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 Invention I (claims 1-14) in the reply filed on 3/3/2026 is acknowledged.
Claims 15-50 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/3/2026.
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 1-10 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent No. 6,093,376 (Moore).
Regarding Claim 1, Moore discloses a method for separating rare earth metals or rare earth elements (REE) (abstract: “A method is disclosed to separate the heavy rare earth elements Lu through Sm plus Y”), the method comprising:
contacting a first plurality of rare earth metals with a first resin (column 3, lines 43-44 and 53-54: “Selective elution uses more than one type of resin and a different retaining ion... the upstream end of the iminodiacetic resin column is in ammonium form”; column 5, lines 16-19 and 25-27: “the concentration of different REE in the feed… The relative concentration of REEs... any lighter REE, i.e., a first plurality of rare earth metals, that coelute with the heaviest REE”);
contacting the first plurality of rare earth metals with a first chelating agent (column 6, lines 8-9: “eluting rare earth elements with chelating agent in the separation column”; column 7, lines 51-52: “A 4g/L EDTA... solution”); Note: ethylenediaminetetraacetic acid is EDTA.
separating the first plurality of rare earth metals into a second plurality of rare earth metals (column 5, lines 24-27: “the ammonium form resin performs a gross separation of the rare earths and provides exchange sites to hold any lighter REE, i.e., separating the first Plurality of rare earth metals, that coelute with the heaviest REE, i.e., into a second plurality of rare earth elements”);
contacting the second plurality of rare earth metals with a second resin (column 3, lines 43-44 and 55-56: “Selective elution uses more than one type of resin and a different retaining ion... the downstream end of the iminodiacetic resin column is in hydrogen form”; column 5, lines 27-29: “The "hydrogen form" iminodiacetic resin finishes the separation, i.e., contacting the second plurality of rare earth metals with a second resin”);
contacting the second plurality of rare earth metals with a second chelating agent (column 6, lines 8-9: “eluting rare earth elements with chelating agent in the separation column”; column 7, lines 51-52: “A 4g/L EDTA... solution”; column 8, lines 4-16: recycled EDTA); and
separating the second plurality of rare earth metals into individual rare earth metals (column 5, lines 38-39: “Each pure REE is stored in a tank dedicated to that REE”).
Regarding Claim 2, Moore discloses that at least one of the plurality of rare earth metals comprises a light rare earth metal (Figure 2B; column 8, lines 9-10: “Selective elution will separate the ten heaviest rare-earth elements, Sm, i.e., a light rare earth metal = Sm to Lu”)
(Paragraph [0065] of the instant specification describes Sm as a light rare earth metal).
Regarding Claim 3, Moore discloses that at least one of the individual rare earth metals comprises a light rare earth metal (Figure 2B; column 8, lines 9-10: “Selective elution will separate the ten heaviest rare-earth elements, Sm , i.e., a light rare earth metal = Sm to Lu”)
(Paragraph [0065] of the instant specification describes Sm as a light rare earth metal).
Regarding Claim 4, Moore discloses that at least one of the plurality of rare earth metals comprises a medium rare earth metal (Figure 2B; column 8, lines 9-10: “Selective elution will separate the ten heaviest rare-earth elements, Sm to Lu”; Figure 4; column 7, lines 43-44: “selective elution of 64 mmols each of Ho, Dy, Tb, and Gd, i.e., Gd = a medium rare earth metal”) (Paragraph [0066] of the instant specification describes Gd as a medium rare earth metal).
Regarding Claim 5, Moore discloses that at least one of the individual rare earth metals comprises a medium rare earth metal (Figure 2B; column 8, lines 9-10: “Selective elution will separate the ten heaviest rare-earth elements, Sm to Lu”; column 7, lines 43-44: “selective elution of 64 mmols each of Ho, Dy, Tb, and Gd, i.e., Gd = a medium rare earth metal”) (Paragraph [0066] of the instant specification describes Gd as a medium rare earth metal).
Regarding Claim 6, Moore discloses that at least one of the plurality of rare earth metals comprises a heavy rare earth metal (Figure 2B; column 8, lines 9-10: “Selective elution will separate the ten heaviest rare-earth elements, Sm to Lu; column 7, lines 43-44: “selective elution of 64 mmols each of Ho, Dy, Tb, i.e., a heavy rare earth metal = Ho, Dy, Tb”) (Paragraph [0067] of the instant specification describes Ho, Dy, Tb, as a heavy rare earth metal).
Regarding Claim 7, Moore discloses that at least one of the plurality of rare earth metals comprises a heavy rare earth metal (Figure 2B; column 8, lines 9-10: “Selective elution will separate the ten heaviest rare-earth elements, Sm to Lu; column 7, lines 43-44: “selective elution of 64 mmols each of Ho, Dy, Tb, i.e., a heavy rare earth metal = Ho, Dy, Tb”) (Paragraph [0067] of the instant specification describes Ho, Dy, Tb, as a heavy rare earth metal).
Regarding Claim 8, Moore discloses that the first plurality of rare earth metals is separated into light and heavy rare earth metals (Figure 2B; column 8, lines 9-10: “Selective elution will separate the ten heaviest rare-earth elements, Sm lo Lu, i.e., a light rare earth metal = Sm” (Paragraph [0065] of the specification describes Sm as a light rare earth metal); column 7, lines 43-44: “selective elution of 64 mmols each of Ho, Dy, Tb, i.e., a heavy rare earth metal = Ho, Dy, Tb” (Paragraph [0067] of the instant specification describes Ho, Dy, Tb, as a heavy rare earth metal)).
Regarding Claim 9, Moore discloses that the first plurality of rare earth metals is separated into medium rare earth metals (Figure 2B; column 8, lines 9-10: “Selective elution will separate the ten heaviest rare-earth elements, Sm to Lu”; column 7, lines 43-44: “selective elution of 64 mmols each of Ho, Dy, Th, and Gd, i.e., Gd = a medium rare earth metal” (Paragraph [0066] of the instant specification describes Gd as a medium rare earth metal)).
Regarding Claim 10, Moore discloses that the first resin is in communication with the second resin (column 3, lines 43-44 and 53-56: “Selective elution uses more than one type of resin and a different retaining ion... the upstream end of the iminodiacetic resin column is in ammonium form and the downstream end of the iminodiacetic resin column is in hydrogen form”).
Regarding Claim 13, Moore discloses that the first chelating agent comprises ethylenediaminetetraacetic acid (EDTA) (column 6, lines 8-9: “eluting rare earth elements with chelating agent in the separation column”; column 7, lines 51-52: “A 4g/L EDTA... solution”).
Regarding Claim 14, Moore discloses that the first chelating agent comprises ethylenediaminetetraacetic acid (EDTA) (column 6, lines 8-9: “eluting rare earth elements with chelating agent in the separation column”; column 7, lines 51-52: “A 4g/L EDTA... solution”; column 8, lines 4-16: recycled EDTA).
Claims 1-3 and 13-14 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by US 2019/0153562 A1 to Purdue Research Foundation (hereinafter, "Purdue").
Regarding Claim 1, Purdue discloses a method for separating rare earth metals or rare earth elements (REE) (abstract: “REEs are captured and enriched using an ion exchange column”; Figure 11; Para. [0160]: “the separation of REEs can be done in a continuous mode with stepwise elution”), the method comprising:
contacting a first plurality of rare earth metals with a first resin (Figure 11; Para. [0160]: “the separation of REEs... as seen in figure 11: Feeding Pr/Nd/Sm... Zone II (2), i.e., contacting with a first resin; Para. [0163]: “The resin... a mixture of Sm, Nd, and Pr is fed into the column, each REEs is separated as pure bands based on the ligand affinity”);
contacting the first plurality of rare earth metals with a first chelating agent (Figure 11; Para. [0160]: “the separation of REEs... as seen in figure II Zone II (2): 0.15M EDTA);
separating the first plurality of rare earth metals into a second plurality of rare earth metals (Figure 11; Para. [0160]: the separation of REEs as seen in figure 11 Feeding Pr/Nd/Sm... Zone II (2) separates Sm and Pr/Nd into Zone II (3));
contacting the second plurality of rare earth metals with a second resin (Para. [0163]: The resin; Figure 11; Para. [0160]: “the separation of REEs as seen in figure 11: Pr/Nd into Zone II (3), i.e., contacting with a second resin); contacting the second plurality of rare earth metals with a second chelating agent (Figure 11; Para. [0160]: “the separation of REEs... as seen in figure 11 Zone II (3): 0.25M EDTA); and
separating the second plurality of rare earth metals into individual rare earth metals (Figure 11; Para. [0058]: FIG. 11 describes continuous ligand-assisted elution sequence of Sm, Nd, and Pr as seen in Figure 11 separating Nd; Para. [0163]: “The resin… a mixture of Sm, Nd, and Pr is fed into the column, each REEs is separated as pure bands based on the ligand affinity”).
Regarding Claim 2, Purdue discloses that at least one of the plurality of rare earth metals comprises a light rare earth metal (Figure 11; Para. [0058]: FIG. 11 describes continuous ligand-assisted elution sequence of Sm, i.e., a light rare earth metal = Sm (Paragraph [0065] of the instant specification describes Sm, Nd, Pr as a light rare earth metal)).
Regarding Claim 3, Purdue discloses that at least one of the individual rare earth metals comprises a light rare earth metal (Figure 11; Para. [0058]: FIG. 11 describes continuous ligand-assisted elution sequence of Sm, i.e., a light rare earth metal = Sm (Paragraph [0065] of the instant specification describes Sm, Nd, Pr as a light rare earth metal)).
Regarding Claim 13, Purdue discloses that the first chelating agent comprises ethylenediaminetetraacetic acid (Figure 11; Para. [0160]: the separation of REEs... as seen in figure 11 Zone II (2): 0.15M EDTA).
Regarding Claim 14, Purdue discloses that the second chelating agent comprises ethylenediaminetetraacetic acid (Figure 11; Para. [0160], the separation of REEs... as seen in figure 11 Zone II (3): 0.25M EDTA).
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.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Purdue as applied to claim 1 above, and further in view of Chinese Patent No. CN 110575819 B to Tianjin Baogang Research Institute of Rare Earths Co Ltd et al. (hereinafter, "Tianjin").
Purdue discloses the method for separating rare earth metals as described above.
Claim 11 differs from Purdue in reciting that the first resin is part of a primary carousel system. Tianjin, in the field of separating rare earth metals (abstract; Para. [0023]), teaches that a first resin is part of a primary carousel system (Paras. [0042], [0045]; Figure 2: 1-7 are numbers of the first to seventh resin columns, i.e., a first resin, 203 carousel controller, i.e., a
first resin is part of primary carousel system).
It would have been obvious to one of ordinary skill in the art to modify Purdue to include a first resin is part of a primary carousel system as taught by Tianjin, for the benefit of separating rare earth metals using resin columns (Purdue: Figure 11; Paras. [0058], [0160], [0163]) comprising a first resin column arranged in a carousel (Tianjin: abstract; Paras. [0034], [0042], [0045]; Figure 2) to further improve purity of recovered individual REEs and to reduce costs for the overall process (Purdue: Paras. [0166]; Tianjin: Para. [0023]).
Claim 12 differs from Purdue in reciting that the second resin is part of a secondary carousel system.
Tianjin, in the field of separating rare earth metals (abstract; Para. [0023]), teaches that a second resin is part of a secondary carousel system (Paras. [0042], [0045]; Figure 2: 1-7 are numbers of the first to seventh resin columns, i.e., a second resin, 203 carousel controller, i.e., a
second resin is part of secondary carousel system).
It would have been obvious to one of ordinary skill in the art to modify Purdue to include a second resin is part of a secondary carousel system as taught by Tianjin, for the benefit of separating rare earth metals using resin columns (Purdue: Figure 11; Paras. [0058], [0160], [0163]) comprising a second resin column arranged in a carousel (Tianjin: abstract; Paras. [0034], [0042], [0045]; Figure 2) to further improve purity of recovered individual REEs and to reduce costs for the overall process (Purdue: Paras. [0166]; Tianjin: Para. [0023]).
Response to Arguments
Applicant's arguments filed 7/7/2026 have been fully considered but they are not persuasive.
Applicant argues that Moore teaches a single resin having two different chemical groups attached and a single plurality of rare earth metals enters the column that is separated by the portions of the single resin having different chemical groups. Accordingly, the person skilled in the art would not understand Moore to teach a first and second resin and a second plurality of metals and contacting second plurality of rare earth metals with a second chelating agent as recited in claim 1. However, claim 1 does not claim whether a first resin and a second resin are different in chemical composition and whether a first chelating agent and a second chelating agent are different in chemical composition. Although Moore teaches a single resin, the resin having two different chemical groups and a single plurality of rare earth metals is separated by the portions of the single resin having different chemical groups and meets the claim limitation of first and second resin. Furthermore, Moore does teach a second plurality of rare earth metals as the first plurality of rare earth metals is separated into a second plurality of rare earth metals (see column 5, lines 24-27: “the ammonium form resin performs a gross separation of the rare earths and provides exchange sites to hold any lighter REE, i.e., separating the first Plurality of rare earth metals, that coelute with the heaviest REE, i.e., into a second plurality of rare earth elements”). Also, Moore teaches the step of contacting the second plurality of rare earth metals with a second chelating agent (column 6, lines 8-9: “eluting rare earth elements with chelating agent in the separation column”; column 7, lines 51-52: “A 4g/L EDTA... solution”; column 8, lines 4-16: recycled EDTA).
Applicant argues that Purdue teaches a single resin, e.g., titania, with different adsorption site to adsorb different rare earth elements. Accordingly, the person skilled in the art would not understand Purdue to teach a second resin and/or a second plurality of rare earth metals and contacting a second plurality of rare earth metals with a second chelating agent. However, claim 1 does not claim whether a first resin and a second resin are different in chemical composition and whether a first chelating agent and a second chelating agent are different in chemical composition. Although Purdue teaches a single resin, with different adsorption site to adsorb different rare earth metals and a single plurality of rare earth metals is separated by the different adsorption sites allowing different rare earth metals to be detached from the single resin with different concentrations of EDTA and hence, Purdue meets the claim limitation of first and second resin. Furthermore, Purdue teaches a second plurality of rare earth metals as the first plurality of rare earth metals is separated into a second plurality of rare earth metals (see Figure 11; Para. [0160]: the separation of REEs as seen in figure 11 Feeding Pr/Nd/Sm... Zone II (2) separates Sm and Pr/Nd into Zone II (3)). Also, Purdue teaches the step of contacting the second plurality of rare earth metals with a second chelating agent (see Figure 11; Para. [0160]: “the separation of REEs... as seen in figure 11 Zone II (3): 0.25M EDTA) albeit different concentration from the first chelating agent (see Figure 11; Para. [0160]: “the separation of REEs... as seen in figure II Zone II (2): 0.15M EDTA).
Conclusion
THIS ACTION IS MADE FINAL. 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 JOHN KIM whose telephone number is (571)272-1142. The examiner can normally be reached Maxi Flex.
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/John Kim/Primary Examiner, Art Unit 1777
JK
9/27/26
