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 05/08/2026 has been entered. Claim(s) 22-26, 29-31, and 33-47 is/are pending in this application and examined herein. Claim(s) 39 is/are amended. Claim(s) 1-21, 27-28, and 32 is/are cancelled. Claim(s) 46-47 is/are new.
The objection(s) to claim(s) 39 is/are withdrawn in view of the amendments to claim(s) 39.
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.
Claim 47 is 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.
Claim 47 recites the limitation "… 10 ppm or less each of the one or more metals…". The limitation is indefinite as it is unclear whether “each” refers to the one or more metals selected from ruthenium, rhodium, osmium and iridium being present in the composition according to claims 22 and 47, and but are then restricted to be present in an amount of less than 10 ppm, or if “10 ppm or less” includes metals not being present (e.g., if a solution containing only ruthenium is used, and contains no rhodium, osmium, or iridium, if such a solution contains “10 ppm or less each” of rhodium, osmium, and iridium).
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).
Claim(s) 22-26, 29-31, 33, 37-42 and 44-45 remain(s) rejected as set forth in the Office Action dated 11/13/2025. Claim(s) 22-26, 29-31, 33, 37-38, 40-42 and 44-45 has/have not been amended since that time, and the amendments to claim(s) 39 are of an editorial nature and do not materially affect any statements made in the rejection in the prior Office Action. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Regarding claim 47, 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), where depending on the composition of the solution, one or two of ruthenium, rhodium, and iridium would not be present, and therefore the concentration would contain less than 10 ppm of ruthenium, rhodium, or iridium, teaching claim 47 as best can be examined in view of the rejection of claim 47 under 35 USC 112(b) above.
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).
Claim(s) 34-36 remain(s) rejected as set forth in the Office Action dated 11/13/2025. Claim(s) 34-36 has/have not been amended since that time, therefore the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
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.
Claim(s) 43 remain(s) rejected as set forth in the Office Action dated 11/13/2025. Claim(s) 43 has/have not been amended since that time, therefore the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Claim 46 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 Mehta et al. (“Use of Algae for Removing Heavy Metal Ions From Wastewater: Progress and Prospects”, supplied herein).
Greene teaches providing the red algae as a dried matter, but Greene in view of Davis and Minoda does not teach wherein the dried matter comprises a spray-dried matter or a freeze-dried matter.
Mehta teaches in comparison to live cells, the metal sorption capacity of dead cells may be greater, dead cells have low cost, do not require nutrient supply and therefore can be used for multiple sorption desorption cycles (pg. 129 B. “Live vs. Inactived Biomass for Metal Sorption”), thus Greene and Mehta are analogous to the instant application as both are directed to metal sorption using biomass. Mehta teaches in particular freeze-dried biomass tend to have higher metal sorption potential (pg. 129 B. “Live vs. Inactived Biomass for Metal Sorption”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have freeze dried the red algae of Greene in view of Davis and Minoda as suggested by Mehta, as doing so would eliminate the need for nutrient supply to be added during metal sorption/desorption and enable reuse of the algae for multiple sorption desorption cycles, each saving on nutrient and algae expense, as well as reducing the amount of algae needed to be cultivated, further reducing cost.
Response to Arguments
Applicant's arguments filed 05/08/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that a broad aqueous solution containing precious metal ions would not contain osmium (see pg. 5-6 of remarks), the Examiner respectfully disagrees.
As Applicant notes, all words in a claim and the claimed invention and prior art as a whole must be considered, and that Office personnel must provide an explanation to suggest an obviousness rejection, however as noted above and in the previous Office Action, all of the words of the instant claim, and the prior art and claimed invention as a whole have been considered in making the obviousness. In the instant case however, the prior art teaches that solutions comprising precious metals are contacted with dried red algae, wherein the prior art suggests that G. sulphuraria red algae may be used to recover precious metals from solutions, and discloses precious metals to include osmium, thus the instant claims are obvious in view of the prior art, therefore the Examiner has provided a reasoned explanation as to why the invention as claimed would have been obvious.
Further, while when considering whether the invention defined in a claim of an application would have been anticipated by or an obvious variation of the invention defined in the claim of a patent or copending application, no part of the reference patent or application may be used as prior art in making a double patenting rejection (as is the topic of MPEP 804 as cited to by Applicant), there are no pending double patenting rejections in this Office Action.
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. 6-8 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.
Further, the Examiner notes that ruthenium, rhodium, and iridium are also precious metals, not “other metals” compared to precious metals as asserted by Applicant.
Regarding Applicant’s argument that Greene fails to teach or suggest the recited hydrochloric acid solution concentration being more than 1 M (see pg. 8 of remarks), the Examiner respectfully disagrees.
It is not the Examiner’s position that e.g., Greene expressly teaches a hydrochloric acid concentration of >1 M as asserted by Applicant. Instead, claims 39 and 40 are rejected based on the rationale described MPEP 2144.05 (II) A-B, that using a hydrochloric acid concentration of >1 M would be arrived upon as a result of routine experimentation, where the ability to do such experimentation is supported by the fact that Greene discloses a pH of 0-14 may be used (i.e., that the acidity of the composition may be adjusted), and therefore modifying the concentration of acid would not e.g., prevent one from using a >1 M acid solution in the invention of Greene.
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 Nikolas T Pullen whose telephone number is (571)272-1995. The examiner can normally be reached Monday - Thursday: 10:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571)-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
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