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 .
Specification
The disclosure is objected to because of the following informalities:
In order to ensure the correct naming is used, it is suggested to amend “G8351” to “G8315” on p. 3, in each of lines 9 and 10 of the substitute Specification filed 7/18/2024.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
In order to ensure proper antecedent basis, it is suggested to amend “the droplets” to “the small droplets” in claim 1, line 4.
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.
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 3 and 4 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 3 recites “mass percentage of the O,O-dihydroxyphosphorus hydroxamic acid is 20%”. However, it is unclear what 20% is based on, i.e., 20% of the extraction reagent, 20% of the emulsion liquid membrane, 20% of the primary emulsion, etc. The examiner could not find a disclosure in the specification that clarifies the percentage. For purposes of examination, the examiner interprets “mass percentage of the O,O-dihydroxyphosphorus hydroxamic acid is 20%” to mean “mass percentage of the O,O-dihydroxyphosphorus hydroxamic acid is 20% based on the weight of the extraction reagent”. Clarification is requested.
Regarding dependent claim 4, this claim does not remedy the deficiencies of parent claim 3 noted above, and is rejected for the same rationale.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kirgios et al. (US 5,326,441 A) (Kirgios).
Regarding claim 1, Kirgios teaches a process for separating and concentrating gallium from an aqueous solution containing gallium (Kirgios, Abstract) (i.e., a method of extracting and separating gallium by an emulsion liquid membrane), wherein the process comprises:
Preparation of a water-in-oil (w/o) emulsion comprising a solvent, preferably kerosene (i.e., extraction reagent), with a secondary amine and an acid-resistant oligomeric and non-ionic surfactant (i.e., surfactant), and hydrochloric acid (i.e., liquid matrix) (Kirgios, Col. 2, lines 33-50), wherein small droplets are formed after stirring as seen in Figure 1 of Kirgios (i.e., dispersing an extraction reagent into small droplets, suspending the droplets in a liquid matrix to obtain a primary emulsion, and to the primary emulsion adding a surfactant and stirring a resultant so as to obtain the emulsion liquid membrane);
Dispersing the w/o emulsion in the gallium-containing solution for the extraction (Kirgios, Col. 2, lines 36-45) (i.e., extraction, comprising mixing a gallium leaching solution with the emulsion liquid membrane, so as to obtain gallium extractant complexes); and
Separating the w/o emulsion from the solution, from which gallium has been removed, and then removing the freed, gallium-rich aqueous phase and regenerating the organic phase (i.e., demulsifying) (Kirgios, Col. 2, lines 52-60) (i.e., deextraction, comprising separating the gallium extractant complexes to obtain an oil phase and a water phase, and demulsifying the oil phase and releasing a concentrated gallium ion water phase solution).
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.
Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kirgios, as applied to claim 1 above.
Regarding claim 5, Kirgios teaches the method of extracting and separating gallium by an emulsion liquid membrane according to claim 1, wherein the volume of gallium-containing aqueous solution to w/o emulsion effects the diameter of the emulsion droplets.
Although there are no disclosures on the volume ratio of the gallium leaching solution to the emulsion liquid membrane is (3-7):1 as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("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 percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the volume ratio, including over the amounts presently claimed, in order to achieve the emulsion droplet diameter size desired.
Regarding claim 7, Kirgios teaches the method of extracting and separating gallium by an emulsion liquid membrane according to claim 1, wherein sorbitan monooleate (Span 80) is taught to be a surfactant (Kirgios, Col. 4, line 58).
Given that Kirgios discloses the method that overlaps the presently claimed method of extracting and separating gallium by an emulsion liquid membrane, including sorbitan monooleate as the surfactant, it therefore would be obvious to one of ordinary skill in the art, to use the sorbitan monooleate, which is both disclosed by Kirgios and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Kirgios, as applied to claim 1 above, and further in view of Wu et al. (CN 114058881 A) (Pan) and Ahmed et al. (“Extraction and separation of Ga(III) from hydrochloric acid solution by Cyanex-921 in sulfonated kerosene”, 2018) (Ahmed).
The Examiner has provided a machine translation of CN 114058881 A. The citation of the prior art in this rejection refers to the machine translation.
Regarding claim 2, Kirgios teaches the method of extracting and separating gallium by an emulsion liquid membrane according to claim 1, wherein Kirgios teaches a solvent, preferably kerosene (Kirgios, Col. 2, lines 45-50).
However, Kirgios does not explicitly teach (a) wherein the extraction reagent comprises O,O-dihydroxyphosphorus hydroxamic acid with a molecular formula of (RO)2P(O)NHOH, where R is hydrocarbyl with a carbon chain length of 4~20 carbons, and the hydrocarbyl is a saturated alkyl, or alkylene containing an unsaturated bond or aryl containing a benzene ring; or (b) wherein the kerosene is sulfonated kerosene.
With respect to the difference (a), Wu teaches a method of extracting gallium using an extracting agent including G8315 (Wu, p. 2, Paragraph 3), which is taught as an extraction agent in the instant application (Specification, p. 3, Paragraph 2).
As Wu expressly teaches, G8315 has a low water solubility and a high extraction rate (Wu, p. 2, Paragraph 3).
Wu is analogous art as it is drawn to the extraction of gallium from solutions (Wu, Abstract).
In light of the motivation of using G3815 as the extracting agent as disclosed by Wu, it therefore would have been obvious to one of ordinary skill in the art to modify the extracting agent of Kirgios by using G8315 in order to have an extracting agent with low water solubility and a high extraction rate, and thereby arrive at the claimed invention.
With respect to the difference (b), Ahmed teaches solvent extraction of gallium in hydrochloric acid solution using sulfonated kerosene (Ahmed, Abstract).
As Ahmed expressly teaches, the sulfonation of kerosene was found to enhance the separation of gallium from the interfering ions and was examined using IR spectroscopy (Ahmed, Abstract).
Ahmed is analogous art as it is drawn to the extraction of gallium (Ahmed, Abstract).
In light of the motivation of using sulfonated kerosene as the diluent as disclosed by Ahmed, it therefore would have been obvious to one of ordinary skill in the art to modify the kerosene of Kirgios by sulfonating the kerosene in order to enhance the separation of gallium from the interfering ions, and thereby arrive at the claimed invention.
Regarding claims 3 and 4, Kirgios, in view of Wu and Ahmed, teaches the method of extracting and separating gallium by an emulsion liquid membrane according to claim 2, wherein although there are no disclosures on the mass percentage of the O,O-dihydroxyphosphorus hydroxamic acid being 20% and the mass percentage concentration of the O,O-dihydroxyphosphorus hydroxamic acid in the diluent being 3.5-8% as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("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 percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the amounts of G8315, including over the amounts presently claimed, in order to achieve the highest extraction rate of gallium.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kirgios, as applied to claim 1 above, and further in view of Rao et al. (“Selective extraction of zinc, gallium, and germanium from zinc refinery residue using two stage acid and alkaline leaching”, 2019) (Rao).
Regarding claim 6, Kirgios teaches the method of extracting and separating gallium by an emulsion liquid membrane according to claim 1, but does not explicitly teach wherein the liquid matrix is H2SO4 and concentration of the H2SO4 is 2.0-5.0 mol/L.
With respect to the difference, Rao teaches selectively leaching gallium using 2 mol/L H2SO4 (Rao, Abstract).
As Rao expressly teaches, approximately 100% of the Ga content was extracted using 2 mol/L H2SO4 (Rao, Abstract).
Rao is analogous art as it is drawn to the extraction of Ga from solutions (Rao, Abstract).
In light of the motivation of using 2 mol/L H2SO4 as disclosed by Rao, it therefore would have been obvious to one of ordinary skill in the art to modify the method of Kirgios by using 2 mol/L H2SO4 in place of HCl in order to extract approximately 100% of the Ga content, and thereby arrive at the claimed invention.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kirgios, as applied to claim 1, and further in view of Perrin et al. (“Review of High-Frequency Ultrasounds Emulsification Methods and Oil/Water Interfacial Organization in Absence of any Kind of Stabilizer”, 2022) (Perrin).
Regarding claims 8-10, Kirgios teaches the method of extracting and separating gallium by an emulsion liquid membrane according to claim 1, wherein droplets are formed in the w/o emulsion (Kirgios, Fig. 1) (i.e., extraction reagent is dispersed into the small droplets), and wherein the phases were thoroughly mixed by a stirrer (Kirgios, Col. 5, lines 48-51) (i.e., after the surfactant is added to the primary emulsion, a mechanical stirrer is used to stir to obtain the emulsion liquid membrane).
Although there are no disclosures on the stirring duration being 10-30 minutes and a stirring speed being 300-500 rpm as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("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 percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the stirring time and speed, including over the amounts presently claimed, in order to form the w/o emulsion with the desired droplet sizes and the phases of the w/o emulsion were thoroughly mixed, i.e., the drops with the desired sizes are thoroughly (i.e., uniformly) dispersed in the w/o emulsion.
However, Kirgios does not explicitly teach (a) an ultrasonic generator is used to disperse the extraction reagent into the small droplets; or (b) an ultrasonic duration is 0.5-5 min.
With respect to the differences (a) and (b), Perrin teaches high-frequency ultrasounds emulsification methods (Perrin, Abstract). Perrin teaches the ultrasonic treatment time is between 1 minute and 15 minutes (Perrin, Table 1), which overlaps with the ranges of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As Perrin expressly teaches, using high-frequency ultrasounds can formulate and stabilize emulsifier-free emulsions (Perrin, Abstract).
Perrin is analogous art as it is drawn to emulsions (Perrin, Abstract).
In light of the motivation of using a high-frequency ultrasound as disclosed by Perrin, it therefore would have been obvious to one of ordinary skill in the art to modify the method of forming the emulsion of Kirgios by using a high-frequency ultrasound in order to formulate and stabilize emulsifier free emulsions, and thereby arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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