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
Claims 1, 5 and 57 are as previously presented, Claims 2, 7-11, 15, 17, 19-23, 29, 30, 35-38, 43, and 45-55 are canceled, Claims 3, 4, 6, 12-14, 18, 24, 26-28, 31-34, 39, 41 and 44 are as originally filed, and Claims 16, 25, 40, 42, 56 and 58 are currently amended.
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 56-58 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.
Claim 56 includes "flash joule heating," which is a patented (e.g. US 12,054,391) and commercial process. US '391 is drawn to forming graphene, not for heating. It is not clear what applicant intends what “flash joule heating” encompasses, since Claim 56 is drawn to recovering metal. The instant specification describes recovering metal beginning at least in [0207] with a “carbothermic reaction,” which the examiner interprets as the conditions described in [0043-0070]. However, it is not clear which of those conditions define the metes and bounds of “flash joule heating” in Claim 56.
Claims dependent on any of the rejected claims are likewise rejected under this statute.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 56 and 57 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Helton et al (US 2017/0159192 A1).
Helton et al teaches refining ores [0002] with an energy source configured to apply oscillating energy to reduce a metal oxide to a metallic element [0093]. The voltage increases and decreases at a certain frequency [0094]. Carbon is used as the reductant [0089]. The metal oxide includes raw minerals such as bauxite [0004], rutile, ilmenite, perovskite, titanite [0128], and oxides or salts of other metallic elements [0128]. The refining occurs with a voltage of 0-600 V or 1 kV to 2 MV [0115-0116] and a current of 0.2-100 A [0116]. Helton et al teaches time as represented in FIGs 9-14. However, Helton et al does not specifically recite “utilizing a flash Joule heating process” as claimed.
The limitation of “flash Joule heating process” is not clearly defined as stated above in the rejection under 35 U.S.C. 112(b). Based on the instant claim the “process that comprises applying a voltage across the mixture to recover metal from the material,” which is taught by Helton et al in [0115-0116]. The first step (i) recites applying the voltage in one or more voltage pulses, which reads on one voltage pulse. The second step (ii) recites a duration of the voltage pulse is for a duration period, which is taught by one voltage pulse with time represented in FIGs 9-14. Helton et al anticipates the claimed invention.
Regarding Claim 57, the metal oxide material can include additional compounds such as solvents and catalysts [0098], which reads on industrial waste.
Allowable Subject Matter
Claims 1, 3-6, 12-14, 16, 18, 24-28, 31-34, 39-42, and 44 are allowed.
Claim 58 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the reasons for indication of allowable subject matter were set forth in the office action mailed 08/06/2025.
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive. The amendment to Claim 56 is insufficient to overcome the rejection under 35 U.S.C. 102(a)(1) as described 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 Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith D. 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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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733