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 05/14/2026 has been entered. Applicant has canceled claims 2 and 3. Claims 1, 4-13 remain pending in the application. Applicant's amendments to the claims have overcome each and every 112(b) rejection previously set forth in the non-final office action mailed on 02/18/2026, thus rendering each and every 112(b) rejection upon claims 1-13 moot.
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 8-11 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.
Claims 8-11 depend upon claim 2 which has been cancelled. These claims are therefore indefinite as it is unclear which limitations are incorporated into the claimed inventions. To proceed with examination, the Examiner has interpreted these claims as being dependent upon claim 1.
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.
Claims 8-11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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 8 does not further limit claim 1 (such dependency interpreted as set forth above) since claim 1 has been amended to specifically recite iron (III) sulfate. Claims 9-11 are improperly dependent because it is unclear if they contain all the limitations of claim 1, since the formula iron (III) sulfate is mutually exclusive with the formulae recited in each of these dependent claims (dependency interpreted as set forth above). That claim 10 recites “iron (III) chloride sulfate” is not considered to further limit “iron (III) sulfate” since these are different formulae.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 4-6 and 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2007230850 A, Usui et al., 2007, herein referred to as Usui, in view of WO 2006088083 A1 Mae et al., 2006, herein referred to as Mae, and RU 2604617 C2, Zukh et al., 2016, herein referred to as Zukh.
Regarding amended claim 1, Usui teaches a method for preparing iron oxyhydroxides (0001) comprising i) mixing (0038) an aqueous salt solution A and an alkaline, aqueous precipitant solution B to obtain an aqueous suspension (ferric [0007] iron chloride [0035] and sodium hydroxide [0048]), wherein the mixing is carried out such that the pH in the mixture being formed in an initial charge during the addition of A and B is maintained in the range of 8.5 to 10 (pH is adjusted to 10 initially, and then maintained at 10 [0037]); iii) separating a solid from the suspension obtained after step i) (separated by filtration [0040]); iv) washing the solid obtained with water (washed twice [0040]); and v) drying the solid obtained after step iv) (0040). Regarding the ordering of steps iii) and iv), it has been held that differences in the order of performing process steps is obvious in the absence of new or unexpected results (see MPEP 2114.04.IV.C.). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as suggested by Usui where washing is conducted in any order of the taught process including before or after filtration for producing a purified product.
Usui does not teach wherein the iron salt of the aqueous iron salt solution A is iron (III) sulfate, and does not teach that the water used for washing is DM water.
However, Mae discloses an analogous method for producing iron oxyhydroxide (title) wherein the iron ion-containing aqueous solution serving as the raw material solution may be an aqueous solution containing trivalent or divalent iron ions (0048 [0019]). The trivalent ion solutions are disclosed as including ferric chloride, ferric nitrate, and ferric sulfate (0048 [0019]). It would be obvious to one skilled in the art to replace the ferric chloride taught by Usui with ferric sulfate as taught by Mae, since Mae discloses that they are equivalents of each other in the disclosed procedure.
Usui and Mae do not teach that the water used for washing is DM water.
However, Zukh teaches the use of DM water to wash precipitates (0025). It would be obvious to one skilled in the art to modify the invention disclosed by Usui with the washing taught by Zukh before the effective filing date of the present invention. One would be motivated to do so in order to obtain a solid product that is free from salts, as Zukh teaches (0025).
Usui does not disclose that the method prepares iron oxyhydroxide. However, the method disclosed by Usui prepares ferric hydroxide, which is equivalent to iron oxyhydroxide according to the instant specification (page 3). The invention disclosed by Usui therefore meets the limitation of preparing iron oxyhydroxides required by the instant claim.
Regarding claims 4 and 6, Usui, Mae, and Zukh teach the method as applied to claim 1. Usui further discloses the aqueous solution of sodium hydroxide (0048).
Regarding claim 5, Usui, Mae, and Zukh teach the method as applied to claim 1. Usui further discloses that the pH is maintained at 10 (0037). While 10 falls just outside the claimed range of 6.5 to 9.5, the courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close; see MPEP 2144.05, Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the pH of the mixture being formed in the initial charge within a reasonable range near the disclosed value of 10, and arrive at an amount that falls within the instant claimed range of 6.5 to 9.5.
Regarding claim 8, Usui, Mae, and Zukh teach the method as applied to claim 1, where iron (III) sulfate is suggested by Mae ((0048 [0019]).
Regarding claim 9, Usui, Mae, and Zukh teach the method as applied to claim 1. Example 2 of Usui discloses an aqueous solution of iron chloride used, where the solution of iron chloride is oxidized to be ferric before use (0035, 0007); this meets the limitation of the iron salt of the aqueous iron salt solution (A) employed is iron (III) chloride.
Regarding claims 10 and 11, Usui, Mae, and Zukh teach the method as applied to claim 1 above.
Mae discloses an analogous method for producing iron oxyhydroxide (title) wherein the iron ion-containing aqueous solution serving as the raw material solution may be an aqueous solution containing trivalent or divalent iron ions (0048 [0019]). The trivalent ion solutions are disclosed as including ferric chloride, ferric nitrate, and ferric sulfate (0048 [0019]). It would be obvious to one skilled in the art to replace the ferric chloride taught by Usui with ferric chloride sulfate, which is the combination of ferric chloride and ferric sulfate, and/or ferric nitrate, as taught by Mae and arrive at the claimed invention with reasonable prediction of success, since Mae discloses that they are equivalents of each other in the disclosed procedure. Iron III sulfate, iron III chloride sulfate, and iron III nitrate would be obvious as interchangeable to one skilled in the art due to their similar structure and chemical properties as aqueous Fe III iron salt solutions, and would serve the same purpose in the disclosed invention, with reasonable prediction of success. See MPEP § 2144.08, subsection II.A.4.(c) and 2144.09 regarding structural similarity between chemical compounds. See MPEP 2143 I (B), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), regarding the simple substitution of one known element for another to obtain predictable results.
Regarding claims 12 and 13, Usui, Mae, and Zukh teach the method as applied to claim 1. Usui further discloses the aqueous solution of sodium hydroxide (0048). Although Usui does not explicitly mention KOH, it would be obvious to one skilled in the art that NaOH and KOH are interchangeable due to their similar structure and chemical properties as alkaline solutions, and would serve the same purpose in the disclosed invention, with reasonable prediction of success. See MPEP § 2144.08, subsection II.A.4.(c) and 2144.09 regarding structural similarity between chemical compounds. It would additionally be obvious to one skilled in the art before the effective filing date of the present invention to substitute NaOH as taught by Usui with KOH, which is known in the art as a base comparable in basicity to NaOH, and would reasonably yield predictable results. See MPEP 2143 I (B), KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), regarding the simple substitution of one known element for another to obtain predictable results.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Usui, Mae, and Zukh as applied to claim 1 above, and in further view of US 7651973 B2, Schlegel, 2010.
As applied to claim 1, Usui, Mae, and Zukh teach the method as applied to claim 1. They do not teach that the solid obtained after step iii) is washed with DM water up to a filtrate conductivity of less than 2000 pS/cm.
However, Schlegel discloses Example 1 wherein the solid is washed until the filtrate conductivity is 1 mS/cm (C11/L5). This meets the limitation of less than 2000 µS/cm, where the conversion factor is 1 mS = 1000 µS. It would be obvious to one skilled in the art before the effective filing date of the invention to modify the invention taught by Usui, Mae, and Zukh with the step taught by Schlegel, and arrive at the claimed invention. One would be motivated to do so in order to separate the iron oxyhydroxide from the suspension and washing until the filtrate is largely free from salts, as taught by Schlegel (C8/L22). One would therefore arrive at the claimed invention with reasonable prediction of success.
Response to Arguments
Applicant’s arguments have been fully considered.
In response to applicant’s arguments with respect to claim(s) 1-13 regarding the teachings of Usui (p. 5), these arguments are rendered moot because new grounds of rejection have been set forth in this Office action. The thrust of the argument is furthermore found unpersuasive. Usui teaches a method of obtaining ferric oxyhydroxide as discussed above, and in light of the teachings of Mae is found to be relevant to the instant invention despite its lack of a specific teaching of ferric sulfate, since Mae teaches that ferric sulfate is a known equivalent to ferric chloride.
In response to applicant's argument regarding the teachings of Zukh (p. 6), 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 motivated by the present application. 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 the instant case, when the type of water is undisclosed by a teaching, it would be reasonable for one to look to any prior art to find teachings of acceptable types of water for use in a lab setting. The use of DM water is conventional in the art and the teaching of Zukh is reasonably applied here, since it teaches the use of DM water for washing precipitates, as claimed in the instant invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Akashi et al. (US 3794519 A) disclose the reacting of ferric sulfate with NaOH to form goethite (Fe2O3*H2O).
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 Eileen Moudou whose telephone number is (571)272-1768. The examiner can normally be reached M-Th 8 AM - 4 PM EST.
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/Eileen Moudou/Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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