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 .
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 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.
The term “elevated decomposition temperature” in Claim 1 Line 5, Claim 4 Line 1, Claim 7 Line 1, and Claim 19 Line 1 is a relative term which renders the claims indefinite. The term “elevated decomposition temperature” 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. There is no temperature or range of temperatures against which to compare or to make a determination as to what constitutes an “elevated” decomposition temperature. It is unclear how one having ordinary sill in the art at the time of filing the invention is to be apprised of what constitutes an “elevated decomposition temperature” within the claim, how high the decomposition temperature must be in order to carry out the claimed invention. Appropriate correction is required.
The term “low temperature pyrolysis process” in Claim 3 Line 2 and Claim 5 Line 2 is a relative term which renders the claims indefinite. The term “low temperature pyrolysis process” 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. In the instant Specification, e.g. at Page 12, “low-temperature pyrolysis process” “can be from 600 °F to 950 °F. However, as low-temperature pyrolysis is a term of art, this recitation is not an affirmative temperature range, leaving the term “low-temperature pyrolysis process” indefinite. It is unclear how one having ordinary sill in the art at the time of filing the invention is to be apprised of what temperature or range constitutes a “low temperature pyrolysis process” within the claim. Appropriate correction is required.
The term “other trace metals” presents the following issues:
In Claim 1 Line 1, “and other trace metals” grammatically equates “trace metals” with “rare earth elements” and it becomes unclear whether “other trace metals” refers to trace amounts of “rare earth elements” or trace amounts of any metal.
Further, “rare earth elements and other trace metals” is recited in Claim 1 as an intended use. The presence of rare earth elements or other trace metals has not been established as part of any positive active method steps.
Claim 11 recites “trace metals” in Line 1 at it is unclear whether the “trace metals” in Claim 11 are the same or different from the “other trace metals” in Claim 1 Line 1.
Claim 13 recites “rare earth element and other trace metal concentration” and this lacks proper antecedent basis. It is unclear whether the “rare earth element and other trace metal concentration” is the same or different from the “rare earth elements and other trace metals” referenced in Claim 1.
Appropriate correction is required.
Claim 5 recites “a spent ore obtained through…a process…to produce….the spent ore.” It is unclear the nexus between “a spent ore” in Claim 5 Line 1, “the spent ore” in Claim 5 Line 3 and “an enriched spent ore” in Claim 1 Line 6. Similarly, Claim 6, which depends on Claim 5, makes reference to “the spent ore” and it is unclear the nexus between “the spent ore” in Claim 6 Line 1, the “spent ore” of Claim 5, an enriched spent ore” in Claim 1 Line 6. Appropriate correction and consistency of terminology is required.
Claim 23 recites “magnetic/electrostatic separation” in Line 3. It is unclear whether “magnetic/electrostatic separation” is intended to be a single form of separation or two unique processes. The Instant Specification describes both electrostatic separation and magnetic separation e.g. at Page 23. Applicant must clearly set forth each element of the claimed Markush group.
Claim 23 recites “density-based separation” in Lines 3-4. Because ‘density separation’ is a term of art, it is unclear the metes and bounds of what constitutes “density-based separation.” The instant Specification describes at Page 24 what “density-based separation processes can include” (emphasis added) however there is no re-defining of the term “density-based separation.” Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-6, 8, 10, 14, 18-20, and 25-26, are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Elkins US 4401163 A as evidenced by NPL Birdwell.
Regarding Claim 1, Elkins ‘163 discloses a method comprising providing a body of rubblized carbon-based ore from the Green River Formation (Column 10 Lines 1-8), which inherently comprises carbonates and rare earth elements as evidenced by NPL Birdwell (Abstract). Elkins ‘163 teaches decomposing the carbonates at an elevated decomposition temperature and an oxygen deficient atmosphere to form an enriched spent ore and carbon dioxide. See MPEP 2131.01.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Regarding Claim 2, Elkins ‘163 discloses the rubblized carbon-based ore is a raw carbon based-ore (Column 1 Lines 21-39), meeting the limitations of the instant Claim.
Regarding Claim 3, Notwithstanding the 112(b) rejections above, Elkins ‘163 discloses decomposing is performed simultaneous with a temperature-controlled pyrolysis process in which the carbon-based ore is pyrolyzed via an oxygen limited pyrolysis process to produce a hydrocarbon product and the enriched spent ore (Column 6 Lines 23-32), meeting the limitations of the instant Claim.
Regarding Claims 5 and 6, notwithstanding the 112(b) rejections above, Elkins ‘163 discloses performing retorting of rubblized spent shale in an essentially oxygen free environment at (claims 1-3) and repeating the process to form spent ore (Column 9 Lines 13-16), meeting the limitation for the rubblized carbon-based ore being spent ore obtained through a low temperature pyrolysis process in which the carbon-based ore is pyrolyzed via an oxygen limited pyrolysis process to produce a hydrocarbon product and the spent ore.
Regarding Claim 8, Elkins ‘163 discloses the carbon-based ore comprises oil shale (Column 5 Lines 12-20), meeting the limitations of the instant Claim.
Regarding Claim 10, Elkins ‘163 discloses the carbon-based ore comprises Green River oil shale from the Mahogony zone (Column 10 Lines 2-8), meeting the limitations of the instant Claim.
Regarding Claim 14, as set forth above, Elkins ‘163 discloses a method comprising providing a body of rubblized carbon-based ore from the Green River Formation (Column 10 Lines 1-8) which inherently comprises carbonates and yttrium as evidenced by NPL Birdwell (Abstract).
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Regarding Claim 18, Elkins ‘163 discloses the oxygen deficient atmosphere is essentially oxygen free (claim 2), meeting the limitation of the instant claim for less than 10% by volume.
Regarding Claim 19, Elkins ‘163 discloses preheating the shale in an essentially oxygen free environment (Column 11 Lines 2-11), meeting the limitation of the instant claim for the elevated decomposition temperature is below a stoichiometric combustion temperature and is controlled by maintaining oxygen concentrations below stoichiometric ratios.
Regarding Claim 20, Elkins ‘163 discloses oxygen concentrations are maintained by controlling inlet oxygen concentrations (Column 6 Lines 43-51), meeting the limitations of the instant Claim.
Regarding Claim 25, Elkins ‘163 discloses the body of rubblized carbon-based ore is provided in a retort (meeting the limitation for a vessel)(Column 14, Lines 63-67), meeting the limitations of the instant Claim.
Regarding Claim 26, Elkins ‘163 discloses the body of rubblized carbon-based ore is provided in an earthen impoundment (Column 14, Lines 63-67), meeting the limitations of the instant Claim.
Claim Rejections - 35 USC § 103
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.
Claims 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Elkins US 4401163 A as evidenced by NPL Birdwell as applied to Claims 1-3, 5-6, 8, 10, 14, 18-20 above, further in view of NPL Han et al.
Regarding Claims 4 and 7, Elkins ‘163 discloses the limitations above but does not expressly teach the decomposition temperature.
However, NPL Han et al. teaches optimal oil shale retorting temperatures of 400 °C- 520 °C (752 - 968°F) overlapping the instantly claimed ranges of 600 °F to 950 °F and 950 °F to 1500 °F. See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to retort the oil shale of Elkins ‘163 at the temperatures taught in NPL Han et al. in order to increase the yield of shale oil, abased on the teachings of NPL Han et al. at (Abstract), meeting the limitations of the instant Claims.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Elkins US 4401163 A as evidenced by NPL Birdwell as applied to Claims 1-3, 5-6, 8, 10, 14, 18-20 above, further in view of NPL Li et al.
Regarding Claim 9, Elkins ‘163 discloses the limitations set forth above but does not expressly teach the carbon-based ore is coal.
However, NPL Li et al. teaches co-pyrolyzing coal with oil shale in order to increase the yield of gas and liquid products (Section 4).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to blend coal with the shale of Elkins ‘163 and co-pyrolyze in order to increase the yield of gas and liquid products based on the teachings of NPL Li et al. at (Section 4), meeting the limitations of the instant Claim.
Claims 11-13, 16-17, and 23, are rejected under 35 U.S.C. 103 as being unpatentable over Elkins US 4401163 A as evidenced by NPL Birdwell as applied to Claims 1-3, 5-6, 8, 10, 14, 18-20, and 25-26 above, in view of NPL Birdwell.
Regarding Claims 11, 13, and 16-17, Elkins ‘163 discloses the limitations set forth above including the decomposition of Green River Oil Shale from the Mahogany Zone.
Elkins ‘163 does not expressly teach elemental concentrations.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
However, NPL Birdwell teaches Green River oil shale comprises yttrium at an individual concentration of 0.5 to 10,000 micrograms per gram (0.5 to 10,000 ppm), meeting the limitation of Claim 11 for a concentration of at least 10 ppm.
NPL Birdwell further teaches spent shale comprises up to 90 wt % the original rock (Page 2).
Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing the invention to utilize a sample comprising enriched spent shale oil of the Green River with yttrium at an individual concentration overlapping and encompassing the instantly claimed ranges of greater than 500 ppm, 1200 ppm, and 2000 ppm, in order to increase the yield of rare earth elements, based on the teachings of NPL Birdwell at (Page 6) meeting the limitations of instant Claim 13, Claim 16, and Claim 17.
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 12, Elkins ‘163 discloses the limitations set forth above including the decomposition of Green River Oil Shale from the Mahogany Zone.
Elkins ‘163 does not expressly teach the concentration of carbonates.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
However, NPL Birdwell teaches a Green River oil shale sample comprising carbonates at a weight percentage of 24.32% (Table 1), meeting the limitation of the instant Claim for a concentration of at more than 0.5% by weight.
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to utilize a sample comprising carbonates at a percentage of 24.32% in the process of Elkins ‘163 in order to increase the yield of organic matter based on the teachings of NPL Birdwell at (Page 6).
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 23, Elkins ‘163 discloses the limitations set forth above but does not expressly teach rare earth element extraction methods.
However, NPL Birdwell teaches leaching of rare earth elements at (Page 6).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to perform leaching in order to efficiently recover rare earth elements from the oil shale of Elkins ‘163 based on the teachings of NPL Birdwell at (Page 6), meeting the limitations of the instant Claim.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Elkins US 4401163 A in view of NPL Birdwell as applied to Claims 11-13, 16-17, and 23 above, further in view of NPL Lapidus et al.
Regarding Claim 15, Elkins ‘163 discloses the limitations set forth above but does not expressly teach elemental concentrations.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
However, NPL Lapidus et al. teaches the average concentration of trace gallium in oil shale is 30 ppm in Table 3, meeting the limitation of Claim 15 for a concentration greater than 15 ppm.
NPL Birdwell further teaches spent shale comprises up to 90 wt % the original rock (Page 2).
Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing the invention to utilize a sample of ore in the process taught in Elkins ‘163 comprising gallium at an individual concentration overlapping and encompassing the instantly claimed range of greater than 15 ppm in order to increase the yield of trace metals based on the teachings of NPL Birdwell at (Page 8), meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Elkins US 4401163 A as evidenced by NPL Birdwell as applied to Claims 1-3, 5-6, 8, 10, 14, 18-20 above, further in view of Van Zanten US 4384947 A.
Regarding Claims 21 and 22, Elkins ‘163 discloses the limitations above, including a preheating treatment, but does not expressly teach the preheat temperature.
However, Van Zanten ‘974 teaches partially preheating oil shale in an oxygen-free atmosphere between temperatures of 50 °F to about 350 °F, overlapping the instantly claimed range of about 84 °F to 200 °F. See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to preheat the oil shale of Elkins ‘163 at the temperatures taught in Van Zanten ‘974 in order to increase the yield of shale oil and reduce atmospheric pollution, based on the teachings of Van Zanten ‘974 at Column 2 Lines 18-22), meeting the limitations of the instant Claims. See MPEP 2141.01(a) I. “[A] reference need not be from the same field of endeavor as the claimed invention in order to be analogous art.” Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Elkins US 4401163 A in view of NPL Birdwell as applied to Claims 11-13, 16-17, and 23 above, further in view of Brewer et al. WO 2014066668 A1.
Regarding Claim 24, Elkins ‘163 discloses the limitations set forth above but does not expressly teach purifying the rare earth element product.
However, Brewer et al. ‘668 teaches methods of recovering and separating rare earth elements from recycled ores including calciothermic purification (Page 1).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to purify the rare earth element product of Elkins ‘163 via calciothermic purification in order to increase the yield quality of rare earth element products based on the teachings of Brewer et al. ‘668 at (Page 1), meeting the limitations of the instant Claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Wang, Haiyan, et al. "Thermodynamic characteristics of oxidation and combustion of coal under lean-oxygen conditions." ACS omega 6.27 (2021): 17255-17266. Teaches combustion of coal under lean-oxygen conditions.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733