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Claims 16, 20, and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/16/2026.
Applicant's election with traverse of Group I, directed to the method for removal of at least one ion, in the reply filed on 06/16/2026, is acknowledged. The traversal is on the grounds that 1) there is unity of invention according to the international stage of examination of the parent PCT application, 2) there is no substantial search burden, and 3) cited reference Errokh et al. 2019 fails to teach or suggest all the limitations of the pending claims.
Argument (1) is not found persuasive. Although the international stage of examination found unity of invention, the present claims lack unity of invention since the common technical feature does not make a contribution over the prior art: Errokh teaches the forming of anionic hairy nanocellulose from a feed; feeding the AHNC to a solution comprising Ag ions to form solid precipitates comprising the Ag ions; and separating the solid precipitates comprising the Ag ions from a fluid of the solution. This is the technical feature shared between Groups I and II, in view of the instant specification where Ag ions meet the language of at least one REE (page 4).
Argument (2) is not found persuasive. The basis of restriction for applications filed under U.S.C. 371 is a lack of unity of invention, where the basis does not depend on a search burden but rather the reasonableness of the restriction requirement; see MPEP 1850. In the instant case, the apparatus does not share a common technical feature that makes a contribution over the prior art, and therefore constitutes a reasonably separate invention.
Argument (3) is not found persuasive. Errokh teaches forming an anionic hairy nanocellulose from a feed; feeding the AHNC to a solution including the at least one REE to form solid precipitates comprising the at least one REE within the solution, and separating the solid precipitates comprising the at least one REE from a fluid of the solution, as discussed in the previous Office action. This is the common technical feature of Groups I and II, where Ag meets the language of at least one REE in view of the instant specification (page 4). Therefore Errokh teaching the common technical feature and the technical feature does not make a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL. Claims 1-15 and 24-27 are examined in this Office action.
Information Disclosure Statement
The IDS filed on 12/08/2023 has been considered by the Examiner.
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.
Claims 1-15 and 27 are 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “rare earth elements (REE)” in claim has an accepted meaning of “lanthanides, scandium, and yttrium.” Applicant has expanded this convention to include gold, silver, platinum, and lithium (p. 4). The term is indefinite because the specification does not clearly redefine the term; therefore it is unclear what the full scope of the term is.
Claims 2-15 are dependent upon claim 1 and do not rectify the issue and are therefore similarly rejected.
Claim 7 recites “milli-Q water” which is a trademark and therefore renders unclear the scope of the claim; see MPEP 2173.05(u). Claims 8-15 are dependent upon claim 7 and do not rectify the issue and are therefore similarly indefinite.
Claim 8 recites the limitation “maintained at pH 5” which is indefinite in scope, since this is an exact value, rather than a range of values, and therefore it would not be clear to one skilled in the art what would be considered to meet/infringe upon this limitation. For example, pH values of 4.5 or 5.5 could be considered to round to 5, and therefore be considered to meet this limitation, or could be considered to not be close to pH of 5 given that a pH value is a logarithmic value. The bounds of what pH values applicant seeks to claim are not defined with this language. Claim 9-15 are dependent upon claim 8 and do not rectify the issue and are therefore similarly indefinite.
Regarding claim 27, 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 27 recites the broad recitation “a rare earth element,” and the claim also recites Nd which is the narrower statement of the limitation. A similar argument follows for the elements Eu, Tb, Dy, and Y recited in the claim. The claim is 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.
Claim 28 depends upon claim 27 and does not rectify the issue of indefiniteness, so it is similarly rejected.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 9 is not further limiting, since it essentially recites that the base may be any base. Claim 8 already delimits the scope of the claim to any base. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over van de Ven et al. Hairy cellulose nanocrystalloids: a novel class of nanocellulose, Nanoscale, 2016,8,15101–15114, Sheikhi et al. Copper removal using electrostatically stabilized nanocrystalline cellulose, ACS Appl. Mater. Interfaces 2015, 7, 21, 11301–11308, and Negrea et al. Rare Earth Elements Removal from Water Using Natural Polymers. Sci Rep 8, 316 (2018), referred to herein as van de Ven, Sheikhi, and Negrea, respectively.
Hereinafter, the claims reciting a “rare earth element” or “REE” have been interpreted by the Examiner to be met by a teaching of Li, Y, Ag, Pt, Au, La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, and/or Eu, which is the lanthanides + yttrium, and lithium, gold, silver, and platinum.
Regarding claim 1, van de Ven teaches a method for removal of at least one heavy metal element (p. 15109 col. 1 “Heavy metal ion scavengers”) comprising: forming anionic hairy nanocellulose (ENCC == AHNC) from a feed (“the first step in the recipe to produce ENCC is the same as for preparing SNCC,” p. 15105 col. 1; Softwood kraft pulp, p. 15104 col. 1 “Synthesis of SNCC”); feeding the ENCC to a solution including the at least one REE to form solid precipitates comprising the at least one REE within the solution (Fig. 18, p. 15109).
Van de Ven does not teach (1) that the element is a rare earth element (REE) nor (2) separating the solid precipitates comprising the at least one REE from a fluid of the solution.
However, Sheikhi teaches a method for removal of at least one heavy metal element (abstract) comprising: forming anionic hairy nanocellulose (ENCC == AHNC, Fig. 1) from a feed (softwood pulp, p. 11302 ‘Methods’); feeding the AHNC to a solution including the at least one heavy metal element (“200 μL of a 20000 ppm ENCC suspension was added to 4 mL of a copper solution,” p. 11302 col. 2); and separating the solid precipitates comprising the at least one heavy metal element from a fluid of the solution (filtered with 100 nm nylon syringe filters, p. 11302 col. 2).
It would be obvious to one skilled in the art to modify the teaching of van de Ven by filtering, as Sheikhi teaches; one would be motivated to do so in order to obtain the solid to examine the product for particle separation efficiency, as Sheikhi teaches (p. 11302 col. 2).
Van de Ven and Sheikhi do not teach that the method for removal can explicitly remove at least one rare earth element (REE). However, Negrea teaches a method of extracting Eu and Nd with a functionalized cellulose as an adsorbent (abstract). It would be obvious to one skilled in the art to modify the invention of van de Ven and Sheikhi with the teaching of Negrea, and arrive at the claimed invention; one would be motivated to do so because Negrea teaches the advantage of high-purity REEs for applications in technology and teaches that adsorption is the best method to isolate REEs (page 1), and that cellulose is environmentally friendly as an adsorbent (page 1). Therefore one skilled in the art would arrive at the claimed invention prior to the effective filing date.
Regarding claim 2, van de Ven, Sheikhi, and Negrea teach the method as applied to claim 1. Negrea further teaches neodymium (Nd) (abstract).
Regarding claim 3, van de Ven, Sheikhi, and Negrea teach the method as applied to claim 1. Van de Ven further teaches that the forming of AHNC from the feed comprises: forming dialdehyde modified cellulose (DAMC) from the feed, the feed being a cellulose feed (Softwood kraft pulp, p. 15104 col. 1); and forming the AHNC from the formed DAMC (‘Synthesis of ENCC,’ p. 15105).
Regarding claim 4, van de Ven, Sheikhi, and Negrea teach the method as applied to claim 3. Van de Ven further teaches that the forming of the DAMC from the feed comprises: mixing NaCl and NaIO4 with a pulp feed material comprising cellulose to form a mixture (“The disintegrated wet pulp is vacuum filtered and reacted with an aqueous solution of 0.66 g NaIO4 and 3.87 g NaCl,” p. 15104 col. 1) and agitating the mixture for a pre-selected DAMC formation period (96 h, p. 15104); and adding a quenching agent to the mixture after the pre-selected DAMC formation of time (“To stop the reaction, ethylene glycol is added to the reaction suspension, which quenches the unreacted periodate.,” p. 15104 col. 1).
Regarding claim 5, van de Ven, Sheikhi, and Negrea teach the method as applied to claim 4, wherein van de Ven teaches ethylene glycol as applied to claim 4.
Regarding claim 6, van de Ven, Sheikhi, and Negrea teach the method as applied to claim 5. Van de Ven further teaches that “the fibers are washed” (p. 15105 col. 1).
Claims 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over van de Ven, Sheikhi, and Negrea, as applied to claim 1, and in further view of Yang et al. 2013, Highly charged nanocrystalline cellulose and dicarboxylated cellulose from periodate and chlorite oxidized cellulose fibers, Cellulose (2013) 20:1865–1875.
Regarding claim 7, van de Ven, Sheikhi, and Negrea teach the method as applied to claim 1. Van de Ven further teaches that the forming of the AHNC from the formed DAMC comprises agitating a mixture of DAMC slurry having solid DAMC, water, NaCl, NaClO2, and H2O2 (p. 15105 col. 2, stirring as agitation) for a pre-selected AHNC formation period and a pre-selected AHNC formation temperature (ambient temperature, 24 h, p. 15105 col. 2).
Van de Ven, Sheikhi, and Negrea do not teach that the water is Milli-Q water. However, Yang teaches an analogous method of forming AHNC/ENCC (p. 1871 col. 1) wherein Milli-Q water is used for all steps (p. 1866 col. 1 Materials). It would be obvious to one skilled in the art to combine the teachings of van de Ven, Sheikhi, Negrea and Yang by using the Milli-Q water taught by Yang; the courts have held that a prima facie case of obviousness exists where one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately (the milli-Q water of Yang performing the same function as the water of van de Ven) and that one of ordinary skill in the art would have recognized that the results of the combination were predictable; see MPEP Section 2143(I)(A) regarding the obviousness of combining prior art elements according to known methods to yield predictable results; KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007). In the instant case the application of milli-Q water would have predictable performance in modifying the method of van de Ven, Sheikhi, and Negrea.
Regarding claim 8, van de Ven, Sheikhi, Negrea, and Yang teach the method as applied to claim 7. Van de Ven further teaches that the pH is maintained at 5 for at least a pre-selected pH maintenance period of time via the continuous addition of a base (NaOH, 24 h, p. 15105 col. 2). While van de Ven does not explicitly teach the intermittent addition of a base, it would be obvious to one skilled in the art that the continuous addition of a base as taught by van de Ven would be capable of performing the same purpose as the intermittent addition of a base, and therefore would arrive at the claimed invention prior to the effective filing date. See MPEP 2144.06(II) regarding the obviousness of substituting equivalents known for the same purpose, where, in the instant case, the purpose is to maintain the pH of the environment at 5.
Regarding claim 9, van de Ven, Sheikhi, Negrea, and Yang teach the method as applied to claim 8, wherein van de Ven teaches NaOH as applied to claim 8.
Regarding claims 10 and 11, van de Ven, Sheikhi, Negrea, and Yang teach the method as applied to claim 8. Van de Ven further teaches separating non-disintegrated fibers from the mixture of DAMC slurry having solid DAMC, water, NaCl, NaClO2, and H2O2 after the preselected AHNC formation period (centrifuged, p. 15105 col. 2).
Regarding claim 12, van de Ven, Sheikhi, Negrea, and Yang teach the method as applied to claim 10. Van de Ven further teaches adding a precipitating agent to precipitate AHNC from the mixture of DAMC slurry having solid DAMC, water, NaCl, NaClO2, and H2O2 (ethanol, p. 15105 col. 2).
Regarding claim 13, van de Ven, Sheikhi, Negrea, and Yang teach the method as applied to claim 12. Van de Ven further teaches “gradual coprecipitation with ethanol is conducted to precipitate ENCC followed by centrifugation to separate ENCC from solubilized dicarboxylated cellulose (DCC) chains” (p. 15105 col. 2) therefore necessarily teaching that the solubilized DCC chains are present in the precipitate prior to the centrifugation step. It is noted that ENCC meets the limitation of AHCNC in the instant claim, in light of the instant specification [page 15].
Regarding claim 14, van de Ven, Sheikhi, Negrea, and Yang teach the method as applied to claim 13. Van de Ven further teaches the centrifugation as discussed for claim 13; this meets the limitation of purifying the formed AHNC. While van de Ven does not explicitly teach a purification time period, Yang teaches analogous centrifugation purification steps (Fig. 1) wherein the centrifugation is performed for a period of time (15 min, Fig. 1). It would be obvious to one skilled in the art, when looking for a time period to conduct the centrifugation of van de Ven, to look to the prior art for the definition of such a pre-selected time, and therefore combine the teaching of Yang with the centrifuging of van de Ven and therefore arrive at the claimed invention, in order to implement the centrifugation step.
Regarding claim 15, van de Ven, Sheikhi, Negrea, and Yang teach the method as applied to claim 14, wherein the centrifugation purification step is conducted for 15 min as Yang teaches (Fig 1, p. 1866 col. 2), which falls within the claimed range of at least 2 minutes.
Claims 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Errokh, as cited in the previous Office action.
Regarding claim 24, Errokh teaches a method for removal of at least one pre-selected ion (silver, title) comprising: forming hairy nanocellulose (nanosized fibrils, p. 2 col. 2 ‘2.5 Preparation of Cel-Ag’) from a feed (milled wood chips, p. 2 col. 1 ‘2.2 Fiber extraction’); feeding a solution including the at least one P-SI to the HNC solution to form solid precipitates comprising the at least one P-SI within the solution (Tollens’ reagent added to the sonicated suspension, ‘2.5 Preparation of Cel-Ag’); and separating the solid precipitates comprising the at least one P-SI from a fluid of the solution (‘the Cel-Ag was recovered by centrifugation,” ‘2.5 Preparation of Cel-Ag’).
Errokh does not teach the order of steps being feeding the HNC to a solution including the at least one P-SI to form solid precipitates comprising the at least one P-SI within the solution. However, it has been held that differences in the order of performing process steps are obvious in the absence of new or unexpected results (see MPEP 2114.04.IV.C.). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform the method as suggested by Errokh where the combining of HNC and P-SI-containing solution is conducted in any order of the taught process, including feeding the HNC to a solution, for the purpose of combining the HNC with the ion-containing solution in order to form the Cel-Ag precipitate, as taught by Errokh (‘2.5 Preparation of Cel-Ag’). One skilled in the art would therefore arrive at the claimed invention prior to the effective filing date.
Regarding claim 25, Errokh teaches the method as applied to claim 24 above. Errokh further teaches that the feed (wood chips) comprises a cellulose material (cellulose fibers, ‘2.3 Periodate oxidation of cellulose fibers’).
Regarding claim 26, Errokh teaches the method as applied to claim 25 above. Errokh does not explicitly teach mixing anionic, electrically neutral, or cationic functional groups and/or proteins with the HNC for being added to the HNC prior to the HNC being fed to the solution for removal of the at least one P-SI.
However, Errokh teaches the addition of ammonia in the form of Tollens’ reagent (p. 2 ‘2.5 Preparation of Cel-Ag’) and teaches that the addition of ammonia (an anionic and/or electrically neutral functional group) is necessary to prevent precipitation of brown Ag2O (p. 4 col. 2 pp. 2). It would be obvious to one skilled in the art to modify the method of Errokh by adding ammonia prior to the HNC being fed to the solution; one would be motivated to do so in order to provide the ammonia to prevent precipitation of brown Ag2O, as Errokh teaches, therefore arriving at the claimed invention prior to the effective filing date.
Regarding claim 27, Errokh teaches the method as applied to claim 26 above. Errokh further teaches silver (title).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eileen Moudou whose telephone number is (571)272-1768. The examiner can normally be reached M-Th 8 AM - 4 PM EST.
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/Eileen Moudou/ Examiner, Art Unit 1738
/MICHAEL FORREST/ Primary Examiner, Art Unit 1738
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