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 .
DETAILED ACTION
Claims 21-39 of J. Worsley, et al., US 18284982 (09/29/2023) are pending. Claims 27-30 and 34-39 are withdrawn as drawn to non-elected Groups (II)-(III). Claims 21-26 and 31-33 are under examination on merits and are rejected.
Election/Restrictions
Pursuant to the Restriction/Election Requirement, Applicant elected Group (I) (now claims 21-26 and 31-33), with traverse, with claim amendment to make claim 24 depending on claim 22, in the Reply filed on 05/04/2026. Claims 27-30 and 34-39 drawn to non-elected Groups (II)-(III) are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Applicant’s Traversal
Applicant first argues that claims 27-30 should be included in Group I because “Claim 27 has been amended to make clear that the "impurities" are an optional component of the "insoluble iron material" of claim 21”. See page 1, Response to Restriction Requirement, paragraph 3. This argument is not persuasive because the instant claim 27 has the follows language:
27.The method of claim 21, wherein the insoluble iron material further comprises impurities, and prior to the step of separating the iron (II) oxalate from the slurry to provide the solids stream and the liquids stream . . . .
Clearly, claim 27 requires the insoluble iron materials in claim 27 must comprise two or more impurities, which differs the insoluble iron materials in claim 21, therefore, the methods claimed by claims 21 and 27 are different.
Applicant also argues that claims 38-39 should be included in Group I because claim 39 requires that the digestion liquor comprises a mineral acid, which is similar to claim 22. Remarks at page 1, Response to Restriction Requirement, paragraph 4. This argument has been fully considered but not persuasive, because claim 39 not only requires to the digestion liquor comprises a mineral acid but also requires to regenerate mineral acid, while claim 22 does not, therefore, they are different methods.
Applicant then argues on the ground that RU does not teach or suggest of providing a stoichiometric excess of oxalic acid. Remarks at page 1, the last paragraph to page 2, paragraph 2. This argument is not persuasive, because per table 1, RU teaches that 93%-98% oxalic acid is transformed into Iron (II) oxalate, therefore, 2%-7% of oxalic acid is excess. Further, as detail discussed in the 102 rejection below that claim 21 is also anticipated by Yang.
Applicant further argues on the ground that there is no serious burden for searching for searching all the claims. Remarks at page 3. This argument is not considered persuasive because the instant restriction was issued under the unity-of-invention rules governing restriction in international applications under 35 U.S.C. 371 (see MPEP § 802; MPEP § 1893.03(d); 37 CFR § 1.499), therefore, MPEP 803 does not apply in the instant case. Under the applicable PCT rules there is no requirement of a serious search burden. The instant Application is an international application entering the National Stage under 35 U.S.C. 371. Under the rules governing multiple inventions under 35 U.S.C. 371 (see MPEP § 1893.03(d)), an international application should relate to only one invention or, if there is more than one invention, the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept (Rule 13.1). International Preliminary Examination Under Chapter II Of The PCT, Chapter 10, Unity of Invention, (Oct. 3, 2011). As such, in the instant case, there is no requirement that the Examiner prove or show a serious search burden.
Overall, the Restriction Requirement is proper and is made as Final.
Claim Rejections - 35 USC § 112(b)
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.
Claims 21-26 and 31-33 are rejected under 35 U.S.C. 112(b) as indefinite because the independent claim 21 recites the claim term “insoluble iron materials” while both the claim(s) and the specification are silent on what liquid medium is referenced to. One material maybe soluble in one liquid medium while is not soluble in another medium, without the referenced medium, one ordinary skill in the art does not know the scope of the claim(s). Depending claims 22-26 and 31-33 do not make the above mentioned issue clear.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21-26 and 31-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Y. Yang, et al. 157 Hydrometallurgy, 239-245 (2015)(“Yang”).
Yang teaches a method for recovery of iron from red mud by selective leach with oxalic acid as indicated below. Yang at title.
Regarding the condition of leaching, Yang teaches that:
3.2.1. Effect of oxalic acid addition
The effect of oxalic acid addition on the leach ratio of iron was studied under the conditions of adding pre-determined weigh of H2C2O4·2H2O to per 15 g washed red mud with L/S ratio 14:1 mL/g at 95 °C for 2 h. The experimental results were showed in Fig. 5. As can be seen, with the addition increase from 10 g to 30 g, the leach ratio of iron increased from 49.86% to 96.63%, and that of aluminum increased from 5.15% to 71.22%. This indicates that single using oxalic acid as leaching agent, will inevitably cause a large number of aluminum into the leach solution. Thus, it perhaps is an advisable choice to add other addition agent into the solution to make iron leached from it selectively.
Yang at page 240, left col. 3.2.1. Effect of oxalic acid addition, emphasis added.
Given, both iron and aluminum are leached in the solution, therefore, Yang used stoichiometric excess amount of oxalic acid relative to the digested iron species.
Per Fig 2 as indicated below, Yang teaches the method comprising:
(i). digesting HCl washed red mud that is a insoluble iron material containing Fe2O3 (see Yang at page 241, Fig. 4) with an aqueous solution of oxalic acid;
(ii). oxalic acid is stoichiometric excess relative to the digested iron species;
(iii). concurrently reacting the digested iron species with the oxalic acid;
(iv). separating the iron (II) oxalate from the slurry to provide a solids stream comprising the iron (II) oxalate and a liquids stream comprising residual oxalate; and
(v). recycling at least a portion of the liquids stream as digestion liquor.
The Yang method meets each and every limitation of claim 21, therefore, claim 21 is anticipated.
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Yang at page 241, Fig. 2.
Claim 25 is anticipated because Yang teaches that red mud is a solid waste. Yang at page 239, left col. line 1.
Claim 26 is anticipated because iron core/iron core concentrate is only one alternative in claim 25, further limitation of iron core/iron core concentrate does not have any structural limitation on other alternatives such as iron containing waste.
Claims 31-32 are anticipated because Yang teaches that the leaching is conducted at 90ºC under normal pressure.
Claim 33 is anticipated because Yang teaches that the ratio between oxalic acid dihydrate and red mud is 14 ml/g. 14 ml of oxalic acid dihydrate is 0.183 mole. The concentration of Fe2O3 in red mud is 28.3-63.2%. see R. Khanna, et al. 14.3 Sustainability 1258 (2022) (“Khanna”), therefore, the maximum amount of Fe2O3 in 1 g red mud is 0.632 g and the mole of Fe species is 0.008 mole[(0.632÷160)×2]. Therefore, the molar ratio of oxalic acid to iron in the insoluble iron material is at least 1.5 times (0.183/0.008) the stoichiometric requirement.
Claims 22-23 are anticipated because Yang also teaches a method of digesting HCl washed red mud with a aqueous solution of oxalic acid dihydrate and sulfonic acid, wherein the mass ratio for washed red mud/ oxalic acid dihydrate/ sulfonic acid is 3:3:2. Yang at page 240, right col. 3.2.2. Effect of H2SO4 addition.
While Yang does not specify, during digesting of the red mud with oxalic acid dihydrate-sulfonic acid, Fe2O3 in the red mud also react with sulfonic acid as Fe2O3 + 3H2SO4 = Fe2(SO4)3 + 3H2O. See Yang at page 241, left col. Equation 1. The produced Fe2(SO4)3 would be transformed into FeSO4 during treating of the reaction mixture with iron. See Yang at page 243, 3.3.1. Effect of iron scraps addition, and Equation 8. The instant specification teaches that FeSO4 reacts with oxalic acid to regenerate sulfonic acid. See specification at page 20, [0112], equation 2. Therefore, the digesting step of the Yang method of recovery iron from HCl washed red mud with a aqueous solution of oxalic acid dihydrate and sulfonic acid comprising:
(i). contacting the HCl washed red mud with an aqueous solution of oxalic acid-sulfonic acid and digesting the red mud; and
(iii). concurrently reacting the dissolved Fe species with the oxalic acid and sulfonic acid.
the separating step of the Yang method of recovery iron from HCl washed red mud with a aqueous solution of oxalic acid dihydrate and sulfonic acid comprising separating the iron (II) oxalate from the slurry to provide a solids stream comprising the iron (II) oxalate and a liquids stream comprising residual oxalic acid and the regenerated mineral acid;
and
the recyclizing step of the Yang method of recovery iron from HCl washed red mud with a aqueous solution of oxalic acid dihydrate and sulfonic acid comprising recycling at least a portion of the liquids stream as digestion liquor.
Overall, the Yang method of recovery iron from HCl washed red mud with a aqueous solution of oxalic acid dihydrate and sulfonic acid meets each and every limitation of claim 24, therefore, claim 24 is anticipated.
It should be noted that claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. MPEP § 2111.04 (citing In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005). In the instant case, the claim recites language of:
“to form a reaction solution comprising a soluble iron compound”, “to form a slurry comprising iron (II) oxalate, residual oxalic acid, and regenerated mineral acid”
does not change any the claimed active steps in the claimed process. The court noted that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’” Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Herein, the citation of “to form a reaction solution comprising a soluble iron compound”, “to form a slurry comprising iron (II) oxalate, residual oxalic acid, and regenerated mineral acid” is not a require step , but rather simply expresses the intended result of a process step positively recited, therefore, is not given weight for patentability.
Related Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zhou (CN101085732A, 2007) teaches a method for producing ferrous oxalate taking bloodstone as raw material with oxalic acid disgusting and irradiation reduction process.
Conclusion
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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