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
Claims 9-10 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 1/13/2026
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.
Claim(s) 1-3, 5 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smykalla et al (EP0834583 submitted in the IDS filed 8/24/2023).
EP0834583 teaches a process for extracting zinc and other metal values from chlorine and fluorine bearing raw materials such as Waelz oxides, the method comprising: mixing the Waelz oxide with water-containing fluid where the solubility of halogen compounds is improved by adding sodium carbonate and heating to a final temperature of more than 110°C with increased pressure in an autoclave. EP0834583 teaches a method where the Waelz oxide is a Waelz oxide with 20% residual moisture (i.e., a filter cake) (see [0014] and [0016-0017].
Regarding claim 2, EP0834583 teaches a method comprising mashing the Waelz oxide with an agitator (see [0018]).
Regarding claim 3, EP0834583 teaches a method comprising soda (i.e., sodium carbonate) (see [0016]).
Regarding claim 5, EP0834583 teaches a method where temperature is more than 110°C, preferably 120-130°C and in particular 125°C (see [0016]). One of ordinary skill in the art would recognize that since the autoclave is filled with an aqueous solution and operated at a temperature above the boiling point of water, the pressure in the autoclave is about the vapor pressure of water at the operating temperature. Since the process according to EP0834583 comprise aqueous solution and the vapor pressure of water at 125°C is approximately 2.281 atm, a person of ordinary skill in the art would recognize that EP0834583 teaches a process where the pressure in the autoclave is 2.281 atm.
Regarding claim 8, EP0834583 teaches a method comprising obtaining a filtrate of halogens separated on a chamber filter press filtering the dehalogenated repulped cake
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP0834583 as applied to claim 1 and in further view of Danobeitia Sierra et al (EP 0773301 submitted in the IDS filed 8/24/2023).
As applied to claim 1, EP0834583 teaches a method for removing halide from halide-containing Waelz oxide comprising a pressurized alkali washing step of removing halide by heating a Waelz oxide cake containing Waelz oxide with sodium carbonate under pressure in an autoclave.
Regarding claim 4, EP0834583 does not teach an amount of the sodium carbonate is 100 kg to 300kg per ton of Waelz oxide cake.
EP0773301 teaches a method for removing halide from Waelz oxide, the method comprising: a washing step of removing halide by heating a Waelz oxide with an aqueous solution of sodium carbonate in order to maintain a constant pH of 9.0 (see Page 3, Ln 18-27). EP0773301 further teaches that the sodium carbonate consumption depends on the nature of the starting material and typical values of 60-140 g/kg of solid starting material (see Page 3, Ln 25-28). EP073301 therefore teaches a method where the sodium carbonate to Waelz oxide ratio per ton is 54 kg/ton to 127 kg/ton. Differences from the prior art only in concentration or temperature support the finding of a prima facie case of obviousness unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05(II)(A). It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to improve upon the concentration of sodium carbonate to determine optimum or workable range including the claimed range since the required concentration depends on the starting material as suggested by EP0773301. Applicants can rebut a prima facie case of obviousness based on optimization of ranges by showing the criticality of the claimed range.
Regarding claim 7, EP0834583 teaches a method comprising mashing with warm water (see [0018]). EP0773301 teaches a method where water is added to the Waelz oxide at a temperature of 70°C (see Page 5, Ln 41). Differences from the prior art only in concentration or temperature support the finding of a prima facie case of obviousness unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05(II)(A). Here, EP0834583 teaches a method where mashing comprises a warm water but does not specifically teach a temperature of 50°C to 70°C. It would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to perform a process as taught by EP0834583 and EP 0773301 and improve upon water addition temperature to determine optimum or workable range. Applicants can rebut a prima facie case of obviousness based on optimization of ranges by showing the criticality of the claimed range.
Claim(s) 6 are rejected under 35 U.S.C. 103 as being unpatentable over EP0834583.
As applied to claim 1, EP0834583 teaches a method for removing halide from halide-containing Waelz oxide comprising a pressurized alkali washing step of removing halide by heating a Waelz oxide cake containing Waelz oxide with sodium carbonate under pressure in an autoclave.
Regarding claim 6, EP0834583 teaches a method where temperature is more than 110°C (see [0016]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a process as taught by EP0834583 where the temperature is in any workable or optimum range overlapping with greater than 110°C including the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A 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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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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