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 .
Specification
The abstract of the disclosure is objected to because it contains fewer than the 50 to 150 words required. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Also, the abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
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.
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.
Claim 17, 18 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.
Claim 17 recites the limitation “is selected from…and/or”, reciting a Markush group of alternatives. However, using the conjunction “and/or” makes it unclear if they are alternatives or if multiple of the same group are allowed to be selected at the same time. Examiner interprets it to be Markush such that a rewriting would entail “selected from a group consisting of…and” instead, so only one alternative is selected at a time.
Claim 19 recites the limitation “Use” in the preamble, indicating that the invention is a “use” claim. However, “use” is not a recognized type of invention, making it unclear what the invention is. Examiner suggests using the invention “method of using” or “process of using” instead. Claims 20-27 also have the same issue.
Claim 20 recites the limitation “an aqueous solution” on line 2. It is not clear if this limitation is the same as “an aqueous solution” as in Claim 19, or not. Examiner interprets it to be the same.
Claim 21 recites the limitation “the functional groups”. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation “its attachment”. However, it is not clear to which component the “attachment” would belong.
Claim 24 recites the limitation “is selected from…and/or”, reciting a Markush group of alternatives. However, using the conjunction “and/or” makes it unclear if they are alternatives or if multiple of the same group are allowed to be selected at the same time. Examiner interprets it to be Markush such that a rewriting would entail “selected from a group consisting of…and” instead, so only one alternative is selected at a time.
Claim 29 recites the limitation “Ni and one or more further metals” on line 3. It is not clear if this limitation is the same as “Ni…one or more other metals” on lines 1-2 of the claim or not. Examiner interprets them to be the same.
Claim 29 recites the limitation “the Ni and one or more further metals” on lines 4-5. It is not clear if this limitation is the same as “Ni…one or more other metals” on lines 1-2 of the claim or not. Examiner interprets them to be the same.
Claim 29 recites the limitation “Ni” and “one or more of the further metals” on line 5 and on line 6. It is not clear if this limitation is the same as “Ni…one or more other metals” on lines 1-2 of the claim or not. Examiner interprets them to be the same.
Claim 30 recites the limitation “Co and Li and/or Mn” on lines 2-3. It is not clear if this limitation is the same as “Co and Li and/or Mn” on line 1 of the claim or not. Examiner interprets them to be the same.
Claim 30 recites the limitation “Co” on line 4 a second time and “Li and/or Mn” on line 5. It is not clear if these limitations are the same as “Co and Li and/or Mn” on line 1 of the claim or not. Examiner interprets them to be the same.
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) 16-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wood, (“Comparisons of Silica Polyamine Composites and Crosslinked Polystyrenes Resins”, Jessica Wood, Thesis, The University of Montana, 2006, 102 pages, submitted by Applicant, December 8, 2023), in view of Grinstead, (US 4,254,087).
Regarding Claims 16-18, Wood discloses a separation material comprising picolyl amine functional groups immobilised on a solid support, (See page 25, and See Figure 2.1, Wood).
Wood does not disclose picolinic acid ester or picolinic acid amide functional groups.
Grinstead discloses picolinic acid ester or picolinic acid amide functional groups interchangeably used with picolyl amines used in separation, (See column 2, lines 43-54, and See column 3, line 17, column 4, lines 52-68, column 5, lines 1-2, Grinstead). Additional features of this embodiment are included as part of the overall combination and are claim mapped to in the Additional Disclosures section below.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the separation material of by incorporating picolinic acid ester or picolinic acid amide functional groups as in Grinstead in order to provide “an extractant system” that “possesses highly advantageous properties in that cobalt and nickel can be selectively extracted from acid solutions below about pH 2 in preference to iron”, (See column 1, lines 22-26, Grinstead).
Additional Disclosures Included:
Claim 17: The separation material according to claim 16, wherein the solid support is selected from a silica solid support, a silica-polymer composite solid support and/or an optionally cross-linked methacrylate solid support, (See page 25, and See Figure 2.1, Wood).
Claim 18: The separation material according to claim 16, having a nickel loading capacity of at least 10 mg g-¹, (See column 7, lines 17-23, Grinstead; taking molar mass of separation material (N-p-dodecylbenzyl)-bis-picolylamine” which is 388 g/mol and multiplying by 20 ml and 0.20 M solution yields 1.55 g. Taking 60 ml of aqueous solution containing 1 g/L of nickel results in 0.06 g nickel which is 60 mg nickel. 60 mg/1.55 g results in 38.7 mg/g loading, falling within range claimed).
Regarding Claims 19-27, modified Wood discloses use of a separation material according to claim 16 to selectively remove Ni from an aqueous solution, (See Abstract and See column 1, lines 7-26, Grinstead).
Additional Disclosures Included:
Claim 20: Use according to claim 19, wherein the use comprises selectively removing Ni from an aqueous solution in the presence of Co and optionally Mn and/or Li, (See column 1, lines 7-26, See column 4, lines 52-56, Grinstead).
Claim 21: Use according to claim 19, wherein the functional groups comprise a picolinamide functional group, (See column 5, lines 1-2, also see column 2, lines 49-54, Grinstead).
Claim 22: Use according to claim 21, wherein the picolinamide functional group and its attachment to the solid support is illustrated by Formula 1:
PNG
media_image1.png
182
428
media_image1.png
Greyscale
Formula 1 in which L is a covalent linker and R is H or optionally substituted, branched or straight chain C1-C6 alkyl, (See column 5, lines 1-2, also see column 2, lines 49-54, Grinstead).
Claim 23: Use according to claim 21, wherein the picolinamide functional group is a 2- picolinamide, (See column 5, lines 1-2, also see column 2, lines 49-54, Grinstead).
Claim 24: Use according to claim 21, wherein the solid support is selected from a silica solid support, a silica-polymer composite solid support and/or an optionally cross-linked methacrylate solid support, (See page 25, and See Figure 2.1, Wood).
Claim 25: Use according to claim 19, wherein the aqueous solution has a pH in the range from 0.5 to 2.5, (See column 6, lines 6-16, Grinstead).
Claim 26: Use according to claim 25, wherein the aqueous solution has a pH in the range from 0.5 to 1.5, (See column 6, lines 6-16, Grinstead).
Claim 27: Use according to claim 19, wherein the aqueous solution is a recycling feed, (See column 1, lines 7-11, lines 27-37; leach liquor being retreated is a form of recycling), optionally derived from battery waste, (not required).
Regarding Claim 28, modified Wood discloses a method of selectively removing Ni from an aqueous solution, the method comprising contacting the aqueous solution with a separation material according to claim 16, (See column 6, lines 30-40, Grinstead).
Claim(s) 29 & 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wood, (“Comparisons of Silica Polyamine Composites and Crosslinked Polystyrenes Resins”, Jessica Wood, Thesis, The University of Montana, 2006, 102 pages, submitted by Applicant, December 8, 2023), in view of Grinstead, (US 4,254,087), in further view of Theoleyre et al., (“Theoleyre”, US 2010/0326918).
Regarding Claim 29, modified Wood discloses a method of separating Ni from one or more other metals in an aqueous solution, the method comprising flowing an inlet aqueous solution comprising Ni and one or more further metals through a stationary phase comprising a separation material according to claim 16, (See page 25, Wood; and See Abstract and See column 1, lines 7-26, Grinstead).
Modified Wood does not disclose chromatographically separating the Ni, flowing through the stationary phase, and sequentially eluting the Ni and one or further metals to provide an elution fraction comprising Ni and one or more further elution fractions each comprising one or more of the further metals.
Theoleyre discloses chromatographically separating the Ni, (See paragraph [0052], [0097], Theoleyre), flowing through the stationary phase, and sequentially eluting the Ni and one or further metals to provide an elution fraction comprising Ni, (Abstract, paragraph [0052], [0088] or [0171], Theoleyre), and one or more further elution fractions each comprising one or more of the further metals, (See paragraph [0168], Theoleyre).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the method of modified Wood by incorporating chromatographically separating the Ni, flowing through the stationary phase, and sequentially eluting the Ni and one or further metals to provide an elution fraction comprising Ni and one or more further elution fractions each comprising one or more of the further metals as in Theoleyre in order to develop “an industrial-scale process that optimizes the quantities of regenerant, resin and water involved in the separation cycles of the [metals] present in leaching solutions, and which thus makes it possible to offer better processing capabilities to mining development facilities” and “respects the environment, makes it possible to obtain a high yield of metal derivatives of interest and is economically much more advantageous”, (See paragraph [0008], Theoleyre).
Regarding Claim 30, modified Wood discloses a method of chromatographically separating Co from Li and/or Mn in an aqueous solution, the method comprising flowing an inlet aqueous solution comprising Co and Li and/or Mn through a stationary phase comprising a separation material according to claim 16, (), but does not disclose sequentially eluting the Co and Li and/or Mn to provide an elution fraction comprising Co and one or more further elution fractions each comprising Li and/or Mn.
Theoleyre discloses chromatographically separating the Ni, (See paragraph [0052], [0097], Theoleyre), sequentially eluting the Co and Li and/or Mn to provide an elution fraction comprising Co and one or more further elution fractions each comprising Li and/or Mn, (Abstract, paragraph [0052], [0088] or [0171]; as well as paragraph [0089], [0126], [0134], Theoleyre).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the method of modified Wood by incorporating sequentially eluting the Co and Li and/or Mn to provide an elution fraction comprising Co and one or more further elution fractions each comprising Li and/or Mn as in Theoleyre in order to develop “an industrial-scale process that optimizes the quantities of regenerant, resin and water involved in the separation cycles of the [metals] present in leaching solutions, and which thus makes it possible to offer better processing capabilities to mining development facilities” and “respects the environment, makes it possible to obtain a high yield of metal derivatives of interest and is economically much more advantageous”, (See paragraph [0008], Theoleyre).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN M PEO whose telephone number is (571)272-9891. The examiner can normally be reached M-F, 9AM-5PM.
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, Bobby Ramdhanie can be reached at 571-270-3240. 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.
/JONATHAN M PEO/Primary Examiner, Art Unit 1779
Prosecution Insights