DETAILED ACTION
The disclosure submitted on June 16 2023 is examined in this office 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 .
Claim Interpretation
Claim 1 recites “the suspension obtained” in step iii), which lacks antecedent basis. The instant disclosure does not provide reasonable support to use the common definition of “suspension” where solid particles are evenly dispersed in a liquid medium. To proceed with further examination, the broadest reasonable interpretation that will be applied is one where the aqueous product from step i) or step ii) is used in step iii).
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 1-13 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 1 recites the limitation "the suspension obtained after step i) or ii) is separated from the solid” in step iii). There is insufficient antecedent basis for this limitation in the claim. Step i) and step ii) do not yield a suspension nor a solid as presently written. Claims 2-13 are dependent on claim 1 and are therefore similarly rejected as they do not rectify the issue.
Claims 4 and 6 are identical in scope; they both recite the method according to claim 1 wherein the alkaline aqueous precipitant solution (B) is an aqueous alkali metal hydroxide solution. See CFR 1.75 and MPEP 2175.05(n).
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, 4, 5, 6, 9, 12, and 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 RU 2604617 C2, Zukh et al., 2016, herein referred to as Zukh. The machine English translation of Usui and Zukh, as provided with this office action, is cited.
Regarding claim 1, Usui discloses a method for preparing iron hydroxides (0001) wherein in Example 2 (0048), an aqueous solution of ferric (0007) iron chloride (0035) and an aqueous solution of sodium hydroxide (0048) are simultaneously added in a reaction vessel with a stirrer and constantly stirred (0037, 0038); this meets the limitation of an aqueous iron salt solution (A) and an alkaline, aqueous precipitant solution (B) mixed with each other. The pH is adjusted to 10 initially, and then maintained at 10 (0037); this meets the limitation of the mixing being 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 6 to 10, in view of the instant specification which provides an example (p. 4 lines 23-24) of an initial charge to which both solutions are added, which is a container comprising water. The solid of Example 2 is then washed twice then separated by filtration (0040); this meets the limitation of the suspension obtained after step i) or ii) is separated from the solid and is washed, in view of the claim interpretation described previously. While the order of these steps differ from the order of the filtration and washing of the instant claim, 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. The precipitate obtained is then dried; this meets the limitation of the solid being dried after washing.
Usui does not disclose that the water 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 2 and 9, 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 an Fe(III) salt, required of claim 2 and is iron (III) chloride, required of claim 9.
Regarding claims 4 and 6, Usui discloses the aqueous solution of sodium hydroxide (0048).
Regarding claim 5, Usui 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 claims 12 and 13, Usui 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 and Zukh as applied to claim 1 above, and in further view of US 7651973 B2, Schlegel, 2010.
As applied to claim 1, Usui modified by Zukh teaches a method for preparing iron oxyhydroxides. Usui modified by Zukh does 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 and modified by 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.
Claims 3, 8, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Usui and Zukh as applied to claims 1 and 2 above, and in further view of WO 2006088083 A1, Mae et al., 2006, herein referred to as Mae.
Regarding claim 3, Usui modified by Zukh teaches a method of producing iron oxyhydroxide as applied to claim 1 above.
Although Usui does not explicitly disclose iron (III) sulfate, 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 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.
Regarding claims 8, 10, and 11, Usui modified by Zukh teaches a method of producing iron oxyhydroxide as applied to claim 2 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 sulfate, 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.
Conclusion
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/Eileen Moudou/Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738