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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 20-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species B-D, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/06/2026.
Applicant’s election without traverse of Species A in the reply filed on 07/06/2026 is acknowledged.
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 16-17 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 16 recites the limitation "so as for form a first precipitate" in line 9. The limitation is indefinite as it is unclear if “so as form a precipitate” means to form a precipitate, that the adding to the solution and adjusting the concentration are for affecting the form of the precipitate, or if the compound and acid are formed into the first and second precipitates.
Claim 17 recites the limitation "so as for form a first precipitate" and “so as for form a second precipitate” in lines 9 and 11-12 respectively. The limitation is indefinite as it is unclear if “so as form a precipitate” means to form a precipitate, that the adding to the solution and adjusting the concentration are for affecting the form of the precipitate, or if the compound and acid are formed into the first and second precipitates.
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) 1, 3-5, and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niwa et al. (JP 2019031719 A, original document supplied with IDS filed 04/17/2026, machine translation provided herein).
Regarding claim 1, Niwa teaches a method of separating a metal from a solution [0001, 0009] the method comprising adding to the solution a compound having a structure according to Formula (2) [0008]. Niwa teaches wherein for formula (2), R2 and R3 (analogous to R1, R2, R3 and R4) can be linear or branched alkyl groups with 1-4 C (i.e., are each independently a substituted or unsubstituted C1-C4 hydrocarbyl group) [0008] and R4 (analogous to Z) represents a linear or cyclic alklylene group or phenylene group having 1-6 carbons (where for 2-6 carbons, Niwa is equivalent to a C2-C6 hydrocarbyl group or an aryl group as claimed) [0008].
Niwa does not teach the chemical compound according to Formula (I). It has long been held however, that a rejection may be made based on close structural similarity on the expectation that compound similar in structure will have similar properties. Further, it has long been held that compounds that are isomers are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09 (I-VII). In the instant case, the compound of Formula (I) of the instant claim, and Formula (2) of Niwa are constitutional isomers, which only differ in that the positions of N and the C double-bonded to O are reversed, thus the compounds of Formula (I) of the instant claim and Formula (2) of Niwa would be expected to have the same properties, and therefore the compound of Formula (I) would be prima facie obvious. Such would have been further obvious as Formula (2) of Niwa is used for the same purpose (separating metal from solution) as in the instant case, further demonstrating evidence of similar properties.
Regarding claim 3, Niwa teaches wherein R2 and R3 (analogous to R3 and/or R4) can be a linear or branched alkyl group with 1-4 carbons (i.e., an unsubstituted C1-C4 alkyl group, which is within the claimed limitation of an unsubstituted C1-C8 alkyl group) [0008].
Regarding claim 4, Niwa teaches wherein R4 (analogous to Z) represents a phenylene group having 6 carbons (i.e., wherein Z is -(C6H4)-) [0008].
Regarding claim 5, Niwa teaches adding a reducing agent to the separated extractant phase to precipitate gold, platinum, and/or palladium (i.e., wherein the method comprises separating the metal from the solution by precipitation) [0008, 0020].
Regarding claim 8, Niwa teaches wherein the solution comprises one or more precious metals selected from the list consisting of gold, platinum, and palladium [0020]. Niwa does not teach wherein the solution further comprises tin and/or gallium. The Examiner notes however that comprising tin and/or gallium is considered optional in claim 8, therefore Niwa is still considered to read upon 8 in its entirety.
Regarding claim 9, Niwa teaches precipitating gold and platinum from the solution [0020].
Claim(s) 2, 6-7, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niwa as applied to claim 1 above, further in view of Suso et al. (US 20130281726 A1).
Regarding claim 2, Niwa teaches a compound considered equivalent to Formula (I) as noted regarding claim 1 above, however Niwa does not teach wherein R1 and/or R2 is phenyl.
Suso teaches a method for recovering precious metal from solution containing precious metal ions and an extracting agent used therefor (Title), where the extracting agent is brought into contact with the precious metal to be extracted [0024, 0062], and the extractant comprises an amide-containing compound with two nitrogen atoms (Formula (II), [0024, 0070]), connected by L comprising a hydrocarbon group [0078], and connected to a carbon doubled bonded to oxygen on the outer sides of the molecule from nitrogen (Formula (II)), thus Suso and Niwa are analogous to the instant application as both are directed to methods of separating metals using amides with similar structures to extract metal from aqueous solution. Suso teaches wherein R of Formula (II) (analogous to an R1 and/or R2 as the outermost molecule at the end of the main chain of the compound) is phenyl [0073].
It has long been held that it is prima facie obvious to substitute equivalents taught by the prior art to be useful for the same purpose. See MPEP 2144.06 (II). As in the instant case Niwa only differs from claim 2 in that the instant claim comprises phenyl as R1 and/or R2, while Niwa uses a linear or branched alkyl group w/ 1-4 C, and Suso uses a phenyl in an analogous position, a prima facie case of obviousness exists as it would have been obvious to have substituted phenyl as the functional group at one or both of R1 and R2, of Suso into the compound of Niwa, as both are extractant compounds used to extract precious metals from aqueous solution.
Regarding claim 6, Niwa teaches wherein R4 of formula (2) (analogous to Z) represents a linear or cyclic alklylene group or phenylene group having 1-6 carbons (where for 2-6 carbons, Niwa is equivalent to a C2-C6 hydrocarbyl group or an aryl group as claimed) [0008]. Niwa teaches R3 may be an alkyl group having 1 carbon atom (i.e., CH3 bonded to N) [0008]. Niwa does not teach wherein the compound has a structure represented by Formula (II) where a phenyl is located at each end of the main carbon chain of the compound.
Suso teaches a method for recovering precious metal from solution containing precious metal ions and an extracting agent used therefor (Title), where the extracting agent is brought into contact with the precious metal to be extracted [0024, 0062], and the extractant comprises an amide-containing compound with two nitrogen atoms (Formula (II), [0024, 0070]), connected by L comprising a hydrocarbon group [0078], and connected to a carbon doubled bonded to oxygen on the outer sides of the molecule from nitrogen (Formula (II)), thus Suso and Niwa are analogous to the instant application as both are directed to methods of separating metals using amides with similar structures to extract metal from aqueous solution. Suso teaches wherein R of Formula (II) (analogous to an R1 and/or R2 as the outermost molecule at the end of the main chain of the compound) is phenyl [0073].
It has long been held that it is prima facie obvious to substitute equivalents taught by the prior art to be useful for the same purpose. See MPEP 2144.06 (II). As in the instant case Niwa only differs from claim 2 in that the instant claim comprises phenyl as R1 and/or R2, while Niwa uses a linear or branched alkyl group w/ 1-4 C, and Suso uses a phenyl in an analogous position, a prima facie case of obviousness exists as it would have been obvious to have substituted phenyl as the functional group at one or both of R1 and R2, of Suso into the compound of Niwa, as both are extractant compounds used to extract precious metals from aqueous solution.
Regarding claim 7, Niwa teaches wherein R4 of formula (2) (analogous to Z) represents a linear or cyclic alklylene group or phenylene group having 1-6 carbons (where for 2, Niwa is equivalent to thew shown 2 carbon chain between the nitrogen atoms) [0008]. Niwa teaches R3 may be an alkyl group having 1 carbon atom (i.e., CH3 bonded to N) [0008]. Niwa does not teach wherein the compound has a structure represented by Formula (II) where a phenyl is located at each end of the main carbon chain of the compound.
Suso teaches a method for recovering precious metal from solution containing precious metal ions and an extracting agent used therefor (Title), where the extracting agent is brought into contact with the precious metal to be extracted [0024, 0062], and the extractant comprises an amide-containing compound with two nitrogen atoms (Formula (II), [0024, 0070]), connected by L comprising a hydrocarbon group [0078], and connected to a carbon doubled bonded to oxygen on the outer sides of the molecule from nitrogen (Formula (II)), thus Suso and Niwa are analogous to the instant application as both are directed to methods of separating metals using amides with similar structures to extract metal from aqueous solution. Suso teaches wherein R of Formula (II) (analogous to an R1 and/or R2 as the outermost molecule at the end of the main chain of the compound) is phenyl [0073].
It has long been held that it is prima facie obvious to substitute equivalents taught by the prior art to be useful for the same purpose. See MPEP 2144.06 (II). As in the instant case Niwa only differs from claim 2 in that the instant claim comprises phenyl as R1 and/or R2, while Niwa uses a linear or branched alkyl group w/ 1-4 C, and Suso uses a phenyl in an analogous position, a prima facie case of obviousness exists as it would have been obvious to have substituted phenyl as the functional group at one or both of R1 and R2, of Suso into the compound of Niwa, as both are extractant compounds used to extract precious metals from aqueous solution.
Regarding claim 10, Niwa teaches wherein the solution is an aqueous solution [0020], where the forms of gold, platinum, and palladium are not particularly limited as long as they are in aqueous solution [0022], and may be in ionic acid form with a chloride [0022] but does not teach wherein the solution is an aqueous acid solution of HCl at a concentration of about 0.1-8 M.
Suso teaches a method for recovering precious metal from solution containing precious metal ions and an extracting agent used therefor (Title), where the extracting agent is brought into contact with the precious metal to be extracted [0024, 0062], and the extractant comprises an amide-containing compound with two nitrogen atoms (Formula (II), [0024, 0070]), connected by L comprising a hydrocarbon group [0078], and connected to a carbon doubled bonded to oxygen on the outer sides of the molecule from nitrogen (Formula (II)), thus Suso and Niwa are analogous to the instant application as both are directed to methods of separating metals using amides with similar structures to extract metal from aqueous solution. Suso teaches the solution containing precious metals may be a hydrochloric acid solution [0108], with preferably an acid concentration of 0.1-5 M [0109], which is within the claimed range.
Because Niwa is silent with respect to which all forms of aqueous solution the target metals may be in, in order to carry out the invention of Niwa one of ordinary skill in the art would necessarily look to the art for a reference teaching examples of gold, platinum, and/or palladium aqueous solution suitable for use within the process of Niwa, such as that of in 0.1-5 M hydrochloric acid solution as taught by Suso. As Niwa and Suso both relate to recovering precious metals from solutions, one of ordinary skill would be motivated to use a 0.1-5 M HCl precious metal solution according to Suso.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niwa as applied to claim 1 above, further in view of Soldenhoff (US 20110083531 A1).
Regarding claim 11, Niwa teaches precipitating gold from the solution [0020], and that gold is selectively precipitated while compound such as chromium, cobalt, nickel, cerium, praseodymium, and neodymium remain in solution (i.e., selectively precipitating gold) [0028], but is silent to wherein the compound is added at a molar ratio of about 1:1 to about 1.1: 1 relative to gold in the solution.
Soldenhoff teaches a selective gold extraction from copper anode slime with an alcohol (title), where an aqueous acid digest of gold-containing slime is selectively extracted with the alcohol (i.e., a compound added to the solution to separate metal) (Abstract, [0012-0013, 0015]), thus Soldenhoff and Niwa are analogous to the instant application as both are directed to processes for separating metals from aqueous solutions comprising metal using extractant compounds. Soldenhoff teaches the extractant may be present in a molar ratio relative to the gold in the acid digest of at least about 1, or at least about 1.1 [0069].
Because Niwa is silent with respect to a suitable molar ratio of extractant to metal, in order to carry out the invention of Niwa one of ordinary skill in the art would necessarily look to the art for a reference teaching a molar ratio of extractant to metal to be precipitated suitable for use within the process of Niwa, such as that of at least about 1 (i.e., 1:1) or at least about 1.1 (i.e., 1.1:1) taught by Soldenhoff. As Niwa and Soldenhoff both relate to using extractant compounds to selectively recover gold from aqueous solution, one of ordinary skill would be motivated to use the molar ratios of Soldenhoff.
Soldenhoff teaches a molar ratio of extractant to extractant to gold of at least 1:1 or at least 1.1:1. This overlaps the claimed range of about 1:1 to about 1.1:1. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because the prior art indicates substantial utility over the entire range disclosed therein, including that portion of the range which also falls within the claimed range. See MPEP § 2144.05(I).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niwa in view of Soldenhoff as applied to claim 11 above, further in view of Zhao et al. (CN 108531746 A, original document and machine translation provided herein).
Regarding claim 12, Niwa teaches that one or more of gold, platinum, and palladium may be precipitated [0020] (i.e., one ore multiple metals may be precipitated at a time), and that the extractant is in an organic phase [0015]. Niwa in view of Soldenhoff does not teach wherein the method comprises adjusting the concentration of the acid in the solution, to about 0.1-4 M.
Zhao teaches an extractant for the separation of precious metals and a method for extracting and separating precious metals using the same extractant (Title), where metals such as precious metals [0002] are separated using an extractant comprising an amide [0008], therefore Zhao and Niwa are analogous as both are directed to methods of separating precious metals from aqueous solutions using extractants comprising amides. Zhao teaches first extracting gold [0022-0025], then extracting platinum [0026-0029], and palladium [0030-0033] using the same extractant [0023, 0027, 0031]. Zhao teaches adjusting the concentration of acid in the solution improves the separation efficiency of the precipitations [0120], where the concentration of the acid in the solution containing gold is 0.005 – 10 M, the concentration of the solution containing platinum is 0.5 to 10 M, the solution containing palladium is 0.1 to 0.5 M [0038].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have recovered gold, platinum, and palladium sequentially with treatment with the same extractant as taught by Zhao to the method of Niwa, as doing so would recover gold, platinum, and palladium individually, which is a feature desired by Niwa, and as doing so would have been recognized by one of ordinary skill in the art to recover each metal individually, improving the purity of each metal recovered.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niwa as applied to claim 1, further in view of Suso and Soldenhoff.
Niwa teaches one or more of gold, platinum, and palladium may be precipitated [0020], where in the case of the “one or more” including gold and platinum, Niwa teaches co-precipitating gold and platinum from the solution. Niwa teaches wherein the solution is an aqueous solution [0020], where the forms of gold, platinum, and palladium are not particularly limited as long as they are in aqueous solution [0022]. Niwa is silent to the concentration of acid in the solution.
Suso teaches a method for recovering precious metal from solution containing precious metal ions and an extracting agent used therefor (Title), where the extracting agent is brought into contact with the precious metal to be extracted [0024, 0062], and the extractant comprises an amide-containing compound with two nitrogen atoms (Formula (II), [0024, 0070]), connected by L comprising a hydrocarbon group [0078], and connected to a carbon doubled bonded to oxygen on the outer sides of the molecule from nitrogen (Formula (II)), thus Suso and Niwa are analogous to the instant application as both are directed to methods of separating metals using amides with similar structures to extract metal from aqueous solution. Suso teaches the solution containing precious metals may be a hydrochloric acid solution [0108], where the acid concentration is not particularly limited [0108].
Because Niwa is silent with respect to which all forms of aqueous solution the target metals may be in, in order to carry out the invention of Niwa one of ordinary skill in the art would necessarily look to the art for a reference teaching examples of gold, platinum, and/or palladium aqueous solution suitable for use within the process of Niwa, such as 6 M hydrochloric acid solution as permitted by Suso. As Niwa and Suso both relate to recovering precious metals from solutions, one of ordinary skill would be motivated to use an acid concentration that is not particularly limited to for the precious metal solution according to Suso.
Niwa teaches precipitating gold from the solution [0020], and that gold is selectively precipitated while compound such as chromium, cobalt, nickel, cerium, praseodymium, and neodymium remain in solution (i.e., selectively precipitating gold) [0028], but is silent to wherein the compound is added at a molar ratio of about 1:1 to about 1.1: 1 relative to gold in the solution.
Soldenhoff teaches a selective gold extraction from copper anode slime with an alcohol (title), where an aqueous acid digest of gold-containing slime is selectively extracted with the alcohol (i.e., a compound added to the solution to separate metal) (Abstract, [0012-0013, 0015]), thus Soldenhoff and Niwa are analogous to the instant application as both are directed to processes for separating metals from aqueous solutions comprising metal using extractant compounds. Soldenhoff teaches the extractant may be present in a molar ratio relative to the gold in the acid digest of at least about 1 or at least about 1.1 [0069].
Soldenhoff teaches a molar ratio of extractant to extractant to gold of at least 1:1 or at least 1.1:1. This overlaps the claimed range of wherein the compound at added at a molar ratio in excess of 1:1 relative to gold. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because the prior art indicates substantial utility over the entire range disclosed therein, including that portion of the range which also falls within the claimed range. See MPEP § 2144.05(I).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niwa in view of Soldenhoff.
Regarding claim 14, Niwa teaches a method of selectively separating gold from a solution containing gold and one or more other metals [0001, 0009]. Niwa teaches a method of separating a metal from a solution the method comprising adding to the solution a compound having a structure according to Formula (2) [0008]. Niwa teaches wherein for formula (2), R2 and R3 (analogous to R1, R2, R3 and R4) can be linear or branched alkyl groups with 1-4 C (i.e., are each independently a substituted or unsubstituted C1-C4 hydrocarbyl group) [0008] and R4 (analogous to Z) represents a linear or cyclic alklylene group or phenylene group having 1-6 carbons (where for 2-6 carbons, Niwa is equivalent to a C2-C6 hydrocarbyl group or an aryl group as claimed) [0008].
Niwa does not teach the chemical compound according to Formula (I). It has long been held however, that a rejection may be made based on close structural similarity on the expectation that compound similar in structure will have similar properties. Further, it has long been held that compounds that are isomers are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09 (I-VII). In the instant case, the compound of Formula (I) of the instant claim, and Formula (2) of Niwa are constitutional isomers, which only differ in that the positions of N and the C double-bonded to O are reversed, thus the compounds of Formula (I) of the instant claim and Formula (2) of Niwa would be expected to have the same properties, and therefore the compound of Formula (I) would be prima facie obvious. Such would have been further obvious as Formula (2) of Niwa is used for the same purpose (separating metal from solution) as in the instant case, further demonstrating evidence of similar properties.
Niwa teaches precipitating gold from the solution [0020], and that gold is selectively precipitated while compound such as chromium, cobalt, nickel, cerium, praseodymium, and neodymium remain in solution (i.e., selectively precipitating gold) [0028], but is silent to wherein the compound is added at a molar ratio of about 1:1 to about 1.1: 1 relative to gold in the solution.
Soldenhoff teaches a selective gold extraction from copper anode slime with an alcohol (title), where an aqueous acid digest of gold-containing slime is selectively extracted with the alcohol (i.e., a compound added to the solution to separate metal) (Abstract, [0012-0013, 0015]), thus Soldenhoff and Niwa are analogous to the instant application as both are directed to processes for separating metals from aqueous solutions comprising metal using extractant compounds. Soldenhoff teaches the extractant may be present in a molar ratio relative to the gold in the acid digest of at least about 1, or at least about 1.1 [0069].
Because Niwa is silent with respect to a suitable molar ratio of extractant to metal, in order to carry out the invention of Niwa one of ordinary skill in the art would necessarily look to the art for a reference teaching a molar ratio of extractant to metal to be precipitated suitable for use within the process of Niwa, such as that of at least about 1 (i.e., 1:1) or at least about 1.1 (i.e., 1.1:1) taught by Soldenhoff. As Niwa and Soldenhoff both relate to using extractant compounds to selectively recover gold from aqueous solution, one of ordinary skill would be motivated to use the molar ratios of Soldenhoff.
Soldenhoff teaches a molar ratio of extractant to extractant to gold of at least 1:1 or at least 1.1:1. This overlaps the claimed range of about 1:1 to about 1.1:1. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because the prior art indicates substantial utility over the entire range disclosed therein, including that portion of the range which also falls within the claimed range. See MPEP § 2144.05(I).
Claim(s) 15 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niwa in view of Suso.
Regarding claim 15, Niwa teaches a method of separating gold from a solution containing gold and one or more other metals [0001, 0009], where as gold is separated from other metals which remain in solution [0028], gold is selectively separated. Niwa teaches a method of separating a metal from a solution the method comprising adding to the solution a compound having a structure according to Formula (2) [0008]. Niwa teaches wherein for formula (2), R2 and R3 (analogous to R1, R2, R3 and R4) can be linear or branched alkyl groups with 1-4 C (i.e., are each independently a substituted or unsubstituted C1-C4 hydrocarbyl group) [0008] and R4 (analogous to Z) represents a linear or cyclic alklylene group or phenylene group having 1-6 carbons (where for 2-6 carbons, Niwa is equivalent to a C2-C6 hydrocarbyl group or an aryl group as claimed) [0008].
Niwa does not teach the chemical compound according to Formula (I). It has long been held however, that a rejection may be made based on close structural similarity on the expectation that compound similar in structure will have similar properties. Further, it has long been held that compounds that are isomers are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09 (I-VII). In the instant case, the compound of Formula (I) of the instant claim, and Formula (2) of Niwa are constitutional isomers, which only differ in that the positions of N and the C double-bonded to O are reversed, thus the compounds of Formula (I) of the instant claim and Formula (2) of Niwa would be expected to have the same properties, and therefore the compound of Formula (I) would be prima facie obvious. Such would have been further obvious as Formula (2) of Niwa is used for the same purpose (separating metal from solution) as in the instant case, further demonstrating evidence of similar properties.
Niwa teaches wherein the solution is an aqueous solution [0020], where the forms of gold, platinum, and palladium are not particularly limited as long as they are in aqueous solution [0022], and may be in ionic acid form with a chloride [0022] but does not teach wherein the solution is an aqueous acid solution of HCl at a concentration of about 0.1-8 M.
Suso teaches a method for recovering precious metal from solution containing precious metal ions and an extracting agent used therefor (Title), where the extracting agent is brought into contact with the precious metal to be extracted [0024, 0062], and the extractant comprises an amide-containing compound with two nitrogen atoms (Formula (II), [0024, 0070]), connected by L comprising a hydrocarbon group [0078], and connected to a carbon doubled bonded to oxygen on the outer sides of the molecule from nitrogen (Formula (II)), thus Suso and Niwa are analogous to the instant application as both are directed to methods of separating metals using amides with similar structures to extract metal from aqueous solution. Suso teaches the solution containing precious metals may be a hydrochloric acid solution [0108], with preferably an acid concentration of 0.1-5 M [0109].
Because Niwa is silent with respect to which all forms of aqueous solution the target metals may be in, in order to carry out the invention of Niwa one of ordinary skill in the art would necessarily look to the art for a reference teaching examples of gold, platinum, and/or palladium aqueous solution suitable for use within the process of Niwa, such as that of in 0.1-5 M hydrochloric acid solution as taught by Suso. As Niwa and Suso both relate to recovering precious metals from solutions, one of ordinary skill would be motivated to use a 0.1-5 M HCl precious metal solution according to Suso.
Suso teaches a strong acid concentration of 0.1-5 M. This overlaps the claimed range of a strong acid concentration of 0.1-4 M. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because the prior art indicates substantial utility over the entire range disclosed therein, including that portion of the range which also falls within the claimed range. See MPEP § 2144.05(I).
Regarding claim 19, Niwa teaches a method of separating a metal from a solution [0001, 0009] the method comprising adding to the solution a compound having a structure according to Formula (2) [0008]. Niwa teaches one or more of gold, platinum, and palladium may be separated [0020], where in the case of the “one or more” including gold and platinum, Niwa teaches co-precipitating gold and platinum from the solution. Niwa teaches wherein for formula (2), R2 and R3 (analogous to R1, R2, R3 and R4) can be linear or branched alkyl groups with 1-4 C (i.e., are each independently a substituted or unsubstituted C1-C4 hydrocarbyl group) [0008] and R4 (analogous to Z) represents a linear or cyclic alklylene group or phenylene group having 1-6 carbons (where for 2-6 carbons, Niwa is equivalent to a C2-C6 hydrocarbyl group or an aryl group as claimed) [0008].
Niwa does not teach the chemical compound according to Formula (I). It has long been held however, that a rejection may be made based on close structural similarity on the expectation that compound similar in structure will have similar properties. Further, it has long been held that compounds that are isomers are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09 (I-VII). In the instant case, the compound of Formula (I) of the instant claim, and Formula (2) of Niwa are constitutional isomers, which only differ in that the positions of N and the C double-bonded to O are reversed, thus the compounds of Formula (I) of the instant claim and Formula (2) of Niwa would be expected to have the same properties, and therefore the compound of Formula (I) would be prima facie obvious. Such would have been further obvious as Formula (2) of Niwa is used for the same purpose (separating metal from solution) as in the instant case, further demonstrating evidence of similar properties.
Niwa teaches wherein the solution is an aqueous solution [0020], where the forms of gold, platinum, and palladium are not particularly limited as long as they are in aqueous solution [0022]. Niwa is silent to the concentration of acid in the solution.
Suso teaches a method for recovering precious metal from solution containing precious metal ions and an extracting agent used therefor (Title), where the extracting agent is brought into contact with the precious metal to be extracted [0024, 0062], and the extractant comprises an amide-containing compound with two nitrogen atoms (Formula (II), [0024, 0070]), connected by L comprising a hydrocarbon group [0078], and connected to a carbon doubled bonded to oxygen on the outer sides of the molecule from nitrogen (Formula (II)), thus Suso and Niwa are analogous to the instant application as both are directed to methods of separating metals using amides with similar structures to extract metal from aqueous solution. Suso teaches the solution containing precious metals may be a hydrochloric acid solution [0108], where the acid concentration is not particularly limited [0108].
Because Niwa is silent with respect to which all forms of aqueous solution the target metals may be in, in order to carry out the invention of Niwa one of ordinary skill in the art would necessarily look to the art for a reference teaching examples of gold, platinum, and/or palladium aqueous solution suitable for use within the process of Niwa, such as 6 M hydrochloric acid solution as permitted by Suso. As Niwa and Suso both relate to recovering precious metals from solutions, one of ordinary skill would be motivated to use an acid concentration that is not particularly limited to for the precious metal solution according to Suso.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niwa in view of in view of Zhao and Soldenhoff.
Niwa teaches a method of separating gold, and one or more other metals, from a solution containing gold and one or more other metals [0001, 0009, 0020]. Niwa teaches a method of separating a metal from a solution the method comprising adding to the solution a compound having a structure according to Formula (2) [0008]. Niwa teaches wherein for formula (2), R2 and R3 (analogous to R1, R2, R3 and R4) can be linear or branched alkyl groups with 1-4 C (i.e., are each independently a substituted or unsubstituted C1-C4 hydrocarbyl group) [0008] and R4 (analogous to Z) represents a linear or cyclic alklylene group or phenylene group having 1-6 carbons (where for 2-6 carbons, Niwa is equivalent to a C2-C6 hydrocarbyl group or an aryl group as claimed) [0008]. Niwa teaches forming a first precipitate containing gold [0020] and separating the precipitate from the solution [0020].
Niwa does not teach the chemical compound according to Formula (I). It has long been held however, that a rejection may be made based on close structural similarity on the expectation that compound similar in structure will have similar properties. Further, it has long been held that compounds that are isomers are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09 (I-VII). In the instant case, the compound of Formula (I) of the instant claim, and Formula (2) of Niwa are constitutional isomers, which only differ in that the positions of N and the C double-bonded to O are reversed, thus the compounds of Formula (I) of the instant claim and Formula (2) of Niwa would be expected to have the same properties, and therefore the compound of Formula (I) would be prima facie obvious. Such would have been further obvious as Formula (2) of Niwa is used for the same purpose (separating metal from solution) as in the instant case, further demonstrating evidence of similar properties.
Niwa teaches that one or more of gold, platinum, and palladium may be precipitated [0020] (i.e., one ore multiple metals may be precipitated at a time), and that the extractant is in an organic phase [0015]. Niwa does not teach wherein the method comprises sequentially separating gold and one or more other metals.
Zhao teaches an extractant for the separation of precious metals and a method for extracting and separating precious metals using the same extractant (Title), where metals such as precious metals [0002] are separated using an extractant comprising an amide [0008], therefore Zhao and Niwa are analogous as both are directed to methods of separating precious metals from aqueous solutions using extractants comprising amides. Zhao teaches first extracting gold [0022-0025], then extracting platinum by adding additional extractant (i.e., adding a further amount of the compound to the solution) [0026-0029], and palladium [0030-0033] using the same extractant [0023, 0027, 0031]. Zhao teaches adjusting the concentration of acid in the solution improves the separation efficiency of the precipitations [0120], where the concentration of the acid in the solution containing gold is 0.005 – 10 M, the concentration of the solution containing platinum is 0.5 to 10 M, the solution containing palladium is 0.1 to 0.5 M [0038].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have recovered gold, platinum, and palladium sequentially with treatment with the same extractant as taught by Zhao to the method of Niwa, as doing so would recover gold, platinum, and palladium individually, which is a feature desired by Niwa (recovering one of gold, platinum, and palladium), and as doing so would have been recognized by one of ordinary skill in the art to recover each metal individually, improving the purity of each metal recovered. Further, as Niwa teaches forming precipitates of the gold, platinum, or palladium after adding the extractant, in combining Niwa and Zhao to add a second extraction with the same extractant, one of ordinary skill would similarly precipitate the second extracted metal according to the same process as described in Niwa for the first precipitate at [0008, 0020] (i.e., a second precipitate comprising one or more other metals).
Niwa teaches precipitating gold from the solution [0020], and that gold is selectively precipitated while compound such as chromium, cobalt, nickel, cerium, praseodymium, and neodymium remain in solution (i.e., selectively precipitating gold) [0028], but is silent to wherein the compound is added at a molar ratio of about 1:1 to about 1.1: 1 relative to gold in the solution.
Soldenhoff teaches a selective gold extraction from copper anode slime with an alcohol (title), where an aqueous acid digest of gold-containing slime is selectively extracted with the alcohol (i.e., a compound added to the solution to separate metal) (Abstract, [0012-0013, 0015]), thus Soldenhoff and Niwa are analogous to the instant application as both are directed to processes for separating metals from aqueous solutions comprising metal using extractant compounds. Soldenhoff teaches the extractant may be present in a molar ratio relative to the gold in the acid digest of at least about 1, or at least about 1.1 [0069].
Because Niwa is silent with respect to a suitable molar ratio of extractant to metal, in order to carry out the invention of Niwa one of ordinary skill in the art would necessarily look to the art for a reference teaching a molar ratio of extractant to metal to be precipitated suitable for use within the process of Niwa, such as that of at least about 1 (i.e., 1:1) or at least about 1.1 (i.e., 1.1:1) taught by Soldenhoff. As Niwa and Soldenhoff both relate to using extractant compounds to selectively recover gold from aqueous solution, one of ordinary skill would be motivated to use the molar ratios of Soldenhoff.
Soldenhoff teaches a molar ratio of extractant to extractant to gold of at least 1:1 or at least 1.1:1. This overlaps the claimed range of about 1:1 to about 1.1:1. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because the prior art indicates substantial utility over the entire range disclosed therein, including that portion of the range which also falls within the claimed range. See MPEP § 2144.05(I).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Niwa in view of Cao et al. (CN 112853115 A, machine translation and original document supplied herein), Biao et al. (CN 108085497 A, machine translation and original document supplied herein), and Prior et al. (AU 2012225185 A1, original English language reference supplied herein).
Niwa teaches a method of separating, from an acidic solution containing gold and one or more other metals [0022], a co-precipitate comprising one or more of gold, platinum, and/or palladium (i.e., one or more other metals and gold, so as to form a co-precipitate comprising gold and one or more other metals) [0020]. Niwa teaches adding to the solution a compound having a structure according to Formula (2) [0008], wherein for formula (2), R2 and R3 (analogous to R1, R2, R3 and R4) can be linear or branched alkyl groups with 1-4 C (i.e., are each independently a substituted or unsubstituted C1-C4 hydrocarbyl group) [0008] and R4 (analogous to Z) represents a linear or cyclic alklylene group or phenylene group having 1-6 carbons (where for 2-6 carbons, Niwa is equivalent to a C2-C6 hydrocarbyl group or an aryl group as claimed) [0008].
Niwa does not teach the chemical compound according to Formula (I). It has long been held however, that a rejection may be made based on close structural similarity on the expectation that compound similar in structure will have similar properties. Further, it has long been held that compounds that are isomers are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09 (I-VII). In the instant case, the compound of Formula (I) of the instant claim, and Formula (2) of Niwa are constitutional isomers, which only differ in that the positions of N and the C double-bonded to O are reversed, thus the compounds of Formula (I) of the instant claim and Formula (2) of Niwa would be expected to have the same properties, and therefore the compound of Formula (I) would be prima facie obvious. Such would have been further obvious as Formula (2) of Niwa is used for the same purpose (separating metal from solution) as in the instant case, further demonstrating evidence of similar properties.
Niwa does not teach washing the co-precipitate in an aqueous acidic solution so as to strip one or more other metals from the co-precipitate and yield a third precipitate.
Cao teaches a high efficiency gold refining process (Title), where gold is leached from an ore to obtain a precipitate [n0005-n0017], thus Cao and Niwa are analogous to the instant application as both are directed to processes for separating gold as a precipitate via wet process. Cao teaches the precipitate is washed with acid washing to further remove impurities (i.e., washing the co-precipitate in an aqueous acidic solution so as to strip impurities from the co-precipitate and yield a third precipitate) [n0017, n0019], and then washed with water to obtain high-purity gold (i.e., washing the third precipitate in water so as to strip gold from the third precipitate) [n0019].
Biao teaches a method for extracting gold from electronic waste (Title), where electronic waste is combined with an extractant [0013-0014], and gold is precipitated from the extractant [0015] thus Niwa and Biao are analogous to the instant application as both are directed to processes for separating gold by using extractants to recover a gold precipitate. Biao teaches after precipitating gold that it is washed with acid to remove impurities, which are metallic impurities such as copper and nickel (i.e., washing co-precipitate in an aqueous acidic solution strips one or more other metals from the co-precipitate) [0016, 0049].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have acid washed and water washed the gold-containing precipitate as taught by the Cao in the method of Niwa, as doing so would remove metallic impurities as taught by Cao and Biao, and produce a high-purity gold precipitate as taught by Cao. As Niwa in view of Cao and Biao teaches removing metal impurities, then separating gold, Niwa in view of Cao and Biao teaches sequentially separating, from an acidic solution containing gold and one or more other metals, the one or more other metals, then gold.
Niwa in view of Cao and Biao teaches washing the third precipitate in water, but do not teach washing the third precipitate in deionised water so as to strip gold from the third precipitate.
Prior teaches a metal separation method (title), where gold dore is dissolved (Fig. 1, pg. 15 lines 3-16, pg. 15 line 30 – pg. 16 line 5), and gold is separated from other metals and precipitated (Fig. 1, pg. 16 lines 7-19), thus Prior and Niwa are analogous to the instant application as both are directed to processes for separating gold in a solution with other metals involving precipitating gold. Prior teaches the precipitated gold is washed with hydrochloric acid and with deionized water (i.e., washing the third precipitate in deionised water) (pg. 18 lines 1-12).
Because Cao is silent with respect to what type of water is used to perform washing with water, in order to carry out the invention of Cao one of ordinary skill in the art would necessarily look to the art for a reference teaching water suitable for use within the process of Cao, such as that of deionized water as taught by Prior. As Cao and Prior both relate to washing gold precipitates from gold recovery processes with acid followed by washing with water, one of ordinary skill would be motivated to use the DI water of Prior.
Allowable Subject Matter
Claim 17 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The closest identified prior art of record is Niwa, Suso, and Zhao.
Niwa teaches a method of separating gold and one or more other metals using a compound considered to establish a prima facie case of obviousness over the compound of Formula (I) as noted at claims 16 and 18 above. Niwa teaches separating the first precipitate containing gold from the solution [0008, 0020].
Niwa does not teach sequentially separating gold and one or more other metals, an acid concentration of the aqueous solution, or adjusting the concentration of the acid in the solution.
Suso teaches a method for recovering precious metal from solution containing precious metal ions and an extracting agent used therefor (Title), where the extracting agent is brought into contact with the precious metal to be extracted [0024, 0062], and the extractant comprises an amide-containing compound with two nitrogen atoms (Formula (II), [0024, 0070]), connected by L comprising a hydrocarbon group [0078], and connected to a carbon doubled bonded to oxygen on the outer sides of the molecule from nitrogen (Formula (II)), thus Suso and Niwa are analogous to the instant application as both are directed to methods of separating metals using amides with similar structures to extract metal from aqueous solution. Suso teaches the solution containing precious metals may be a hydrochloric acid solution [0108], with preferably an acid concentration of 0.1-5 M [0109], which overlaps the claimed range.
Suso does not teach sequentially separating gold, and one or more other metals, from a solution containing gold and one or more other metals, or adjusting the concentration of the acid in the solution, to about 4-8 M, so as for form a second precipitate comprising the one or more other metals.
Zhao teaches an extractant for the separation of precious metals and a method for extracting and separating precious metals using the same extractant (Title), where metals such as precious metals [0002] are separated using an extractant comprising an amide [0008], therefore Zhao and Niwa are analogous as both are directed to methods of separating precious metals from aqueous solutions using extractants comprising amides. Zhao teaches first extracting gold [0022-0025], then extracting platinum by adding additional extractant (i.e., sequentially separating gold and another metal) [0026-0029], and palladium [0030-0033] using the same extractant [0023, 0027, 0031]. Zhao teaches adjusting the concentration of acid in the solution improves the separation efficiency of the precipitations [0120], where the concentration of the strong acid in the solution containing gold is 0.005 – 10 M (which overlaps the claimed range of a strong acid at a concentration of about 0.1-4 M) the concentration of the solution containing platinum is 0.5 to 10 M, the solution containing palladium is 0.1 to 0.5 M [0038].
Zhao teaches adjusting the concentration of the acid in the solution to decrease to precipitate the second metal, and does not teach adjusting the concentration of the acid in the solution, to about 4-8 M, so as for form a second precipitate comprising the one or more other metals
Based on the above discussion, the closest prior art, taken singularly or in combination, does not fairly suggest or render obvious a method of sequentially separating gold as claimed.
Conclusion
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
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