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
Applicant’s claim for the benefit of a prior-filed application (CON of 18/243,589, filed 07 September 2023; which is a CON of 18/110,834, filed 16 February 2023; which has PRO 63/329,208, filed 08 April 2022, and PRO 63/324,379, filed 28 March 2022) under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. The current title: “COLLOCATING A LARGE-SCALE DISSOCIATING REACTOR NEAR A GEOTHERMAL ENERGY SOURCE FOR GREEN REFINEMENT OF CRITICAL MINERALS FROM BRINES” does not mention any separation membrane.
The use of the term “Jeffamine D-230” in p00193, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Objections
Claim 5 is objected to because of the following informalities:
The acronyms are incorrect and should be corrected to “NASICON” and “LISICON”; and
Please include the full definition for the acronyms “NASICON” and “LISICON”.
Claim 6 is objected to because of the following informalities:
The acronym is incorrect and should be corrected to “LISICON”.
Claim 17 is objected to because of the following informalities:
Based on context from p00193 of the Specification, it is presumed that Applicant intended to reference Claim 16 instead of Claim 6; and
“wherein the layers of the separation membrane are joined with an adhesive…”
Claim 18 is objected to because of the following informalities:
Based on context from p00193 of the Specification, it is presumed that Applicant intended to reference Claim 17 instead of Claim 7.
Claim 19 is objected to because of the following informalities:
Based on context from p00193 of the Specification, it is presumed that Applicant intended to reference Claim 18 instead of Claim 8.
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.
Claims 18 and 19 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.
Regarding Claim 18, there is a lack of antecedent basis for “the adhesive”. The Examiner will assume Applicant intended to claim dependence from Claim 17 instead of Claim 7. Presumably, Claim 19 is also rejected due to its dependence on Claim 18.
Regarding Claim 19, the claim contains the trademark/trade name “Jeffamine”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a polyetheramine and, accordingly, the identification/description is indefinite.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-20 of U.S. Patent No. 12,221,670.
Regarding Claim 1, the instantly recited Claim 1 is nearly identical to Claim 1 of ‘670 and is wholly anticipated by Claim 1 of ‘670. The only difference between the instantly recited Claim 1 and Claim 1 of ‘670 is the breadth of the limitations with respect to “a dissociating reactor”, i.e., instant Claim 1 broadly requires “a dissociating reactor fluidically coupled to the separation membrane” whereas Claim 1 of ‘670 further requires additional limitations to the “dissociating reactor”. The remaining limitations of instant Claim 1 directed to the “separation membrane” is wholly identical to the limitations of Claim 1 of ‘670 directed to the “separation membrane”.
Regarding Claims 2-20, the instantly recited Claims 2-20 are wholly identical to the instant limitations of Claims 2-20 of ‘670.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
BURBA (US 11,229,880): discloses apparatuses for extracting critical metals, e.g., alkali and alkaline metals, especially lithium, utilizing a series of extraction columns, purification membranes, and concentration membranes. The apparatuses further rely on size exclusion material to isolate the desired metal; however, the disclosure fails to teach or make obvious the separation membrane and the downstream dissociating reactor of Claim 1.
MCALISTER (US 2014/0219904 A1) discloses systems for refining one or more critical minerals using a dissociating reactor; however, MCALISTER fails to disclose a preprocessing or upstream unit prior to the dissociating reactor, much less a separation membrane.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN B HUANG whose telephone number is (571)270-0327. The examiner can normally be reached 9 am-5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at (571)272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan B Huang/Primary Examiner, Art Unit 1772
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