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 .
Response to Amendment
The amendment filed 06/01/2026 has been entered. Claim(s) 1, 3-7, 9-12, and 21-22 is/are pending in this application and examined herein. Claim(s) 1 and 21-22 is/are amended. Claim(s) 2, 8, and 13-20 is/are cancelled.
The rejection(s) under 35 USC 112(a) to claim(s) 1, 3-7, 9-12, and 21-22 is/are withdrawn in view of the amendments to claim(s) 1, 21, and 22.
The rejection(s) under 35 USC 112 (b) to claim(s) 1, 3-7, 9-12, and 21-22 is/are withdrawn in view of the amendments to claim(s) 1, 21, and 22.
Claim Objections
Claims 1 and 22 are objected to because of the following informalities:
Claim 1: “recovering between about 72% and about 85% recovery” in lines 26-27 should read “recovering between about 72% and about 85%”
Claim 22: “recovering between about 72% and about 85% recovery” in lines 27-28 should read “recovering between about 72% and about 85%”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-7, 9-12, and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “recovering between about 72% and about 85% recovery of the remaining copper from the metal-bearing material” in lines 26-27. The instant specification discloses wherein 72% and 85% of the overall amount of Cu is recovered during leaching of a copper-containing material (instant specification: [0050-0052], Table 2), however the instant specification does not disclose wherein between 72 and 85% of remaining copper after the first leaching is recovered in an additional leaching step, and therefore does not describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor invented the claimed invention at the time of filing.
Claim 22 recites “recovering between about 72% and about 85% recovery of the remaining metal value comprising copper from the metal-bearing material” in lines 28-29. The instant specification discloses wherein 72% and 85% of the overall amount of Cu is recovered during leaching of a copper-containing material (instant specification: [0050-0052], Table 2), however the instant specification does not disclose wherein between 72 and 85% of remaining copper after the first leaching is recovered in an additional leaching step, and therefore does not describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor invented the claimed invention at the time of filing.
Claims dependent upon claims rejected above, either directly or indirectly, are likewise rejected under this statute.
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, 3-7, 9-12, and 21-22 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 recites the limitation "the remaining copper" in line 27. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the remaining metal value comprising copper" in lines 28-29. There is insufficient antecedent basis for this limitation in the claim.
Claims dependent upon claims rejected above, either directly or indirectly, are likewise rejected under this statute.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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, 4-7, 9-12, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Lyons (US 20230090475 A1, cited in Office Action dated 06/27/2024) in view of Kittelty et al. (US 20240035113 A1, cited in Office Action dated 06/27/2024).
Regarding claim 1, Lyons teaches a method for recovering a metal value from a metal-bearing material (Abstract, [0010]), where the metal value may be copper [0037]. Lyons teaches agglomerating the metal-bearing material with an agglomeration solution which comprises raffinate, citric acid, and hydrogen peroxide [0013, 0019].
Lyons teaches leaching the metal-bearing material with a leaching solution to produce a pregnant leaching solution (Abstract, [0010]). Lyons teaches the leaching solution comprises a raffinate, citric acid, and hydrogen peroxide [0010, 0013], and the metal-bearing material comprises a concentration of iron [0003, 0005-0006]. Lyons teaches recovering the copper from the pregnant leaching solution to produce the raffinate [0010]. Lyons teaches reusing the raffinate 112/144 in the leaching process as a component of the leaching solution (Fig. 1, [0118]), where it is combined with leaching solution in leaching process 120 [0119]. Lyons teaches a cyclic process where after leaching and recovering copper from the pregnant leach solution, raffinate is recycled to the leaching (i.e., leaching at least one additional time with the leaching solution comprising the raffinate) on the heap (i.e., the metal-bearing material) (Fig. 1, [0010]). As Lyons teaches the leaching to be cyclic [0010], the leaching solution is also treated to recover copper (i.e., recovering remaining copper from the metal-bearing material from the leaching solution comprising the raffinate).
Lyons does not teach adding a low concentration of a silver agent or wherein the raffinate comprises a retained concentration of the silver agent.
Kittelty teaches a microbial-assisted heap leaching (Title, abstract), where copper-containing sulfidic ore such as chalcopyrite ore is subjected to agglomeration followed by leaching to recover copper (Abstract), thus Lyons and Kittelty are analogous as both are directed to processes of agglomerating and leaching chalcopyrite to obtain copper metal. Kittelty teaches adding silver during the agglomeration of the ore enhances leaching of copper [0129]. Kittelty teaches the added silver may be added to the agglomeration step in any suitable form, such as in the agglomeration solution [0257]. Kittelty teaches the added silver concentration in the agglomerates may be less than 5 g silver per kg copper in the ore (<0.5%) or less than 1 g silver per kg copper in the ore (<0.1%) [0265], but does not teach the concentration of silver relative to the agglomeration solution. However, it has long been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II) A-B. In the instant case, one of ordinary skill would have been motivated to use a silver agent concentration sufficient to catalyze copper leaching. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added silver to copper-containing ore during agglomeration as taught by Kittelty to the ore during the agglomeration step of Lyons, as doing so would improve the leaching of copper.
Lyons is modified by Kittelty to teach adding silver to the copper-containing ore during agglomeration, and is not relied upon to teach adding a regeneration circuit, therefore as Lyons does not teach further additions of silver agent, Lyons in view Kittelty teaches the raffinate is rendered amenable for reuse in the agglomerating or the leaching without further additions of the silver agent.
Lyons in view of Kittelty is silent to wherein silver agent is retained in the raffinate. However, page 15 of the present specification, discloses that “due to the retention effect citric acid has on silver ions, the raffinate 112 may comprise a retained concentration of the silver agent after leaching process 120”. As Lyons in view of Kittelty suggests substantially the same process that Applicant states produces this feature, one of ordinary skill would have a reasonable assumption that this feature would also occur when practicing the method of Lyons in view of Kittelty. See MPEP 2112 § (III-V) and 2112.01 § (I).
Lyons in view of Kittelty is silent to leaching at least one additional time to achieve between about 72% and about 85% recovery of the remaining copper from the metal-bearing material in the process described therein. However, it has long been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II) A-B. In the instant case, one of ordinary skill would be motivated to use leaching conditions (e.g., temperature, duration, number of cycles) suitable to recover a desired percentage of copper.
Further, the mere recitation of a numerical parameter in an otherwise known process will not generally result in patentability of a claim directed to that process, absent evidence of criticality of the numerical parameter. In the instant case the numerical parameter (the percentage of copper recovered) does not appear to be critical to the invention.
Thus, the disclosure of Lyons in view of Kittelty is held to establish a prima facie case of obviousness of a method as presently claimed.
Regarding claim 21, Lyons teaches a method for recovering a metal value comprising copper from a metal-bearing material, wherein the metal-bearing material comprises a concentration of iron (Lyons: [0171], Table 4) and the method includes leaching the metal-bearing material with a leaching solution comprising raffinate as noted above. The combination of Lyons and Kittelty as applied to claim 1 above suggests all elements of the current invention, as discussed above.
Therefore, the combined disclosures of Lyons and Kittelty would have suggested a method as presently claimed to one ordinary skill in the art.
Claim(s) 4-7, and 9-12 remain(s) rejected as set forth in the Office Action dated 03/04/2026. Claim(s) 4-7, and 9-12 has/have not been amended since that time. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lyons in view of Kittelty as applied to claim 1 above, further in view of Schlitt (“Kennecott's million-ton test heap -The active leach program”, supplied with Office Action dated 03/04/2026).
Claim(s) 3 remain(s) rejected as set forth in the Office Action dated 03/04/2026. Claim(s) 3 has/have not been amended since that time. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claim(s).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Lyons in view of Kittelty and Schlitt.
Lyons teaches a method for recovering a metal value from a metal-bearing material (Abstract, [0010]), where the metal value may comprise copper [0037]. Lyons teaches agglomerating the metal-bearing material with an agglomeration solution which comprises raffinate, citric acid, and hydrogen peroxide [0013, 0019].
Lyons teaches leaching the metal-bearing material with a leaching solution to produce a pregnant leaching solution (Abstract, [0010]). Lyons teaches the leaching solution comprises a raffinate, citric acid, and hydrogen peroxide [0010, 0013], and the metal-bearing material comprises a concentration of iron [0003, 0005-0006]. Lyons teaches recovering the metal value comprising copper from the pregnant leaching solution to produce raffinate [0010]. Lyons teaches reusing the raffinate 112/144 in the leaching process as a component of the leaching solution (Fig. 1, [0118]), where it is combined with leaching solution in leaching process 120 [0119]. Lyons teaches a cyclic process where after leaching and recovering metal value from the pregnant leach solution, raffinate is recycled to the leaching (i.e., leaching at least one additional time the metal-bearing material with the leaching solution comprising the raffinate) on the heap (i.e., the metal bearing material) (Fig. 1, [0010]). As Lyons teaches the leaching to be cyclic [0010], the leaching solution is also treated to recover copper (i.e., recovering remaining metal value comprising copper from the leaching solution comprising the raffinate).
Lyons does not teach adding a low concentration of a silver agent or wherein the raffinate comprises a retained concentration of the silver agent.
Kittelty teaches a microbial-assisted heap leaching (Title, abstract), where copper-containing sulfidic ore such as chalcopyrite ore is subjected to agglomeration followed by leaching to recover copper (Abstract), thus Lyons and Kittelty are analogous as both are directed to processes of agglomerating and leaching chalcopyrite to obtain copper metal. Kittelty teaches adding silver during the agglomeration of the ore enhances leaching of copper [0129]. Kittelty teaches the added silver may be added to the agglomeration step in any suitable form, such as in the agglomeration solution [0257]. Kittelty teaches the added silver concentration in the agglomerates may be less than 5 g silver per kg copper in the ore (<0.5%) or less than 1 g silver per kg copper in the ore (<0.1%) [0265], but does not teach the concentration of silver relative to the agglomeration solution. However, it has long been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II) A-B. In the instant case, one of ordinary skill would have been motivated to use a silver agent concentration sufficient to catalyze copper leaching. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added silver to copper-containing ore during agglomeration as taught by Kittelty to the ore during the agglomeration step of Lyons, as doing so would improve the leaching of copper.
Lyons is modified by Kittelty to teach adding silver to the copper-containing ore during agglomeration, and is not relied upon to teach adding a regeneration circuit, therefore as Lyons does not teach further additions of silver agent, Lyons in view Kittelty teaches the raffinate is rendered amenable for reuse in the agglomerating or the leaching without further additions of the silver agent.
Lyons teaches the metal-bearing material comprises run of mine ore [0014]. Lyons in view of Kittelty does not teach wherein the concentration of iron in the metal-bearing material is more than about 2 g/L.
Schlitt teaches a heap leach program (Title), where chalcopyrite run of mine ore is heap leached (pg. 1 Introduction paragraph 3). Schlitt teaches the heap overall comprises 4.0% Fe, where the heap is 16 m high, the top horizontal surface is 130 m by 190 m (pg. 4 Construction of the first lift paragraph 1), and the bottom horizontal surface is 175 m by 205 m (pg. 3 The leach pad and piping paragraph 1), therefore the total volume of the heap is 481,827 m3. Schlitt teaches the mass of the heap is 960 kt (pg. 1 Introduction paragraph 3), thus the heap comprises 38,400 metric tons of iron over the volume of the heap, equivalent to 80 g/L, which is within the claimed range.
Because Lyons is silent with respect to the run of mine ore used, in order to carry out the invention of Lyons one of ordinary skill in the art would necessarily look to the art for a reference teaching run of mine ore suitable for use within the process of Lyons, such as chalcopyrite run of mine ore taught by Schlitt. As Lyons and Schlitt both relate to heap leaching of chalcopyrite run of mine ore, one of ordinary skill would be motivated to use the ore of Schlitt.
Lyons in view of Kittelty and Schlitt is silent to wherein silver agent is retained in the raffinate. However, page 15 of the present specification, discloses that “due to the retention effect citric acid has on silver ions, the raffinate 112 may comprise a retained concentration of the silver agent after leaching process 120”. As Lyons in view of Kittelty and Schlitt suggests substantially the same process that Applicant states produces this feature, one of ordinary skill would have a reasonable assumption that this feature would also occur when practicing the method of Lyons in view of Kittelty and Schlitt.
Lyons in view of Kittelty and Schlitt is silent to leaching at least one additional time to achieve between about 72% and about 85% recovery of the remaining metal value comprising copper from the metal-bearing material in the process described therein. However, it has long been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In the instant case, one of ordinary skill would be motivated to use leaching conditions (e.g., temperature, duration, number of cycles) suitable to recover a desired percentage of metal value comprising copper.
Further, the mere recitation of a numerical parameter in an otherwise known process will not generally result in patentability of a claim directed to that process, absent evidence of criticality of the numerical parameter. In the instant case the numerical parameter (the percentage of metal value comprising copper recovered) does not appear to be critical to the invention.
Thus, the disclosure of Lyons in view of Kittelty and Schlitt is held to establish a prima facie case of obviousness of a method as presently claimed.
Response to Arguments
Applicant's arguments filed 06/01/2026 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that Lyons in view of Kittelty does not teach reuse of the silver-containing raffinate in the leaching process as opposed to in the preceding agglomeration process (see pg. 10-12 of remarks), the Examiner respectfully disagrees.
While as Applicant notes, Lyons does not teach the use (or reuse) of silver-containing raffinate), Lyons does teach the raffinate 112/144 is returned to the leaching step 120. Kittelty was then applied to teach adding silver agent to the heap of Lyons during the agglomeration step at the beginning of leaching. While Lyons does not teach a retained concentration of silver agent, the Examiner’s assertation that silver would be found in the raffinate stream of Lyons in view of Kittelty is that because Lyons in view of Kittelty teaches a leaching solution comprising raffinate, citric acid, and hydrogen peroxide (Lyons: [0010, 0013]) and silver (Kittelty: [0129]), which is subjected to a leaching process (Lyons: Abstract, [0010]) and a metal recovery process (Lyons: [0010]); which are the same features recited in the instant claims and in the instant specification, where the only disclosure regarding retention of silver in the raffinate is “due to the retention effect citric acid has on silver ions, the raffinate 112 may comprise a retained concentration of the silver agent after leaching process 120 and metal recovery process 130” (instant specification: [0040]), the composition of Lyons in view of Kittelty is the same as that of the instant claims and subjected to the same steps that retain silver.
Therefore, by adding silver in the agglomeration step according to Kittelty to the leaching process of Lyons, silver would also be present downstream of the leaching in the raffinate. As Lyons teaches the returning of raffinate (which would now contain silver) to the leaching step, Lyons in view of Kittelty teaches reusing the raffinate comprising the retained concentration of the silver agent in the leaching process as a component of leaching solution as claimed.
Regarding Applicant’s argument that the Office Action’s conclusions are based on impermissible hindsight (see pg. 12-13 of remarks), the Examiner respectfully disagrees.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In the instant case, the modification to Lyons in view of Kittelty is to have added silver to copper-containing ore during agglomeration as taught by Kittelty to the copper ore during the agglomeration step of Lyons, as doing so would improve the leaching of the copper as taught by Kittelty. Therefore, the feature of reuse of silver-containing raffinate in the leaching process itself is not taught on the basis of obviousness, but rather is an intrinsic result of the obvious modification to add silver in the agglomerating step according to Kittelty, in the process of Lyons which already teaches reuse of raffinate in the leaching process, as the presence of silver in the raffinate under such conditions is evidenced by the instant specification.
Regarding Applicant’s argument that the proposed modifications to Kittelty would render Kittelty unsatisfactory for its intended purpose (see pg. 13 of remarks), the Examiner respectfully disagrees.
As noted above, it is the Examiner’s position that Lyons be taken in view of Kittelty to add silver to the agglomeration unit, therefore the proposed modifications are in line with the intended purpose of Kittelty. Instead, the Examiner further notes that by adding silver in the agglomeration step, based on the instant specification and Lyons existing teaching of returning raffinate to the leaching step, raffinate comprising a retained concentration of silver agent would be returned to the leaching process. The instant claims do not e.g., prohibit silver from being added in the agglomerating step.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nikolas T Pullen whose telephone number is (571)272-1995. The examiner can normally be reached Monday - Thursday: 10:00 AM - 6:00 PM EST.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
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