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 § 102
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 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.
Claims 1 and 5-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2,861,030 to Slatin (Slatin).
As to claim 1, Slatin teaches a method for preparing titanium metal by molten salt electrolysis, comprising using an electrolysis cell (10) comprising an anode chamber and a cathode chamber, the anode chamber filled with an anode molten salt electrolyte (31) and inserted with an anode (36), wherein the anode molten salt electrolyte comprises a titanium containing raw material, the cathode chamber is filled with a cathode molten salt electrolyte (32) and inserted with a cathode (48), a bottom of the electrolytic cell (10) filled with a liquid alloy (15), the anode molten salt electrolyte (31) and the cathode molten salt electrolyte (32) are connected by the liquid alloy (15) and not in contact which each other, the method comprising powering on and running the electrolytic cell reducing the titanium-containing raw material in the anode chamber to titanium atoms at an interface between the anode molten salt electrolyte (31) and the liquid alloy (15), and simultaneously dissolving the titanium atoms into the liquid alloy (15), at the same time oxidizing the titanium atoms in the liquid alloy to titanium ions at an interface between the liquid alloy (15) and the cathode molten salt electrolyte (32), and simultaneously allowing the titanium ions to enter the cathode molten salt electrolyte (32) and subsequently reducing the titanium ions entered to titanium atoms on a surface of the cathode (48) to form the titanium metal (Column 2, Line 6 to Column 6, Line 48; Figure 1).
As to claim 5, Slatin teaches the apparatus of claim 1. Slatin further teaches that the anode is formed of graphite and the cathode is formed of molybdenum (Column 2, Lines 49-50; Column 4, Lines 51-52).
As to claim 6, Slatin teaches the apparatus of claim 1. Slatin further teaches that the cathode molten salt electrolyte comprises, for example, CaCl2 and TiCl2 and TiCl3 in different proportions, i.e. dichloride at a lower concentration (Column 9, Line 47 to Column 10, Line 9; Column 11, Lines 24-29; Claim 26).
As to claims 7 and 9, Slatin teaches the apparatus of claim 1. Slatin further teaches that the liquid alloy is formed by a solute metal, titanium, and a solvent metal such as copper, tin, antimony, zinc, lead, bismuth, nickel or cobalt, metals that are less active than titanium and form a low melting point alloy with a melting point below 1000°C as evidenced at least by applicant’s own disclosure (Column 7, Line 70 to Column 8, Line 16).
As to claim 8, Slatin teaches the apparatus of claim 1. Slatin further teaches that during operation a temperature of the anode molten salt electrolyte and the cathode molten salt electrolyte are controlled to, for example, 1100°C (Column 9, Line 55-70) and an anode current density is, for example, 0.16 A/cm2 (10 A/in2) (Column 6, Lines 70-74).
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.
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 2, 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Slatin as applied to claim 1 above, and further in view of US 2004/0194574 A1 to Cardarelli (Cardarelli).
As to claims 2, 3 and 4, Slatin teaches the apparatus of claim 1. Slatin further teaches that the titanium containing raw material comprises titanium dioxide (Column 7, Line 31) and that the anode molten salt electrolyte comprises CaO (Column 7, Lines 46-62). However, Slatin fails to teach the specific source of the titanium dioxide. However, Cardarelli also discusses the electrolytic production of titanium and teaches that titanium slag is a known source from which titanium dioxide can be used to recover titanium (Paragraph 0056). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to further provide titanium slag to the anode molten salt electrolyte for recovering titanium from a known source of titanium dioxide as taught by Cardarelli.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 5-9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-7 of copending Application No. 18/289,835 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the claim are present or inherently present.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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, James Lin can be reached at 571-272-8902. 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.
/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
Prosecution Insights