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 .
Status of Claims
Cancelled: claims 1-31
New: claims 32-61
Rejected: claims 32-61
The previous claim objections, 112(b) rejections, and 103 rejections are moot in view of the cancellation of claim 1-31.
Claim Objections
Claims 36-37, 47-49, 56, and 59 are objected to because of the following informalities:
Claims 36-37 and 48-49 recite “RE-oxyflouride”, which should be spelled “RE-oxyfluoride”.
Claims 47 and 56 recite “sad reaction vessel” which should be “said reaction vessel”.
Claim 59 recites “RE-oxyfluoride salt RE-oxyfluoride salt”; the second RE-oxyfluoride salt terms 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 32-45, 48-49, 51, 53, and 55-61 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.
Step (b) of claim 32 recites “said temperature of said charged mixture”. There is insufficient antecedent basis for this limitation in the claim.
In step (c) of claim 32, calcium chloride salt and/or calcium fluoride salt are the products of a reaction where there is no calcium in the reagants; the limitation is indefinite because it is unclear where the calcium originates from that would permit calcium to be a product of a reaction.
Step (c) of claim 32 recites “RE metal and/or RE metal alloy”, but then step (d) recites “said RE metal and RE metal alloy”, which is indefinite because it is unclear if RE metal alloy is actually required, because in the previous instance, the use of “and/or” means the RE metal alloy is optional. Thus, the metes and bounds of the limitation are unclear.
Claims 36-37 and 48-49 recite “RE oxide”; there is insufficient antecedent basis for this limitation in the claim. If the applicant’s intention was that “Re oxide” (i.e., rhenium oxide) is the intended antecedent basis, then “Re” should be amended to “RE”.
Claims 36-37 recite “said RE-oxychloride and/or RE-oxyflouride”. There is insufficient antecedent basis for these limitations in the claim.
Claim 56 recites two Markush groups that immediately follow one another in step (a), which states “said eutectic-forming metal includes one or more metals selected from the group consisting of aluminum and magnesium; said eutectic-forming metal includes aluminum, iron, magnesium, zinc, and/or aluminum”. The limitations are indefinite because the first Markush group recites two elements, aluminum and magnesium, but then the second Markush group which defines the same list adds iron and zinc, and recites two instances of “aluminum”.
Step (b) of claim 56 recites “said temperature of said charged mixture”. There is insufficient antecedent basis for this limitation in the claim.
Claims 33-45 are rejected as being dependent from claim 32, claims 51, 53, and 55 are rejected as being dependent from claim 49, and claims 57-61 are rejected as being dependent from claim 56.
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 46-55 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma (US 4578242 A; previously made of record).
Regarding claim 46, with regard to the claimed “A method for producing rare earth (RE) metal or rare earth (RE) metal alloy; said method includes: a. providing a reaction vessel;”
Sharma teaches a method of making rare earth metals (Abstract) and that the method can be practiced as a batch or continuous process (col. 3, lines 21-37), which takes place in a reaction vessel which can be heated to the desired temperature cases (col. 2, lines 23-29),
With regard to the claimed “b. providing a eutectic-forming metal;” Sharma teaches adding iron or zinc to form a eutectic alloy with Nd (col. 2, lines 40-48).
With regard to the claimed “c. providing RE-fluoride salt; d. providing a fluoride salt;” Sharma teaches that it is known in the art to use anhydrous chloride or fluoride salts (col. 1, lines 46-61), and therefore would be obvious to a POSITA to do so, before the effective filing date of the claimed invention. Furthermore, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to simply substitute and/or add in the calcium/sodium chloride salt with RE-chloride and/or RE-fluoride, as Sharma teaches that these are known alternative techniques/species in the art (col.1, line 39 – col. 2, line 17).
With regard to the claimed “e. adding said eutectic-forming metal, said RE-fluoride salt, and said fluoride salt to said reaction vessel; f. causing said RE-fluoride salt to react with other materials in said reaction vessel to form RE metal and/or RE metal alloy;” Sharma teaches in multiple examples, that the components are mixed together in such a way that meets these steps “e” and “f” (see Examples I-IV in col. 7-9); the purpose of mixing and heating the components in a heated reaction vessel is to react them, which meets step “f”.
With regard to the claimed “g. removing said RE metal and/or RE metal alloy from said reaction vessel”, Sharma teaches, in one Example (Example I), that after stirring/mixing, the Nd-Zn eutectic alloy was separated from the salt layer above it (col. 7, lines 50-61).
Regarding claims 47-55, the limitations of the process conditions are met and/or rendered obvious by Sharma in at least Examples I-IV in cols. 7-9 (also see col. 2), and/or it would been obvious for a POSITA before the effective filing date of the claimed invention to achieve the claimed features of claims 47-55 based on the teachings of Sharma at least in cols. 7-9 and cols. 1-3 (see cited columns and lines 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 Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
