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 .
Claim Status
Claims 1-20 are pending.
Drawings
The drawings are objected to because Fig. 5 is blurry and all text is unreadable. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 4-10 and 12-20 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.
With respect to claim 4, the limitations “a make-up stream of Na2SO4” and “a Na2SO4 liquor recycle stream” render the claim indefinite, as it is unclear to the Examiner how these streams relate to the method of claim 1, which does not recite anything about Na2SO4 or how make-up/recycle streams comprising Na2SO4 are involved with the process steps of claim 1. For the purposes of examination, the Examiner will interpret claim 4 as being met by concentrating a stream of Na2SO4.
With respect to claim 10, the limitations “stoichiometric solution” render the claim indefinite, as it is unclear what the Na2S is stoichiometric in relation to; clarification is respectfully requested.
Regarding claims 5-9 and 12-20, they are rejected for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Versteeg et al. (WO # 2017/105245), hereinafter “Versteeg”.
With respect to claim 1, Versteeg teaches a bubble column reactor (paragraph spanning Pages 14-15) with associated valves and pumps (“configured for variable flow rate”) with mixing (last paragraph on Page 11), in which copper (“metal”) is extracted from an aqueous solution of copper sulfate with flowing hydrogen gaseous hydrogen sulfide under conditions to achieve extraction of copper metal from aqueous solution as copper sulfide precipitate (see paragraph spanning Pages 14-15 and first full paragraph of Page 15; Fig. 1).
With respect to claim 11, Versteeg teaches heat exchange (“heat recovery via interchanger”) (see paragraph spanning Pages 17-18).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Versteeg et al. (WO # 2017/105245), hereinafter “Versteeg”.
With respect to claim 2, Versteeg teaches the recited bubble column reactor, but is silent with respect to the recited flow rate. There is no evidence indicating such flow rates are critical. 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Versteeg et al. (WO # 2017/105245) in view of JP 5502765 A1 (cited on U.S. Patent # 11,987,510, which issued from parent Application 17/302,101), hereinafter “Versteeg” and “JP (‘765)”.
With respect to claim 3, Versteeg does not specifically teach that the hydrogen sulfide is electrochemically produced.
JP (‘765) teaches electrochemical production of hydrogen sulfide (Abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the generation of hydrogen sulfide disclosed in Versteeg with electrochemical production as taught by JP (‘765) because electrochemical production of hydrogen sulfide would have been recognized as a conventional.
Claims 1, 2, 4-6, and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Jalbout et al. (U.S. Patent Publication # 2019/0010049 A1) in view of Versteeg et al. (WO # 2017/105245), hereinafter “Jalbout” and “Versteeg”.
With respect to claim 1, Jalbout teaches generating hydrogen sulfide and flowing gaseous hydrogen sulfide from an outlet port of a pressure reactor to a glass reactor comprising copper sulfate solution, reacting the hydrogen sulfide with a copper sulfate solution (“liquid stream”) to form copper sulfide with the aid of agitation or stirring, thereby extracting copper (“at least one metal”) from the solution (“liquid stream”) (Paragraphs [0029-0031]), considered to be consistent with “conditions sufficient to extract the at least one metal”.
Jalbout does not specifically label the glass reactor as a “bubble column reactor”.
Versteeg teaches a bubble column reactor (paragraph spanning Pages 14-15).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the glass reactor of Jalbout with the bubble column reactor of Versteeg because Jalbout teaches that the glass reactor allows the gaseous hydrogen sulfide to reactor with a metal-containing solution to form a copper sulfide precipitate (Paragraphs [0029-0031]), and because Versteeg teaches that the bubble column reactor allows for reaction of metal solutions comprising copper to react with hydrogen sulfide to form copper sulfide precipitates (paragraph spanning Pages 14-15). As such, the ordinary artisan would have recognized that the bubble column reactor allows for the same reaction to take place, and that bubble column reactors were conventionally known at the time of filing for the same purpose, with implements to control, manipulate, and optimize flow rate/mixing within the system which includes pumps, and valves and mixing devices (see Versteeg, last paragraph on Page 11; paragraph spanning Pages 14-15 and first full paragraph of Page 15; Fig. 1).
With respect to claim 2, Jalbout in view of Versteeg renders obvious the recited bubble column reactor, but is silent with respect to the recited flow rate. There is no evidence indicating such flow rates are critical. 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
With respect to claims 4 and 5, Jalbout in view of Versteeg teaches generation of sodium sulfate (Na2SO4) with hydrogen sulfide production (see Jalbout: Paragraphs [0020, 0022]), wherein the sodium sulfate byproduct can be dried to remove excess water (see Jalbout: Paragraph [0032]), wherein the drying of Na2SO4 effectively concentrates it and extracts water.
With respect to claims 6 and 9, Jalbout also teaches that the Na2SO4 is converted to sodium sulfide with by-product CO2 (see Paragraph [0036]), to be used as the sodium salt in hydrogen sulfide generation (see Paragraph [0025]). It would have been obvious to the ordinary artisan to look to the other embodiments within Jalbout to determine other purposes of the generated Na2SO4 that would be sold or disposed of (see Paragraph [0034]), especially since Jalbout teaches that sodium sulfide can be used as the sodium salt. Jalbout does not specifically teach a pump to transfer the Na2SO4; however, does teach the use of pumps to move the converted sodium sulfide to the reaction vessel (Paragraph [0036]). It would have been obvious to use a pump within the bleed stream which removes a stream of Na2SO4 for conversion to sodium sulfide if the Na2SO4 is in a concentrated form, as taught in Paragraph [0034]).
With respect to claim 8, Jalbout does not teach that the converter operates at the recited temperature; however, it has been held that differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of ranges is the optimum combination of values (MPEP 2144.05.II.A.).
With respect to claims 10 and 12-16, Jalbout in view of Versteeg teaches that the sodium sulfide is directed to a vessel (“prep”) with agitation with stoichiometric amounts of elemental sulfur pumped out of a sulfur source and water to form hydrogen sulfide (see Paragraphs [0025, 0026, 0035, 0038]), wherein the reaction is heated (“flows through a heater”) at a temperature up to 300°C at a pressure ranging from 500 psi to 1500 psi (equivalent to 34.5 to 103.4 bar) (see Paragraph [0026]), which overlap the recited temperature and pressure ranges in claim 16. Blending of elemental sulfur streams would have been obvious to the ordinary artisan, in order to optimize this reagent used in hydrogen sulfide generation, especially in view of the combination of streams leaving 560 and 590 in Fig. 5 to feed sulfur source 520 (see Paragraph [0038]).
With respect to claim 11, Jalbout in view of Versteeg teaches heat exchangers (“interchanger device”) (see Jalbout: Paragraphs [0034, 0036]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Jalbout et al. (U.S. Patent Publication # 2019/0010049 A1) in view of Versteeg et al. (WO # 2017/105245) as applied to claim 1, and further in view of JP 5502765 A1 (cited on U.S. Patent # 11,987,510, which issued from parent Application 17/302,101), hereinafter “Jalbout”, “Versteeg”, and “JP (‘765)”.
With respect to claim 3, Jalbout in view of Versteeg does not specifically teach that the hydrogen sulfide is electrochemically produced.
JP (‘765) teaches electrochemical production of hydrogen sulfide (Abstract).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the generation of hydrogen sulfide disclosed in Jalbout with electrochemical production as taught by JP (‘765) because electrochemical production of hydrogen sulfide would have been recognized as a conventional.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jalbout et al. (U.S. Patent Publication # 2019/0010049 A1) in view of Versteeg et al. (WO # 2017/105245) as applied to claim 9, and further in view of Seo et al. (U.S. Patent Publication # 2017/0173555), hereinafter “Jalbout”, “Versteeg”, and “Seo”.
With respect to claims 19 and 20, Jalbout in view of Versteeg does not specifically teach that the CO2 is captured by a geopolymer-based material.
Seo teaches a geopolymeric composition used to sequester CO2 (Paragraphs [0009, 0041]).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the step of capturing CO2 with geopolymer as taught by Seo to the method of Jalbout in view of Versteeg in order to avoid releasing CO2 to the atmosphere, which has a harmful impact (Paragraph [0003] of Seo). The Examiner submits that the geopolymer is “activated” as claimed.
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 1-22 of U.S. Patent No. 11,987,510 in view of Versteeg. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of instant claim 1 encompasses the scope of claim 1 of Patent (‘510).
With respect to instant claim 1, claim 2 of Patent (‘510) teaches a method to extract metals in a liquid stream containing at least one metal, comprising the steps of: flowing gaseous hydrogen sulfide (H.sub.2S) into a bubble column reactor containing the liquid stream; wherein the gaseous hydrogen sulfide and the liquid stream are mixed under conditions sufficient to extract the at least one metal.
The claims of Patent (‘510) do not specifically teach that the bubble column reactor is configured to provide a variable flow rate.
Versteeg teaches that the bubble column reactor has associated pumps and valves (see paragraph spanning Pages 14-15 and first full paragraph of claim 15; Fig. 1), considered to be consistent with “configured to provide a variable flow rate”.
It would have been obvious to add the pumps and valves of the bubble column reactor of Versteeg to the bubble column of claim 2 of Patent (‘510), in order to control the flow of reagents and products within the reactor.
Allowable Subject Matter
Claims 7, 17, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable pending resolution of the 112(b) and Double Patenting rejections set forth above, and if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Jalbout teaches away from using natural gas as a reagent (see Paragraphs [0007, 0027]), and none of the prior art teaches or suggests generation of hydrogen sulfide in a “cascade mode” as required by claim 17, from which claim 18 depends.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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, Bob Ramdhanie can be reached at (571) 270-3240. 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.
/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/ Primary Examiner, Art Unit 1779 05 June 2026
Prosecution Insights