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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-13 and 19, drawn to a process of electrolytic metal production, classified in C25C 3/00.
II. Claims 14-18, drawn to a process of metal distillation, classified in C22B 26/22.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination I has separate utility such as for formation of unseparated alloys of the first and second metals. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
--the inventions have acquired a separate status in the art in view of their different classification;
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Christopher Lutz on 10 June 2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-13 and 19. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
This application is a continuation-in-part of prior application 16/944,147, which in turn was a National Stage entry of PCT application US2020/044630 and also claims priority to U.S. provisional application 62/880,322. This application was copending with the 16/944,147 application. Thus, any claims in this application which are supported by the earlier filed applications are granted an effective filing date as of the earliest application that supports the claims. Claims 1-4, 8-10, and 19 find support in all of the earlier filed applications and are examined with an effective filing date of 30 July 2019. Claims 7 and 11-13 find support in the PCT application and are examined with an effective filing date of 31 July 2020. Claims 5 and 6 do not find support in the earlier filed application and are examined with an effective filing date of 3 October 2023.
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.
Claims 1, 3, 7, and 8 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by von Kugelgen et al (US 881,934 A).
Von Kugelgen et al teach (see fig. and page 1, lines 70-108) a process for producing magnesium (a first metal) comprising melting an alloy including the first metal (magnesium) and a second metal (aluminum) (note that von Kugelgen et al teach at page 1, lines 26-32 that the cathode is either aluminum or an aluminum-magnesium alloy) to form a molten cathode, providing a liquid mixture (molten electrolyte E) which is a mixture of magnesium oxide and halide salts (magnesium lithium fluoride), applying a direct current potential between an anode (F) and the molten metal cathode (C), and adding an oxide of the first metal (magnesium oxide) to the molten electrolyte, wherein the cathode was a dense liquid of an alloy of the first and second metals. The alloy formed at the cathode is “tapped out” (i.e. removed) from the electrolysis cell.
Regarding claim 3, von Kugelgen et al teach the first metal being magnesium.
Regarding claim 7, the electrolysis process of von Kugelgen et al was conducted at a temperature above a melting point of magnesium. Although not expressly disclosed, the temperature was inherently below the melting point of magnesium oxide (2852°C) because the iron pot of the electrolysis cell would not have been capable of withstanding that temperature without melting.
Regarding claim 8, the recovered magnesium in the process of von Kugelgen et al was recovered from the oxide of the first metal.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over von Kugelgen et al (US 881,934 A) as applied to claim 1 above, and further in view of Miura et al (US 4,695,319 A) and Lotz (US 3,536,591 A).
Von Kugelgen et al do not teach separation of the aluminum and magnesium, nor such separation occurring via distillation.
Miura et al teach (see abstract, fig. 1, col. 4, line 29-col. 6, line 29) a process of separating magnesium metal from a molten alloy comprising conducting distillation of the molten alloy to selectively evaporate the magnesium from the remainder of the alloy and condensing the magnesium vapor.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have performed distillation on the molten alloy cathode of von Kugelgen et al according to the suggestion of Miura et al to recover the magnesium separate from the aluminum.
Miura et al do not teach that the distillation uses heat released in condensation of the first metal to provide at least 30% of the heat required for evaporation.
Lotz teaches (see fig. 1 and col. 1, lines 28-54) the concept of multiple effect distillation wherein the heat released in condensation of the evaporated vapor is recovered to evaporate additional vapor. The distillation process using the multiple effect possessed better thermal economy since less heat was lost with the vapor. The multiple effect distillation required operating the condenser at lower pressure than the prior evaporator.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have modified the magnesium distillation process taught by Miura et al according to the multiple effect distillation technique taught by Lotz for the purpose of improving the thermal efficiency of the distillation process. See also MPEP § 2143.I.C. Note that much of the structural limitations that resulted in allowance of the parent application (16/944,147) are not present nor required by the functional limitations of claim 2.
Claims 4, 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over von Kugelgen et al (US 881,934 A) as applied to claims 1 or 3 above, and further in view of Seward (US 1,258,261 A).
Regarding claims 4 and 13, Seward teaches (see page 1, lines 12-107) that a cathode of tin or copper is an improvement over an aluminum cathode in the electrolytic production of magnesium because the tin or copper permits easier recovery of the magnesium than the aluminum does. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized either tin or copper as the second metal in the process of von Kugelgen et al as suggested by Seward to permit easier separation of the magnesium from the cathode alloy.
Regarding claim 9, Seward suggests (see esp. page 1, lines 91-100) recycling of the residual alloy after magnesium has been separated to the electrolytic cell. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have recycled any residual alloy after recovery of the magnesium to the electrolysis cell to recycle the non-magnesium metal.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over von Kugelgen et al (US 881,934 A) as applied to claims 1 or 3 above, and further in view of Gesing et al (US 2015/0225864 A1).
Von Kugelgen et al teach that the feedstock in the process was magnesium oxide and thus fails to teach that the melted feedstock included at least 30% or 50-80% of the first metal and at least 5% or 10-30% of an oxide of the first metal.
Gesing et al teach (see abstract, fig. 1, paragraph [0005]) that magnesium metal-containing scrap may be subjected to a similar electrolytic process for recovery of the magnesium separate from other metals of the scrap.
Therefore, it would have been obvious to one of ordinary skill in the art to have modified the process of von Kugelgen et al by also using magnesium metal-containing scrap as a portion of the feedstock as taught by Gesing et al to recycle existing magnesium metal along with the primary production of magnesium metal from magnesium oxide ore as taught by von Kugelgen et al. Regarding the precise percentages claimed, absent a showing of unexpected results it would have been obvious to one of ordinary skill in the art to have conducted routine experimentation to determine workable ratios of magnesium scrap and magnesium ore to produce a suitable product.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over von Kugelgen et al (US 881,934 A) as applied to claim 1 above, and further in view of Schmidt et al (US 2,029,898 A).
Von Kugelgen et al fail to teach a step of moving the molten alloy from the cathode to a separate vessel and cooling by at least 50°C to allow a plurality of impurities to precipitate out of the molten alloy as set forth in either claim 10 or claim 12.
Schmidt et al teach (see col. 2, line 12 to col. 3, line 35) that magnesium may be purified by using selective solidification of impurities by cooling a molten magnesium metal to a temperature below the solidification temperature of the impurities and allowing crystals of the impurities to solidify which may then be eliminated from the molten metal “in any convenient manner”. The process is especially useful in removing iron impurities.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have performed the purification step taught by Schmidt et al on the molten cathode alloy of von Kugelgen et al in order to remove impurities, such as iron, from the alloy to increase the purity of the recovered metal. Note that using a filter or sieve to remove solid crystals from an otherwise molten composition would have been considered to be included in the scope of “in any convenient manner” by one of ordinary skill in the art at the time of filing.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over von Kugelgen et al (US 881,934 A) in view of Schmidt et al (US 2,029,898 A) as applied to claim 10 above, and further in view of Apelian et al (“Metal Refining by Filtration”).
Schmidt et al do not teach that the removal of the solid precipitated crystals of the impurities included rotation of the separation vessel.
Apelian et al teach (see portion spanning pages 472 and 473) that molten metal may be purified by removal of solid inclusions through centrifugal force involving spinning a crucible containing molten metal.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have applied the known technique of centrifugal force separation taught by Apelian et al to the removal of the precipitates taught by Schmidt et al because Apelian et al teach that the centrifugal force, achieved by rotating a crucible (i.e. vessel), resulted in separation of inclusions from the liquid metal. See also MPEP § 2143.I.D.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over von Kugelgen et al (US 881,934 A) as applied to claim 3 above, and further in view of Seward (US 1,258,261 A) and Miura et al (US 4,695,319 A).
Von Kugelgen et al do not teach that the cathode include lead in addition to magnesium.
Miura et al teach (see col. 1, lines 21-27) that an alternative metal, lead, was known for alloying with magnesium followed by subsequent separation of the magnesium from the lead. Miura et al recognized that aluminum and lead were functionally equivalent for forming molten alloys with magnesium and for subsequent separation of the magnesium by distillation.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have substituted lead as taught by Miura et al for the aluminum taught by von Kugelgen et al in the molten cathode because Miura et al recognized that lead and aluminum were functionally equivalent at forming molten alloys with magnesium with subsequent separation of the magnesium from the molten alloy. See MPEP § 2144.06.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARRY D WILKINS III whose telephone number is (571)272-1251. The examiner can normally be reached M-F 9:30am -6:00pm.
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.
/HARRY D WILKINS III/Primary Examiner, Art Unit 1794
Prosecution Insights