DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 22-24 are objected to for the following informalities.
In re claim 22: the claim would be in better form if “where” in lines 1 and 2 read as –wherein–.
In re claim 23: “the first stage mill circuit” in lines 2 and 3 should be –the first stage open circuit mill system– to be consistent with claim 22; and the claim would be in better form if “separators where” in line 4 read as –separators, wherein–.
In re claim 24: the claim would be in better form if it read as –The apparatus of claim 23, wherein the second stage open circuit mill system is operated at a higher energy grind mode than the first stage mill circuit such that the feed to the second stage open circuit mill system is only 12-18% of the underflow of the cyclone fed to the first stage mill circuit, thereby minimizing overall mill power consumption by only grinding the difficult particles in the second mill.–
Also see the rejections of these claims under 35 U.S.C. § 112(b) below.
Claim Interpretation
The preamble is being interpreted to be “An apparatus, when used for processing magnetite iron ore” and the rest of the claim constitutes the body of the claim.
The examiner notes the use of the phrase “relatively low magnetic material losses compared to mass loss” in claims 17-18. Generally, the phrase “relatively low” would be considered a relative and/or subjective phrase that renders the claims indefinite. However, ¶¶ 163 and 165 of the specification state “Dry magnetic Separation occurring outside the two circuits allows for optimum size being sent to the DMS (top size of 6 - 8 mm) to effectively discard silica and non-magnetic materials at low magnetic losses (17 % mass loss at 1.5 % magnetic loss)” and “Desliming of mill and cyclone overflow Magnetite Products at high rise rates (10 m/h) to effectively discard silica and non-magnetic materials at low magnetic losses (22% mass loss at 1.5% magnetic loss (MFe)) …” Thus, the specification provides a standard for ascertaining the scope of the phrase in the context in which it is being used.
The examiner notes the use of the term “difficult” in claims 22-24. Generally, the term is considered to be a relative and/or subjective term that renders the claims indefinite. However, ¶ 19 of the specification states “the mill is configured to operate in a comparable low energy grind mode, where difficult particles are allowed to pass through the open circuit configuration at above the target grind size to be processed and/or discarded through later processing steps”, which makes it is clear that difficult particles are those particles above a target grind size after processing by the mill of the open circuit. Thus, the specification provides a standard for ascertaining the scope of the term.
The examiner notes the recitation of “high frequency low amplitude vibrating screens” in claim 23. Generally, “high” and “low” are considered relative and/or subjective terms that render the claim indefinite. However, in this context the recitation is a term of art and as such the scope of the recitation would be understood by those having ordinary skill in the art.
Claim Rejections - 35 U.S.C. § 112(b)
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.
Claims 16 and 22-24 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Any claims not directly addressed are only rejected under 35 U.S.C. § 112(b) for being dependent on a rejected base claim.
In re claim 16: the recitation “finely ground material” renders the claim indefinite because “finely” is a relative and/or subjective term and metes and bounds for the term have not been established. Thus, the scope of the claim is unclear.
In re claim 22: the claim recites “The apparatus of claim 14, where the mill is part of a first stage open circuit mill system and is configured to operate in a comparable low energy grind mode …” It is unclear if the first stage open circuit mill system is intended to be a required feature of the apparatus. When it is the applicant’s intent to rely on any structure for patentability, there should be a positive recitation that sets forth such structure as a required feature. For example, the claim should recite --The apparatus of claim 14, further comprising a first stage open circuit mill system, wherein the mill is part of the first stage open circuit mill system …-- Further, the recitation “comparable low energy grind mode” renders the claim indefinite because it is unclear what the low energy grind mode is being compared to and because “low” is a relative and/or subjective term and metes and bounds for the term have not been established.
In re claim 23: the claim recites “The apparatus of claim 22, wherein a second stage open circuit mill system grinds difficult material that has passed through the first stage mill circuit; with mill product from the first stage mill circuit being further processed to remove non-magnetic materials via deslime thickeners and/or cleaner magnetic separators where the magnetic concentrate stream is further sized via cyclones to remove fines and high frequency low amplitude vibrating screens where a high frequency low amplitude vibrating screen oversize stream serves as feed to the second stage open circuit mill system.” It is unclear if the structural elements recited in the claim are intended to be required features of the apparatus of claims 14 and 22 from which claim 23 depends, since they are merely introduced within functional language of the claim. When it is the applicant’s intent to rely on any structure for patentability, there should be a positive recitation that sets forth such structure as a required feature. The claim also recites grinding of difficult material but does not require that the second stage open circuit mill system even requires a mill for performing the function. Further, it is unclear if the “difficult material” is intended to be the same as or additional to the “difficult particles” of claim 22. They are being interpreted as being the same. Additionally, “fines” is a relative and/or subjective term and metes and bounds for the term have not been established. The claim should recite, for example:
--The apparatus of claim 22, further comprising a second stage open circuit mill system including:
a second mill that grinds the difficult particles that have passed through the first stage open circuit mill system,
deslime thickeners and/or cleaner magnetic separators that process mill product from the first stage open circuit mill system to remove non-magnetic materials thereby producing a magnetic concentrate stream,
cyclones that separate particles having a predetermined size from the magnetic concentrate stream;
wherein the first stage open circuit mill system further comprises high frequency low amplitude vibrating screens that produce an oversized stream of material that feeds the second stage open circuit mill system.--
In re claim 24: there is no antecedent basis in the claim for “the larger, lower flow rate, more difficult material” and it is unclear if the more difficult material is intended to be the same as or additional to the “difficult material” of claim 23. They are being interpreted as being the same. The examiner suggests replacing said recitation with –the difficult particles–. Moreover, it is unclear if “the feed stream” in line 3 is the same as or additional to the “underflow of the cyclone” in claim 14. They are being interpreted as being the same.
Appropriate correction for the above list of issues is required.
Non-Statutory Double Patenting (NSDP)
A NSDP 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 NSDP 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 NSDP 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 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. 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 14-25 are rejected on the ground of NSDP as being unpatentable over claims 1-15 of U.S. Patent No. 12,350,683. Although the claims of issue are not identical, they are not patentably distinct from each other because the claim(s) of the patent “anticipate” the claim(s) of the instant application. Consequently, the application claim(s) are not patentably distinct from the patent claim(s). Here, the more specific patent claim(s) encompass(es) the broader application claim(s). Following the rationale within In re Goodman cited above, where applicant has once been granted a patent containing a claim for the more specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Applicant is reminded that “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the patent’s claims, is necessary for further consideration of the rejection of the claims, the rejection will not be held in abeyance.” See MPEP § 804, subsection I.B.1. (Emphasis added).
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.
This application 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. The applicant is advised of the obligation under 37 C.F.R. § 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.
Claims 14-25 are rejected under 35 U.S.C. § 103 as being unpatentable over Anderson et al. (US 7,931,218), in view of Lillmars (US 5,307,938).
In re claims 14-19: Anderson discloses an apparatus for processing magnetite iron ore, comprising:
a first stage open circuit mill system (fig. 3) comprising:
an upstream cyclone (3) and a mill (10) for grinding particles are arranged together in an open circuit configuration (see fig. 3), wherein the upstream cyclone is arranged to operate as a splitter by diverting overflow (5) of the upstream cyclone to bypass the mill (10) and by feeding underflow (4) of the upstream cyclone to the mill (see fig. 3),
ground product (2) from the mill (10) being combined with the overflow (5) (see fig. 3).
Anderson is silent regarding a deslime thickener arranged downstream of the first stage open circuit mill system, the combined ground product and overflow being sent to the deslime thickener, the downstream deslime thickener being used to deslime material from the mill and from the upstream cyclone overflow at a rise rate to discard silica and non-magnetic materials.
In the same field of endeavor, Lillmars teaches feeding a cyclone overflow to a deslime thickener (by way of intermediate structure), via a starch flocculant conditioner, in a process of recovering magnetite (col. 4, ln. 7-13, “conditioned cyclone overflow with the starch flocculant therein is, in the current method, fed to a deslime thickener”; also see col. 4, ln. 43-47). Lillmars teaches the purpose of this is to separate an iron containing component from a silicate component (claim 15 and col. 3, ln. 63 – col. 4, ln. 49), which obviously results in a more concentrated stream of the magnetite.
Therefore, it would have been obvious to the ordinary artisan before the effective filing date of the claimed invention to provide Anderson with a starch flocculant conditioner and a downstream deslime thickener, that are fed material from the mill and the upstream cyclone overflow for recovering a concentrated stream of magnetite, as taught by Lillmars.
Modified Anderson does not explicitly teach feeding material from the mill and from the cyclone overflow at a rise rate to discard silica and non-magnetic materials; from claim 15, the cyclone is arranged to divert approximately 25% of material to bypass the mill; from claim 16, the cyclone is arranged to divert finely ground material around the mill to prevent overgrinding feed material, thus reducing the overall mill power consumption; from claim 17, the downstream deslime thickener is arranged to deslime material from the mill and from the upstream cyclone overflow at a rise rate to discard silica and non-magnetic materials at relatively low magnetic material losses compared to mass loss; from claim 18, the downstream deslime thickener is arranged to deslime the material from the mill and from the upstream cyclone overflow at a high rise rate of 8-10m/h to discard the silica and the non-magnetic materials at the relatively low magnetic material losses compared to the mass loss; and from claim 19, the downstream deslime thickener is arranged such that an overflow from the downstream deslime thickener is diverted to a tailings storage facility whereas an underflow from the downstream deslime thickener is fed onward for further processing.
However, the applicant is reminded that claim limitations consisting of functional language and/or intended use language are given little, if any, patentable weight as the apparatus must merely be capable of functioning, or being used, as claimed. See MPEP § 2111.04 stating that claim scope may not be limited by claim language, such as “wherein” clauses, that do not limit a claim to a particular structure, and § 2114 stating that the manner of operating a device does not differentiate device claims from the prior art. Further, the applicant is reminded that the patentability of apparatus claims must depend upon structural limitations, not mere statements of functions (see Galland-Henning Manufacturing Company et al. v. Dempster Brothers, Inc., 165 USPQ 688 (E.D. Tenn. 1970)). Moreover, it has been held that the material(s) or article(s) worked upon by a device being claimed does not impart patentability to the claims (MPEP § 2115). Therefore, because there is no structure recited distinguishing the claimed features from those of modified Anderson, then one must consider the apparatus of modified Anderson to be capable of performing the claimed functions.
In re claim 20, which depends on claim 14: Anderson discloses the mill is in the form of a vertical stirred mill (VSM) (col. 5, ln. 1-4, “vertical shaft grinding mills”, e.g., “Tower mill 110” of fig. 7 and col. 7, ln. 29).
In re claim 21, which depends on claim 14: Anderson discloses the mill (10) is arranged in the apparatus without any feedback path to the mill (see fig. 3).
In re claim 22, which depends on claim 14 and is being examined as best understood: Anderson discloses the mill is part of a first stage open circuit mill system (fig. 3) and is configured to operate in a comparable low energy grind mode (col. 6, In. 48-55), where difficult particles are allowed to pass through the open circuit configuration at above the target grind size to be processed and/or discarded through later processing steps (col. 7, In. 2-14; “The method may be used to prepare feed streams for ... separation ... as well as being used in conjunction with High Pressure Grinding Roll circuits”).
In re claims 23 and 24, which depend on claims 22 and 23, and are being examined as best understood: modified Anderson does not explicitly teach a second stage open circuit mill system that grinds difficult/oversized material that has passed through the first stage open circuit mill system.
However, Anderson discloses another embodiment wherein multiple circuits are connected (see fig. 7), one of which is an open circuit (cyclone 106, Isa Mill 108, stream 109, and the overflow of 106). The Isa Mill (108) grinds difficult mate rial (“cyclone underflow”) that has already passed through a SAG mill (102). Anderson teaches this produces a product suitable for subsequent a flotation process (col. 7, In. 19-25).
Therefore, it would have been obvious to an ordinary artisan before the effective filing date of the claimed invention to provide the system of fig. 3 of Anderson with a second stage open circuit mill system configured to grind difficult material that has passed through the first stage open circuit mill system, thereby generating a product that is suitable for flotation as may be desired, as taught by the other embodiment of Anderson.
Modified Anderson does not explicitly teach “the mill product from the first mill circuit is further processed to remove non-magnetic materials via the de slime thickener and/or cleaner magnetic separators where the magnetic concentrate stream is further sized via cyclones (to remove fines) and high frequency low amplitude vibrating screens where the high frequency low amplitude vibrating screen oversize stream serves as feed to the second stage open circuit mill system” or, from claim 24, “although the second stage open circuit mill system is operated at a higher energy grind mode than the first stage circuit, the feed to the second stage circuit is only 12-18% of the feed stream to the first stage mill circuit, thus minimizing overall mill power consumption by only grinding the larger, lower flow rate, more difficult material”.
However, first note that the deslime thickeners, cleaner magnetic separators, cyclones, and vibrating screens have not been positively recited, and thus are not required, since they are recited within functional limitations; also, it has been held that the material or article worked upon (i.e., the non-magnetic materials and the magnetic concentrate stream) by a device being claimed does not impart patentability to the claims (MPEP § 2115).
Further, the limitations amount to nothing more than functional language which does not impart any particular limiting structure to the positively recited structure. The applicant is reminded that claim limitations consisting of functional language and/or intended use language are given little, if any, patentable weight as the apparatus must merely be capable of functioning, or being used, as claimed. See MPEP § 2111.04 stating that claim scope may not be limited by claim language, such as “wherein” clauses, that do not limit a claim to a particular structure, and § 2114 stating that the manner of operating a device does not differentiate device claims from the prior art. Further, the applicant is reminded that the patentability of apparatus claims must depend upon structural limitations, not mere statements of functions (see Galland-Henning Manufacturing Company et al. v. Dempster Brothers, Inc., 165 USPQ 688 (E.D. Tenn. 1970)).
Therefore, because the claimed structures are recited within an intended use recitation, and because there is no particular limiting structure recited to distinguish the positively claimed features from those of Anderson, the limitations are not being given patentable weight. Even if they were, Anderson discloses the use of cyclones, screens (col. 6, ln.14-16; high frequency low amplitude vibrating screens fall under the broad umbrella of “screens or any other suitable classifying means”), deslime thickeners/flotation plant, and magnetic separation (col. 7, In. 6-14, 19-21, 26-28, 36-40) to reduce the power consumption of the mill (col. 6, In. 48-60) and, thus, the skilled artisan would readily envisage from Anderson a configuration that reads on the functional language, since determining an ideal order of operations that achieve a desired end goal would not require anything more than routine engineering and/or experimentation.
In re claim 25, which depends on claim 14: modified Anderson does not explicitly teach a magnetic separator arranged to divert nonmagnetic material to a tailings storage facility.
However, Anderson discloses a classifier (screen 104) that sends overflow materials to the upstream cyclone and diverts underflow materials (see fig. 7). Anderson further teaches that fig. 7 merely illustrates one example of the invention (col. 4, ln. 45-46) but that any classifier known to be suitable can be used (col. 6, ln. 14-16) and the invention allows for variations and modifications other than the ones specified (col. 7, ln. 50-54).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the screen with a magnetic separator, thereby providing Anderson with a magnetic separator for sending magnetic material to the upstream cyclone and diverting non-magnetic material to a tailings storage facility.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jared O. Brown whose telephone number is (303)297-4445. The examiner can normally be reached on Monday - Friday: 7:00 - 4:00 (Mountain Time).
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/JARED O BROWN/Examiner, Art Unit 3725
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