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 .
Response to Arguments
Applicant’s arguments, see Page 3, line 6 - line 7 of Remarks, filed March 23rd, 2026, with respect to the rejection of claim 19 under 35 U.S.C. 102(a)(1) and the rejections of claims 19-20 under 35 U.S.C 103 have been fully considered and are persuasive. Due to amendments to the claims, the rejections of claims 19-20 have been withdrawn. However, upon further consideration, new grounds of rejection are made in view of the prior art over the amended claims, which now require the new limitation, “the solution contains no more than a background (<100 ppm) concentration of thiosulphate” in independent claim 1.
The Examiner agrees with Applicant’s statement on Page 3, lines 30-31 that “the stable transition metal complex” encompasses iron, cerium, titanium, chromium, vanadium, manganese, or a combination thereof. The new grounds of rejection are nonetheless final due to being necessitated by the new limitation in claim 1 discussed above.
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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 19 recites, “the solution contains no more than a background concentration (<100 ppm) of thiosulphate”. This amounts to stating both that the solution contains no more than a background concentration of thiosulfate, as well as that the concentration of thiosulfate is <100 ppm, which is the narrower statement of the limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Notwithstanding the foregoing, either the broader or the narrower statement of the limitation will be interpreted to read on the concentration of thiosulfate, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111. The use of parentheses also renders the claims indefinite because it is unclear if the limitations contained therein are required.
Claim 20 is indefinite due to its dependence on claim 19 and because it does not cure the indefiniteness of the concentration of thiosulfate as recited therein.
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 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hummel (U.S. Patent No. 3,865,580, 1975).
Regarding claim 19, Hummel teaches an alkaline leaching solution (Hummel, Col. 12, lines 1-39, iron chelate modified solution containing ammonium carbonate) comprising a lixiviant comprising an amino acid or derivative thereof (Hummel, Col. 12, line 25, ethylenediaminedetraacetic acid) and a rate enhancer comprising an alkali stable transition metal complex (Hummel, Col. 12, lines 23-26, “chelating a 1:1 weight ratio of iron sulfate by reaction of ferrous sulfate with heptagluconate, ethylenediaminetetraacetic acid and hydroxyethylenediaminetriacetic acid”), wherein the solution contains no more than a background concentration of thiosulfate (Hummel is silent to thiosulfate, meaning no more than a background concentration of thiosulfate is present).
Hummel does not explicitly state that the background concentration of thiosulfate is <100 ppm. However, there is no reason to expect that thiosulfate would be present in an appreciable concentration. Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. See MPEP 2145.II, citing, e.g., In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). In the instant case, the recognition of the background concentration of thiosulfate being <100 ppm does not distinguish the instant claim from Hummel.
Regarding claim 20, Hummel teaches the alkaline leaching solution of claim 19, as discussed above, wherein the alkali stable transition metal complex is ferric EDTA (Hummel, Col. 12, lines 23-26, iron is chelated with ethylenediaminetetraacetic acid (EDTA); Col. 10, lines 6-8 explain that the ferrous chelate is oxidized to ferric chelate in the presence of oxygen in the air).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
