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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: electrification control system1 in claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim limitation “electrification control system” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification discloses power supplies and wiring, which are sufficient to perform the “divide” function, but not sufficient structure to perform the control using the using a cyclical alternate electrification method. Therefore, the claim 10 is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 10 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 10 recites the limitation “electrification control system”, which is interpreted under 112f. however, the written description fails to describe sufficient structure to perform the control using the using a cyclical alternate electrification method.
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(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2023220785 in view of CN112011697, Carpenter US 4071278, and Hodko US 6145244,
WO2023220785 (hereinafter “785”) described a method of mining using current (page 6 line 25) including arranging (fig 1) at least 3 rows and 1 column of injection holes; adding a leaching agent (abstract—“leach liquor”) and applying a current (p6, l25).
The claimed invention differs from 785 in that 785 broadly teaches mining a valuable metal (page 3 line 32) and thus lacks the rare earth; 785 also lacks “direct” current, the electrodes in the liquid injection holes, and the connecting each row of the electrodes in parallel. 785 also fails to describe the cyclical alternate electrification method.
Regarding the direct current (DC): WO2023220785 is silent as to whether AC or DC is used. CN112011697—in the same field of endeavor-- described using direct current (embodiment 1) in combination with leaching agent and injection wells to mine rare earths (abstract). One of ordinary skill in the art would have recognized that DC is one of a limited number of electrical current types, and therefore would have found it obvious to have modified WO2023220785 to us DC.
Regarding the electrodes in the liquid injection holes: WO2023220785 is silent as to how the electricity is applied to the ore. Carpenter—in the same field of endeavor—described electrodes 40 in liquid injection holes 22. One of ordinary skill in the art would have recognized that the electrodes in the liquid injection holes would have been advantageous to apply electricity at depth without having to create additional holes. It would therefore have been obvious to have further modified WO2023220785 to have the electrodes in the liquid injection holes.
Regarding the electrodes connected in parallel: Hodko is concerned with the related problem of applying direct electrical current underground. Hodkko described connecting each row of the electrodes in parallel (e.g. figure 2a and 6a and col. 12 lines 58-60—see below, rows are represented with solid lines through 16 and dashed lines through 18)
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One of ordinary skill in the art could have further modified the rows and columns of wells of WO2023220785—as modified to have electrodes in the liquid injection holes as taught by Carpenter, and as modified with direct current as taught by CN112011697—to have connecting each row of the electrodes in parallel—as taught by Hodko-- using known techniques (e.g. cables connecting each electrode at the wellhead), and the results would have been predictable because Hodko describes how the parallel arrangement applies electricity to the subterrain, and therefore the combination would have been obvious.
Regarding the cyclical alternate electrification: Hodko also described cyclical alternate electrification (col. 12 lines 50-58) which advantageously resulted in increased solubility of metals and therefore one of ordinary skill in the art would have found it obvious to have further modified WO2023220785 to have cyclical alternate electrification.
Regarding the rare-earths: CN112011697—in the same field of endeavor-- described using direct current (embodiment 1) in combination with leaching agent and injection wells to mine rare earths (abstract). One of ordinary skill in the art would have recognized that rare earths are some of a limited number of valuable metals, and therefore would have found it obvious to have further modified WO2023220785 to mine rare earths.
Therefore claim 1 is obvious and unpatentable .
Regarding claim 2: Hodka (col. 12 line 55) described ”intervals of time” which suggests to one of ordinary skill the art that the number of cycles is greater than 2.
Regarding claim 3: WO2023220785 at page 6 line 29 described: “ it may be found that the spacing and/or depth of the … holes are not sufficient “ which suggests to one of ordinary skill in the art that the number of rows, columns and spacing are matters of engineering design—based on geologic conditions—and therefore the row spacing of 0.5-3m or the alternative 1m as called for in claim 3 would have been obvious. The number of rows in a given area would necessarily follow from the ultimate spacing. Likewise, for claim 4, column spacing of 0.5-3m or the alternative 1m as called for in claim 4 would have been obvious, and the number of columns in a given area would necessarily follow from the ultimate spacing.
Regarding claim 5: WO2023220785 at page 6 line 29 described: “ it may be found that the spacing and/or depth of the … holes are not sufficient “ which suggests to one of ordinary skill in the art that the depth is a matter of engineering design—based on geologic conditions—and therefore the depth determined by weathering crust thickness or the alternative 5-50m as called for in claim 5 would have been obvious.
Regarding claim 6: as the electrode in the holes has been shown to be obvious above, the depth of the electrode determined by the depth of the hole would have also been obvious. Moreover, the alternative depth of 5-50m would have been an obvious matter of engineering design for the same rationale as applied to claim 5.
Regarding claim 7: the proposed modification of WO2023220785 to mine rare earths is based on the teachings of CN112011697, which also described several of the claimed leach agents: “In some embodiments of the first aspect of the present application, the leaching agent further comprises an ammonium salt or a magnesium salt. In some embodiments of the first aspect of the present application, the ammonium salt is selected from at least one of ammonium sulphate, ammonium chloride, ammonium acetate and ammonium citrate.” One of ordinary skill in the art would have recognized that selection of leach agent would be dependent on the ore to be leached, thus use of ammonium sulfate (as claimed in claim 7) would have been an obvious choice because CN112011697 described it as useful for rare earths.
Regarding claim 8: the proposed modification of WO2023220785 to us direct current is based on the teachings of CN112011697, which also described a gradient of 0.01-0.2V/cm (i.e. 1-20V/m) . One of ordinary skill in the art would have recognized that the 1-20V/m gradient is effective for rare earths, and therefore would have been motivated to modify WO2023220785 to use that voltage. This 1-20V/m is an overlapping range with the claimed 10-200, thus a prima facie case of obviousness exists (MPEP 2144.05I)
Regarding claim 9: Hodka (col. 4 line 53) described ” reversing the polarity of the electrodes once per hour” which suggests to one of ordinary skill the art a cycle time of two hours.
Regarding claim 10:
WO2023220785 (hereinafter “785”) described a system for mining using current (page 6 line 25) including (fig 1) at least 3 rows and 1 column of injection holes; a leaching agent (abstract—“leach liquor”) and electric power system (p6, l25).
The claimed invention differs from 785 in that 785 broadly teaches mining a valuable metal (page 3 line 32) and thus lacks the rare earth; 785 also lacks “direct” current, the electrodes in the liquid injection holes, and the connecting each row of the electrodes in parallel. 785 also fails to describe the control system configured to apply cyclical alternate electrification.
Regarding the direct current (DC): WO2023220785 is silent as to whether AC or DC is used. CN112011697—in the same field of endeavor-- described using direct current (embodiment 1) in combination with leaching agent and injection wells to mine rare earths (abstract). One of ordinary skill in the art would have recognized that DC is one of a limited number of electrical current types, and therefore would have found it obvious to have modified WO2023220785 to use DC.
Regarding the electrodes in the liquid injection holes: WO2023220785 is silent as to how the electricity is applied to the ore. Carpenter—in the same field of endeavor—described electrodes 40 in liquid injection holes 22. One of ordinary skill in the art would have recognized that the electrodes in the liquid injection holes would have been advantageous to apply electricity at depth without having to create additional holes. It would therefore have been obvious to have further modified WO2023220785 to have the electrodes in the liquid injection holes.
Regarding the electrodes connected in parallel: Hodko is concerned with the related problem of applying direct electrical current underground. Hodkko described connecting each row of the electrodes in parallel (e.g. figure 2a and 6a and col. 12 lines 58-60—see above, rows are represented with solid lines through 16 and dashed lines through 18)
One of ordinary skill in the art could have further modified the rows and columns of wells of WO2023220785—as modified to have electrodes in the liquid injection holes as taught by Carpenter, and as modified with direct current as taught by CN112011697—to have connecting each row of the electrodes in parallel—as taught by Hodko-- using known techniques (e.g. cables connecting each electrode at the wellhead), and the results would have been predictable because Hodko describes how the parallel arrangement applies electricity to the subterrain, and therefore the combination would have been obvious.
Regarding the cyclical alternate electrification: Hodko also described cyclical alternate electrification (col. 12 lines 50-58) which advantageously resulted in increased solubility of metals and therefore one of ordinary skill in the art would have found it obvious to have further modified WO2023220785 to have cyclical alternate electrification.
Regarding the rare-earths: CN112011697—in the same field of endeavor-- described using direct current (embodiment 1) in combination with leaching agent and injection wells to mine rare earths (abstract). One of ordinary skill in the art would have recognized that rare earths are some of a limited number of valuable metals, and therefore would have found it obvious to have further modified WO2023220785 to mine rare earths.
Therefore claim 10 is obvious and unpatentable .
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Janine M KRECK whose telephone number is (571)272-7042. The examiner can normally be reached telework: M-F 0600-1530 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at 5712725405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Janine M Kreck/ Primary Examiner, Art Unit 3672
1 Non-structural term “system” coupled with function of electrical control, dividing the mining area into equal parts, and electrify using cyclical alternate electrification method.
Prosecution Insights