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 Status
The Preliminary Amendment filed on 31 August 2023 has been entered; claims 1-18 remain pending.
Claim Objections
Claims 1, 3, 9, 11, and 17 are objected to because of the following informalities: regarding claim 1, within line 14, the limitation “dissolute” should be “dissolve”; within line 23, the limitation “in this way” should be removed for clarity; within line 26, the limitations “of a” should be removed for clarity; within line 29, the limitations “solid / liquid separation” should be recited as an active metal step (i.e., “performing solid / liquid separation”); within line 34, the limitations “solid / liquid separation” should be recited as an active metal step (i.e., “performing solid / liquid separation”); within line 46 “if batches” should be recited as “of batches”; regarding Claim 3: within line 2, “is alkalinised” should be recited as “are alkanised”; regarding Claim 9, within line 3, “mixture” should be recited as “mixtures”; regarding claim 11, “mixture” should be recited as “mixtures”; “mixture of thereof” should be recited as “mixtures thereof”; and regarding Claim 17, within line 3, “mixture” should be recited as “mixtures”. 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 1-18 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.
With respect to claim 1, “A batch process” and “a series of batch processes” as recited in the preamble renders the claim indefinite, as the process cannot be both a batch process and a series of batch processes, especially since there is no active step of repeating the steps (a) through (n), and there is no indication on how many “series” are required to meet the “series of batch process”. Clarification is respectfully requested.
With respect to claim 1, the phrase "such as" (recited in line 2 and line 23) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
The term “poorly soluble” in claim 1 is a relative term which renders the claim indefinite. The term “poorly” 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. The Examiner submits that the limitation is particularly unclear because the metes and bounds of “acidic aqueous solutions” is also unclear. For the purposes of examination, the Examiner will consider the limitations as being met by the chelators consistent with claims 4-7.
With continued reference to claim 1, “a Ca-chelator-complex recovered in the previous in series of batches” within step (a) lacks antecedent basis in the claim language; additionally, the examiner reiterates that the claims do not actively recite repeating the batch process of claim 1 as a “series of batches”.
With continued reference to claim 1, “an acidic form of a chelator recovered in the previous in series of batches” within step (b) lacks antecedent basis in the claim language; additionally, the examiner reiterates that the claims do not actively recite repeating the batch process of claim 1 as a “series of batches”.
With continued reference to claim 1, “final concentration of the chelator” recited in step (b) is unclear, as it is unclear to the Examiner whether this refers to the total concentration of the Ca-chelator-complex and optionally supplemented Na-chelator-complex. Clarification is respectfully requested.
With continued reference to claim 1, in step c), “acid capable of forming an insoluble Ca salt” renders the claim indefinite, as it is unclear to the Examiner whether the formation of insoluble Ca is actively required.
With respect to claim 1, step c) the limitations “wining Ca from the Ca-chelator-complex to dissolute toxic metals and Fe from substrate” is unclear to the Examiner. The Examiner believes that Applicant might mean that Ca ions dissociate from the chelator and toxic metal/Fe get complexed by the chelator (as implied in step (k) of claim 1). Clarification is respectfully requested.
With respect to claim 1 step (b), it is unclear to the Examiner what is meant by “washing the slurry from step (a)”, as step (a) prepares the substrate slurry with a washing solution. Specifically, the Examiner is unclear as to whether step d) is a distinct washing step separate from the washing solution in step a), or if step d) merely means that step a) is carried out for 15-720 min.
With continued reference to claim 1, step g) the limitations “a metal capable of forming oxide-hydroxides or of a layered-double-hydroxides” renders the claim indefinite, as it is unclear whether, if step g) is carried out as a non-optional step, the formation of oxide-hydroxides or layered-double-hydroxides is actively required.
With continued reference to claim 1, step g) “emissions” is undefined. The Examiner believes Applicant is referring to the presence of the “toxic metalloids and toxic metals”; however, it is unclear to where the “toxic metalloids and toxic metals” would be emitted.
Regarding claim 1 line 31, the phrase "for example" or “e.g.” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
With continued reference to claim 1, step (l) and step (n), “to be used in the next series if/of batches” lacks antecedent basis in the claim language; additionally, the examiner reiterates that the claims do not actively recite repeating the batch process of claim 1 as a “series of batches”.
With respect to claim 2, the limitations pertaining to addition of “the Ca-containing base” in step (d) lack antecedent basis in the claim language as no Ca-containing base is added in step (d) and therefore, no Ca(OH)2 byproduct is being produced. Addition of a Ca-containing base occurs first in step (j), which occurs after step (h), which occurs after step (d).
With respect to claim 4, the scope of “synthetic and natural poly-acid compounds and their salts” is unclear to the Examiner.
With respect to claim 8, “the final concentration” is not recited in step (a); step (b) recites a final concentration (total concentration) of Ca-chelator-complex, acidic form of the chelator, and optional supplemental Na-chelator-complex. As such, Applicant may wish to amend to refer to step b) to overcome this rejection.
With respect to claim 18, the limitations depend from claim 1, but go on to recite what appears to be a separate independent claim. The Examiner respectfully asks for clarification regarding the dependency of this claim.
With continued reference to claim 18, Applicant is respectfully asked to refer to the extensive 112(b) rejections raised for claim 1 for similar 112(b) issues that present within claim 18, whether it is Applicant’s intention to have claim 18 depend from claim 1 or amend to be its own independent claim.
Regarding claims 3, 5-7, and 9-17, they are rejected for being dependent on a rejected base claim.
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.
Claim 3 is 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. Regarding claim 3, the limitations pertaining to the pH range broadens the scope of the pH range recited in claim 1, step (j). The Examiner respectfully suggests that Applicant could amend to indicate that steps (j) and (k) are optional to overcome this rejection. 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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Lestan et al. (U.S. Patent Publication # 2017/0100755) in view of KR 20190033142 A (machine translation provided and relied upon), hereinafter “Lestan (‘755)” and “KR (‘142)”.
With respect to claims 1, 3-7, 9-14, 17, and 18, Lestan teaches a batch process for remediation of soils and sediments (“a substrate”) (Paragraph [0029]), removing toxic metals including Pb, Zn, Cd, Cu, Hg, Ni, Mo, Tl, Cr, U, Cs, Sr (see Lestan (‘755): Paragraph [0029]), said process comprising:
(a) preparing a slurry of the soil/sediments (“Fe-containing substrate”) with a washing solution comprising Ca-EDTA (“Ca-chelator-complex”) recycled from downstream treatment steps in a ratio of solid phase to Ca-EDTA of 1:0.5 to 1:3 (Paragraphs [0031, 0035-0037]),
(b) addition of a protonated form of ETDA or Na-EDTA (“Na-chelator-complex”) to compensate for chelator losses during the process to achieve a total EDTA concentration ranging from 10 to 250 mmol of chelant per kg air dried soil/sediment (Paragraph [0031]);
(d) wherein the prepared slurry with washing solution washes the soil/sediment for 0.5 to 48 hours (Paragraph [0031]);
(h) performing solid/liquid separation of the slurry from (d) to obtain a washed solids phase (“substrate”) and used (“waste”) washing solution (Paragraph [0032]);
(i) rinsing the solids phase once or several times within a filter press with a rinsing solution to remove residual EDTA-chelates and toxic metals and separation of phases, generating used rinsing solutions and rinsed solid substrate as a final product (Paragraph [0032]);
(j-l and m) alkalinising the waste washing and rinsing solutions with a calcium-containing base with addition of a polysaccharide (Paragraphs [0032]) to a pH of 11.5 to 13.5 in a single step as recited in claim 3, precipitating hydroxide of toxic metals and Ca(OH)2 which are separated from the process solution, and recovering a significant amount of chelator (Paragraphs [0035-0040]);
(n) acidification of Ca-EDTA in at least one rinsing solution with H2SO4 to obtain the acidic form of the EDTA chelator used in step (b) (Paragraph [0037]).
Lestan (‘755) and the claims differ in that Lestan does not teach the exact same proportions for the solid / liquid ratio in step (a) or the washing time in step (d) as recited in the instant claims; however, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges in soli / liquid ratio and washing time taught by Lestan overlap the instantly claimed proportions and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in Lestan (‘755), particularly in view of the fact that; “The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson, 65 USPQ2d 1379 (CAFC 2003).
Lestan (‘755) does not specifically teach addition of an acid that forms an insoluble Ca salt (step c) or addition of a reductant (step e), or that the soil/sediment comprises iron.
KR (‘142) teaches addition of oxalic acid and a reducing agent embodied as dithionite to wastewater obtained from a soil washing process (see Pages 2-3, first three paragraphs of the “Description of the Embodiments” section) and see the Example on Page 5), wherein iron oxides are contained in the soil.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the oxalic acid and dithionite of KR (‘142) to the washing slurry of Lestan (‘755) because both references are directed to the removing toxic metals/metalloids from soils and sediments, and because Lestan (‘755) teaches the presence of arsenic in soil/sediments (see Paragraph [0030]), and KR (‘142) teaches that addition of the oxalic acid and dithionite allows for precipitation and removal of iron and arsenic complexes from the same type of aqueous medium (see KR (‘142): Example and Claim 1).
The Examiner acknowledges that the above reference combination teaches steps c and e with washing solution separated from the washed solids and not specifically addition of oxalic acid and dithionite to the slurry generated by the washing solution and soil/sediment in step (a); however, this difference merely amounts to reordering the steps recited in claim 1. It has been held that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
With respect to claim 2, Lestan (’755) in view of KR (‘142) teaches reusing Ca(OH)2 (see Lestan: Paragraphs [0039, 0040]), consistent with “reducing by-produced Ca(OH)2)”.
With respect to claim 8, Lestan (‘755) in view of KR (‘142) teaches that the total EDTA concentration ranging from 10 to 250 mmol of chelant per kg air dried soil/sediment (see Lestan (‘755): Paragraph [0031]), and does not provide the dosage in the units claimed (mM); however, it has been held that where the claimed parameters/properties may be expressed differently and thus may be distinct from what is disclosed in the prior art, it is incumbent upon applicants to establish that such difference is unobvious. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to employ the particular parameters as claimed, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33, and In re Russell, 169 USPQ 426.
With respect to claims 15 and 16, these claims recite further details of optional steps (f) and (g), which were not selected and treated above; therefore, claims 15 and 16 are also considered to be optional and are rejected with claim 1.
Regarding specifically claim 18, Lestan in view of KR (‘142) teaches that steps (j) –(l) occur as one step and not separate steps; however, it is noted that claim 18 does not preclude these steps happening simultaneously, and it has been held that in general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes. Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). In this instance, the final pH range of step (l) is achieved in the process of Lestan in view of KR (‘142), with precipitation of Fe-EDTA-complex necessarily occurring, as the final pH is the same, EDTA is used as the chelator, and the slurry of soil/sediment of Lestan in view of KR (‘142) comprises iron as discussed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 26 September 2025