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 .
Response to Amendment
The amendment filed 05/30/2025 has been entered. Claims 21-26, 29-31, and 33-45 are pending in this application and examined herein. Claims 22, 30, 37, 39, and 41-43 are amended. Claims 27-28 and 32 are cancelled. Claim 45 is new.
The objection to claim 37 is withdrawn in view of the amendments to claim 37.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/18/2025 has been entered.
Claim Objections
Claim 39 is objected to because of the following informalities:
“aquq regia” in line 7 should read “aqua regia”
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 22-26, 29-31, 33, 37-42 and 44-45 are rejected under 35 U.S.C. 103 as being unpatentable over Greene et al. (US 5055402 A, cited in IDS filed 08/30/2023) in view of Davis et al. (“Using MinION nanopore sequencing to generate a de novo eukaryotic draft genome: preliminary physiological and genomic description of the extremophilic red alga Galdieria sulphuraria strain SAG 107.79”, cited in IDS filed 8/30/2023) and Minoda et al. (“Effective and selective recovery of gold and palladium ions from metal wastewater using a sulfothermophilic red alga, Galdieria sulphuraria”, cited in IDS filed 08/30/2023).
Regarding claims 22-23, Greene teaches removing metal ions from aqueous solution by immobilizing metal ion-binding microorganisms such as algae (Abstract). Greene teaches immobilizing and drying the microorganism (Col. 9 lines 10-15), where the organism may be red algae with a metal ion-binding capability (Col. 2 lines 38-42, Col. 9 lines 50-56, Col. 14 lines 55-61); thus, the immobilized microorganisms comprise a dried matter of a cell of red algae. Greene teaches the dried matter is contacted with an aqueous solution containing metal ions (Claim 1, Col. 9 lines 60-65) where the metals are selected from precious metals including, ruthenium, rhodium, and iridium (Col. 11 lines 40-50), which would result in a composition comprising the solution containing one or more metals selected from the group consisting of ruthenium, rhodium, osmium, and iridium and the dried matter of red algae.
Greene does not teach wherein the red algae belongs to the genus Galdieria.
Davis teaches Galdieria sulphuraria (a red algae belonging to the genus Galdieria) to be capable of uptake of several precious metals (Abstract). Davis teaches the precious metals are taken up by the microorganism by contacting with an aqueous solution comprising the metal (pg. 5 paragraph 2); thus, Davis and Greene are analogous to the instant application as both are directed to using a microorganism to remove precious metal ions from aqueous solutions. Minoda teaches Galdieria sulphuraria to be able to selectively recover gold and palladium from wastewater also containing platinum (3.2. Selective recovery of precious metals (Au3+ and Pd2+) from aqua regia-based metal wastewater using G. sulphuraria cells), where platinum is also removed by the algae from the solution to at least some degree (Table 1).
Because Greene is silent with respect to which specific red algaes are suitable for removing precious metal ions from aqueous solution, in order to carry out the invention of Greene one of ordinary skill in the art would necessarily look to the art for a reference teaching a red algae suitable for removing precious metals from a solution comprising precious metals in the process of Greene, such as Galdieria sulphuraria as taught by Davis and Minoda.
Regarding claim 24, Greene teaches any pH from 0-14 may be used (Col. 12 lines 5-6), which includes the acidic pH range of 0-7, but does not teach an acid solution comprising hydrochloric acid or aqua regia. Davis teaches the solution containing metals is an acid solution comprising hydrochloric acid (pg. 5 paragraph 2). Because Greene teaches acidic conditions but is silent with respect to what acids may be used to produce those acidic conditions, in order to carry out the invention of Greene one of ordinary skill in the art would necessarily look to the art for a reference teaching acids suitable for use within the metal-containing solution of Greene, such as HCl as taught by Davis.
Regarding claims 25-26, Greene teaches any pH from 0-14 may be used (Col. 12 lines 5-6) which includes the acidic pH range of 0-7, but is silent to the acid concentration of the solution in the process described therein. However, it has long been held that where 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. See MPEP 2144.05 (II) A-B. In the instant case, one of ordinary skill would be motivated to use acid concentrations within the claimed ranges, as Greene teaches the pH (which correlates with the amount of acid in solution) may be modified.
Regarding claims 29-31 and 33, Greene teaches the amount of the dried matter is approximately 100 mg per 5 milliliters of solution (approximately 2 g per 100 mL of metal solution) (Col. 17 lines 45-48), which is within the claimed ranges.
Regarding claim 37, Greene in view of Davis and Minoda teaches a composition comprising a solution (i) and a dried matter of a cell of red algae belonging to the genus Galdieria as noted regarding claim 22 above. Greene further teaches the dried matter of a cell of red algae may be in the form of a powder (Col. 9 lines 31-34, 53-56, Col. 14 lines 37-40).
Regarding claim 38, Greene teaches the solution may be geothermal water (Col. 11 lines 62-64), where as Greene does not disclose the presence or recovery of palladium from geothermal water (Tables 1-3), it would be recognized by one of ordinary skill that the solution does not contain palladium (i.e., the solution has 10 ppm or less of palladium).
Regarding claims 39-40, Greene in view of Davis and Minoda teaches a composition comprising (i) and (ii) as noted regarding claim 22 above. Greene teaches any pH from 0-14 may be used (Col. 12 lines 5-6), which includes the acidic pH range of 0-7, but does not teach an acid solution comprising hydrochloric acid or aqua regia. Davis teaches the solution containing metals is an acid solution comprising hydrochloric acid (pg. 5 paragraph 2). Because Greene teaches acidic conditions but is silent with respect to what acids may be used to produce those acidic conditions, in order to carry out the invention of Greene one of ordinary skill in the art would necessarily look to the art for a reference teaching acids suitable for use within the metal-containing solution of Greene, such as HCl as taught by Davis.
Greene teaches the acidic pH range of 0-7, but is silent to the acid concentration of the solution in the process described therein. However, it has long been held that where 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. See MPEP 2144.05 (II) A-B. In the instant case, one of ordinary skill would be motivated to use acid concentrations within the claimed ranges, as Greene teaches the pH (which correlates with the amount of acid in solution) may be modified.
Further, the mere recitation of a numerical parameter in an otherwise known process will not generally result in patentability of a claim directed to that process, absent evidence of criticality of the numerical parameter. In the instant case the numerical parameter (an acid concentration of the solution is more than 1 M or 2 M or more) does not appear to be critical to the invention, at least for the reason it is recited in a dependent claim.
Regarding claims 41-42 and 44, Greene teaches wherein the one or more metals comprise ruthenium, rhodium, and iridium (Col. 11 lines 40-50).
Regarding claim 45, Greene in view of Davis and Minoda teaches wherein the only dried matter in the composition is the dried matter of a cell of red algae belonging to the genus Galdieria (Greene: Col. 9 lines 10-15, Davis: pg. 5 paragraph 2, Fig. 2, Minoda: 3.2. Selective recovery of precious metals (Au3+ and Pd2+) from aqua regia-based metal wastewater using G. sulphuraria cells)
Claims 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Greene in view of Davis and Minoda as applied to claim 22 above, further in view of Darnall et al. (US 4992207 A, cited in Office Action dated 11/05/2024).
Regarding claim 34, Greene teaches a composition substantially as claimed, as discussed above, but does not teach a solution comprises a cyanide complex. Darnall teaches a method for selective extraction of metals including gold from aqueous solution using microorganisms (Abstract), where the extraction is performed by contacting the solution and the microorganism (Abstract, Col. 2 lines 52-57); thus, Darnall and Greene are analogous to the claimed invention as all are drawn to using microorganisms to remove metals such as gold from aqueous solution. Darnall teaches the solution may contain gold as a gold-cyanide complex (Col. 5 lines 5-8). Because Greene is silent with respect to what types of metal-containing aqueous solutions are used or where they originate from, in order to carry out the invention of Greene one of ordinary skill in the art would necessarily look to the art for a reference teaching metal-bearing solutions suitable for metal recovery using microorganism, such as a solution containing a gold-cyanide complex as taught by Darnall.
Regarding claims 35-36, Darnall teaches the preferred range for binding of gold cyanide complexes is preferably at pH 3 (Col. 5 lines 29-34), which is within the claimed ranges.
Claim 43 is rejected under 35 U.S.C. 103 as being unpatentable over Greene in view of Davis and Minoda as applied to claim 22 above, further in view of evidence from Webmineral Osmium.
Greene teaches the composition to comprise a solution containing precious metals such as platinum, rhodium, palladium, ruthenium, iridium, gold and silver (Col. 11 lines 40-50), but is silent to a complete list of precious metals and wherein the one or more metals comprise osmium. Webmineral Osmium discloses osmium to be a precious metal (pg. 1 “Group name”), therefore a broad “aqueous solution containing precious metal ions” according to Greene includes embodiments wherein the solution comprises osmium as evidenced by Webmineral Osmium, Greene therefore teaching wherein the one or more metals comprise osmium.
Response to Arguments
Applicant's arguments filed 05/30/2025 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that Greene fails to render obvious the claimed composition comprising a solution containing osmium (see pg. 5-6 of remarks), the Examiner respectfully disagrees.
Greene discloses the aqueous solution containing metal comprises precious metals (), such as platinum, rhodium, palladium, ruthenium, iridium, gold and silver (Col. 9 lines 48-50), wherein the term “such as” indicates merely examples of precious metals, not a complete listing of precious metals. Webmineral discloses osmium to be a precious metal, therefore a broad “aqueous solution containing precious metal ions” as disclosed by Greene (e.g., pg. 10 lines 13-14) would include embodiments wherein the solution comprises osmium.
Regarding Applicant’s argument that Greene in view of Davis and Minoda fails to render obvious the claimed composition comprising a solution containing ruthenium, rhodium, and iridium as neither Davis nor Minoda discloses whether their microorganisms would be able to remove any of ruthenium, rhodium, and iridium (see pg. 6 of remarks), the Examiner respectfully disagrees.
Greene teaches contacting aqueous solution comprising precious metals, including ruthenium, rhodium, and iridium, with a dried matter of a cell of red algae, but is silent with respect to which specific dried matters of red algaes should be contacted with such a solution. While Davis and Minoda do not disclose Galdieria sulphuraria to be suited to uptaking ruthenium, rhodium, or iridium precious metals in particular, Davis and Minoda both disclose G. sulphuraria to be generally able to recover precious metals (such as palladium, gold, platinum) from solutions, and thus would suggest that G. sulphuraria may be used to recover precious metals such as ruthenium, rhodium, and iridium from solutions.
Regarding Applicant’s argument that Greene fails to teach or suggest the recited hydrochloric acid solution concentration being more than 1 M (see pg. 6-7 of remarks), the Examiner respectfully disagrees.
Greene as noted by Applicant discloses using a pH of 0 to 14. While as Applicant notes, the pH of a 1 M HCl solution is 0, it is also well known that this is true only for a solution containing only 1 M HCl, and no other component that affects the pH of the solution. In the instant case, Greene discloses the presence of metal ions (Abstract, Col. 3 lines 15-51) whose behavior are influenced by adjusting pH (Col. 3 lines 37-51, Col. 33 lines 56-61), where for ions to be affected by pH, must in turn themselves affect the pH of the solution as e.g., anions pair with H+ of the acid; thus, the pH of the solution may be greater than 0 while a concentration of acid e.g., exceeds 1 M.
Further, as noted previously, the mere recitation of a numerical parameter in an otherwise known process will not generally result in patentability of a claim directed to that process, absent evidence of criticality of the numerical parameter. In the instant case the numerical parameter (an acid concentration of the solution is 1 M or more or 2 M or more) does not appear to be critical to the invention.
Conclusion
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733