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/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12 and 15-25, drawn to a process for preparing substantially pure chemicals from coal ash, classified in C22B 7/007.
II. Claims 13-14 and 26-27, drawn to a product comprising aluminum silicate, classified in C01B 33/26.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process such as an extraction and purification process using a red mud starting material. It is further noted that the patentability of a product does not depend on its method of production. See MPEP 2113.
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
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 David Novak on 4/24/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-12 and 15-25. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-14 and 26-27 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).
Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it exceeds 150 words in length and uses phrases which can be implied, i.e., “disclosed herein.” Correction is required. See MPEP § 608.01(b).
Claim Objections
Claims 1, 11, 15 and 18-20 objected to because of the following informalities:
For clarity, in claim 1 step f) the “undissolved solid” is suggested to read “undissolved solid residue”
For clarity, in claim 1 step e), it is suggested to set forth the second caustic extracting solution as being stored for later processing, similar to the treatment of the first caustic extracting solution in step b)
A period should be placed at the end of claim 11
The semicolon at the end of claim 15 should be replaced with a period
In claims 18 and 20 “further comprising a step” is suggested to read “further comprising a step of”
For clarity, in claim 19 it is suggested to delete “those”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-12 and 15-25 are 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.
The term "substantially" in claims 1, 15, and 20 is a relative term which renders the claims indefinite. The terms "substantially pure" (claims 1 and 15) and “substantially silica gel” (claim 20) are not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Looking to the instant specification [0084], substantially is associated with several exemplary ranges for degrees of variability. This disclosure is not seen to be clarifying as it is unclear which range, if any, is intended to define substantially. For the purpose of this examination, the term substantially will be interpreted as requiring a value greater than 50%.
The term “some” in claim 1 is a relative term which renders the claim indefinite. The term “some aluminum silicate” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what amount of aluminum silicate is intended to be required to meet some aluminum silicate. For the purpose of this examination, the term some will be interpreted as met by any amount of aluminum silicate greater than 0%.
The term “briefly” in claims 1 and 15 is a relative term which renders the claims indefinite. The terms “washed briefly” and “washing…briefly” are not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what duration of washing is intended to be considered as brief. For the purpose of this examination, the limitation will be met by a step of washing with water.
The term “elevated temperature” in claims 1, 15, and 18 renders the claims indefinite as it is unclear what temperature the recited temperature is intended to be elevated from. For the purpose of this examination, the elevated temperature will be considered to be met by temperatures above ambient temperature.
Claims 1 and 15 recites the limitation “the leftover solid” in steps c) and f), and step c), respectively. There is insufficient antecedent basis for this term as it has not been previously introduced.
Claim 1 recites the limitation “the leftover solution” in step g). There is insufficient antecedent basis for this term as it has not been previously introduced.
In claims 2 and 16, step e) the language of “combining fractions of pure individual REE separately” renders the claims indefinite as it is unclear how the REE fractions are intended to be separated and combined, such that all or several fractions of individual REEs could be combined, or the fractions of each individual REE could be combined. For the purpose of this examination, it seems most appropriate to treat the step as requiring combining of fractions of each individual REE.
Claims 3 and 17 recite the limitation "EDTA salt". There is insufficient antecedent basis for this limitation in the claims. It is unclear how EDTA salt can be precipitated and recycled without EDTA salt being required by claims 3 and 17 or the claims from which they depend. For the purpose of this examination, claims 3 and 17 will be interpreted to require the chelating ligand to be EDTA salt.
Claim 6 recites the limitation "said caustic extracting solution". There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the claim refers to the first or second caustic extracting solution of claim 1. For the purpose of this examination, the claim will be treated as meaning the first and/or second caustic extracting solution.
Claim 7 recites the limitation "the caustic extracting solution". There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the claim refers to the first or second caustic extracting solution of claim 1. For the purpose of this examination, the claim will be treated as meaning the first and/or second caustic extracting solution.
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, claims 7 and 22 recite the broad recitation "about 1 M to about 15 M", and the claims also recite "about 5 M to 12 M" which is the narrower statement of the range/limitation. The claims are 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 claims, and therefore not required, or (b) a required feature of the claims. For the purpose of this examination, the claims will be interpreted as requiring the broad limitation of 1-15 M.
Claims 8 and 9 recite the limitation "said acid". There is insufficient antecedent basis for this limitation in the claim. It is unclear if the claims refer to the first, second acid, or acid in step h) of claim 1. For the purpose of this examination, the claims will be treated as meaning at least one of the first acid, second acid, or acid in step h) of claim 1.
Claim 9 recites the broad recitation "about 0.01 M to about 12 M", and the claim also recites "about 0.1 M to 5 M" which is the narrower statement of the range/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 claim. For the purpose of this examination, the claim will be interpreted as requiring the broad limitation of 0.01-12 M.
Claim 10 recites the limitation "the elevated temperature". There is insufficient antecedent basis for this limitation in the claim. It is unclear if the claim refers to the elevated temperature in step a) or step d) of claim 1. For the purpose of this examination, the claim will be treated as meaning the elevated temperature in step a) and/or step d) of claim 1.
Claims 10 and 25 recite the broad recitation "about 50 ºC to about 250 ºC", and the claims also recite "about 80 ºC to about 150 ºC" which is the narrower statement of the range/limitation. The claims are 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 claims, and therefore not required, or (b) a required feature of the claims. For the purpose of this examination, the claim will be interpreted as requiring the broad limitation of 50-250 ºC.
Claim 11 recites the limitation "said caustic solution". There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the claim refers to the first or second caustic extracting solution of claim 1. For the purpose of this examination, the claim will be treated as meaning the first and/or second caustic extracting solution.
In claim 15, step b) the language of “it” renders the claim indefinite as it is unclear what “it” is intended to refer to as it could be referring to the undissolved solid residue or an implied feature. For the purpose of this examination, it seems most appropriate to treat “it” as meaning the undissolved solid residue.
In claim 15, step c) the language of “a ratio” renders the claim indefinite as the kind of ratio intended is not specified, i.e. mass, volume, etc. For the purpose of this examination, it seems most appropriate to treat the ratio as meaning a mass ratio, similar to the ratio in the instant claim 11.
In claim 18, the language of “strong, dilute acid” renders the claim indefinite as “strong” and “dilute” read as conflicting limitations, i.e. the language could read as “a strong acid that is diluted” or “a strongly diluted acid.” Furthermore, “strong” and “dilute” are both relative terms; the term “strong, dilute acid” is not defined in the claim language or instant specification such one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of this examination, the claim will be treated as met by any acidic aqueous solution.
Claim 24 recites the broad recitation "about 0.1 M to about 12 M", and the claim also recites "about 1 M to 5 M" which is the narrower statement of the range/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 claim. For the purpose of this examination, the claim will be interpreted as requiring the broad limitation of 0.1-12 M.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: using sodium hydroxide as a caustic extracting solution. In claim 1, step h) sodium silicate is recovered from the first and second caustic extracting solutions; however, this by-product is only arrived at if sodium hydroxide is used during caustic extraction.
Claims 2-12 and 16-25 are rejected by virtue of the indefiniteness issues in the claims from which they depend and persisting therethrough.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As set forth in the 112(b) rejection of claim 1 above, claim 1, from which claim 6 depends, requires extraction of a sodium silicate, such that the limitation of the “caustic extracting solution is made of sodium hydroxide or potassium hydroxide” in claim 6 does not require a sodium content to be present in a caustic extraction solution as necessitated by the formation of sodium silicate in claim 1, such that claim 6 is not seen to include all the limitations of claim 1.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-12 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. US 11186894 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1 and 12 of ‘894 teach nearly identical methods to the methods set forth in the instant claims 1 and 15, respectively. The only differences being that the claims of ‘894 relate to extraction of pure chemicals, falling within the broad scope of the instant claims set forth by extraction of substantially pure chemicals, and further, claim 1 of ‘894 requires a caustic extraction solution containing sodium hydroxide, and claim 12 of ‘894 specifies a mass ratio between solid and acid in step c.
Claims 1 of ‘894 teaches the limitations of the instant claim 6.
Claims 2-11 and 13-22 teach the limitations of the instant claims 2-5, 7-12, and 16-25.
Claims 1-12 and 15-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 11866804 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1 and 12 of ‘894 teach nearly identical methods to the methods set forth in the instant claims 1 and 15, respectively. The only differences being that the claims of ‘804 relate to extraction of pure chemicals, falling within the broad scope of the instant claims set forth by extraction of substantially pure chemicals, and further, claim 1 of ‘804 requires a caustic extraction solution containing potassium hydroxide, and claim 12 of ‘804 specifies a mass ratio between solid and acid in step c.
Claims 1 of ‘894 teaches the limitations of the instant claim 6.
Claims 2-11 and 13-22 teach the limitations of the instant claims 2-5, 7-12, and 16-25.
Allowable Subject Matter
Claims 1-12 and 15-25 contain allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record does not teach or suggest a process for preparing substantially pure chemicals from coal ash having all the steps as claimed in combination. The closest prior art of record to claim 1 is Peterson, et al. (US 2017/0356067, hereinafter referred to as “Peterson”). Peterson teaches a leaching process for recovering rare earth elements from coal ash [0005], particularly fly ash [0036]. In the process of Peterson, coal ash is mixed with a liquid caustic stream of preferably sodium hydroxide at an elevated temperature, the mixture then undergoes solid-liquid separation where the ash is separated from the basic stream [0058]. The separated ash slurry is subjected to acid leaching [0061], Peterson suggests nitric acid at a concentration from about 3-8 M [0037]. The leached ash and leachate undergo solid-liquid separation to produce a recyclable leachate stream and a leached ash stream. Peterson further discloses improved selective extraction of REEs in a pH range of 3-5, and suggests additional separation of REEs by further ion exchange processing [0094]. The process of Peterson meets the instant process steps a-c in claim 1 and Peterson’s disclosure suggests further steps similar to portions of the instant process steps f-g. However, Peterson does not teach or suggest a combination of steps including a second caustic extraction step, a second acid leaching step at a pH of 3 and isolation of substantially pure iron oxide and aluminum silicate, a step of combining first and second acidic extraction solutions at a pH adjustment of 5 to precipitate substantially pure aluminum silicate and isolate a leftover solution of enriched REEs, and a step of combining first and second caustic extracting solutions to recover substantially pure sodium silicate by pH adjustment with an acid.
Similarly to claim 1, the teachings of Peterson meet steps a-c [0005, 0036, 0037, 0058, 0061] and suggest portions of step e-f [0094] of claim 15. However, Peterson does not teach or suggest a combination of steps including loading an acidic extraction solution to a cation exchange column and collecting the pass-through eluent, treating the pass-through eluent with a base to a pH of 3 to precipitate out iron hydroxide and isolate it, adjusting the pH to about 8 to precipitate out aluminum hydroxide and isolate it, and eluting the cation exchange column with sodium chloride to produce fractions containing aluminum and iron, and then with a solution of chelating ligand to produce fractions of enriched REEs.
The other prior art of record do not provide suitable teachings to render obvious the instant process steps of claims 1 and 15 distinguished from Peterson.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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