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 .
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 non-obviousness.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Itoh et al. (US Patent no. 4,747,924) in view of Tarcy et al. (US Patent no. 5,037,608).
Regarding claim 1, Itoh discloses a method for electrowinning a neodymium compound (abstract), the method comprising:
providing a fluoride-based electrolyte through an opening (56; figure 2) defined in an electrolytic bath (44) including a cathode (40) and an anode (42; col. 3, lines 25-49; col. 11, lines 20-31);
providing a neodymium compound through the opening (56) defined in the electrolytic bath (44);
dissolving the compound in a molten salt of the fluoride-based electrolyte (col. 2, lines 19-23 and col. 63 to col. 3, line 10); and
reducing neodymium at the cathode (col. 3, lines 25 to col. 4, line 22; col. 5, lines 28-32 – Itoh recognizes that neodymium oxide can be reduced in an electrolytic reduction step to deposit metallic neodymium on a cathode; col. 2, lines 31-37).
Itoh fails to teach wherein the neodymium compound is in the form of granules comprising neodymium oxide, each having at least one cavity defined therein, wherein the cavity is defined inside or on a surface of the granule, and an apparent density of the granules is lower than a density of the molten salt.
Tarcy discloses a method for making rare earth metal alloys comprising adding a pellet to a molten bath, said pellet consisting essentially of a mixture of light metal powder and rare earth metal-containing compound comprising a rare earth metal oxide (abstract; col. 3, lines 36-48; col. 4, lines 12-14). The pellets have a relatively low density, between 1.8-2.8 g/cc, and low number of voids in order to enhance the overall reduction rate by creating different surface to volume ratios for rare earth metal compounds (description of figure 2; col. 5, lines 3-18; col. 6, lines 47-63; col. 7, lines 4-52). Table 1 shows average density of the molten bath, i.e. between 1.96 to 2.6 g/cc and thus, the density of the pellets may be selected to be lower than the density of the molten bath, as claimed. Should compacted pellets of reactants dissolve more slowly than desired, optional wetting and/or stirring steps may be performed (col. 6, lines 15-18)
It would have been obvious to one having ordinary skill in the art at the time of filing to add a rare earth compound in the form of granules/pellets having an apparent density lower than the density of the molten salt in the method of Itoh because as taught by Tarcy, this enhances the overall reduction rate by creating different surface to volume ratios for rare earth metal compounds and one would have a reasonable expectation of success in doing so.
Regarding claim 2, at least a portion of each of the cathode (40) and the anode (42) of Itoh is immersed in the molten salt (44; figure 2; col. 10, lines 25-56).
Regarding claim 3, Itoh further teaches wherein at least a portion of the anode is exposed to air (col. 12, lines 16-21; col. 13, lines 50-61). Tarcy teaches providing granules/pellets, the pellets would cover a surface of the molten salt and at least a portion of an exposed portion of the anode that would inherently block or reduce contact of the anode and the molten salt with gas col. 5, lines 3-18; col. 6, lines 47-63; col. 7, lines 4-52).
Regarding claim 4, the cathode of Itoh comprises iron, and the anode comprises graphite (abstract; col. 8, lines 38-46; col. 12, lines 3-5).
Regarding claim 5, the granules of Tarcy have a diameter of 9.5 mm to 28 mm (~0.375-1.125 inches – col. 9, lines 6-10; table 1).
Regarding claim 6, the granules of Tarcy have an apparent density of 1.8-4 g/cm3 to 6.0 g/cm3 and a cavity percentage of 15% or more (table 1).
Regarding claim 7, Itoh further teaches wherein the fluoride-based electrolyte comprises LiF and NdF3 (col. 6, lines 7-12).
Regarding claim 8, the fluoride-based electrolyte of Itoh comprises LiF and NdF3 (col. 6, lines 7-12). It has been held by courts that generally, differences in concentration not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. 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." In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05.II.A.
Regarding claim 9, the molten salt of Tarcy has a density of up to g/cm3 (col. 5, lines 5-8).
Regarding claim 10, Itoh discloses wherein the neodymium compound comprises at least neodymium oxide (col. 4, lines 5-10).
Regarding claim 11, Itoh discloses wherein the neodymium compound comprises at least neodymium oxide (col. 4, lines 5-10). It has been held by courts that generally, differences in concentration not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. 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." In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05.II.A.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Itoh and Tarcy as applied to claim 1 above, and further in view of Dudley et al. (US Patent Application Publication no. 2012/0156492).
Regarding claim 12, the modified Itoh discloses all the method steps discussed above, but fails to teach wherein the providing granules comprises: forming a granule precursor by adding a binder to neodymium compound powder or adding the binder to a mixture of neodymium compound powder and graphite powder; drying the granule precursor; and heat-treating and sintering the dried granule precursor by heating at a temperature of 800°C to 1,500°C.
Dudley teaches a feedstock for reduction in an electrolytic cell, the feedstock comprises a plurality of three-dimensional elements, i.e. granules or pellets, defining an internal cavity (abstract; paragraphs 7, 25, 91; figures 1-1b), the granules being formed by adding a binder to neodymium compound powder; drying; and heat-treating and sintering the dried granule precursor by heating at a temperature of approximately 1050°C (paragraphs 37; 76) in order to provide the elements with the required mechanical strength to act as a feedstock and to also control levels of porosity in the elements within pre-determined limits (paragraph 37).
It would have been obvious to one having ordinary skill in the art to form the pellets of the modified Itoh by adding a binder, heat-treating and sintering, as taught by Dudley, in order to provide the elements with the required mechanical strength to act as a feedstock and to also control levels of porosity in the elements within pre-determined limits.
Response to Arguments
Applicant's arguments filed on June 29, 2026 have been fully considered but they are not persuasive. The applicant argues that Itoh directs a skilled artisan away from using neodymium oxide. Itoh attributes operational problems to the use of neodymium oxide due to its poor solubility and replaces neodymium oxide with neodymium fluoride.
In response, the Examiner does not find this argument persuasive.
Itoh discloses that neodymium oxides can be reduced in an electrolytic step to deposit metallic neodymium on a cathode (col. 2, lines 31-37). Even though Itoh recognizes the poor solubility of neodymium oxide at lower temperatures, this does not exclude the fact that it is capable of reduction and therefore may be used as a feedstock for electrowinning neodymium, as taught by Tarcy.
Tarcy was provided to show that granules/pellets comprising a neodymium compound in the electrolytic bath are well-known in the art to be effective for electrowinning neodymium. Said pellets consist essentially of a mixture of light metal powder and a rare earth metal oxide (abstract; col. 3, lines 36-48; col. 4, lines 12-14). Should compacted pellets of reactants dissolve more slowly than desired, optional wetting and/or stirring steps may be performed in any molten metal fluoride electrolyte (col. 6, lines 15-31). One having ordinary skill in the art at the time of filing would have found it obvious to perform wetting or stirring steps, if needed, to promote dissolution of neodymium oxide and improve the electrowinning process thereby.
For these reasons, the rejections in view of Itoh and Tarcy are still deemed proper and are maintained.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as discussed in more detail above, even though Itoh recognizes the poor solubility of neodymium oxide at lower temperatures, this does not exclude the fact that it is capable of reduction and therefore may be used as a feedstock for electrowinning neodymium, as taught by Tarcy.
In response to applicant's argument that the claimed invention provides a different technical approach, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
THIS ACTION IS MADE FINAL. 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 ZULMARIAM MENDEZ whose telephone number is (571)272-9805. The examiner can normally be reached M-F 8am-4:30p.
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/ZULMARIAM MENDEZ/Primary Examiner, Art Unit 1794
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