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 .
Election/Restrictions
Applicant’s election without traverse of Species A, encompassing claims 1-19, in the reply filed on February 19, 2026 is acknowledged.
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.
Claim 10 is 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.
Claim 10, line 4, recites in part “the following chemical formula”. However, the chemical formula of the ionic liquid is missing. For examination purposes, and according to paragraphs 33-34 of applicant’s disclosure, at least one of the following chemical formulas has been considered:
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Appropriate correction is requested.
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 non-obviousness.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Freiderich et al. (US Patent Application Publication no. 2017/0306439) in view of Baek et al. (US Patent Application Publication no. 2019/0186031).
Regarding claim 1, Freiderich discloses a method for recovery of rare earth elements (abstract; paragraph 3) comprising:
forming a rare earth containing ionic solution comprising an ionic liquid and a solvent having one or more rare earth elements dissolved therein (paragraphs 9-13);
adding a polar protic solvent to the rare earth containing ionic solution (paragraphs 26, 60);
applying an electrical potential across the rare earth containing ionic solution (the solution is subjected to electrodeposition – paragraph 114); and
collecting a deposit of at least one rare earth element on at least one electrode disposed in the rare earth containing ionic solution (the rare earth element is deposited/collected on an electrode by electrodeposition – paragraph 114; claims 13, 25).
Freiderich fails to teach recovering the deposit of the at least one rare earth element from the at least one electrode.
Baek discloses a method for the continuous recovery of rare-earth metals by electrolysis wherein the metal is collected from the electrode and weighed to calculate deposition rates in each solution (paragraphs 5-8, 24-25, 52 – the solution may include a ligand to enable the continuous delivery and removal of metal deposited onto the cathode and free up fresh surface area on the cathode; paragraph 34).
It would have been obvious to one having ordinary skill in the art at the time of filing to recover the deposit of the rare earth element from the electrode of Freiderich, as taught by Baek, in order to free up fresh surface area on the cathode which promotes the continuous recovery of rare earth metals.
Regarding claim 2, Freiderich adds a polar protic solvent to the rare earth containing ionic solution which inherently creates a metal species coordination environment therein (paragraphs 9-13, 26, 60, 136).
Regarding claim 3, Freiderich adds a polar protic solvent to the rare earth containing ionic solution which inherently creates a metal species coordination environment therein and facilitates reduction of the one or more of rare earth metal complexes via a single step reduction pathway (paragraphs 9-13, 26, 60, 136).
Regarding claim 4, Freiderich adds a polar protic solvent to the rare earth containing ionic solution which inherently creates a metal species coordination environment therein and facilitates partitioning of rare earth metal complexes in the rare earth containing ionic solution (paragraphs 9-13, 26, 60, 136).
Regarding claim 5, Freiderich adds a polar protic solvent to the rare earth containing ionic solution which inherently creates a metal species coordination environment therein and facilitates reduction of the one or more of rare earth metal complexes via a single step reduction pathway (paragraphs 9-13, 26, 60, 136).
Regarding claim 6, Freiderich teaches adding a polar protic solvent to the rare earth containing ionic solution at a desired ratio (paragraphs 131, 134; figure 2). It has been held by courts that generally, differences in concentration not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05.II.A.
Regarding claim 7, Freiderich further discloses wherein adding the polar protic solvent to the rare earth containing ionic solution comprises adding water to the rare earth containing ionic solution (paragraph 59).
Regarding claim 8, Freiderich teaches wherein adding the polar protic solvent to the rare earth containing ionic solution comprises adding water to the rare earth containing ionic solution (paragraph 59).
Regarding claim 9, Freiderich teaches forming the rare earth containing ionic solution comprising the ionic liquid and the solvent having one or more rare earth elements dissolved at a desired concentration (paragraphs 131, 134; figure 2). It has been held by courts that generally, differences in concentration not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05.II.A.
Regarding claim 10, Freiderich discloses wherein forming the rare earth containing ionic solution comprising the ionic liquid and the solvent having one or more rare earth elements dissolved therein comprises forming the rare earth containing ionic solution comprising the ionic liquid having the following chemical formula:
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(10) (11)
wherein, R1 is selected from the group of a pyrrolidinium ion (C4H10N+), or an N-pyrrolidinium ion (formulas 10 and 11 on page 12 of Freiderich, and copied above, correlate to the claimed chemical formula R3-R1-R2), wherein (R17; R19) and (R18; R20) correlate to R3 and R2, respectively, are selected from a hydrocarbon group containing at least 1 carbon atom and up to 12 carbon atoms (paragraphs 91-94).
Regarding claim 11, Freiderich further teaches wherein forming the rare earth containing ionic solution comprising the ionic liquid and the solvent having one or more rare earth elements dissolved therein comprises forming the rare earth containing ionic solution comprising the ionic liquid including one or more of pyrrolidinium-based ionic liquid (paragraphs 93-94), piperidinium-based ionic liquid (paragraphs 91-92), or imidazolium species (paragraphs 79-81).
Regarding claim 12, Freiderich teaches wherein forming the rare earth containing ionic solution comprising the ionic liquid and the solvent having one or more rare earth elements dissolved therein comprises forming the rare earth containing ionic solution comprising one or more of lanthanides and actinides, i.e. lanthanum, cerium, praseodymium, neodymium, promethium, samarium, europium, gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, lutetium and yttrium (paragraphs 4-5, 25, 28).
Regarding claim 13, Baek further discloses applying an electrical potential across the rare earth containing ionic solution (paragraphs 35, 44, 50-52). One having ordinary skill in the art would have found it obvious to conduct routine experimentation to determine the optimum electrical potential to be applied across the ionic solution. It has been held by the courts that where the general conditions are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP 2144.05.II.A..
Regarding claim 14, Freiderich discloses wherein applying the electrical potential across the rare earth containing ionic solution comprises applying the electrical potential across the rare earth containing ionic solution containing at a temperature of up to Celsius (paragraph 27).
Regarding claim 15, Baek teaches wherein applying the electrical potential across the rare earth containing ionic solution comprises applying the electrical potential across the rare earth containing ionic solution in an inert atmosphere (paragraph 42).
Regarding claim 16, Freiderich discloses a method for recovery of rare earth
elements (abstract; paragraph 3) comprising:
dissolving one or more rare earth elements from one or more rare earth
containing components into a solvent (paragraphs 9-13);
combining an ionic liquid with the solvent containing the one or more rare earth elements to form a rare earth containing ionic solution (paragraph 26);
adding a polar protic solvent to the rare earth containing ionic solution (paragraphs 26, 60);
applying an electrical potential across at least two electrodes operatively positioned in the rare earth containing ionic solution (the solution is subjected to electrodeposition – paragraph 114); and
collecting a deposit of at least one rare earth element on at least one of the at least two electrodes (the rare earth element is deposited/collected on an electrode by electrodeposition – paragraph 114; claims 13, 25).
Freiderich fails to teach recovering the deposit of the at least one rare earth element from the at least one of the least two electrodes.
Baek discloses a method for the continuous recovery of rare-earth metals by electrolysis wherein the metal is collected from the electrode and weighed to calculate deposition rates in each solution (paragraphs 5-8, 24-25, 52 – the solution may include a ligand to enable the continuous delivery and removal of metal deposited onto the cathode and free up fresh surface area on the cathode; paragraph 34).
It would have been obvious to one having ordinary skill in the art at the time of filing to recover the deposit of the rare earth element from the electrode of Freiderich, as taught by Baek, in order to free up fresh surface area on the cathode which promotes the continuous recovery of rare earth metals.
Regarding claim 17, Freiderich teaches adding a polar protic solvent to the rare earth containing ionic solution at a desired ratio (paragraphs 131, 134; figure 2). It has been held by courts that generally, differences in concentration not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05.II.A.
Regarding claim 18, Freiderich discloses wherein dissolving one or more rare earth elements from one or more rare earth containing components into a solvent comprises dissolving the one or more rare earth elements into the solvent comprising dimethyl formamide, dimethyl sulfoxide, a sulfonate, acetonitrile, or combinations thereof (paragraphs 60, 101).
Regarding claim 19, Baek teaches wherein applying the electrical potential across the at least two electrodes operatively positioned in the rare earth containing ionic solution comprises forming a current density of from about 1 mA/cm2 to about 5 mA/cm2 at the at least two electrodes (paragraph 43).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZULMARIAM MENDEZ whose telephone number is (571)272-9805. The examiner can normally be reached M-F 8am-4:30p.
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/ZULMARIAM MENDEZ/Primary Examiner, Art Unit 1794
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