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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-15, drawn to a method, classified in C22B 59/00.
II. Claims 16-20, drawn to a system, classified in B01J 20/20.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the system as claimed can be used to practice another and materially different process.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The system as claimed can be used for CO2 capture.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Austen Paulsen on 27 August 2026 a provisional election was made without traverse to prosecute the invention of I, claims 1-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 16-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Drawings
The drawings were received on 05/28/2024. These drawings are accepted.
Status of Claims
Claims 1-20 are as originally filed.
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 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 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Atkins et al (US 2022/0010462 A1) in view of Honaker et al in Minerals Engineering.
Atkins et al teaches a method for processing coal as represented below in the drawing:
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Mineral matter and heavy metals are included in pre-filtered raw coal and are mechanically or chemically filtered in 108 for removal from the liquid pitch resin [0031]. However, Atkins et al does not recite the mineral matter or heavy metals is a rare earth element as claimed.
Honaker et al teaches rare earth elements exist in various coal sources worldwide (page 233). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the heavy metals filtered in Atkins et al would include Honaker et al, since Honaker et al teaches recovering rare earth metals as critical (page 233).
Regarding Claim 2, Honaker et al teaches neodymium, dysprosium, ytterbium, terbium, europium (page 233) cerium, lanthanum, praseodymium, scandium, terbium, samarium, promethium, gadolinium, holmium, lutetium, thulium, and erbium (page 235).
Regarding Claim 3, Atkins et al teaches the pitch or pitch resin can include an isotropic pitch [0007].
Regarding Claim 4, Atkins et al teaches removing water with other impurities [0029]. Honaker et al teaches selectively precipitating rare earth elements (page 236).
Regarding Claim 6, Honaker et al teaches recovering light (Y, Nd, Eu, Tb, and Dy) and heavy (Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Lu, and Y) by selective precipitation (pages 236 and 238).
Allowable Subject Matter
Claims 10-15 are allowed.
Claims 5 and 7-9 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding Claim 5, neither Atkins et al nor Honaker et al suggest rehydrating pitch after removing water as claimed. Regarding Claims 7-9, Atkins et al does not suggest modifying the carbon fiber to bind or electrostatically interact with the rare earth element as claimed. Regarding Claims 10-15, Atkins et al does not suggest feeding pitch to an electrothermal swing apparatus as claimed. Atkins et al teaches mechanical or chemical filtration.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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, Keith D. Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/Tima M. McGuthry-Banks/Primary Examiner, Art Unit 1733
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