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 .
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.
Response to Election/Restrictions
Applicant’s election without traverse of Group II claims 13, 15, 17, 19, 21, 23, 27 and 29 in the reply filed on April 17, 2026 is acknowledged.
Claims 12, 14, 16,18, 20, 22, 24-26 and 28 are withdrawn from consideration.
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 13, 15, 17, 19, 21, 23, 27 and 29 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.
Regarding claim 13, the term of “a noble metal adsorbent” recited in claim 13 is unclear and indefinite because “a metal sulfide” recited in claim 13 can be a non-noble metal sulfide, and “molybdenum disulfide” recited in claim 15 is non-noble metal sulfide. Does the “noble metal adsorbent” contain a noble-metal prior adsorbing?
Clarification and an appropriation is required.
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 USC § 112(b) for the reasons set forth above.
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.
Claims 13, 23 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Dobersek et al. (WO 2019/120368 A1, Machine-generated English translation is attached and cited for page and paragraph).
Regarding claim 13, Dobersek et al. teach a process for recovering gold (the instant claimed noble metal) comprising adsorbing dissolved gold on a content of organic carbon in the present sulfide sulfur or alternative iron sulfide FeS2 (the instant claimed a metal sulfide), so that in the sorption tailings formed in the process of sorption leaching, the residual fractions of the noble metal are in significant concentrations. Oxidative roasting of the residual quantities of noble metals accumulate in the tailings formed in the sorption leaching at a temperature from 450-750 0C (the instant claimed heating and volatilizing in the presence of oxygen) to recover the noble metal (gold) (pages 3-7).
Regarding claims 23 and 29, as discussed above, the noble metal taught by Dobersek et al. is gold as the instant claim.
Claims 15, 17, 19, 21 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dobersek et al. as applied to claim 1 above, and further in view of Oki et al. to WO 2021/059325 (herein referred to under US 2022/0348476 A1 as the English-language equivalent cited to for page and paragraph).
Regarding claim 15, although Dobersek et al. do not specifically disclose the metal sulfide is molybdenum disulfide particles as per applicant claim 15, Oki et al. teach the use of molybdenum disulfide MoS2 particles for heavy metal (such as gold) adsorbent recovery ([0023], [0037]-[0038], [0045]-[0046], [0051]-[0052], [0074]-[0075] and [0369]-[0371]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine MoS2 particles taught by Iko et al. in the process taught by Dobersek et al. to obtain the invention as specified in the claim 15, motivated by the fact that MoS2 particles has high adsorption performance for heavy metals and low adsorption capacity for mineral components ([0370]).
Since both of Dobersek et al. and Iko et al. teach the use of an adsorbent containing a metal disulfide, one would have a reasonable expectation of success.
Regarding claim 17, MoS2 particles taught by the combined references of Dobersek et al and Iko et al. has a median diameter D50 of 10 nm to 1000 nm obtained by a dynamic light scattering type particle diameter distribution measuring device (Iko et al., claim 5).
Regarding claim 19, MoS2 particles taught by the combined references of Dobersek et al and Iko et al. has a string shape, a ribbon shape, or a sheet shape, and have a thickness in a range of 1 nm to 40 nm which overlaps the instant claimed ranges (Iko et al., claim 1).
The references differ from Applicant's recitations of claim by not disclosing identical ranges. However, the reference discloses "overlapping" ranges and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 21, MoS2 particles taught by the combined references of Dobersek et al and Iko et al. has a specific surface area of 10 m2/g or more measured by a BET method (Iko et al., claim 1).
Regarding claim 27, although Dobersek et al. do not specifically disclose adsorbing 0.56 g or more noble metal /g of the noble metal adsorbent as per applicant claim 27, since the combined references of Dobersek et al. and Iko et al. teach all of the claimed reagents, composition including an adsorbent comprising MoS2 particles and method of making of recovering gold, the physical properties of the resulting composition (i.e., adsorbing 0.56 g or more of gold /g of the noble metal adsorbent) would necessarily follow as set forth in MPEP 2112.01(II).[1]
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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, Sally A Merkling can be reached at 571-272-6297. 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.
YUN . QIAN
Examiner
Art Unit 1738
/YUN QIAN/Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot 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).
Prosecution Insights