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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 11 December 2025 is acknowledged.
Claim Objections
Claim 26 is objected to because of the following informalities: in line 4 the word about is repeated, when it appears one of the instances should be deleted. 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 1-12 and 21-28 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.
As to claim 1, the term “low” in the claim is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term low renders indefinite the carbon dioxide emissions.
Further as to claim 1, the claim recites the limitation "the metal" in line 12. There is insufficient antecedent basis for this limitation in the claim.
Further as to claim 1, at line 7, the claim recites “a metal salt from the leachate”; however, at line 4, the claim already recites a plurality of metal salts. It is unclear as to if the limitation of line 7 intends to refer back to one of the plurality of metal salts of line 4 or to a new and separate limitation. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
Further as to claim 1, at line 12, the claim recites the limitation “salt”; however, earlier in the claim at lines 4 and 7 salts are also referred to. It is unclear as to if the limitation intends to refer back to any of the earlier salts or to a new and separate limitation. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
As to claim 4, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
As to claim 5, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
As to claims 6, 7, 8 and 25, the claims refer to “adding the metal hydroxide” in step b; however, in claim 1 upon which claims 6, 7, 8 and 25 are dependent, there is no reference to adding a metal hydroxide. It is unclear as to if this is a new term lacking in antecedent basis or if this limitation intends to limit that the produced metal hydroxide of claim 1 is utilized in step b.
Further as to claims 8 and 25, the term “about” in the claims is a relative term which renders the claims indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term about renders indefinite the pH.
As to claims 9 and 26, the term “about” in the claims is a relative term which renders the claims indefinite. The term “about” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term about renders indefinite the voltage and the current density.
As to claims 10 and 27, the term “about” in the claims is a relative term which renders the claims indefinite. The term “about” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term about renders indefinite the concentration.
Further as to claims 10 and 27, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
As to claims 12 and 28, the term “about” in the claims is a relative term which renders the claims indefinite. The term “about” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term about renders indefinite the permeability.
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 1-7, 9-12, 21-24, 26, 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over US 2023/0060147 A1 to Scott et al. (Scott) in view of US 5,181,994 to Lonhoff et al. (Lonhoff).
As to claims 1, 3, 5, 10, 11, 21 and 27, Scott teaches a method for producing metal hydroxide that is used to capture carbon dioxide, thus low carbon dioxide emissions metal hydroxide and byproducts, the method comprising: (a) leaching a mineral rock mass containing predominately magnesium silicate with sulfuric acid forming a leaching comprising dissolved metal salts including magnesium sulfate and other metals such as iron; (b) separating some of the metals, including iron in the form of iron hydroxides, from the leachate using a neutralizing agent comprising, for example, magnesium hydroxide or calcium hydroxide; (c) using the magnesium sulfate from the leachate from step (b) as an electrolyte in an electrolysis cell to produce oxygen gas, sulfuric acid and magnesium hydroxide; and (d) suppling the sulfuric acid from the electrolysis cell back to the leaching step (Paragraphs 0070-0075, 0101-0103, 0121-0130, 0133-0135, 0144 and 0151-0153; Figures 1 and 2). However, Scott fails to further teach that the separating comprises using an oxygen gas.
However, Lonhoff also discusses acid leaching of iron and sulfate containing components and teaches that in order to ensure that the iron is precipitated as iron hydroxide oxygen is added (Column 6, Lines 47-54). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to add oxygen to the iron precipitation step of Scott in order to ensure that the iron is precipitated as iron hydroxide as taught by Lonhoff. It further would have been obvious to one of ordinary skill in the art to supply this oxygen from the electrolysis cell to utilize the byproduct of Scott.
As to claim 2, the combination of Scott and Lonhoff teaches the method of claim 1. Scott further teaches that the metal hydroxide produced in step (c) is utilized for removing and sequestering carbon dioxide (Paragraphs 0070-0075).
As to claim 4, the combination of Scott and Lonhoff teaches the method of claim 1. Scott further teaches that the mineral rock mass source is, for example, amphiboles or serpentines, both including compounds that include fibrous material such as asbestos, which would be reduced via reaction with the sulfuric acid (Paragraph 0101).
As to claims 6, 7, 22, 23 and 24, the combination of Scott and Lonhoff teaches the method of claim 1. Scott further teaches that step (b) comprising adding metal hydroxide such as calcium of magnesium hydroxide to elevate the pH in order to precipitate iron from the leachate as iron hydroxide (Paragraphs 0121-0128).
As to claims 9 and 26, the combination of Scott and Lonhoff teaches the method of claim 1. Scott further teaches that the electrolysis cell comprises an anode and a cathode at least partially submerged in the magnesium sulfate electrolyte, the method thus comprising applying a direct current across the anode and the cathode in order to perform the electrolysis reactions (Paragraphs 0133 and 0134). Scott is silent as to the specific voltage and current density to perform the operation; however, it would have been obvious to one of ordinary skill in the art at the time of filing to select and optimize these values in order to optimize the desired product and byproduct composition and rate in view of the cost of applying the energy (MPEP 2144.05).
As to claims 12 and 28, the combination of Scott and Lonhoff teaches the method of claim 9. Scott further teaches that the electrolysis cell comprises a cation exchange membrane between the anode and the cathode, a membrane that would be selectively permeable to cations and a degree of water (Paragraphs 0133 and 0134). Scott fails to specifically teach a desired permeability of the membrane. However, it would have been obvious to one of ordinary skill in the art at the time of filing to select and optimize a desired membrane permeability in view of rate of transfer vs. selectivity (MPEP 2144.05).
Claims 8 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Scott and Lonhoff as applied to claim 6 above, and further in view of the NPL “Feasibility Study on the Utilization of Serpentine Residues for Mg(OH)2 Production” to Sierra et al. (Sierra).
As to claims 8 and 25, the combination of Scott and Lonhoff teaches the method of claim 6. Scott further teaches that step (b) comprising adding metal hydroxide such as calcium of magnesium hydroxide to elevate the pH in order to precipitate iron from the leachate as iron hydroxide. Scott specifically teaches that this is a multi-step precipitation to separately recover components with silicates first being precipitated at a lower pH (Paragraphs 0121-0128). However, Scott fails to teach the specifically claimed pH level and fails to teach a step after this step of further raising the pH to precipitate other metals. However, Sierra also discusses the production of magnesium hydroxide from residues such as serpentine (as in Scott) and teaches that many other components are present in the serpentine leachate including nickel and that each of these components has a different pH at which they are almost fully precipitated (Pages 1928,Paragraph 1-4 of Page 1929; Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the method of Scott with the addition of additional separate pH varied precipitation steps to further separately recover additional components present in the serpentine. It would have been obvious to one of ordinary skill in the art at the time of filing to select and optimize these pH values in order to optimize the separate recovery; however, Sierra further specifically teaches that iron is almost fully precipitated at pH 3.5 to 4.5 and that nickel is almost fully precipitated at pH 8 with a final pH of 8.5 chosen to maximize precipitation without precipitating the magnesium.
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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