DETAILED ACTION
The present application is a domestic application filed 23 January 2024, which claims priority to US Provisional Application No. 63/481,178, filed 23 January 2023.
Claims 1-20 are pending in the current application. Claims 11-20 are withdrawn as being drawn to a non-elected invention, see below. Claims 1-10 are examined on the merits herein.
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 Group I, claims 1-10 in the reply filed on 08 June 2026 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 08 June 2026.
Claim Rejections - 35 USC § 112, scope of enablement
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.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an adduct comprising β-CD, and the additive is selected from dibutyl carbitol, isopropyl ether, benzene, toluene, chloroform, dichloromethane, or hexane, does not reasonably provide enablement for any cyclodextrin and any additive. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims.
The Applicant’s attention is drawn to In re Wands, 8 USPQ2d 1400 (CAFC1988) at 1404 where the court set forth eight factors to consider when assessing if a disclosure would have required undue experimentation. Citing Ex parte Forman, 230 USPQ 546 (BdApls 1986) at 547 the court recited eight factors: (1) The nature of the invention; (2) the state of the prior art; (3) the relative skill of those in the art; (4) the predictability or unpredictability of the art; (5) the breadth of the claims; (6) the amount of direction or guidance presented; (7) the presence or absence of working examples; and (8) the quantity of experimentation necessary.
The nature of the invention: The nature of the invention is drawn towards a cyclodextrin adduct for recovering gold.
The state of the prior art: Wu et al. teach α-CD preferentially acts as a second-sphere coordinator for hydrated potassium tetrabromoaurate (p.2, first para).
The relative skill of those in the art: The relative skill of those in the art of gold recovery is high.
The predictability or unpredictability of the art: Wu et al. (Nature Communications, 2023, vol. 14, 1284, 11 pages, cited in PTO-892, emphasis added) teach the following factors need to be considered when choosing suitable additives to recover gold based on our results: (i) Additives that should be hydrophobic and possess a relatively high binding affinity for β-CD, which is a prerequisite for them to participate in the co-assembly process; (ii) Additives should be size-matched with the cavity of β-CD and able to share the cavity together with the [AuBr4]- anion, which is essential for the formation of 1D supramolecular nanostructures; (iii) Additives with high boiling points are preferred when it comes to improving the stability of the cocrystals; (iv) Additives should be eco-friendly, an attribute that is vital to sustainable and environmental protection (p.6).
The breadth of the claims: The breadth of the claims includes any form of cyclodextrin, i.e. α, β and γ (see p.10 of the Specification, last para). The breadth of the claims also includes any additive.
The amount of direction or guidance presented/(7) The presence or absence of working examples: According to figure 2 of the Specification, solvents such as ethyl acetate (which is hydrophobic and has a boiling point of 77.1 °C) and diethyl ether (which is partially hydrophobic), did not produce a co-precipitate with β-CD and [AuBr4]-.
According to figure 4 of the Specification, low-boiling additives like isopropyl ether resulted in a loss of additives (also see figure 4 of Wu et al.).
The term “additive” is not expressly defined in the Specification. However, it appears Applicant intends for “additive” to include solvents (p.17). “The additive may be a straight or branched, saturated or unsaturated organic molecular optionally comprising a heteroatom” (p.3, first para).
Suitable additives should be hydrophobic, have a binding affinity for cyclodextrin and size-matched. They should also have a high boiling point to improve the stability of the complex.
The specification states “dibutyl carbitol (DBC), isopropyl ether (iPr2O), hexane, dichloromethane (CH2Cl2), chloroform (CHCl3), benzene and toluene can induce co-precipitation, while no precipitate was observed when diethyl ether, ethyl acetate, and other oils were used as additives” (p.17, Additive-induced supramolecular polymerization). Also see Table 7 (p.36).
Thus, solvents meeting the size, hydrophobicity and boiling point requirements were not predictably successful at inducing precipitation.
Furthermore, no experiments were performed using anything other than β-CD.
(8) The quantity of experimentation necessary: In order to practice the invention with the full range of all possible treatment methods beyond those known in the art, one skilled in the art would undertake a novel and extensive research program to show that any and all additives “straight or branched, saturated or unsaturated organic molecular optionally comprising a heteroatom” can be used to form an adduct with any cyclodextrin and gold halide anion, “wherein the gold halide anion occupies a space between primary faces of the cyclodextrin and the additive occupies a space between secondary faces of the cyclodextrin and/or within an internal cavity of the cyclodextrin”.
In order to determine the success of forming a precipitate with gold halide anions, one skilled in the art would have to prepare every possible adduct that comprises “straight or branched, saturated or unsaturated organic molecular optionally comprising a heteroatom” with any cyclodextrin in order to practice the invention. These trials would need to be run separately and repeatedly for each combination, and success in preparing an adduct with a hydrophobic high boiling solvent would still not be definitive. The experimentation involved would therefore be significant, undue and unpredictable.
Genentech, 108 F.3d at 1366, sates that, “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion.” And “patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.”
Therefore, in view of the Wands factors, as discussed above, particularly the breadth of the claims, Applicants fail to provide information sufficient to practice the claimed invention of an adduct from any cyclodextrin and additive.
The rejection could be overcome if claim 1 was amended to indicate the cyclodextrin is β-CD, and the additive as defined in claim 9 is incorporated into independent claim 1.
Closest Prior Art
The closest prior art references are described by Jung et al. (Hydrometallurgy, 2009, vol. 95, pp. 262-266, cited in PTO-892) and Pettman et al. (US 11,214,848, cited in PTO-892).
Jung et al. teach using dibutyl carbitol to extract/precipitate gold, from gold scraps (abstract).
Pettman et al. teach the use of cyclodextrin to recover gold is well known (col.1:49-67 to col.2:1-2). Pettman et al. teach a method of precipitating and recovering gold, wherein the gold is a gold bromide anion with cyclodextrin (see claim 9). The cyclodextrin includes β-CD (claim 9).
However, there is no teaching, suggestion or motivation to combine β-CD with a solvent such as dibutyl carbitol and a gold halide anion to form an adduct where the gold halide anion occupies a space between primary faces of the cyclodextrin, and the dibutyl carbitol occupies a space between secondary races of the cyclodextrin and/or within an internal cavity of the cyclodextrin, with a reasonable expectation of success.
Conclusion
In view of the rejections to the pending claims set forth above, no claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BAHAR A CRAIGO whose telephone number is (571)270-1326. The examiner can normally be reached M-F: Noon-8pm ET.
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, Fereydoun Sajjadi can be reached at 571-272-3311. 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.
/BAHAR CRAIGO/
Primary Examiner
Art Unit 1699
Prosecution Insights