18638006 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 .
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.
Claim Amendments
Applicants amendments to the claims filed on 23 April 2026 have been entered and considered for this action. The prior claim objections are withdrawn.
Claim Interpretation
Amended claim 1 includes the limitation “wherein the lead is recovered separately from the tin” and Applicant points to [0018], [0025] and [0026] of the originally filed specification (p. 4 ¶ 1 of the reply filed 23 April 2026) as supporting this amendment. Of these paragraphs, only [0026] is related to tin, and this paragraph only discloses that “most of the tin contained in the washed dust is tin oxide (SnO2), and a small amount of copper sulfide (CuS) or the like remains in the washed dust.” Therefore, it will be interpreted that any process that recovers lead while leaving behind tin, even in a mixture, will meet the limitation wherein lead is recovered separately from tin.
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 2-4 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 2 recites “neutralizing copper smelting dust containing lead, tin, and arsenic…in the neutralization step”. However, the neutralization step of claim 1, upon which claim 2 depends, performs the neutralization on the post-leaching solution and not on the copper smelting dust itself. It is therefore unclear what is required to be neutralized in claim 2 and the claim is rejected. For the purposes of further examination, claim 2 will be interpreted as having the following limitations:
wherein the copper smelting dust contains lead, tin and arsenic; and,
wherein the lead is selectively precipitated while the arsenic is not precipitated from the post-leaching solution by neutralizing the separated post-leaching solution under a liquid condition in a pH range of 11.5 or more to 12.5 or less in the neutralization step.
Claim 4 is rejected because it depends upon claim 2 without resolving the indefiniteness of claim 2.
Claims 3 and 4 each recite the limitations "the copper component" and “the zinc component” in lines 5-6. There is insufficient antecedent basis for these limitations in the claims because while the claims introduce a “soluble copper component” and a “soluble zinc component” in lines 3-4, it is unclear if the components recited in lines 5-6 reference the same “soluble components” or other zinc and copper in the smelting dust.
Claim 1 requires “adding alkali solution to copper smelting dust” while claims 3 and 4, which depend upon claim 1, require that the copper smelting dust be washed and then alkali leaching of the washed copper smelting dust to be performed. It may be interpreted that the “alkali leaching of the washed copper smelting dust” is to replace the alkali leaching step of separating lead and tin by adding alkali solution to copper smelting dust recited in claim 1, but the difference between washed copper smelting dust and copper smelting dust leave unclear if the limitations instead refer to something different.
Furthermore, claims 3 and 4 recite “and then alkali leaching … is performed”, but is unclear if this leaching is the same alkali leaching recited in claims 1 and 2.
It is recommended to amend claim 1 to read “… by adding alkali solution to copper smelting dust or washed copper smelting dust containing the lead and the tin…” and to amend claims 3 and 4 to recite “…and then [[alkali leaching of]] subjecting the washed copper smelting dust to the alkali leaching step.”
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 3 and 4 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.
Claims 3 and 4 require that copper smelting dust be washed to generate a washed copper smelting dust prior to leaching. Claim 1 requires that the same copper smelting dust be subjected to an alkali leaching step. Because claims 3 and 4 require that the (unwashed) copper smelting dust not be subjected to leaching, and instead that it be washed to generate a new product which is itself subjected to leaching, claims 3 and 4 do not contain all the limitations of claim 1.
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.
It is recommended to amend claim 1 to read “… by adding alkali solution to copper smelting dust or washed copper smelting dust containing the lead and the tin…” and to amend claims 3 and 4 to recite “…and then [[alkali leaching of]] subjecting the washed copper smelting dust to the alkali leaching step.”
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 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (JP 2001348627 A; foreign patent document #1 on the IDS filed 13 September 2024) in view of Chen et al. (CN 105695764 A; foreign patent document #1 on the IDS filed 8 September 2025) and Grudinsky et al. (Russian Metallurgy (Metally), 2018, 1, 7–13, DOI: 10.1134/S003602951801007X). The previously provided English machine translations of Chen (CN 105695764 A) and Yamaguchi (JP 2001348627 A) are relied upon in the analysis below.
Regarding claim 1, Yamaguchi discloses a method for recovering lead ([0016]) from industrial ash (fly ash which contains copper, lead…and is generated from incinerators, melting furnaces; [0001]) comprising:
an alkali leaching step of separating lead from an alkali insoluble residue by adding alkali solution to industrial ash containing the lead, and by leaching the lead and leaving a residue under a liquid condition with a pH of 14.2 (fly ash was suspended in 1 liter of water to prepare a slurry… after which 200 cc of 40% sodium hydroxide was added (pH = 14.2) and the slurry was leached for 30 minutes… to recover the alkali-insoluble residue and the alkali leaching solution; [0025]);
a step of performing a solid liquid separation step on the post-leaching solution and a leaching residue after the alkali leaching step (the mixture was then filtered using a filtration device to recover the alkali-insoluble residue and the alkali leaching solution; [0025])
a neutralization step of adding an acid to the separated post-leaching solution to precipitate the lead (sulfuric acid was added as a mineral acid to the alkaline leaching solution to adjust the pH to 12 and neutralize it; [0025]);
and a step of recovering a precipitate containing the lead by performing a solid liquid separation (then the solution was filtered to obtain a lead product; [0025]). The fact that lead was recovered by filtration indicates that it was precipitated during the neutralization step.
Yamaguchi does not specifically teach the fly ash being a copper smelting dust or separating lead and tin.
However, Chen teaches a largely similar process for recovering lead from industrial ash by alkali leaching, where that ash is copper smelting dust (NaOH solution of smoke dust in a copper smelting system; Example 4, page 3).
Furthermore, Grudinsky teaches that copper smelter dust containing lead can also contain tin (p. 7, ¶ 2 and p. 8, col. 2, ¶ 4) and that the tin in the smelting dust exists as SnO2 (p. 8, ¶ 3). It is noted that SnO2 is not soluble at the pHs used in the method of Yamaguchi, as evidenced by the instant specification (p. 9, line 15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the method of Yamaguchi to copper smelting dust. One of ordinary skill in the art would have been motivated to do so because Yamaguchi teaches that their method can be applied to industrial ash from a variety of sources including melting furnaces ([0001]) and Chen teaches that lead can be recovered from copper smelting dust in particular using a substantially similar process. It would have been further obvious to use the method of Yamaguchi on smelting dust containing tin. One of ordinary skill in the art would have been motivated to do so because Grudinsky teaches that tin is a component of such dusts that contain valuable metals. The method of Yamaguchi, when applied to a tin-containing copper smelting dust, as taught by Chen and Grudinsky, will necessarily separate the lead and the tin in the copper smelting dust because the SnO2 will remain in the alkali insoluble residue of Yamaguchi, which is recovered separately from the lead.
Regarding claim 2, modified Yamaguchi teaches the method of claim 1, where Grudinsky teaches the copper smelting dust containing lead, arsenic, and tin, (p. 7, ¶ 1-2 and p. 8, col. 2, ¶ 4) and Yamaguchi teaches lead is precipitated by neutralizing the post leaching solution under a liquid condition where the pH is 12 (sulfuric acid was added as a mineral acid to the alkaline leaching solution to
adjust the pH to 12 and neutralize it, and then the solution was filtered to obtain a lead product and an alkaline neutralized solution; [0025]).
It is noted that arsenic is not expected to precipitate at pH 12, as evidenced by the instant specification ([0028]). Therefore, the method of Yamaguchi, when applied to the copper smelting dust taught by Chen and Grudinsky, will afford selective precipitation of lead where arsenic is not precipitated.
Furthermore, Chen also teaches that neutralization of copper smelting dust alkali leachate to a pH of 11.5 with addition of an oxidant will precipitate lead while leaving other valuable metals, which include arsenic, in solution for subsequent recovery (Example 4 and Fig. 1, included below).
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English machine translation of Fig. 1 in Chen (CN 105695764 A).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to selectively precipitate the lead while leaving arsenic not precipitated under a liquid condition in a pH range of 11.5 to 12 in the neutralization step, as taught by Yamaguchi and Chen. One of ordinary skill in the art would have been motivated to do so because doing so provides a method to separate the lead from valuable arsenic product, as taught by Chen.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Yamaguchi et al. (JP 2001348627 A; foreign patent document #1 on the IDS filed 13 September 2024) in view of Chen et al. (CN 105695764 A; foreign patent document #1 on the IDS filed 8 September 2025) and Grudinsky et al. (Russian Metallurgy (Metally), 2018, 1, 7–13, DOI: 10.1134/S003602951801007X), as applied to claims 1 and 2 above, and further in view of Zhou et al. (CN 105567983 A) . The previously provided English machine translations of Chen (CN 105695764 A), Yamaguchi (JP 2001348627 A), and Zhou et al. (CN 105567983 A) are relied upon in the analysis below.
Regarding claim 3, modified Yamaguchi teaches the method of claim 1, where Grudinsky teaches that copper smelting dust contains tin (p. 7, ¶ 2 and p. 8, col. 2, ¶ 4), and Chen teaches that copper smelting dust contains a soluble copper component and a soluble zinc component together with lead (Example 4 shows Pb, Zn and Cu in the NaOH leaching solution).
None of Yamaguchi, Chen, or Grudinsky teach washing the copper smelting dust with water or an acid to wash and remove the copper component and the zinc component before the alkali leaching of the washed copper smelting dust is performed.
However, Zhou also teaches a process for treating dust from a copper smelting process ([0002]) where the soot is first washed with water to remove a soluble copper component and a soluble zinc component ([0040]-[0041]) before an alkali leaching step ([0043]). Zhou further teaches that this step affords a route to copper and zinc sulfate heptahydrate that meets the standards for industrial commercial use ([0042]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to wash the copper smelting dust to be used in the method of modified Yamaguchi with water prior to the alkali leaching, as taught by Zhou. One of ordinary skill in the art would have been motivated to do so because Zhou teaches that such a wash can recover copper and zinc of sufficient purity for industrial commercial use.
Regarding claim 4, modified Yamaguchi teaches the method of claim 2, where Grudinsky teaches that copper smelting dust contains tin (p. 7, ¶ 2 and p. 8, col. 2, ¶ 4), and Chen teaches that copper smelting dust contains a soluble copper component and a soluble zinc component together with lead (Example 4 shows Pb, Zn and Cu in the NaOH leaching solution).
None of Yamaguchi, Chen, or Grudinsky teach washing the copper smelting dust with water or an acid to wash and remove the copper component and the zinc component before the alkali leaching of the washed copper smelting dust is performed.
However, Zhou also teaches a process for treating dust from a copper smelting process ([0002]) where the soot is first washed with water to remove a soluble copper component and a soluble zinc component ([0040]-[0041]) before an alkali leaching step ([0043]). Zhou further teaches that this step affords a route to copper and zinc sulfate heptahydrate that meets the standards for industrial commercial use ([0042]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to wash the copper smelting dust to be used in the method of modified Yamaguchi with water to remove soluble zinc and soluble copper prior to the alkali leaching, as taught by Zhou. One of ordinary skill in the art would have been motivated to do so because Zhou teaches that such a wash can recover copper and zinc of sufficient purity for industrial commercial use.
Response to Arguments
Applicant’s arguments, page 5 of the reply filed 23 April 2026, with respect to the rejection of claims 1 and 2 under 35 USC § 103 have been fully considered and are persuasive in that Yamaguchi and Chen alone do not teach all the features of the amended claim because neither teach the material to be leached includes tin. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Grudinsky, who does teach that copper smelting dust can include tin as a valuable metal to be recovered.
Applicant’s arguments with respect to claims 3 and 4, page 6 of the reply, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In particular, Applicant’s amendments necessitated the incorporation of Zhou into the rejections of claims 3 and 4, and Zhou does teach a washing step performed before an alkali leaching, as analyzed 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 Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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