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 Arguments
Applicant's arguments filed July 6th, 2026 have been fully considered but they are not persuasive.
Applicant argues on Page 7, line 11 – Page 8, line 18 of Remarks that Li does not anticipate or render obvious claims 1-2, 4, and 6 as amended.
Regarding whether Li anticipates the amended claims 1-2, 4, and 6, Applicant cites Paragraphs [0044]-[0046] to argue that Li allegedly teaches a biosurfactant concentration outside the claimed range of 0.02 to 5 % (v/v). Applicant contends on Page 8, lines 3-4, “In example 3 of Li, sophorolipid is present in an amount of 160g/2000g or 9% which outside the scope of the instant claims 1, 2, 4-8.” However, as Li states on Paragraph [0045], “the total mass percentage concentration of inorganic salt, biosurfactant and degradable chelating agent is 3.5%”. It would therefore not be possible for sophorolipid to be present at 9 mass %. The actual amount of sophorolipid in Li’s Example 3 is clarified by considering the following passage in Li’s Paragraph [0036]:
PNG
media_image1.png
132
1361
media_image1.png
Greyscale
Thus, Li’s “160g of sophorolipid” is 160g of a 25% by weight solution of sophorolipid. When considering that only 40g of sophorolipid is present alongside 10g of iron trichloride, 10g of ethylenediamine disuccinic acid, and 10g of iminidisuccinic acid, the total mass percentage concentration of inorganic salt, biosurfactant and degradable chelating agent is 100 x ((40 + 10 + 10 + 10)/2000) % = 3.5%, consistent with Li’s reported percentage concentration. Li’s biosurfactant is therefore present at 100 x (40 / 2000) % = 2%, rather than the 9% asserted by Applicant on Page 8, lines 3-4, and Li’s Example 3 still anticipates the amended claims 1-2 and 6.
Additionally, while the amount of iron chloride in the embodiment of Li relied upon in the rejection of record (Li, Example 3, [0045], 0.5% iron trichloride) differs from the claimed range of 2 to 15% by weight, iron trichloride is not the only metal solubilizing agent in Li. Each of ethylenediamine disuccinic acid and iminidisuccinic acid are also metal solubilizing agents, being acids as well as degradable chelating agents. Still, each of the individual metal solubilizing agents that are acids or oxidants are present at 0.5 wt%, which is outside the claimed range of 2 to 15 % by weight recited in claim 4. The rejection of claim 4 under 35 U.S.C. 102(a)(1) is therefore withdrawn. However, Li does not teach that the ratio of salt: biosurfactant cannot be altered, and Li provides ranges of total and relative amounts of inorganic salt, biosurfactant and degradable chelating agent in Paragraphs [0026]-[0027] that, when considering the amount of sophorolipid in Li’s Example 3, render the claimed range of 2 to 15 % by weight metal solubilizing agent in claim 4 obvious. A new ground of rejection under 35 U.S.C. 103 is therefore made over Li.
Applicant states on Page 8, lines 14-16, “Finally, Li is directed to soil amendment and does not teach or suggest that the instantly claimed bioleaching comparison are effective for removal of metal containing waste streams from an ore deposit as described in paragraph 96 of the published application.” In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., effectiveness for removal of metal containing waste streams from an ore deposit) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Moreover, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention). See MPEP 2144.IV. Also, nothing in paragraph 96 of the published application indicates that specifically altering an amount of metal solubilizing agent provides an unexpected or superior effect.
Finally, Applicant argues on Page 9, lines 1-11 of Remarks that ‘076 (U.S. 2020/0340076 A1) does not teach or suggest that the metal solubilizing agent is an acid or oxidant. This is not convincing because ‘076 does teach that an acid is a suitable component of the composition for adjusting pH and thereby promote dissolution of metals (‘076, [0137]). This is discussed on Page 7, line 15 – Page 8, line 6 of the Office Action dated February 25th, 2026 and is not addressed in Applicant’s Remarks. ‘076 also teaches an overlapping concentration of biosurfactant with respect to the amended claim (‘076, [0092]), as discussed in the rejection under 35 U.S.C. 103 herein.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d)/4th par. as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 recites “the metal solubilizing agent comprises a biosurfactant producing microorganism” and depends from claim 1, which recites “at least one metal solubilizing agent that is an acid or oxidant” (emphasis added).
MPEP 608.01(n)III states that “The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends[, according to 35 U.S.C. 112(d)/4th par.,] or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim..." See also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 119 USPQ2d 1773, 1783 (Fed. Cir. 2016) (stating that “A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid” under 35 U.S.C. 112(d)/4th par.).
Here, claim 7 may be infringed without necessarily also infringing claim 1. The metal solubilizing agent in claim 1 is an acid or oxidant, and the metal solubilizing agent in claim 7 comprises a biosurfactant producing microorganism. Claim 7 can be infringed if the metal solubilizing agent is a biosurfactant producing microorganism, rather than an acid or oxidant, without infringing claim 1.
Since claim 7 may be infringed without necessarily also infringing claim 1, claim 7 is rejected under 35 U.S.C. 112(d)/4th par. for being an improper dependent claim.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (CN 112625689 A, 2021) (the machine translation of record is referenced below).
Regarding claim 1, Li teaches a bioleaching composition comprising an aqueous solution of a biosurfactant (Li, [0045], sophorolipid) and at least one metal solubilizing agent that is an acid or oxidant (Li, [0045], iron trichloride is ferric chloride; instant claim 6 indicates that ferric chloride is an oxidant; ethylenediamine disuccinic acid and iminodisuccinic acid (degradable chelating agents)), wherein the biosurfactant is present in a concentration of approximately 2 % (v/v) (Li, [0045], “160g of sophorolipid” diluted to 2000g, with total biosurfactant, inorganic salt, and degradable chelating agent summing to 3.5% by mass; [0036], The biosurfactants sophorolipid, surfactant, rhamnolipid and lichenin are commercially purchased from Xi’an Brilliant Chemical Co., Ltd., and the contents of sophorolipid, surfactant, rhamnolipid and lichenin are all 25% by weight.” Thus, “160g of sophorolipid” in paragraph [0045] is 160g of a 25% solution, giving 40g of sophorolipid, which is ultimately diluted to 2000g. This is consistent with the reported total mass percentage of 3.5%: 40g sophorolipid + 10g iron trichloride + 10g ethylenediamine disuccinic acid + 10g iminodisuccinic acid = 70 g, in 2000g solution.).
Regarding claim 2, Li teaches the bioleaching composition according to claim 1, wherein the biosurfactant is a sophorolipid biosurfactant (SLP) (Li, [0045]).
Regarding claim 6, Li teaches the bioleaching composition according to claim 4, as discussed above, comprising ferric chloride (Li, [0045], iron trichloride).
Claim Rejections - 35 USC § 103
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 1-2 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over '076 (U.S. 2020/0340076 A1).
Regarding claim 1, ‘076 teaches a bioleaching (‘076, [0045]) composition (‘076, [0073]) comprising a liquid solution (‘076, [0144]) of a biosurfactant (‘076, [0073], biological leaching reagent comprising one or more microorganisms and/or microbial growth by-products; [0075], “In one embodiment, the microbial growth by-products are biosurfactants.”) and at least one metal solubilizing agent that is an acid or oxidant (‘076, [0137], sulfuric acid).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected sulfuric acid as an additional component in the bioleaching composition of ‘076. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, sulfuric acid was known to be suitable as a pH adjusting agent. Despite not explicitly stating that sulfuric acid is used as a “metal solubilizing agent”, sulfuric acid would necessarily be a metal solubilizing agent, as it would be used to adjust the pH to promote dissolution of metals, i.e., leaching.
’076 further teaches that the biosurfactant is present in a concentration of 0.001 to 5 % (v/v) (‘076, [0092]), which overlaps with the claimed range of 0.02 to 5 % (v/v).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the biosurfactant concentrations because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
‘076 does not explicitly teach that the solution is an aqueous solution. However, as ‘076 considers leaching to be a process which takes place in aqueous media (‘076, [0002]), it would have been obvious for the solution of the bioleaching composition in ‘076 to be an aqueous solution.
Regarding claim 2, ‘076 renders the bioleaching composition according to claim 1 obvious, as discussed above, wherein the biosurfactant is a sophorolipid biosurfactant (‘076, [0077], sophorolipids are particularly preferable).
Regarding claim 7, ‘076 renders the bioleaching composition according to claim 1 obvious, as discussed above, wherein the metal solubilizing agent comprises a biosurfactant-producing microorganism (076, [0082], enhancing components which can include additional microbial cultures (microorganisms); as leaching is solubilization of metals, enhancing leaching means promoting metal dissolution; [0083], “In some embodiments, the additional microbial
cultures comprise biosurfactant-producers”).
Regarding claim 8, ‘076 renders the bioleaching composition according to claim 7 obvious, as discussed above, wherein the microorganism is selected from a list including Bacillus subtilis (‘076, [0083]), a Bacillus sp.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have further selected Bacillus subtilis as the microorganism in the bioleaching composition of ‘076, as ‘076 teaches that this is a suitable option for the microorganism (‘076, [0083]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 112625689 A, 2021) (the machine translation of record is referenced below).
Regarding claim 4, Li teaches the bioleaching composition according to claim 1, as discussed above, wherein the metal solubilizing agent is present in a concentration of 0.5 % by weight (Li, [0045], Each of iron trichloride, ethylenediamine disuccinic acid, and iminidisuccinic acid are present at 0.5 wt%), which differs from the claimed range of 2 to 15% by weight. The claim requires a metal solubilizing agent that is an acid or oxidant (claim 1), so the combined concentrations of each individual oxidizing agent does not read on a concentration of the metal solubilizing agent. Nonetheless, Li’s inorganic salt is present at 0.5 wt%, as discussed above, and Li teaches that the degradable chelating agent is present at a ratio of 100-1000 parts by weight relative to the inorganic salt (Li, [0026]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have modified the amount of ethylenediamine disuccinic acid and iminodisuccinic acid (degradable chelating agents) in Li within a range of 0.5-5 wt% because the embodiment of Li discussed above (Li, Example 3, [0045]) uses a 0.5 wt% of inorganic salt and Li teaches that a ratio of 1-10:1 of degradable chelating agent: inorganic salt is suitable for the composition (Li, [0026], 100-1000 parts by weight degradable chelating agent vs. 100 parts by weight inorganic salt). A person having ordinary skill in the art would have been motivated to vary the chelating agent concentration within this range to investigate optimal metal leaching conditions.
Without varying the weight ratio between ethylenediamine disuccinic acid to iminodisuccinic acid in the embodiment of Li discussed above from 1:1 (Li, Example 3, [0045]), it would have therefore been obvious for each of these acids to be present at a concentration of 0.25-2.5 wt%, or half of 0.5-5 wt%, which overlaps with the claimed range of 2-15% by weight.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the acid (metal solubilizing agent) concentrations because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 112625689 A, 2021) (the machine translation of record is referenced below), as applied to claim 4 above, and further evidenced by Lamb (“The slow hydrolysis of ferric chloride in dilute solution. I. The change in conductance, color, and chloride ion concentration”, 1938).
Regarding claim 5, Li renders the bioleaching composition according to claim 4 obvious, as discussed above. While Li does not explicitly teach that the bioleaching composition comprises at least one acid selected from sulfuric acid, hydrochloric acid, nitric acid, phosphoric acid, and hydrocyanic acid, Li’s composition is an aqueous solution containing iron trichloride (Li, [0045]). Lamb teaches that iron trichloride (ferric chloride) hydrolyses in aqueous solution to produce hydrochloric acid (Lamb, Page 981, Col. 1, Paragraph 2, Col. 2, Paragraph 1). Li’s composition therefore comprises hydrochloric acid, despite Li’s silence to this feature.
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 ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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, Anthony Zimmer can be reached at 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
Prosecution Insights