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Applicant’s arguments with traverse are persuasive and the restriction requirement is withdrawn.
Claim Objections
Claim 1 objected to because of the following informalities: the claim language “in magnesium hydroxide, a sediment generated in an electrolytic chlorine generation system using seawater and brackish water” is grammatically confusing. Appropriate correction is required.
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 1-6 and 8-15 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.
Claim 1 contains the limitation in the preamble “magnesium from sediment generated in an electrolytic chlorine generation system using seawater or brackish water”. Claim 1 also contains the limitation “magnesium hydroxide, a sediment generated in an electrolytic chlorine generation system using seawater and brackish water”. Because the two limitations are conflicting it is unclear whether process is limited to a sediment from either seawater OR brackish water or from both seawater AND brackish water. For purposes of compact prosecution the claim is interpreted as sediment generated in an electrolytic chlorine generation system using seawater and/or brackish water. Support for this interpretation is in Figure 1 as filed.
The term “high concentration” in claim 4 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, one of ordinary skill in the art would not be informed of the concentration of magnesium extracted that would infringe on extracting high concentration of magnesium.
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) 10-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al (KR-10-1828471 as can be found in the Written Opinion of the International Search Authority dated 12/7/2023 and where citations in this Office Action are from the Machine Translation of KR-10-1828471 provided by the Examiner).
Claim 10 is a product-by-process claim directed to a magnesium compound produced by a process comprising elution of magnesium from magnesium hydroxide that is a sediment generated in an electrolytic chlorine generation system using seawater and/or brackish water. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. A lesser burden of proof is required to make out a case of prima facie obviousness for product-by-process claims because of their particular nature than when a product is claimed in the conventional fashion. In re Brown, 59 CCPA 1063, 173 USPQ 685 (1972); In re Fessmann, 180 USPQ 324 (CCPA 1974).
Here, Kim teaches a method for recovering magnesium from seawater, the method comprising:
Forming magnesium hydroxide by adding an alkali industrial byproduct into seawater;
Eluting magnesium from the magnesium hydroxide by using acid;
Adding an organic solvent into the magnesium eluent to precipitate magnesium sulfate;
Recovering the solvent.
Kim further teaches a method where the acid is sulfuric acid, hydrochloric acid acetic acid, or mixture thereof and where preferably sulfuric acid is used. Kim therefore teaches a magnesium compound composed of magnesium sulfate where the magnesium compound is recovered by eluting magnesium hydroxide from seawater.
Therefore, the prior art Kim discloses a magnesium sulfate produced by eluting magnesium hydroxide which has been precipitated from seawater with alkali industrial by-product with a sulfuric acid. One of ordinary skill in the art at the time of the invention would reasonably expect that the generation of the magnesium hydroxide as being precipitated by alkaline industrial by-product would not impart structural differences to the end product magnesium sulfate since the magnesium hydroxide is eluted and recovered as magnesium sulfate in an identical process using reagents of identical chemical composition. Furthermore, ultimately the magnesium sulfate product is separated from the other components of the process by the precipitation and separation steps. In the event any slight differences can be shown between the two magnesium compounds, the burden is on Applicant to provide concrete evidence that the difference exhibits unexpected properties compared to the prior art Kim. See Ex parte Gray, 10 USPQ2d 1922.
Regarding claim 11, Kim teaches magnesium sulfate.
Regarding claims 12-15, the claim limitations are directed to the process limitations and not to structural limitations of the magnesium sulfate. The Office maintains that in this case, absent evidence to the contrary, one of ordinary skill in the art would reasonably conclude that the magnesium sulfates are structurally identical since the chemical compositions of the reagents producing the magnesium sulfate product are identical.
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 and 4-6 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (KR 101828471) and in further view of Nishijo et al (JPS5177586) and in further view of Chen (US 2010/0284900).
Kim teaches a method for recovering magnesium from seawater, the method comprising:
Forming magnesium hydroxide by adding an alkali industrial byproduct into seawater;
Eluting magnesium from the magnesium hydroxide by using acid;
Adding an organic solvent into the magnesium eluent to precipitate magnesium sulfate;
Recovering the solvent.
Kim further teaches a method where the acid is sulfuric acid, hydrochloric acid acetic acid, or mixture thereof and where preferably sulfuric acid is used.
Kim further teaches an example where fractional distillation is used to recover the solvent (see Examples).
Kim does not teach a method where the magnesium hydroxide is a sediment generated in an electrolytic chlorine generation system using seawater and brackish water. Kim also does not specifically teach a method comprising separating the organic solvent and the sulfuric acid using reduced pressure evaporation
Regarding magnesium hydroxide, a sediment generated in an electrolytic chlorine generation system using seawater and brackish water, Nishijo teaches a magnesium hydroxide produced by electrolysis of seawater to simultaneously produce chlorine and magnesium hydroxide and fresh water (see Page 1, Top and Page 2, Bottom). Nishijo teaches the magnesium hydroxide produced as a slurry by the electrolysis and collected in a sedimentation tank (See Page 2, Top). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a method for recovering magnesium from seawater as taught by Kim where the magnesium hydroxide is a sediment generated in an electrolytic chlorine generation system using seawater as taught by Nishijo in order to also produce chlorine and freshwater in addition to the magnesium.
Regarding separation using reduced pressure evaporation, Chen teaches a method for recovering sulfuric acid after using sulfuric acid to hydrolyze cellulose where an acetone is used as a liquid organic precipitant comprising a step for separating acetone by vacuum distillation until all of the acetone is steamed out (i.e., a reduced pressure evaporation) (see [0019] and [0068-0070]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method comprising fractional distillation to recover acetone as taught by Kim and Nishijo where the acetone precipitant is recovered by vacuum distillation as taught by Chen and expect the process to recover acetone for reuse.
Regarding claim 4, Kim teaches a method where magnesium elution efficiency is greater than 80% (i.e., high).
Regarding claim 5, Nishijo teaches a method where the salt water is a concentrated salt water (see Page 1, Middle).
Regarding claim 6, Kim teaches a method where the organic solvent is acetone or ethanol (see Examples).
Regarding claims 8-9 Kim teaches an example where elution is with a 0.5M to 1.5 M sulfuric acid solution and the precipitation with acetone or ethanol comprises mixing a ratio of 1:1 – 1:2 (v:v) to the eluate (see Examples 3-1 and 3-2). As set forth in MPEP 2144.05, in the case where the claimed range “do not overlap with the prior art but are merely close”, a prima facie case of obviousness exists, Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Here the ranges are so close that prima facie one skilled in the art would have expected them to have the same properties, namely the precipitation of magnesium sulfate because it is insoluble in organic solvent. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform the method as taught by Kim, Nishijo, and Chen where the magnesium sulfate is precipitated in any close ratio of acetone to eluate including the claimed range especially where the amount of acetone is increased and expect the magnesium sulfate to precipitate.
Claim(s) 2-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim, Nishijo, and Chen as applied to claim 1 an in further view of Laferriere et al (US 5,298,169).
As applied above, Kim, Nishijo, and Chen teaches a process comprising all of the limitations of claim 1.
Regarding claim 2, Kim, Nishijo and Chen do not teach a process where the sulfuric acid the sulfuric acid is a waste sulfuric acid.
Laferriere teaches a process for treating waste sulfuric acid comprising using waste sulfuric acid with a calcium-containing material to produce gypsum suspension (i.e., calcium sulfate) which is filtered and which a filtrate is recovered (see Abstract and Col 2, Ln 11-26). Laferriere teaches that enormous quantities of waste sulfuric acid are produced by commercial exploitation of the sulfate process and most industrial installations discharge this acid into oceans and rivers (see Col 1, Ln 34-36). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to perform a method comprising eluting magnesium oxide and producing magnesium sulfate as taught by Kim, Nishijo, and Chen where the sulfuric acid for producing the sulfate is a waste sulfuric acid as taught by Laferriere since industrial processes produce large amounts of sulfuric acid which would then otherwise be discharged into oceans and rivers.
Regarding claim 3, Laferriere teaches the waste sulfuric acid obtained from industrial installations.
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
