DETAILED ACTION
Claims 1-19 are pending, and claims 1-17 are currently under review.
Claims 18-19 are withdrawn.
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 election without traverse of group I in the reply filed on 8/04/2026 is acknowledged.
Claims 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/04/2026.
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.
Claim 3 is 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 3 recites the limitation "the initial solution" in line 1. There is insufficient antecedent basis for this limitation in the claim. It is unclear as to what solution is considered to be “the initial solution” and claim 3 and previous claim 1 do not recite any instances of an “initial solution”. The examiner interprets the aforementioned term to refer to the “initial solution” of claim 2, which does positively recite an instance of “an initial solution comprising metal ions”.
Claim 4 is 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 4 recites that the aqueous metal-chelator solution is evaporated, which is indefinite because evaporation requires conversion of the aqueous solution to a vapor, which is not a solution (ie. liquid mixture). Therefore, it is unclear as to how the claim scope is being narrowed.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 4 recites a step of evaporating the solution of claim 1. However, claim 1 requires an aqueous solution, which one of ordinary skill would understand to naturally include a liquid (ie. water) and therefore claim 4 fails to further limit the scope of independent claim 1 because the scope of claim 4 (evaporation) is contrary to the scope of claim 1 (aqueous solution in liquid form). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-2 and 4-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Hara (US 2021/0024365).
Regarding claims 1, 4, and 6-13, O’Hara discloses a method wherein HCl acid is added to a Ra/EDTA product solution (ie. aqueous ethylenediaminetetraacetic acid metal-chelator solution with metal ions already priorly bound to EDTA) to achieve separation (ie. dissociation) of the EDTA and radium by precipitating out the EDTA (ie. precipitation and removal) and leaving the Ra in a supernate solution [0051, 0056]. O’Hara further teaches that the solution includes 224-Ra isotope and adding acid drops the pH from 6 to below 2, which meets the claimed ranges.
Regarding claim 2, O’Hara discloses the method of claim 1 (see previous). O’Hara further teaches an initial step of providing a solution mixture of Ra (ie. metal ion) among other heavy metals, contacting said solution mixture with a media such as a silica support (ie. solid substrate) to collect said Ra ions, and then contacting the media having Ra adsorbed thereon with a solution of EDTA to form a Ra/EDTA solution [0014, 0051-0056, claim3].
Regarding claim 5, O’Hara discloses the method of claim 1 (see previous). O’Hara further teaches using a 0.05 M EDTA solution for elution of Ra, wherein one of ordinary skill would recognize that Ra elution is a 1:1 ratio such that a resulting Ra/EDTA solution will have a metal-chelator concentration of 0.05 M, which falls within the claimed range [0043, table2].
Regarding claims 14-16, O’Hara discloses the method of claim 1 (see previous). O’Hara further teaches separating (ie. recovering) Ra from the aforementioned mixture and using the 224-Ra to produce 212-Pb or 212-Bi for medical applications [abstract, 0004].
Regarding claim 17, O’Hara discloses the method of claim 1 (see previous). O’Hara does not expressly teach any EDTA in the Ra supernate solution, which one of ordinary skill would understand to mean that no EDTA (ie. 0%) is present, which meets the claimed range. Furthermore, O’Hara discloses an embodiment wherein Ra is completely dissociated from EDTA which is then removed, which one of ordinary skill would understand to mean that no leftover EDTA is present [0112, 0117].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Hara (US 2021/0024365).
Regarding claims 15-16, O’Hara discloses the method of claim 1 (see previous). O’Hara does not expressly teach that the exemplary radium is further used as claimed. However, as stated above, O’Hara discloses that it is well known (ie. background section) to utilize recovered Ra to produce 212-Pb or 212-Bi for medical applications [abstract, 0004].
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Hara (US 2021/0024365) in view of Nirdosh et al. (US 4,654,200).
Regarding claim 3, O’Hara discloses the method of claim 1 (see previous). O’Hara does not expressly teach a concentration of metal ions as claimed. Nirdosh discloses that it is known that uranium mill tailings include radium in concentrations of around 300 pCi up to 2000 pCi which are unsafe levels, which one of ordinary skill would recognize to overlap with the claimed range [col.1 ln.10-25]. See MPEP 2144.05(I). Therefore, it would have been obvious to one of ordinary skill to modify the method of O’Hara by utilizing an initial material having the claimed radium amount because Nirdosh discloses these concentrations to be unsafe such that said initial materials can be further purified through the method of O’Hara.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
Prosecution Insights