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
Pending and under examination: claims 1-31
Objected to: claims 1, 6, 22, and 25
Rejected: claims 1-31
Claim Objections
Claims 1, 6, 22, and 25 objected to because of the following informalities:
Claim 1 recites in step “a”: “…optionally has a metaling point”, which should instead recite “melting point”.
Claim 6 recites in step “v”: “…said vaccum drying”, which should instead recite “vacuum drying”.
Claim 22 recites “The method as defined in claim 2, wherein chloride salt and/or fluoride salt is at least partially removed from said reaction vessel is at least partially purified by partial” which should be corrected because it is grammatically incorrect.
Claim 25 recites “mult-stage system includes 3-6 evaporative chamber”, which has typos and improper plurality.
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 1-31 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.
Regarding claims 1, 17, 29, and 31, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance:
Claim 1 recites the broad recitation “…said reaction vessel is optionally greater than 700°C” in step “c”, and the claim also recites “…and optionally less than 1000°C” in step “c” which is the narrower statement of the range/limitation.
Claim 17 recites the broad recitation “…in said reaction vessel is at least 10 minutes”, and the claim also recites “…and optionally 10-60 minutes” which is the narrower statement of the range/limitation.
Claim 29 recites the broad recitation “…optionally no more than 850°C”, and the claim also recites “…temperature of no more than 1000°C” which is the narrower statement of the range/limitation.
Claim 31 recites the broad recitation “…in said reaction vessel is at least 5 minutes”, and the claim also recites “…and optionally about 5-30 minutes” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 1 and 2 recite “A method for producing rare earth metal (RE) or an alloy of rare earth metal (RE); said process is optionally a continuous or semi-continuous process…”, which is indefinite because the process must either be a continuous or a semi-continuous process. The limitation is indefinite because it presents two options, states that they are both optional, which implies that there is a third type of process, but does not recite a third type of process. As such, 1) it is unclear if any of the remainder of the process steps actually required, and 2) unclear which (continuous or semi-continuous) process is the default, and 3) unclear if there is a third type of process because both of the listed types are optional.
The remainder of the claims are rejected as being dependent from claim 2.
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 1-31 are rejected under 35 U.S.C. 103 as being unpatentable over Sharma (US4578242A).
Regarding claim 1, with regard to the claimed “A process for producing rare earth metal (RE) or an alloy of rare earth metal (RE); said process is optionally a continuous or semi-continuous process;” 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).
With regard to the claimed “said process includes: a. adding to a reaction vessel an initial charge of a eutectic-forming metal that forms a eutectic with said RE; optionally adding calcium metal to said reaction vessel; said eutectic optionally has a metaling point of less than 1000° C;”, Sharma teaches adding iron or zinc to form a eutectic alloy with Nd (col. 2, lines 40-48).
With regard to the claimed “b. adding to said reaction vessel an initial charge of anhydrous RE-chloride salt and/or RE-fluoride salt to form a charged mixture; optionally adding one or more alkali metal halides to said charged mixture; said charged mixture optionally has a melting point that is less than 1000° C;”, 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.
With regard to the claimed “c. heating said charged mixture in said reaction vessel; said temperature of said charged mixture in said reaction vessel is optionally greater than 700° C. and optionally less than 1000°C;”, Sharma teaches that a reaction vessel is provided which can be heated to the desired temperature cases (col. 2, lines 23-29), which can be either 675°C or about 900°C in some, (col. 2, lines 49-61).
With regard to the claimed “d. mixing said charged mixture in said reaction vessel to cause a reaction to convert the RE-chloride and/or RE-fluoride to RE metal and/or RE metal alloy and calcium chloride salt and/or calcium fluoride salt;” as discussed above, Sharma teaches that this method is known in the art, and would therefore result in the claimed conversion. 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 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 further regard to the “mixing” step, Sharma teaches in multiple examples, that the components are mixed together in such a way that meets “d” (see Examples I-IV in col. 7-9).
With regard to the claimed “e. removing a portion or all of the eutectic metal, rare earth metal, and/or rare earth alloy from said reaction vessel; optionally removing some or all of a salt mixture from said reaction vessel; and”, 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).
With regard to the claimed “f. optionally adding additional eutectic-forming metal, alkali metal halides, calcium metal, RE-chloride salt and/or RE-fluoride salt to said reaction vessel, and then repeating the steps c-f to obtain additional amount of RE metal and/or RE metal alloy.”, these steps are optional and are therefore not required to be performed.
The remainder of the limitations in claim 1 are optional, and are therefore not required to be performed.
Regarding claim 2, with regard to the claimed “A method for producing rare earth metal (RE) or an alloy of rare earth metal (RE); said process is optionally a continuous or semi-continuous process; said process 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). Sharma teaches that a reaction vessel is provided 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-chloride salt and/or RE-fluoride salt;
d. providing a chloride and/or 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 “e. adding said eutectic-forming metal, said RE-chloride salt and/or RE-fluoride salt, and said chloride and/or fluoride salt to said reaction vessel; f. causing said RE-chloride salt and/or RE-fluoride salt to react with other materials in said reaction vessel to form RE metal and/or RE metal alloy; and” 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 3-5, 7-18, 23-25, 29, and 31, 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 the optional limitations are not required to be performed because they are optional.
Regarding claim 6, the limitations define the process via producing one/some of the ingredients by conventional means; the Office is taking official notice that this would have been obvious to POSITA, because producing these ingredients (e.g. RE-chloride salt and/or RE-fluoride salt) is conventional and routine in the art. Furthermore, the limitations amount to merely changing a sequence of adding ingredients, which has been held to be obvious (MPEP 2144.04 IV. C.).
Regarding claim 19, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (MPEP 2144.04 IV. C.). As such, this limitation is obvious because the process steps are otherwise met by Sharma.
Regarding claim 20, Sharma teaches purifying the RE metals via distillation (col. 7, lines 59-60; col. 4, lines 43-45).
Regarding claim 21, Sharma teaches that the rare earth oxides are dispersed in a suitable, molten, calcium chloride bath along with sodium metal; the sodium reacts with the calcium chloride to produce calcium metal which reduces the rare earth oxides to rare earth metals (Abstract).
Regarding claim 22, Sharma teaches that the (Na and Ca) salts separate out, and it is implied that the components/layers are separated/removed (see Example III in col. 8).
Regarding claim 26, Sharma renders obvious the use of sodium to cause calcium containing salts to form calcium metal (Abstract).
Regarding claim 27, Sharma teaches in col. 4, lines 2-19 that when Nd2O3 is mixed with CaCl2 in a molten salt bath, oxychlorides are formed by the reaction Nd2O3+CaCl2 →2NdOce+Cao. The presence of such RE-oxy chlorides was known to reduce yield in prior art electrolytic processes so the presence of Nd2O3 was not tolerated. However, in the subject invention both RE-oxides and RE-oxy chlorides are both readily reduced by calcium metal. The formation of RE-oxy chlorides is advantageous because they float on reduced RE metals.
Therefore, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Sharma to add RE-oxychlorides, as doing so means that float on reduced RE metals, which mitigates oxidation.
Regarding claim 28, Sharma teaches that the vessel body is preferably made of a metal or refractory material that is either substantially inert or in innocuous to the reaction constituents (col. 2, lines 23-29), such as stainless steel (col. 6, lines 18-20), which is iron-based.
Regarding claim 30, Sharma teaches that the vessel body is preferably made of a metal or refractory material that is either substantially inert or in innocuous to the reaction constituents (col. 2, lines 23-29), such as stainless steel (col. 6, lines 18-20); the office takes Official Notice that it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to select a ceramic coating, because not only is ceramic coating a refractory material that is substantially inert, but also because it is one of the most common inert materials and/or coatings for crucibles due to its high temperature stability, strength, and inert nature to most metals.
Conclusion
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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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735