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 on 04/22/2026, with respect to objection to the drawings have been fully considered and are persuasive. The objection of the drawings has been withdrawn.
Applicant’s arguments, filed on 04/22/2026, with respect to objection of claim 3-13 have been fully considered and are persuasive. The objection of the claims have been withdrawn.
Applicant’s arguments, filed on 04/22/2026, with respect to rejection of claims 3-13 under 35 USC 112 (b) 2nd have been fully considered and are persuasive. The rejection of the claims have been withdrawn. However, claim 20 has an open ended lower limit, therefore, the rejection of the claim has been maintained.
Applicant's arguments filed 04/22/2026 with regards to Claims 1-20 rejected under 35 U.S.C. 101 because the claimed invention is directed to a nature without significantly more have been fully considered but they are not persuasive.
With regards to claim 1, the applicant argues that “all claims are directed to a process, machine, manufacture, or composition of matter” or “the claims are not directed to a judicial exception”. (See arguments page 9, last paragraph and page 10, 1st paragraph)
The examiner respectfully disagrees.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim is directed to a nature, and list the minerals contained in a geothermal aqueous, it is nothing more than an attempt to generally link the product of nature to a particular technological environment.
Furthermore, the additional of a geothermal location such as Salton Sea, as claim limitation, do not add significant more to the exception. In addition, Applicant's Admission of a geothermal minerals as natural event with traces of different minerals. See |||0003] A number of brine sources exist naturally and [¶[0006] It is known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine."
Applicant's arguments filed 04/22/2026 with regards to Claim 1-15, 17-18, and 20 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Brown et al. (US 5,219,550)and Claim 1-15, 17-18, and 20 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Duyvesteyn et al. (US 5,236,491) have been fully considered and are persuasive. The rejection of the claims has been withdrawn.
Applicant's arguments filed ] Claim 1-15, 17-18, and 20 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Premuzic et al. (US 6,537,796 B1) and Claims 1-20 rejected under 35 U.S.C. 103 as being unpatentable over Applicant's Admitted Prior Art (hereinafter, "Admissions-cited previously), and further in view of Premuzic have been fully considered but they are not persuasive.
With regards to claim 1, the applicant further argues that The depigmentation analysis is of the silica sample not the liquid produced by the treatment. Therefore, silica is at a very high concentration in the samples corresponding to FIGS. 7 and 8 as seen by the solid silica in FIGS. 3c and 3d, respectively, which would be greater than the silica values claimed. Accordingly, Applicant submits that Premuzic does not disclose the treated geothermal brine of claims 1, 17, and 20 or the claims that depend therefrom.” (See Arguments, page 13, 2nd paragraph).
The examiner respectfully disagrees.
Firstly, Premuzic discloses the silica products produced in the laboratory vial these two different routes I.) and ii.) differ in physical properties. SEM photomicrographs of the products from the two different routes are shown in FIG. 3. FIG. 3a shows silica from geothermal sludge before treatment. FIG. 3b shows metal detoxified sludge resulting from primary biochemical treatment. FIG. 3d shows the biotreated, metal detoxified sludge after acid depigmenting reagent contacting. FIG. 3c shows the silica from geothermal sludge after direct contacting with acid depigmenting reagent (HCl) without primary biochemical treatment. The product shown in FIG. 3c is more agglomerated than the product shown in FIG. 3b. (See Col. 7 l. 32-43). Therefore, Premuzic treated silica from geothermal sludge could be produced by different routes. Furthermore, the claim does not recite any process / steps/ method /reactions in how any of the geothermal treated, but rather concentration of different of natural chemical elements found in nature, as clearly recited by the Applicant’s Admission’s. ¶ [0006] Admissions discloses this limitation in that It is .known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine. Recovery of these metals is potentially important to the chemical, pharmaceutical, and electronic industries. Typically, the economical recovery of metals from natural brines, which may vary widely in composition, depends not only on the specific concentration of the desired metal).
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.
Claim 20 is 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 20 recites … " …less than about 10 mg/kg, … ..less than about 200 mg/kg.” These are concentration ranges of silica, and iron with unbounded lower limit, and as such, it is unclear as to extent the concentrations Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a nature without significantly more. The claim(s) recite(s) dissolved minerals amounts of manganese, silica, and iron in an geothermal aqueous. This judicial exception is not integrated into a practical application because the geothermal dissolved minerals amount is a naturally event. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim is directed to a nature, and list the minerals contained in a geothermal aqueous, it is nothing more than an attempt to generally link the product of nature to a particular technological environment.
Furthermore, the additional of a geothermal location such as Salton Sea, as claim limitation, do not add significant more to the exception. In addition, Applicant's Admission of a geothermal minerals as natural event with traces of different minerals. See |¶0003] A number of brine sources exist naturally and [[[0006] It is known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine."
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 1-13 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Plantes (US 4329211 A) (“Plantes” herein).
Claim 1-13
Plantes discloses a treated geothermal brine composition, the composition comprising a treated geothermal brine having a concentration of manganese greater than zero to no more than 200 mg/kg, a concentration of silica ranging from o to 80 mg/kg, and a concentration of iron ranging from 0 to 300 mg/kg. (Table I, Col. 5 l. 20-24).
Claim 1-18, and 20 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Premuzic et al. (US 6,537,796 B1) ("Premuzic" herein- cited previously)
Claim 1-13
Premuzic discloses a treated geothermal brine composition, the composition comprising a treated geothermal brine having a concentration of manganese greater than zero to no more than 200 mg/kg, a concentration of silica ranging from o to 80 mg/kg, and a concentration of iron ranging from 0 to 300 mg/kg. (Fig. 8; Col. 4 l. 66+, Col. 5 l. 1-5)
Claim 14
Premuzic discloses a treated geothermal brine composition of Claim 1, wherein the treated geothermal brine is a Salton Sea brine. (Col. 1 I. 16-19, & 49+)
Claim 15
Premuzic discloses a method of using the treated geothermal brine composition the method comprising the step of providing a treated geothermal brine composition of Claim 1 to a process for mineral extraction. (Fig. 8; Col. 4 l. 66+, Col. 5 I. 1-5)
Claim 17
Premuzic discloses a treated geothermal brine composition, the composition comprising a treated geothermal brine having a concentration of manganese greater than 0 to no more than 0 to 100 mg/kg, a concentration of silica ranging from 0 to 30 mg/kg, and a concentration of iron ranging from 0 to 100 mg/kg, (Col. 5 l. 65+ , Col. 6, 7, & 8- i.e. Table IV for manganese, iron, and no trace of silica) and wherein said treated geothermal brine is a Salton Sea geothermal brine. (Col. 21. 3-34)
Claim 18
Premuzic discloses a method of using a treated geothermal brine composition the method comprising the step of supplying the geothermal brine composition of Claim 17 to a process for mineral extraction. (Col. 4 l. 10-50) .
Claim 20
Premuzic discloses a treated geothermal brine composition, the composition comprising a treated geothermal brine having a concentration of manganese less than 10 mg/kg, a concentration of silica ranging from less than 10 mg/kg, and a concentration of iron less than 10 mg/kg, (Col. 5 l. 1. 65+ Col. 6, 7, & 8- i.e. Table IV for manganese, iron, and no trace of silica) and wherein said treated geothermal brine is a Salton Sea geothermal brine. (Col. 21. 3-34)
Claim 1-18, and 20 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Holdren et al. (Chemical and physical characteristics of the Salton Sea, California)
Claim 1-13
Holdren discloses a treated geothermal brine composition, the composition comprising a treated geothermal brine having a concentration of manganese greater than zero to no more than 200 mg/kg, a concentration of silica ranging from o to 80 mg/kg, and a concentration of iron ranging from 0 to 300 mg/kg. (Abstract, Table 4)
Claim 14
Holdren discloses a treated geothermal brine composition of Claim 1, wherein the treated geothermal brine is a Salton Sea brine. (Abstract, Table 4)
Claim 15
Holdren discloses a method of using the treated geothermal brine composition the method comprising the step of providing a treated geothermal brine composition of Claim 1 to a process for mineral extraction. (Abstract, table 4)
Claim 17
Holdren discloses a treated geothermal brine composition, the composition comprising a treated geothermal brine having a concentration of manganese greater than 0 to no more than 0 to 100 mg/kg, a concentration of silica ranging from 0 to 30 mg/kg, and a concentration of iron ranging from 0 to 100 mg/kg, and wherein said treated geothermal brine is a Salton Sea geothermal brine. (Abstract, Table 4)
Claim 18
Holdren discloses a method of using a treated geothermal brine composition the method comprising the step of supplying the geothermal brine composition of Claim 17 to a process for mineral extraction. (Abstract, Table 4) .
Claim 20
Holdren discloses a treated geothermal brine composition, the composition comprising a treated geothermal brine having a concentration of manganese less than 10 mg/kg, a concentration of silica ranging from less than 10 mg/kg, and a concentration of iron less than 10 mg/kg, and wherein said treated geothermal brine is a Salton Sea geothermal brine. (Abstract, Table 4)
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant's Admitted Prior Art (hereinafter, "Admissions-cited previously), and further in view of Premuzic.
Claim 1-13 and 16
Admissions discloses a method of using a treated geothermal brine composition, (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
the method comprising the steps of injecting the treated geothermal brine composition of into a geothermal reservoir (¶ [0010] Admissions discloses this limitation in that the geothermal brine compositions may be injected into a geothermal reservoir, such as into the original reservoir.)
Admissions however does not explicitly disclose the composition comprising a treated geothermal brine having a concentration of manganese greater than zero to no more than 200 mg/kg, a concentration of silica ranging from 0 to 80 mg/kg, and a concentration of iron ranging from 0 to 300 mg/kg .
Premuzic teaches the above limitation ( See Col. 41. 66+, Col. 51. 1-5 & Fig. 8 → Premuzic teaches this limitation in that the geothermal residue as used herein is intended to include geothermal sludge and brine which are waste products from geothermal energy plants. These waste products contain dissolved solids including silica and metal compounds. On cooling of geothermal fluids, a solids-containing sludge is produced. The sludge generally comprises pigmented silica and also metals and metal salts. (Fig. 8: silica, manganese, and iron are within the claim limitation with no traces of silica) for the purpose of producing commercially useful product. (Col. 51. 3-5).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Admission, with the above limitation, as taught by Premuzic, in order to produce commercially useful product.
Claim 14
Admissions discloses a treated geothermal brine composition of Claim 1, wherein the treated geothermal brine is a Salton Sea brine. (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
Claim 15
Admissions discloses a method of using the treated geothermal brine composition the method comprising the step of providing a treated geothermal brine to a process for mineral extraction. (See ¶ [0006] Admissions discloses this limitation in that It is .known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine. Recovery of these metals is potentially important to the chemical, pharmaceutical, and electronic industries. Typically, the economical recovery of metals from natural brines, which may vary widely in composition, depends not only on the specific concentration of the desired metal). Admissions does not explicitly disclose the composition of Claim 1. (See claim 1 above)
Claim 17
Admissions discloses a treated geothermal brine composition) and wherein said treated geothermal brine is a Salton Sea geothermal brine, (¶[0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
Admissions however does not explicitly disclose the composition comprising a treated geothermal brine having a concentration of manganese ranging from 0 to 100 mg/kg, a concentration of silica ranging from 0 to 30 mg/kg, and a concentration of iron ranging from 0 to 100 mg/kg,
Premuzic teaches the above limitation ( See Col. 41. 66+, Col. 51. 1-5 & Fig. 8 →Premuzic teaches this limitation in that the geothermal residue as used herein is intended to include geothermal sludge and brine which are waste products from geothermal energy plants. These waste products contain dissolved solids including silica and metal compounds. On cooling of geothermal fluids, a solids-containing sludge is produced. The sludge generally comprises pigmented silica and also metals and metal salts. (Fig. 8: silica, manganese, and iron are within the claim limitation with no traces of silica) for the purpose of producing commercially useful product. (Col. 51. 3-5).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Admission, with the above limitation, as taught by Premuzic, in order to produce commercially useful product.
Claim 18
Admissions discloses a method of using a treated geothermal brine composition the method comprising the step of supplying the geothermal brine to a process for mineral extraction. (See ¶ [0006] Admissions discloses this limitation in that It is known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine. Recovery of these metals is potentially important to the chemical, pharmaceutical, and electronic industries. Typically, the economical recovery of metals from natural brines, which may vary widely in composition, depends not only on the specific concentration of the desired metal). Admissions does not explicitly disclose the composition of Claim 16. (Same as claim 16) .
Claim 19
Admissions discloses a method of using a treated geothermal brine composition (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
the method comprising the step of injecting the treated geothermal brine composition into a geothermal reservoir (¶ [0010] Admissions discloses this limitation in that the geothermal brine compositions may be injected into a geothermal reservoir, such as into the original reservoir.) of Claim17. Admissions does not explicitly disclose the composition of Claim 16. (Same as claim 16)
Claim 20
Admissions discloses a treated geothermal brine composition, the composition comprising a treated geothermal brine and wherein said treated geothermal brine is a Salton Sea geothermal brine. composition (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines (See ¶ [0006] Admissions discloses this limitation in that It is known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine. Recovery of these metals is potentially important to the chemical, pharmaceutical, and electronic industries. Typically, the economical recovery of metals from natural brines, which may vary widely in composition, depends not only on the specific concentration of the desired metal).
Admissions does not explicitly disclose the composition having a concentration of manganese less than 10 mg/kg, a concentration of silica ranging from less than 10 mg/kg, and a concentration of iron less than 10 mg/kg, (See claim 1 above)
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant's Admitted Prior Art (hereinafter, "Admissions-cited previously), and further in view of Plantes (US 4329211 A) (“Plantes).
Claim 1-13 and 16
Admissions discloses a method of using a treated geothermal brine composition, (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
the method comprising the steps of injecting the treated geothermal brine composition of into a geothermal reservoir (¶ [0010] Admissions discloses this limitation in that the geothermal brine compositions may be injected into a geothermal reservoir, such as into the original reservoir.)
Admissions however does not explicitly disclose the composition comprising a treated geothermal brine having a concentration of manganese greater than zero to no more than 200 mg/kg, a concentration of silica ranging from 0 to 80 mg/kg, and a concentration of iron ranging from 0 to 300 mg/kg .
Plantes teaches the above limitation (See Table I → Plantes teaches this limitation in that
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(i.e. no silica) ) for the purpose of removing heavy metals or separating fluids from waste water or fluid flow including iron from mine acid flow streams, metallic elements from geothermal brine solutions. (Col. 5 l. 20-24).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify admisstion, with the above limitation, as taught by Plantes, in order to removing heavy metals or separating fluids from waste water or fluid flow including iron from mine acid flow streams, metallic elements from geothermal brine solutions.
Claim 14
Admissions discloses a treated geothermal brine composition of Claim 1, wherein the treated geothermal brine is a Salton Sea brine. (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
Claim 15
Admissions discloses a method of using the treated geothermal brine composition the method comprising the step of providing a treated geothermal brine to a process for mineral extraction. (See ¶ [0006] Admissions discloses this limitation in that It is .known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine. Recovery of these metals is potentially important to the chemical, pharmaceutical, and electronic industries. Typically, the economical recovery of metals from natural brines, which may vary widely in composition, depends not only on the specific concentration of the desired metal). Admissions does not explicitly disclose the composition of Claim 1. (See claim 1 above)
Claim 18
Admissions discloses a method of using a treated geothermal brine composition the method comprising the step of supplying the geothermal brine to a process for mineral extraction. (See ¶ [0006] Admissions discloses this limitation in that It is known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine. Recovery of these metals is potentially important to the chemical, pharmaceutical, and electronic industries. Typically, the economical recovery of metals from natural brines, which may vary widely in composition, depends not only on the specific concentration of the desired metal). Admissions does not explicitly disclose the composition of Claim 16. (Same as claim 16)
Claim 19
Admissions discloses a method of using a treated geothermal brine composition (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
the method comprising the step of injecting the treated geothermal brine composition into a geothermal reservoir (¶ [0010] Admissions discloses this limitation in that the geothermal brine compositions may be injected into a geothermal reservoir, such as into the original reservoir.) of Claim17. Admissions does not explicitly disclose the composition of Claim 16. (Same as claim 16)
Claim 20
Admissions discloses a treated geothermal brine composition, the composition comprising a treated geothermal brine and wherein said treated geothermal brine is a Salton Sea geothermal brine. composition (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines (See ¶ [0006] Admissions discloses this limitation in that It is known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine. Recovery of these metals is potentially important to the chemical, pharmaceutical, and electronic industries. Typically, the economical recovery of metals from natural brines, which may vary widely in composition, depends not only on the specific concentration of the desired metal).
Admissions does not explicitly disclose the composition having a concentration of manganese less than 10 mg/kg, a concentration of silica ranging from less than 10 mg/kg, and a concentration of iron less than 10 mg/kg, (See claim 1 above)
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant's Admitted Prior Art (hereinafter, "Admissions-cited previously), and further in view of Holdren et al. (Chemical and physical characteristics of the Salton Sea, California)
Claim 1-13 and 16
Admissions discloses a method of using a treated geothermal brine composition, (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
the method comprising the steps of injecting the treated geothermal brine composition of into a geothermal reservoir (¶ [0010] Admissions discloses this limitation in that the geothermal brine compositions may be injected into a geothermal reservoir, such as into the original reservoir.)
Admissions however does not explicitly disclose the composition comprising a treated geothermal brine having a concentration of manganese greater than zero to no more than 200 mg/kg, a concentration of silica ranging from 0 to 80 mg/kg, and a concentration of iron ranging from 0 to 300 mg/kg .
Holdren teaches the above limitation ( See Col. 41. 66+, Col. 51. 1-5 & Fig. 8 → Holdren teaches this limitation in that
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) for the purpose of current chemical and physical conditions in the Salton Sea Analyses included general physical conditions and a suite of water quality parameters, including nutrients, trophic state variables, major cations and anions, trace metals and organic compounds. (Abstract).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the method of Admission, with the above limitation, as taught by Holdren, in order to produce commercially useful product.
Claim 14
Admissions discloses a treated geothermal brine composition of Claim 1, wherein the treated geothermal brine is a Salton Sea brine. (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
Claim 15
Admissions discloses a method of using the treated geothermal brine composition the method comprising the step of providing a treated geothermal brine to a process for mineral extraction. (See ¶ [0006] Admissions discloses this limitation in that It is .known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine. Recovery of these metals is potentially important to the chemical, pharmaceutical, and electronic industries. Typically, the economical recovery of metals from natural brines, which may vary widely in composition, depends not only on the specific concentration of the desired metal). Admissions does not explicitly disclose the composition of Claim 1. (See claim 1 above)
Claim 17
Admissions discloses a treated geothermal brine composition) and wherein said treated geothermal brine is a Salton Sea geothermal brine, (¶[0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
Admissions however does not explicitly disclose the composition comprising a treated geothermal brine having a concentration of manganese ranging from 0 to 100 mg/kg, a concentration of silica ranging from 0 to 30 mg/kg, and a concentration of iron ranging from 0 to 100 mg/kg, (Same as claim 16)
Claim 18
Admissions discloses a method of using a treated geothermal brine composition the method comprising the step of supplying the geothermal brine to a process for mineral extraction. (See ¶ [0006] Admissions discloses this limitation in that It is known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine. Recovery of these metals is potentially important to the chemical, pharmaceutical, and electronic industries. Typically, the economical recovery of metals from natural brines, which may vary widely in composition, depends not only on the specific concentration of the desired metal). Admissions does not explicitly disclose the composition of Claim 16. (Same as claim 16) .
Claim 19
Admissions discloses a method of using a treated geothermal brine composition (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines)
the method comprising the step of injecting the treated geothermal brine composition into a geothermal reservoir (¶ [0010] Admissions discloses this limitation in that the geothermal brine compositions may be injected into a geothermal reservoir, such as into the original reservoir.) of Claim 17. Admissions does not explicitly disclose the composition of Claim 16. (Same as claim 16)
Claim 20
Admissions discloses a treated geothermal brine composition, the composition comprising a treated geothermal brine and wherein said treated geothermal brine is a Salton Sea geothermal brine. composition (¶ [0003] Admissions discloses this limitation in that a number of brine sources exist. naturally. Other common brine sources are geothermal, oilfield. Smackover, and relict hydrothermal brines (See ¶ [0006] Admissions discloses this limitation in that It is known that geothermal brines can include various metal ions, particularly alkali and alkaline earth metals, as well as silica, iron, lead, silver, and zinc, in varying concentrations, depending upon the source of the brine. Recovery of these metals is potentially important to the chemical, pharmaceutical, and electronic industries. Typically, the economical recovery of metals from natural brines, which may vary widely in composition, depends not only on the specific concentration of the desired metal).
Admissions does not explicitly disclose the composition having a concentration of manganese less than 10 mg/kg, a concentration of silica ranging from less than 10 mg/kg, and a concentration of iron less than 10 mg/kg, (See claim 1 above)
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 15-19 are rejected on the ground of nonstatutory double patenting as
being unpatentable over claims 1-4 of U.S. Patent No. 10,683,563 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application and its dependent claim are incorporated into the limitation of the patent '563 herein.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 06/18/2026
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