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 04/15/2026 has been entered. Claim(s) 1-15 is/are pending in this application and examined herein. Claim(s) 1-6, 9-10, and 12-15 is/are amended.
The objections(s) to claim(s) 1-2, 6, and 12 are withdrawn in view of the amendments to claim(s) 1-2, 6, and 12 respectively.
The rejection(s) under 35 USC 112(b) to claim(s) 1-3, claim 12 with respect to the terms “without the iron salt”, “specific amount”, “preferably”, “the mineral medium”, and claim 13 is/are withdrawn in view of the amendments to claim(s) 1-3, and 12-13 respectively.
Specification
The replacement specification was received on 04/15/2026. These specification is acceptable.
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4: “the soluble state to the metallic state” should read “a soluble state to a metallic state” to be consistent with the phrasing in claim 3
Appropriate correction is required.
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 1-15 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 "or other filling material" in line 6. The limitation is indefinite as it is unclear which filling materials besides polyurethane are envisaged by the Applicant as “configured to immobilize the microorganisms”.
Claim 1 recites the limitation "collects leachate and recirculates it to a top of the biomass column" in line 14. The limitation is indefinite as it is unclear if the leachate collected and recirculated is the same as the liquid solution comprising iron II ions that is recirculated through the column at line 12, or if the leachate is a separate solution.
Claim 1 recites the limitation "the liquid solution comprising the iron III ions" in line 19. A “liquid solution comprising the iron II ions” is disclosed in line 12, and there is general discussion of biological oxidation of iron II to iron III (lines 7-8), however there is insufficient antecedent basis for this limitation in the claim.
The term “a surplus” in claim 12 is a relative term which renders the claim indefinite. The term “a surplus” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, making unclear what amount of sample is a surplus which would be eliminated.
Claim 12 recites the limitation "a surplus" in line 10. The limitation is indefinite as it is unclear what composition is examined or how the “surplus” of the composition is eliminated.
Claims dependent upon claims rejected above, either directly or indirectly, are likewise rejected under this statute.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-3, 10-11, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Dorado et al. (WO 2019206755 A1, supplied with IDS filed 08/16/2023) in view of Zheng et al. (CN 111778235 A, original document and machine translation supplied herein, supplied with Office Action dated 12/23/2025), Rhodes et al. (US H2140 H).
Regarding claim 1, Dorado teaches a method for the biological recovery of metals in electric and electronic waste (Title), comprising inoculating a series of aerobic iron-oxidizing microorganisms and a mineral medium formed by different salts in solution into a reactor (pg. 5 lines 14-16) and performing a first stage of biological oxidation of iron II ions present in the mineral medium to iron III ions the first stage being catalyzed by a metabolic activity of the iron-oxidizing microorganisms (pg. 2 lines 16-21) performed within a previously fixed range of temperature (pg. 2 line 20) and controlling the pH of the mineral medium or fertilizers (pg. 2 lines 20-21), wherein the first stage lasts for at least two hours (pg. 2 line 21).
Dorado teaches irrigating a liquid phase comprising the iron III ions into at least one leaching column (pg. 2 lines 25-27) configured for housing an electrical material or one or more printed circuit boards of an electrical material or electronic waste from which metals are to be recovered (pg. 2 lines 25-27), the iron III ions being reduced to iron II oxidizing the metals (pg. 2 lines 27-28) and the iron III ions being reduced to iron II oxidizing the metals (pg. 2 lines 28-29). Dorado teaches separating the metals of interest using a dissolution thereof (pg. 2 lines 28-29) and the electrical material or the one or more printed circuit boards being in contact with the liquid phase inside the leaching column (pg. 2 lines 29-30) for at least one hour (pg. 2 line 30). Dorado teaches extracting the metals of interest from the solution (pg. 2 lines 30-31).
Dorado does not teach inoculating into, performing oxidation in, or recirculating into an immobilized biomass column.
Zheng teaches a method for solidification and continuous culture of microorganisms (Title), where bacteria is cultured to oxidize ferrous ions into ferric ions [0019, 0024] to extract useful metals from ores via hydrometallurgy [0004], thus Zheng and Dorado are analogous to the instant application as both are directed to using ferrous ion oxidizing microorganisms for recovery of metals. Zheng teaches inoculating iron-oxidizing microorganisms into a biomass column [0009, 0038], wherein the microorganisms require oxygen to perform oxidation (i.e., aerobic iron-oxidizing microorganism) [0044]. Zheng teaches the column to be packed with zeolites or wood shavings [0026, 0037, 0056], which immobilize the microorganisms [0051, 0056, 0061], thus Zheng teaches a column packed with other filling material configured to immobilize the microorganisms as best can be examined in view of the rejections of claim 1 under 35 USC 112(b). Zheng teaches performing oxidation in an immobilized biomass column [0009, 0039, 0045]. Zheng teaches the top-in, bottom-out method of introducing bacteria using oxygen from air to enter the column greatly saves energy [0090-0091]. Zheng teaches a circulating reflux method during which ferrous iron is oxidized to ferric iron (i.e., recirculating a liquid solution comprising the iron II ions that the microorganisms oxidize to iron Ill ions through the biomass column) [0091]. Zheng teaches the column may be arranged such that a collector 305 arranged at a bottom of the biomass column 304 which collects the solution (Fig. 4B, [0072]), and circulates it to a top of the biomass column using a pump 302 (Fig. 4B, [0072]) wherein an inlet pipe 303 (i.e., a sprinkler) distributes the liquid solution over the biomass column (Fig. 4B, [0071]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the reactor in which microorganisms are inoculated of Dorado with a column as taught by Zheng as doing so would greatly save energy.
As Zheng teaches the top-in bottom-out method of introducing liquid solution into the biomass column to be more advantageous [0084, 0091], one of ordinary skill in the art would have been motivated to both incorporate recirculation of the liquid solution comprising iron II ions, and to adopt the top-in bottom-out method of Zheng, where as Zheng teaches the description as a “bottom-in top-out” circulating reflex method is merely a preferred embodiment, and not limiting of the application [0092], such a combination of modifications would have a reasonable expectation of success, and the pump 202/302 recirculates the liquid solution.
Zheng teaches a recirculation line 201/203/205 (Zhang: Fig. 2, [0091]), and air pump 207 which aerates the column (Fig. 2, [0072, 0089]), however Dorado in view of Zheng does not teach wherein a venturi ejector is installed in a recirculation line.
Rhodes teaches a bio-oxidation process and apparatus (Title), where the bio-oxidation is performed for the extraction of metals (Abstract), where the process is suitable for converting ferrous ions in solution to ferric ions, which attack minerals to liberate metals (Col. 8 lines 50-54), thus Dorado and Rhodes are analogous as both are directed to bio-oxidation of ferrous ions to ferric ions to perform leaching of metals. Rhodes teaches that aeration means are included to introduce oxygen to the bacteria (Col. 2 lines 25-30), which may comprise a venturi where a stream of liquid from the reactor (analogous to a recirculation line) is pumped through a venturi which draws air into the liquid thereby aerating it, and the aerated liquid is returned to the reactor (i.e., wherein a venturi ejector installed in a recirculation line allows suction of air through circulation of the liquid solution, ensuring availability of oxygen for maintaining microbial activity) (Col. 2 lines 47-50).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have replaced the aeration pump of Dorado in view of Zheng with a venturi ejector on a recirculation line as taught by Rhodes, as doing so would perform aeration without the use of a dedicated air pump that uses energy, where doing so would result in energy savings as taught by Zheng.
Claim(s) 2-3, 10-11, and 14-15 remain(s) rejected as set forth in the Office Action dated 12/23/2025. Claim(s) 11, 14 has/have not been amended since that time, and the amendments to claim(s) 2-3, 10, and 15 are of an editorial nature and do not materially affect any statements made in the rejection in the prior Office Action. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Dorado in view of Zheng and Rhodes as applied to claim 1 above, and further in view of Butler (US 20120144959 A1, cited in Office Action dated 12/23/2025).
Claim(s) 5-7 remain(s) rejected as set forth in the Office Action dated 12/23/2025. Claim(s) 7 has/have not been amended since that time, and the amendments to claim(s) 5-6 are of an editorial nature and do not materially affect any statements made in the rejection in the prior Office Action. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Dorado in view of Zheng and Rhodes as applied to claim 1 above, and further in view of Yan et al. (US 4298578 A, cited in Office Action dated 12/23/2025).
Claim(s) 8-9 remain(s) rejected as set forth in the Office Action dated 12/23/2025. Claim(s) 8 has/have not been amended since that time, and the amendments to claim(s) 9 are of an editorial nature and do not materially affect any statements made in the rejection in the prior Office Action. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Dorado in view of Zheng and Rhodes as applied to claim 1 above, and further in view of Kasuya et al. (US 20170253999 A1, cited in Office Action dated 12/23/2025) and Rosengren et al. (US 20170333957 A1, cited in Office Action dated 12/23/2025).
Claim(s) 12-13 remain(s) rejected as set forth in the Office Action dated 12/23/2025. The amendments to claim(s) 12-13 are of an editorial nature and do not materially affect any statements made in the rejection in the prior Office Action. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Response to Arguments
Applicant's arguments filed 04/15/2026 have been fully considered with the following effect:
Regarding Applicant’s argument that Dorado in view of Zheng does not teach wherein liquid solution is recirculated through a collector at the bottom of the column and recirculated to the top through a sprinkler (see pg. 8-9 of remarks), the Examiner respectfully disagrees.
As noted by Applicant, Zheng does not disclose or suggest the use of ferric solutions to leach metals from electronic materials, but is still analogous to the instant invention as in Zheng bacteria is cultured to oxidize ferrous ions into ferric ions [0019, 0024] to extract useful metals from ores via hydrometallurgy, i.e., both methods use ferric ions to perform extraction of metals. As noted by Applicant, Zheng discloses circulation of culture media, where ferrous iron in the solution is oxidized to ferric iron. Zheng further teaches the column has a collector arranged at a bottom of the biomass column which collects leachate, and circulates it to a top of the biomass column using a pump where an inlet pipe (i.e., a sprinkler) distributes the liquid solution over the biomass column, Zheng teaching the claimed features.
Applicant’s arguments that Dorado in view of Zheng does not teach wherein the method requires a Venturi ejector, see pg. 8-9 of remarks, with respect to the rejection(s) of claim(s) 1-15 under 35 USC 103 as unpatentable over Dorado in view of Zheng alone or further art, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Rhodes as necessitated by amendment.
Regarding Applicant’s argument that the combination proposed by the Examiner would require substantial reconstruction of Dorado’s process, (see pg. 9-10 of remarks), the Examiner respectfully disagrees.
While as Applicant notes, Dorado is premised on the separation of microorganisms prior to leaching, such would also occur in using the biomass column of Zheng; in Zheng the biomass is immobilized in the column, and when the liquid solution is removed from the column, the biomass is left in the column, separating the two compositions.
Even if such a change resulted in a different separation process than that disclosed by Dorado alone, it has long been held that a person of ordinary skill is ‘not an automaton' limited to physically combining references. See University of Maryland v. Presens, No. 16-2745 (Fed. Cir. 2017). As Zheng teaches the column of Zheng to result in energy savings, thus while replacing the reactor of Dorado with a biomass column as taught by Zheng may take some degree of reconstruction and redesign, there is clear motivation within the art to perform such a modification.
Regarding Applicant’s argument that the claimed configuration provides significant technical advantages (see pg. 10 of remarks), it is noted that the features upon which applicant relies (i.e., higher biomass concentration, eliminating the need for downstream separation equipment, improved oxygen transfer, reduced mechanical complexity and energy consumption, improved efficiency of leaching and subsequent metal recovery operations, reduced cellular stress and supporting stable microbial activity) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
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