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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-14 in the reply filed on 1/6/2026 is acknowledged.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/6/2026
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/30/24 and 10/16/2023 have been considered by the examiner.
Claim Rejections - 35 USC § 103
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 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.
Any and all claim interpretations and introduction as above set forth are expressly incorporated into each and every rejection below including but not limited rejections under section 103 and rejections for obviousness double patenting as though fully set forth therein.
CLAIM INTERPRETATION:
Giving the claims the broadest reasonable interpretation in view of the instant specification recognizing the instant specification expressly identifies as a deflocculant silicates and alumino silicate with alkali such as KOH (See instant specification at [0075]
Where the prior art teaches the claimed de flocculant (esp. as recognized in the instant specification as such) it will necessarily absorb onto the clay and will create at least some electrostatic repulsive force and at least some electro steric force. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
The prior art teaches ranges which overlap the instantly claimed ranges thereby rendering same obvious. See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
Eastwood et al (CA 2772053A1) alternatively further in view of Fox et al (US 2009/0075046)
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eastwood et al (CA 2772053A1) alternatively further in view of Fox et al (US 2009/0075046)
Regarding Independent Claim 1:
Eastwood et al (CA 2772053A1) discloses treating tailings including fine solid particles with coarse debris removal prior to chemical treatment. A suspension includes mine tailings such as from oil sands mining by screening the tailings. The pre-treatment may be performed to enhance mixing of a flocculent in the tailings and dewatering (Abstract)
Eastwood discloses pretreatment implementation for removal of coarse debris from the fine tailings with an additive to enhance separation. The additive may modify rheological properties by reducing viscosity. It may reduce forces between coarse debris and bulk fluid such as cohesive, adsorptive or electrostatic for example to aid in screening and reduce plugging. The additive may be an organic or inorganic chemical a polymer a solvent or water and may be added to the fine tailings to disperse, de-flocculate, dilute and/or modify the pH or electrochemical properties of the tailings. (P51 L10-22) (meeting the limitations of claim 1 for contacting the tailings with a de flocculant)
The tailing include fine solid particles which include clay (P55 L22-30)(meeting the limitation for tailing to comprise clay of claim 1)
The clay having been in contact with the flocculent would be expected by one of ordinary skill in the art at the time of filing the invention to be absorbed into the clay in some amount by one of ordinary skill in the art at the time of filing the invention as clay is known to be porous and permeable. – it would have been obvious to one of ordinary skill in the art at the time of filing the invention to try to utilize a de flocculant which will absorb onto the clay tailings to facilitate deflocculation.
The material is screened to pass through a screen configured to allow material with a pre-determined size to flow through and separate coarse debris the coarse debris and screed fine tailing fluid the screened fine tailing fluid is collected flocculated and deposited (P3 L25-P4L7) (i.e. leaving a layer of coarse and a layer of fine tailing fluid thereby rendering obvious segregating the tailings into a plurality of layers – i.e. coarse and fine meeting claim 1 for segregating into a plurality of layers)
Assuming arguendo it is not obvious that the clay will absorb a de-flocculant:
Fox et al teaches a composition with a clay composition including clay which is treated with a de flocculant such as an electrolytic compound which may be inorganic to improve the dispersion of the clay within a slurry and reduce viscosity or both using sodium containing compounds such as sodium carbonate and other de flocculants such as alkali metal compounds, organic compounds etc. the clay will absorb the deflocculant and increases the charge repulsive forces been the clay particles. [0029](meeting claim 1 for absorbing and claims 9-10)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use an alkali deflocculant such as that of Fox in the process of in order impart improved properties which are desired by Eastman to reduce forces between the particles and adjust electrostatic properties already contemplated by Eastman.
Regarding Claims 2-14:
Eastwood et al (CA 2772053A1) discloses the limitations above set forth. Eastman as modified by Fox teaches the limitations above set forth.
Eastman discloses treating tailings including fine solid particles with coarse debris removal prior to chemical treatment. A suspension includes mine tailings such as from oil sands mining by screening the tailings. The pre-treatment may be performed to enhance mixing of a flocculent in the tailings and dewatering (Abstract)
Eastwood discloses pretreatment implementation for removal of coarse debris from the fine tailings with an additive to enhance separation. The additive may modify rheological properties by reducing viscosity. It may reduce forces between coarse debris and bulk fluid such as cohesive, adsorptive or electrostatic for example to aid in screening and reduce plugging. The additive may be an organic or inorganic chemical a polymer a solvent or water and may be added to the fine tailings to disperse, de-flocculate, dilute and/or modify the pH or electrochemical properties of the tailings. (P51 L10-22) (meeting the limitations of claim 1 for contacting the tailings with a de flocculant) (meeting the limitations for inorganic deflocculant of claim 5 meeting the limitations for organic flocculant of claim 6 meeting the limitations for create electrostatic repulsive force of claim 7 meeting electro steric repulsive force of claim 8 (where polymer meeting the limitation for a reagent of claim 13)
The tailing include fine solid particles which include clay (P55 L22-30)
The material is screened to pass through a screen configured to allow material with a pre-determined size to flow through and separate coarse debris the coarse debris and screed fine tailing fluid the screened fine tailing fluid is collected flocculated and deposited (P3 L25-P4L7) (i.e. leaving a layer of coarse and a layer of fine tailing fluid thereby rendering obvious segregating the tailings into a plurality of layers – i.e. coarse and fine meeting claim 1 for segregating into a plurality of layers)
The pretreatment screening removes coarse debris with different chemical or inertial properties. The fine solid particles include clay (P55 L22-30)(meeting the limitation for tailing to comprise clay of claim 1) the material screened from the tailings include bitumen (P56 L1-4) (meeting claim 3)
The tailings may be dewatered (P52 L5-8) (meeting claim 11)
Mine tailings include kaolin slurries mine tailing hydrocarbon tailing and so on (P53 L20-29) the tailings include fine solid particles and include dispersed clay with particles having particles below 44 microns (P57 L 1-12) (overlapping ultra fine of claim 4)
The additive may be an organic or inorganic chemical a polymer a solvent or water and may be added to the fine tailings to disperse, de-flocculate, dilute and/or modify the pH or electrochemical properties of the tailings. (P51 L10-22) Mine tailing include fine particles of 10 to 70 wt.% and includes dispersed clay and includes fine po=particles that are the primarily particles having various sizes up to about 44 microns such as sand. The tailings may be acidic, basic or neutral and include soluble compounds such as salts, silicon particles and carbonate based particles depending on the source of the tailings (P57 L1-15) (rendering obvious claims 9-10)(see above rejection of claim 1 in view of Fox where claims 9-10 are also rejected)
Fox et al teaches a composition with a clay composition including clay which is treated with a de flocculant such as an electrolytic compound which may be inorganic to improve the dispersion of the clay within a slurry and reduce viscosity or both using sodium containing compounds such as sodium carbonate and other de flocculants such as alkali metal compounds, organic compounds etc. the clay will absorb the deflocculant and increases the charge repulsive forces been the clay particles. [0029](meeting claim 1 for absorbing and claims 9-10)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use an alkali deflocculant such as that of Fox in the process of in order impart improved properties which are desired by Eastman to reduce forces between the particles and adjust electrostatic properties already contemplated by Eastman.
(rendering obvious to one of ordinary skill in the art at the time of filing the invention to adjust pH to basic overlapping the claimed range of claim 10 using an alkali of claim 9)
The material is screened to pass through a screen configured to allow material with a pre-determined size to flow through and separate coarse debris the coarse debris and screed fin tailing fluid the screened fine tailing fluid is collected flocculated and deposited (P3 L25-P4L7) (i.e. segregating the tailings into a plurality of layers – i.e. coarse and fine meeting claim 1 for segregating into a plurality of layers) (meeting claim 2 fore layers of greater and lesser density where the coarse particles are on top of the screen and the fine are below the screen – where the particle sizes of the layers give rise to different density (Mass/Volume=density where the larger particles will possess a different volume thereby possessing a different density the coarse particles having the greater density overlapping the claim limitation)
The pre-treatment screening may remove coarse debris so that the resulting pre-treated tailings fluid is homogeneous, or does not contain a substantial amount of settling solid particles.
Mineral fractions with a particle diameter less than 2 microns are generally referred to as "clay", (P1 L13-22 overlapping ultra fines and nano claim of claims 12 and 4)
Various different chemical treatments may be conducted including a recovery process to recover one or more valuable subtends in the tailings and the screened fine tailings may be subjected to chemical treatment to alter its chemistry such as pH or salt content and may be prepared from reclamation, deposition and further processing (P52 L5-15)
The additive may be an organic or inorganic chemical a polymer a solvent or water and may be added to the fine tailings to disperse, de-flocculate, dilute and/or modify the pH or electrochemical properties of the tailings. (P51 L10-22) rending obvious to one of ordinary skill in the art at the time of filing the invention adding a sufficient and effective amount to achieve the desired affect such as adjusting pH and altering electrochemical properties thereby overlapping the claimed range.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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 re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
Trifkovic Shamim Govedarica and Ansari published 3047562A1 12/21/2019
also published as
US 2020/0002197 (published 1/2/2020 with an effective filing date of 6/21/2018)
Claims 1-14 is/are rejected under 35 U.S.C. 103 as being obvious over CA 3047562A1 Trifkovic Shamim Govedarica and Ansari published 12/21/2019 also published as US 2020/0002197 (published 1/2/2020 with an effective filing date of 6/21/2018) citing to the US PGPub
Where the CA reference is published prior to the effective filing date of the instant application less than one year and the USPG Pub is published after the effective filing date but possessing an effective filing date which precedes the instant effective filing day by more than one year having one common inventor additional non common inventors and a different assignee. The Instant effective filing date 4/13/2020
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
CLAIM INTERPRETATION: Giving the claims the broadest reasonable interpretation in view of the instant specification recognizing the instant specification expressly identifies as a deflocculant silicates and alumino silicate with alkali such as KOH (See instant specification at [0075]
Any and all claim interpretations and introduction as above set forth are expressly incorporated into each and every rejection below as though fully set forth therein.
Regarding Claims 1-14:
Ansary Trifkovic et al teaches a treatment of slurry for separating material for water using a source of silicate and adding alkali. The reference teaches a process for treating mixtures of water bitumen and clay particles such as from mature fine tailings (meeting the limitations of claim 1 for tailings and for the tailings to comprise clay and meeting claim 3 for bitumen layer) using silicate ions and a basic alkali optionally with a biopolymer (i.e. meeting claim 6 for an organic deflocculant 13 for a reagent) to provide distinct sediment layer (Abstract) (meeting claim 1 for plurality of layers) The nano clay is segregated into layers (see claim 28 of reference) (further meeting claim 1 segregating into a plurality of layers)
The clay and bitumen are dispersed in water at a pH of 7 to 8.5 and aluminate and sulfate concentration is present at 350-20000 ppm adding a source of silicate an alkali (meeting claim 1 for a deflocculant) added to adjust pH to 9 to 12 or 10 (meeting claim 1 for adjusting pH) the slurry is separated into a plurality of layers with distinct densities (meeting claim 1 for plurality of layers and claim 2 for greater density layer disposed below layers of lesser density) the bottom comprises packed clay particles (See claim1 reference) (further meeting claim 2 for greater density layer disposed below layers of lesser density) The alkali includes KOH, NaOH Ca (OH).sub.2 etc. (See claim 13 reference) the process produces nano clays with particle sizes of 80- 20 nm (See claim 23 reference) (meeting claim 4 for ultra-fines with overlapping particle size and meeting claim 12 for nano clay from tailings)
The silicate source is added to the tailings slurry (claim 1 of reference meeting the limitation of claim 1 for contacting)
While the reference does not expressly recite the clay adsorbing the de flocculant, the examiner maintains it would be obvious to one of ordinary skill in the art at the time of filing the invention that at least some of the silicate flocculant will absorb into the clay of Ansary Trifkovic et al as these are the same compositional components of the claims and recognized by applicant in the specification and performing said absorption.
The silicate dosage is 250-20000 ppm [0008] (overlapping the range of claim 14)
The process uses polymers such as biopolymers (Abstract meeting reagent) biopolymers include polysaccharide [0007] (meeting claim 13)
The tailings are dewatered [0005] water is separated from the layers [0027] the clay is packed at the bottom layer and there are a plurality of layers (see claims 6 and 11 of reference further rendering obvious dewatering the tailings)
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 10906821. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims the same subject matter as the instant claims to wit:
US 10906821 claims 1-21 claim: treating a slurry comprising tailings water bitumen and fine clay (as in the instant claims 1 and 3) at a pH of 7 to 8.5 (as in instant claim 10) with an aluminate and sulfate and a source of silicate ions (i.e. a deflocculant as in instant claims 1 and 5) in amounts of 350-20000 ppm (overlapping instant claim 14) separating layers based on distinct densities with bottom layer being clay (as in instant claim 1 for plurality of layers and claim 2) (see claim 1 patent) adding alkali for pH adjustment (as in instant claim 10) see claim 12 of patent) the nano clay having particles of 80-200 nm (overlapping ultra fines of instant claim 4 and nano clay of instant claim 12) (see patent claim 17) adding a biopolymer (as in instant claims 13 for reagent and claim 6 organic def flocculant) (see patent claim 21)
Claims 1-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 11639303 . Although the claims at issue are not identical, they are not patentably distinct from each other because:
US 11639303 claims 1-21 claims Separating materials in a mixture where the mixture includes tailings (see claims 2 and 4 of the patent) by adding a source of silicate and a source of alkali to separate into a plurality of layers having different densities with bottom layer having higher density (see claim 1 patent corresponding to limitations of instant claims 1 for contacting tailings with deflocculant, segregating a plurality of layers, absorbing and the alkali adjusts pH of claim 1 9 and 10) the mixture includes bitumen and clay (see claims 7-8 of patent corresponding to said limitations in the instant claims 1 and 3) adding a biopolymer (claim 10 patent corresponding to claims 6 and14 of instant claims) the pH is at least 9 (see patent claim 12 corresponding to instant claim 10)
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 11912593 Although the claims at issue are not identical, they are not patentably distinct from each other because:
US 11912593 claims 1-20 claim: Extracting nano clay from a mixture such as tailings (see claims 1 and 2 of patent) by adding a source of silicate and alkali and biopolymer extracting the nano clay and separating into at least two layers (see patent claim 1) the alkali includes NaOH (patent claim 7) the nano clay diameter is 80-200 nm (see patent claims 17-18) (i.e. claimed nano clay and ultra fines)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732