Prosecution Insights
Last updated: April 19, 2026
Application No. 18/274,788

METHOD USING ADSORBENT

Non-Final OA §103
Filed
Jul 28, 2023
Examiner
MCDONOUGH, JAMES E
Art Unit
1734
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Mitsui Mining & Smelting Co. Ltd.
OA Round
1 (Non-Final)
71%
Grant Probability
Favorable
1-2
OA Rounds
3y 2m
To Grant
82%
With Interview

Examiner Intelligence

Grants 71% — above average
71%
Career Allow Rate
1017 granted / 1425 resolved
+6.4% vs TC avg
Moderate +11% lift
Without
With
+11.0%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
50 currently pending
Career history
1475
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
59.6%
+19.6% vs TC avg
§102
17.8%
-22.2% vs TC avg
§112
10.3%
-29.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1425 resolved cases

Office Action

§103
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 . 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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto et al. (WO-2017002871-A1). Regarding claims 1-2, 5 Miyamoto discloses a porous inorganic skeleton having a three-dimensional continuous network structure having a pore (i.e., mesopore) size of 2 to 20 nm and a through hole (i.e., macropore) size of 0.1 to 50 microns (claims). As the size macropore size of the reference overlaps the claimed range the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549. Miyamoto discloses that a functional group is introduced to the surface of the skeleton, and that the functional group may be an amine such as aminopropyl (i.e., primary amine/ion-adsorbable functional group) (approx. para 0056). Miyamoto discloses contacting the porous skeleton with a solution containing a metal ion (claims). Although Miyamoto does not disclose steps of contacting the adsorbent with an acid, recovering the metal and regenerating with a base, the instant specification discloses that such recovery methods are known (i.e., admitted prior art)(instant specification, para 0002). As such it would have been obvious to includes these steps in the method of Miyamoto. Regarding claim 3 As the ratio of the size of macropores to the mesopores of the reference overlap the claimed the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549. Regarding claim 4 Miyamoto discloses that the inorganic skeleton is silica (claim 6). Regarding claim 6 Miyamoto discloses that the functional group can be present at 0.8 mmol/g (approx.. para 0086). Regarding claims 7-8 Miyamoto discloses that the metal may be a noble metal ion (i.e., transition metal ion) (approx. para 0054). Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto et al. (WO-2017002871-A1), as applied to claims 1-8 above, in view of Miyamoto et al. (US 2019/0008134, hereafter Miyamoto II). Regarding claims 9-10 Although, Miyamoto does not disclose the shape of size of the porous inorganic skeleton, Miyamoto does teach or suggest the other limitatio0ns of the claim. However, Miyamoto II discloses similar porous inorganic skeletons and discloses that the skeleton can be in the shape of a flat cylinder having a diameter of 10 mm and a thickness of 5 mm (i.e., aspect ratio of 2) (para 0064). Therefore it would have been prima facie obvious to one of ordinary in the art at the time of the invention to add to the teachings of Miyamoto by making the skeleton into the shape of a flat cylinder with a diameter of 10 mm and a thickness of 5 mm, with a reasonable expectation of success, as suggested by Miyamoto II. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. JAMES E. MCDONOUGH Examiner Art Unit 1734 /JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
Read full office action

Prosecution Timeline

Jul 28, 2023
Application Filed
Jan 08, 2026
Non-Final Rejection — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
71%
Grant Probability
82%
With Interview (+11.0%)
3y 2m
Median Time to Grant
Low
PTA Risk
Based on 1425 resolved cases by this examiner. Grant probability derived from career allow rate.

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