DETAILED ACTION
Claims 1-3, 5-7, 10-14, and 18 are pending and currently under review.
Claims 4, 8-9, and 15-17 are cancelled.
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 Amendment
The amendment filed 7/15/2026 has been entered. Claims 1-3, 5-7, 10-14, and 18 remain(s) pending in the application.
Election/Restrictions
Applicant’s election without traverse of group I in the reply filed on 7/15/2026 is acknowledged.
The examiner notes that all nonelected claims have been cancelled or amended in the amendment filed 7/15/2026.
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) 1-3, 7, 10, 12, 14, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wynnyckyj (US 4,518,425) in view of Kibby (US 4,204,860).
Regarding claim 1, Wynnyckyj discloses a method of forming magnesium metal through silicothermic reduction of magnesium bearing ore material [abstract, col.2 ln.14-25]; wherein said method includes the steps of:
providing said magnesium bearing ore and silicon as a reducing agent to a furnace at a reaction temperature of 1050 to 1350 degrees C [col.2 ln.14-49]
Discharging solid waste material from the reactor [col.2 ln.61-66]
Forming a gas stream of inert gas and magnesium vapor and passing said gas stream from the furnace to a liquid-cooled heat exchanger for condensation at up to about 660 degrees C [col.3 ln.1-60, col.4 ln.46-60, fig.1-3]
Removing the condensed, liquid magnesium [col.3 ln.60-64]
The examiner notes that the overlap between the method steps of Wynnyckyj and that as claimed is prima facie obvious. See MPEP 2144.05(I). Wynnyckyj further teaches that all of the aforementioned steps can be performed in a continuous manner as claimed [col.4 ln.30-38].
Wynnyckyj does not expressly teach that the reduction is a metallothermic reduction as claimed. However, the examiner submits that reduction of magnesium bearing ores with a metallic reducing agent is well-known and common and therefore would have been obvious to one of ordinary skill in the art. For example, Kibby discloses that metallothermic reduction of magnesium oxides with metallic aluminum is well-known because Al is an effective reducing agent for magnesium oxide [col.1 ln.13-25]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Wynnyckyj by utilizing Al as a reducing agent instead of Si because Al is known to be an effective reducing agent for magnesium oxides as taught by Kibby.
Regarding claims 2-3, the aforementioned prior art discloses the method of claim 1 (see previous). As stated above, Wynnyckyj discloses a reactor temperature of 1050 to 1350 degrees C, which overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claim 7, the aforementioned prior art discloses the method of claim 1 (see previous). As stated above, Kibby teaches that the reducing agent is metallic Al.
Regarding claim 10, the aforementioned prior art discloses the method of claim 1 (see previous). Wynnyckyj further teaches that the magnesium bearing ore is calcined dolomite [col.2 ln.15-20].
Regarding claim 12, the aforementioned prior art discloses the method of claim 1 (see previous). Wynnyckyj never teaches exposure to ambient air and further depicts that the magnesium vapor and liquid are always contained within the inert gas and sealed apparatus, such that one of ordinary skill would understand the entire method of Wynnyckyj to be performed without exposure to ambient air [fig.1-3].
Regarding claim 14, the aforementioned prior art discloses the method of claim 1 (see previous). As stated above, Wynnyckyj teaches discharging the magnesium vapor from the furnace to the heat exchanger within an inert gas of argon [abstract].
Regarding claim 18, the aforementioned prior art discloses the method of claim 1 (see previous). Wynnyckyj further teaches a step of gas cleaning to remove entrained solid particles prior to passage of the magnesium vapor to the condensing heat exchanger [col.3 ln.42-48]. The examiner considers the gas cleaning step of Wynnyckyj to meet the limitation of filtering because both steps serve to separate (ie. filter) entrained solid particles from the gas stream.
Claim(s) 5-6 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wynnyckyj (US 4,518,425) and others as applied to claim 1 above, and further in view of Niu (CN104674016, machine translation referred to herein).
Regarding claims 5-6 and 13, the aforementioned prior art discloses the method of claim 1 (see previous). The aforementioned prior art does not expressly teach heat exchanger parameters or a pressure as claimed. Niu discloses a method of magnesium extraction through magnesium vapor condensation [0002]; wherein said condensation can include a primary condensation to obtain liquid magnesium, said primary condensation is performed at a temperature of 670 to 1000 degrees C and a pressure of 4601 Pa by utilizing already liquid magnesium (to be further evaporated and purified) to absorb heat and cool magnesium vapor for condensation [0061-0062, 0110, fig.3, 6]. The method of Niu advantageously utilizes heat from magnesium vapor to evaporate and further refine already liquid magnesium [0089-0094]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by performing condensation as taught by Niu as an advantageous way to utilize heat from magnesium vapor to evaporate and further refine already liquid magnesium as explained above. The examiner notes that the aforementioned parameters of Niu overlap with those as claimed. Niu further teaches that the primary condensation utilizes already liquid magnesium (ie. a cooling fluid) located in an evaporator structure (101, 102) within the apparatus, which can be considered as a cooling tube within a shell and therefore meets the limitation of a tube/shell heat exchanger as claimed.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wynnyckyj (US 4,518,425) and others as applied to claim 1 above, and further in view of Abd et al. (2018, Performance analysis of shell and tube heat exchanger: parametric study).
Regarding claim 6, , the aforementioned prior art discloses the method of claim 1 (see previous). The aforementioned prior art does not expressly teach a tube/shell heat exchanger as claimed. Abd et al. discloses that shell and tube heat exchangers are widely used and easy to manufacture [p.1]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by utilizing a shell and tube heat exchanger because it is widely used and easy to manufacture as taught by Abd et al.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wynnyckyj (US 4,518,425) and others as applied to claim 1 above, and further in view of Oesterr (GB412664).
Regarding claim 11, the aforementioned prior art discloses the method of claim 1 (see previous). The aforementioned prior art does not expressly teach a moving bed and continuous removal of residue as claimed. Oesterr discloses a process of continuous distillation of magnesium [title]; wherein feedstock material is continuously fed through a reaction chamber (ie. moving bed) for distillation and into a collector by means of a worm device (9) for conveyance, which one of ordinary skill would recognize to be an auger [p.2 ln.1-10, fig.1]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by affecting continuous treatment of the magnesium material and resulting residue by means of a worm/auger for conveyance as taught by Oesterr.
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.
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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.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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