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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
Claims 4 and 5 recite volume ratios which are written as “0.2~0.4:1” and “0.6~2:1.” These are interpreted to be equivalent to “0.2-0.4:1” and “0.6-2:1,” read as “the range of 0.2 to 0.4” and “the range of 0.6 to 2” to 1, respectively.
Claim 4 recites the limitation “when the magnesium concentration… and the calcium concentration…” This is interpreted to be a limitation that does not fix the ratio of these concentrations in the first eluate to the concentrations in seawater, and rather establishes the relationship of the volume ratio “0.2-0.4:1” as a function of both the magnesium concentration and the calcium concentration.
Claim 5 recites the ratio “0.6~2:1,” which is unclear as to which two volumes should be compared. To proceed with examination, given examples 4-20 of the instant specification, the interpretation will be used of a ratio of the total amount of ethanol added to the volume of eluate not inclusive of the ethanol added.
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 4 and 5 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 4 recites the language “the magnesium concentration” and “the calcium concentration.” There is insufficient antecedent basis for these components in the claim. Claim 1 does not recite a magnesium concentration or calcium concentration in the first eluate.
Claim 4 additionally recites the language “the volume ratio of ethanol to the first eluate.” This language is indefinite in scope because it depends on the conditions of “the magnesium concentration in the first eluate” and “the calcium concentration in the first eluate” being met. It unclear, as presently written, how to determine the extent of this ratio being satisfied when the concentrations of either magnesium or calcium are varied to values outside the instant claimed ranges of 3-5 times, and 0.5-1.5 times, the concentrations in seawater, respectively. It would therefore not be possible to ascertain when the claim language is met or infringed upon by one of ordinary skill in the art.
Claim 5 recites the limitation “the total volume ratio of ethanol added;” there is insufficient antecedent basis for this limitation in the claim.
Claim 5 additionally recites the limitation “the total volume ratio of ethanol added.” This language is unclear as to whether the total volume ratio is defined as the ratio of ethanol to the ratio of the total volume of the solution, or is defined as the ratio of ethanol added in step 1 plus the volume added in step 2 to the total volume of eluate in step 1 plus step 2, or is defined alternatively. This language is as a result indefinite.
Claim Rejections - 35 USC § 112
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 1-8 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 1 recites “a method for recovering high-purity magnesium sulfate.” The term “high-purity” is a relative term and is as a result indefinite in scope. The instant specification describes a purity of 99.8%, but does not provide a unit or standard by which this percentage is defined, in terms of mass, volume, moles, or otherwise. Claim 1 is therefore indefinite and claims 2-8 are indefinite due to their dependence on claim 1, without rectifying the issue.
Claim 4 recites “when the magnesium concentration…” which renders the full claim conditional and therefore not further limiting in scope; see MPEP 2111.04. 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 1-5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. 2018 (KR 101828471 B1), referred to herein as Kim, in view of Sorour et al., Desalination and Water Treatment, 57 (2016) 22818–22823, herein referred to as Sorour, Gomis et al., Fluid Phase Equilibria Volume 360, 25 December 2013, Pages 248-252, herein referred to as Gomis, and Zafarani-Moattar et al., Journal of Chemical & Engineering Data, 42 (1997) pp.1241-1243, herein referred to as Zafarani-Moattar. The English machine translation of Kim, as provided with this office action, is cited herein.
Regarding claim 1, Kim teaches a method for recovering high-purity magnesium sulfate (0001) comprising
a pre-precipitation step of mixing an alkali precipitant and seawater (0019)
a concentration step of reacting a precipitate formed in the pre-precipitation step with sulfuric acid (0019, where the acid may be sulfuric acid, 0022)
followed by filtering to obtain a first eluate (0.1 μm membrane filter, 0061, Comparative Example 3-1)
a first precipitation step of adding ethanol to the first eluate (0019, where the organic solvent may be ethanol, 0023)
and then removing a first precipitated solid to obtain a second eluate (membrane filter, 0062, Comparative Ex 3-1)
to precipitate magnesium sulfate solid (0019)
Kim does not teach a second precipitation step of further adding ethanol to the second eluate from which the first precipitated solid has been removed, to precipitate magnesium sulfate solid.
However, Kim teaches that calcium must be removed in order to optimize magnesium extraction efficiency (0096). Furthermore, Sorour teaches an analogous method of sequential selective precipitation of Ca2+ then Mg2+ from seawater/brine (abstract), wherein Ca is precipitated using sodium carbonate followed by Mg precipitated using sodium hydroxide (p. 22820 column 1, Figure 1). It would be obvious to one skilled in the art to modify the precipitation taught by Kim with a second precipitation step as Sorour teaches, motivated to do so in order to precipitate calcium out before obtaining magnesium, as Kim teaches (0096). While Sorour teaches two precipitants of different identities to precipitate Ca and Mg, it would be obvious to one skilled in the art to use ethanol as the precipitant in both steps in order to obtain MgSO4, because Gomis teaches that CaSO4 is significantly less soluble in EtOH (wCaSO4 = 7.1 x 10-4, Table 1 at 25 degrees C) than MgSO4, taught by Zafarani-Moattar (x1exp ≈ 0.2 for 10% ethanol at 25 degrees C, Figure 1). The weight fraction, wCaSO4 , is equal to a mole fraction x of 7.9 x 10-4 as demonstrated below.
0.00071
w
=
0.071
%
w
w
C
a
S
O
4
,
and
0.09996
w
E
t
O
H
≈
10
%
w
w
E
t
O
H
;
therefore the amount of water is
89.929
%
w
w
H
2
O
0.071
172
g
m
o
l
C
a
S
O
4
∙
2
H
2
O
≈
4.13
*
10
-
3
m
o
l
C
a
S
O
4
Similar calculations yield
0.217
m
o
l
E
t
O
H
,
4.99
m
o
l
H
2
O
0.00413
4.99
+
0.217
+
0.00413
=
0.0007925
≈
7.9
*
10
-
4
=
x
It would therefore be obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the invention taught by Kim with a second precipitation step as taught by Sorour, wherein the precipitant is ethanol, in order to precipitate CaSO4 and remove it before proceeding with the precipitation of MgSO4 with ethanol. One of ordinary skill in the art would be motivated to do so in order to remove CaSO4 (s) as an impurity in order to increase the amount and purity of MgSO4 (s) obtained, as Kim teaches (0096). The solubilities of CaSO4 and MgSO4 in solvents including ethanol, as properties of the chemical compounds, are inherent to the identities of the compounds as a function of temperature, and would have been evident before the effective filing date of the present invention; see MPEP 2112 (II). Therefore one of ordinary skill in the art would have motivation to modify the method taught by Kim to use the ethanol twice to obtain eluates and precipitated solids, instead of once as Kim teaches in the sole ethanol step (0019), and one of ordinary skill in the art would have reasonable expectation of obtaining results of solubility taught by Gomis (Figure 1, Table 1) and Zafarani-Moattar (Figure 1, Table 1).
Regarding claim 2, Kim teaches NaOH, paper sludge ash (PSA), cement kiln dust (CKD), slag, and fly ash, 0006, fuel ash, bottom ash, fly ash, de-inking ash, steelmaking slag, and waste concrete, 0021.
Regarding claim 3, Kim teaches seawater, title. Without evidence that “ordinary seawater” required in the instant claim is different in identity than seawater, this is interpreted to meet the limitation of ordinary seawater required in the instant claim.
Regarding claim 4, Kim teaches a ratio of 1:1-1:2 (v : v) with the eluate, 0114, with the concentrations of magnesium and calcium in the seawater being 1300 and 443 mg/L, respectively, 0072, and the concentration of magnesium in the eluate was 4850 to 5300 mg/L (0111, 0112). This meets the limitations of claim 4 given the conditional phrasing of the claim.
Regarding claim 5, Kim teaches a 1:2 (v : v) ratio of ethanol with the eluted solution (Comparative Example 3-1, 0112). This meets the claim limitation interpreted as a ratio to the eluate, as interpreted previously.
Regarding claim 7, Kim teaches performing fractional distillation on the organic solvent to recover the organic solvent (0067, 0069, 0122, 0126). Kim does not teach the use of fractional distillation on ethanol, specifically. However, it would be obvious to one skilled in the art before the effective filing date of the invention to modify the invention taught by Kim by replacing the acetone taught by Kim with the ethanol taught by Kim. One would be motivated to do so because Kim teaches that the organic solvent that is recovered can be the ethanol (pyridine, acetone, ethanol, 0120). One of ordinary skill in the art would therefore arrive at the claimed invention with reasonable prediction of success.
Regarding claim 8, Kim teaches the purity of magnesium sulfate obtained is 95 to 100%, 0024. As set forth in MPEP 2144.05, in the case where the claimed range "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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. 1990). 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 Kim, Gomis and Zafarani-Moattar where the purity of the MgSO4 product is in any workable or optimum range overlapping with 95 to 100%, as taught by Kim, including the claimed range of at least 99.8%, in order to obtain a product of suitable purity.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Gomis and Zafarani-Moattar, as applied to claim 1 above, and in further view of Roche et al. US 20090148365 A1, herein referred to as Roche.
Regarding claim 6, Kim in view of Gomis and Zafarani-Moattar discloses a method of obtaining solid MgSO4 as applied to claim 1 above.
Kim does not disclose a step of separating the precipitated magnesium sulfate solid after the second precipitation step followed by drying at room temperature.
However, Roche teaches a process for recovering solid magnesium sulfate hydrate (abstract) wherein the crystals are separated from the acid by filtration (0051) and washed with ethanol and then allowed to stand at ambient temperature to evaporate excess ethanol (0052). It would therefore be obvious to one skilled in the art to modify the invention suggested by Kim, Gomis, and Zafarani-Moattar to further include the step of separating the precipitated magnesium sulfate solid after the second precipitation step followed by drying at room temperature. One would be motivated to do so in order to obtain the solid and evaporate excess ethanol, as Roche teaches (0052).
Conclusion
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