DETAILED ACTION
Status of Claims:
Claims 26-31 are pending.
Claims 26-31 are new.
Claims 1-25 are canceled.
This Action is Made Final.
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 .
Response to Arguments
Applicant's arguments filed 8/28/2026 have been fully considered but they are not persuasive. The applicant argues that Shalon does not teach a stepped structure as claimed because Shalone teaches central portion 14 which has a decreasing cross-sectional area. Although the applicant is correct that Shalone teaches a portion with a decreasing cross sectional area, this limitation is not excluded from the claims. Figure 4 of the instant application is identified by the applicant as representing the currently claimed limitations and shows portions with decreasing cross sectional areas in addition to the sections with constant cross sectional area. Shalone does not explicitly teach a third section, however Shalone teaches that the column is modular, additional column sections can been added (see col. 4 lines 51-54), and that the possible internal diameters of the column sections include more than three alternatives (see col. 12 lines 45-50).
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) 26-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shalone et al (USPN 4,719,011).
Regarding Claim 26:
Shalone teaches the separation column for separating the substances in a mixture, the separation column comprising: a column comprising a first section (wider column section A) and a third section (narrower column section B) arranged in a stepped structure, wherein the first section is an inlet section and has a first constant cross- sectional area, the third section being an outlet section and having a second constant cross-sectional area, wherein the first section is charged with the mixture to be separated, the third section adapted to separate the mixture, wherein the constant cross-sectional areas decrease from the first section to the third section in a stepwise manner (see col. 8 lines 24-29, fig. 27).
Shalone does not explicitly teach a second section, the second section being positioned between the first section and the third section and having a constant cross-sectional area that is less than the constant cross-sectional area the first section and greater than the constant cross-sectional area of the third section.
Shalone further teaches the column is modular, additional column sections can been added (see col. 4 lines 51-54), and that the possible internal diameters of the column sections include more than three alternatives (see col. 12 lines 45-50). Therefore, it would have been obvious to one skilled in the art to add an additional second section with a constant cross sectional area less than the first section and greater than the third section because it is the simple addition of a known module, obviously resulting in a longer column with an expectation of success. The combination of familiar elements is likely to be obvious when it does no
more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S.
__,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Regarding Claim 27-30:
Shalone teaches the separation column of claim 26, wherein said column is adapted to separate rare earth elements, radioactive substances, lutetium and ytterbium, or ytterbium 176 and lutetium 177. Shalone does not explicitly refer to rare earth elements, radioactive substances, lutetium and ytterbium, or ytterbium 176 and lutetium 177, however the structure of the column of Shalone is substantially identical to the structure of the column claimed. The material the column is adapted to separate is a function of the column, not a structural feature, therefore it is presumed to be inherent that the column of Shalone is adapted to separate rare earth elements, radioactive substances, lutetium and ytterbium, or ytterbium 176 and lutetium 177. Regarding product and apparatus claims, when the structure recited in the
reference is substantially identical to that of the claims, claimed properties or functions
are presumed to be inherent. The Courts have held that it is well settled that where there
is a reason to believe that a functional characteristic would be inherent in the prior art, the
burden of proof then shifts to the applicant to provide objective evidence to the contrary.
See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed.
Cir. 1997) (see MPEP § 2112.01, I.).
Regarding Claim 31:
Shalone teaches the separation column of claim 26, wherein column is resistant to a pressure created by an acid passing through said column at a pressure of between 3 bar and 25 bar (150 psi) (see col. 3 lines 4-6).
Alternately Claim(s) 27-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shalone et al (USPN 4,719,011) as applied to claim 26 above, and further in view of Sutterlin (US 2021/0172042).
Regarding Claims 27-30:
Shalone teaches the separation column of claim 26.
Shalone does not explicitly teach the column is adapted to separate rare earth elements, radioactive substances, lutetium and ytterbium, or ytterbium 176 and lutetium 177. Shalone further teaches that chromatography is used to separate components of a mixture (see col. 1 lines 23-25) and that different columns can be arranged to achieve the desired results (see col. 3 lines 14-23).
Sutterlin teaches a chromatography column for the separation of rare earth elements (see para. 0005), radioactive substances (see para. 0003, 0022), and ytterbium and lutetium (see para. 0022). Sutterlin does not explicitly refer to the ytterbium 176 isotope and the lutetium 177 isotope, however through routine experimentation one skilled in the art would have found it obvious to use chromatography to separate any desirable materials. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Shalone and Sutterlin are analogous inventions in the art of chromatographic separation. It would have been obvious to one skilled in the art to adapt the column of Shalone to separate rare earth elements, radioactive substances, lutetium and ytterbium, or ytterbium 176 and lutetium 177 as disclosed by Sutterlin one skilled in the art would have found it obvious to use the known device to separate any desirable materials. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAIRE A NORRIS whose telephone number is (571)272-5133. The examiner can normally be reached M-Th 7:30-5 F: 8-12.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ramdhanie Bobby 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.
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/CLAIRE A NORRIS/Primary Examiner, Art Unit 1779 10/05/2026
