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 Objections
Claims 12 and 14 are objected to for the following informalities: for clarity, “calcination 1s carried” must be changed to “calcination is carried” in claim 12, and “ammoma” must be changed to “ammonia” in claim 14. 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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-15 are rejected under 35 U.S.C. 112(b)/2nd par. as 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. Claims 1 and 14-15 recite “high purity”, but do not recite what will qualify as, meet, or infringe “high purity”. The foregoing creates confusion as to the claimed scope and how to avoid infringement thereof (MPEP 2173.02), rendering claims 1 and 14-15 rejected as indefinite under 35 U.S.C. 112(b)/2nd par. Applicant is hereby advised that, as independent claim 1 and dependent claim 14 are rejected for deficiencies under 35 USC 112(b)/2nd par., all claims depending therefrom also contain such deficiencies and are likewise rejected (unless the deficiencies are resolved by the dependent claim’s own limitations) - cure thereof is required for any and all claims affected even if any such claim were otherwise found allowable. See, e.g., In re Jolly, 172 F.2d 566, 567 (CCPA 1949) (holding that dependent claims of indefinite claims are thusly indefinite), and Ex parte Kristensen, 10 USPQ2d 1701, 1702-04 (BPAI 1989) (same); 35 USC 112(d)/4th par.
Claims 5-6, 11, and 14 are rejected under 35 U.S.C. 112(d)/4th par. for failing to further limit the subject matter of the claim(s) from which they depend. Claim 5’s “may be…” indicates that the recitation that follows it is optional; claims 6, 11, and 14’s “optionally” renders the recitations that follows it explicitly optional. As such, to the extent that claims 5-6, 11, and 14 may be met or infringed without performing the optional steps, said claims do not further limit their base claim.
Claim 7 is rejected under 35 U.S.C. 112(d)/4th par. as being of improper dependent form for failing to include all the limitations of the claim upon which it depends. Claim 7 recites “wherein [AlCl3] obtained in step (a) is either gas or solid” and depends from claim 1, which recites “(a) sublimation of anhydrous [AlCl3]… to recover pure [AlCl3.]” Claim 1’s step (a) does not indicate deposition of sublimated AlCl3. MPEP 608.01(n)III states that “The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends[, according to 35 U.S.C. 112(d)/4th par.,] or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim..." See also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (stating that “A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid” under 35 U.S.C. 112(d)/4th par.). As claim 7 may be infringed without necessarily also infringing claim 1, i.e. by obtaining solid AlCl3 in claim 1’s step (a), claim 7 is rejected under 35 U.S.C. 112(d)/4th par. for being an improper dependent claim.
Claims 14-15 are rejected under 35 U.S.C. 112(d)/4th par. as being of improper dependent form for failing to include all the limitations of the claim upon which it depends. Claim 14 recites “optionally, crystallized [AlCl3.6H2O] of step (c) is dissolved in water and reacted with [NH3 or NH4OH] to obtain high purity [Al(OH)3].” and depends from claim 1, which recites “(d) calcining [AlCl3.6H2O] of step (c) to obtain high purity alumina.” Since it does not recite “optionally, some crystallized [AlCl3.6H2O] of step (c) is dissolved in water…” (emphasis supplied), claim 14’s optional step, if performed, would appear to replace, i.e. contradict, claim 1’s step (d). MPEP 608.01(n)III states that “The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends[, according to 35 U.S.C. 112(d)/4th par.,] or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim..." See also Multilayer Stretch v. Berry Plastics. As claim 14 may be infringed without necessarily also infringing claim 1, i.e. by dissolving the [AlCl3.6H2O] of step (c) in water and reacting it with [NH3 or NH4OH] to obtain high purity [Al(OH)3], claim 14 is rejected under 35 U.S.C. 112(d)/4th par. for being an improper dependent claim. To the extent that claim 15 adds a further limitation to claim 14 (and, in doing so, by its text appears to require the performance of claim 14’s optional step), claim 15 is likewise rejected under 35 U.S.C. 112(d)/4th par. for the same reasons vis-à-vis claim 14 detailed above.
Potentially Allowable Subject Matter
Claims 1-15 are not anticipated nor rendered prima facie obvious by the prior art and do not suffer from any deficiencies under 35 U.S.C. § 101. However, the objections and rejections above must be overcome before any claims are deemed fully allowable. Regarding independent claim 1, the most pertinent prior art of record appears to be CN106006692A (2016) (incl. machine English transl’n, “EMT”) (“’692”) and CN104773746A (2015) (incl. machine English transl’n, “EMT”) (“’746”). ‘692 teaches the sublimation of anhydrous AlCl3 to give pure (anhydrous) AlCl3. See ‘692 at, e.g., EMT pp. 3-4 (boxed areas). ‘692 also cites to ‘746 for the latter’s teachings of contacting an aluminum(-comprising) raw material with hydrochloric acid to obtain aq. AlCl3, concentrating and crystallizing the aq. AlCl3 to give crystalline AlCl3.6H2O, and calcining the crystalline AlCl3.6H2O to give alumina. See ‘692 at, e.g., EMT pp. 2-3 (boxed areas); ‘746 at, e.g., EMT pp. 2-3 (boxed areas) and clm. 1.
Independent claim 1 is not anticipated nor rendered prima facie obvious by said references, however, at least because i) ‘692 directly dissolves its aluminum(-comprising) raw material with hydrochloric acid to obtain aq. AlCl3, rather than sequentially dissolving said material in water and then introducing HCl gas thereinto1, and/or ii) there does not appear to be a teaching or suggestion to utilize ‘692’s sublimated, pure AlCl3 as ‘746’s aluminum(-comprising) raw material, as doing so would involve a costly (sublimation) step.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). 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, Anthony Zimmer can be reached at (571) 270-3591. 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.
/DANIEL BERNS/ September 23, 2026
Primary Examiner
Art Unit 1736
1 Note that splitting simultaneously-performed prior art steps into a sequential performance thereof has been held to be non-obvious without more. See Ex parte Knudsen (Appeal 2010-008434) (BPAI 2012) (see https://developer.uspto.gov/ptab-web/#/search/documents?proceedingNumber=2010008434) at pp. 6-7.
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