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
Applicant’s election without traverse of Group II, claims 13 – 20 in the reply filed on August 7, 2026 is acknowledged.
Claims 1 - 12 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 August 7, 2026.
Status of Claims
Claims 1 – 20 are pending.
Claims 1 – 12 are withdrawn.
Claim 13, 18 and 19 is objected.
Claims 13 – 20 are rejected.
Claim Objections
Claim 13 is objected to because of the following informalities: “cucurbitrurial” in lines 2 and 3 is the incorrect spelling for “cucurbituril”. Appropriate correction is required.
Claims 18 and 19 is objected to because of the following informalities: “cucurbitrurial” is the incorrect spelling for “cucurbituril”. Appropriate correction is required.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on February 12, 2024 (8 pages) and February 12, 2024 (5 pages) were filed before the mailing date of the non-final office action. The submission is in compliance with the provisions of 37 CFR 1.97. However, the information disclosure statements filed February 12, 2024 (8 pages) and February 12, 2024 (5 pages) fails to comply with the provisions of 37 CFR 1.98 (b)(5) because each publication listed on the IDS is not identified by title. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. For this reason those references have been lined through. Applicant is required to provide this information. 37 CFR 1.98 (b)(5). If an information disclosure statement does not comply with either §1.97 or §1.98 it will be placed in the file but will not be considered by the Office.
Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Claim Rejections - 35 USC § 112
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.
Claims 13 – 15 and 20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Claims 13 – 15 and 20 are 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: to recover the platinum metal from the CB[6]·H₂PtCl₆ microcrystals, the adducts were dispersed in an aqueous solution, and adding N₂H₄·H₂O, so as to reduce the [PtCl₆]²⁻ dianions down to platinum. (para. [0074]).
Claim 13 is to a method for separation of a metal. The scope of claim 13 produces the CB[6]•H2PtCl6 microcrystals adduct. The specification under the heading “Platinum recovery and CB[6] regeneration” teaches:
When an aqueous solution of CB[6] (1.0 mL, 10 mM) was mixed with equimolar amounts of [PtCl₆]²⁻, [PdCl₄]²⁻ and [RhCl₆]³⁻ anions, a yellow suspension formed immediately. The yellow solid (116.7 mg, Figure 7 (a)) was isolated by filtration, washing, and air drying. Subsequently, the yellow solid was dispersed in H2O (4 mL), and reduced by 78% N₂H₄·H₂O (1.0 mL). A black suspension was obtained after heating at 60 °C for 2 h with stirring. Following centrifugation and washing with 4 M HCl aqueous solution three times to dissolve the residual CB[6], black platinum metal (14.1 mg, Figure 7 (b)) was obtained.
The above statements from the disclosure is an indication that Applicant that the reduction step was essential to obtain the metal.
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, claim 14 recites the broad recitation [PtX6]2- and X is a halogen, and the claim also recites optionally [PtCl6]2- which is the narrower statement of the range/limitation. The claim(s) 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 claim, and therefore not required, or (b) a required feature of the claims. For the propose of this rejection “optionally” in the claim is interpreted as “preferably or for example”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 13 – 20 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Ji et al. (European Journal of Inorganic Chemistry, vol. 2014, issue 9, 2014), in view of Rudnick et al. (Journal of the American Chemical Society, vol. 39, issue 4, 1917) and further in view of Wu et al. (Applied Materials & Interfaces, vol. 12, issue 34, 2020).
The rejected claims cover, inter alia, a method for separation of a metal, the method comprising contacting a platinum halide dianion with a cucurbituril under conditions sufficient to cause co- precipitation of the platinum metal dianion and the cucurbituril.
Dependent claim 14 further limits cucurbituril to cucurbitu[6]ril and the platinum halide dianion to [PtX6]2- and X a halogen. Dependent claims 15 – 19 further limit the process. Dependent claim 20 further limits the co-precipitation product of claim 13.
However, Ji discloses the formation of a typical cucribit[6]uril (Q[6])-based porous material in the presence of hexachloroplatinate (IV) anon [PtCl6]2- as an inorganic structure inducer. (abstract). Further, Ji teaches:
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The difference between Ji and the instantly claimed invention is as follows: contacting a platinum-bearing material with a hydrogen halide to form a metal-halide solution; reducing platinum of the precipitate with a reductant; isolating the platinum, isolating the cucurbituril; and recycling the isolated cucurbituril.
Regarding contacting a platinum-bearing material with a hydrogen halide to form a metal-halide solution; the Examiner turns to the teaching of Rudnick. The prior art of Rudnick discloses the method for preparing hydrochloroplatinic acid (H2(PtCl6) for other purposed. (pp. 633, ln l).
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Because the references teach methods for preparing hydrochloroplatinic acid that can be used from any purpose, it would have been obvious to one skilled in the art to substitute the K2PtCl6 of Rudnick in the process of Ji to achieve the predictable result of producing the Q[6]•[PtCl6]•2H3O•18H2O.
Therefore, the claims would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (U.S. 2007).
Regarding reducing platinum of the precipitate with a reductant; isolating the platinum, isolating the cucurbituril; and recycling the isolated cucurbituril, the Examiner turns to the teaching of Wu. The prior art of Wu discloses high-efficiency gold recovery using cucurbit[6]uril. The process of Wu produced coprecipitate of CB[6]•HAuCl4 by a process similar to the process of Ji. (pp. B, left col. “Formation of Coprecipitates”). To recover the gold, following filtration of the CB[6]•HAuCl4 solid, the solid was dispersed in aqueous acid solution and reduced with N2H4•H2O. The gold metal was recovered from the dispersion by filtration. (pp. G, right col. middle of para. and Fig. 8). Also, the separated CB[6] can be reused after recrystallization. (pp. G, right col. middle of para. and Fig. 8).
Based on the teaching above, wherein the process of Wu is similar to the process of Ji, in that it produces coprecipitate of gold anion halide and cucurbituril, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to use a known technique as disclosed in Wu and obtain the platinum metal from the Q[6]•[PtCl6]•2H3O•18H2O of Ji by subjecting it to a reductant such as N2H4•H2O. Motivation can be found in the fact that in Wu the process reduces cost.
Variations of particular work available in one field of endeavor may be prompted by design incentives and other market forces, either in same field or different one, and if person of ordinary skill in art can implement predictable variation, 35 U.S.C. §103 likely bars its patentability; similarly, if particular technique has been used to improve one device, and person of ordinary skill would recognize that it would improve similar devices in same way, then using that technique is obvious. KSR International co. v. Teleflex Inc., 550 U.S. at _____, 82 USPQ2D 1385 (U.S. 2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Y. Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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