supply of hematite seed in order to continue hematite precipitation.”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have further recirculated the hematite seed material to the step of precipitating iron so as to seed the precipitation of a hematite product, as this would yield the predictable effect of supplying the necessary seed material for the process to continue. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (see MPEP 2143.A.). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143.B.).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Hyvärinen (WO 2007/039665 A1), in view of Fournier (U.S. 2017/0159190), and further in view of Roque´-Rosell (“The accumulation of Ni in serpentines and gernierites from the Falcondo Ni-laterite deposit (Dominican Republic) elucidated by means of μXAS”, 2017), as applied to claim 1 above, and further in view of Ji (U.S. 2008/0105088).
Regarding claim 24, modified Hyvärinen renders the process of claim 1 obvious, as discussed above, but does not teach recycling a brine comprising the Fe/Al/Mn depleted solution to a comminuting step to provide the comminuted mineral feedstock. However, while Fournier does not explicitly teach that the comminution is done by means of wet grinding (Fournier, [0058]-[0059]), Ji teaches that this is conventional in the art for comminuting material to be subject to acid leaching, and that dry or wet grinding can be used interchangeably (Ji, Fig. 2, [0039]). Ji further teaches recycling a leach solution to the comminuting step to provide a comminuted mineral feedstock (Ji, [0039]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have further modified Hyvärinen by adopting wet grinding in the comminution of the mineral feedstock and to have recycled a brine comprising the Fe/Al/Mn depleted solution to the comminution step. The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (see MPEP 2143.A.). The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 - 97 (2007) (see MPEP § 2143.B.). In the instant case, these modifications would yield the predictable results of providing a liquid medium with which to conduct wet grinding while reducing the amount of waste generated in the overall process.
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, 3-4, 16, and 18-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-12, 14-15, and 18-24 of copending Application No. 18/858,603 (reference application, “’603”). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6, 8-12, 14-15, and 18-24 of ‘603 together contain all of the limitations of instant claims 1, 3-4, 16, and 18-24.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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, Anthony Zimmer can be reached at 571-270-3590. 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.
/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736