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 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.
Claims 12, 13, 17, 22 and 23 are 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.
As to claim 12, the claim recites the limitation "the electrode material". There is insufficient antecedent basis for this limitation in the claim.
As to claim 13, the claim recites the limitation “the electrode material”. There is insufficient antecedent basis for this limitation in the claim.
As to claim 17, the claim recites the limitation of 200 pm (picometers). However, the specification recites the limitation of 200 µm (micrometers), significantly larger than 200 pm. Thus it is unclear the actual intended range of this limitation.
As to claim 22, the term “increased” in the claim is a relative term which renders the claim indefinite. The term “increased” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term increased renders indefinite the extraction efficiency. Furthermore, in addition to the degree of “increase” being unclear, it is unclear as to what this increase is in comparison to.
As to claim 23, the term “increased” in the claim is a relative term which renders the claim indefinite. The term “increased” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Use of the term increased renders indefinite the durability. Furthermore, in addition to the degree of “increase” being unclear, it is unclear as to what this increase is in comparison to.
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.
Claims 1-10, 12, 15-18 and 20-28 are rejected under 35 U.S.C. 103 as being unpatentable over US 3,535,218 to Brown et al. (Brown) in view of US 4,040,914 to Nidola et al. (Nidola) and further in view of US 3,852,175 to Hoekje (Hoekje).
As to claim 1, Brown teaches an electrochemical reactor for extracting a target metal, copper, from a metal containing solution, the reactor (1) comprising a flow cell comprising a plurality of anodes (3) and a plurality of cathodes (4) forming an array of alternating anodes (3) and cathodes (4), the anodes and cathodes formed of the same material in order to allow for beneficial reversal and copper recovery and a voltage source configured to apply a voltage between the anodes and the cathode (Column 2, Line 62 to Column 3, Line 2; Column 3, Line 30-35; Column 3, Lines 57-65; Figures 1 and 4).
However, Brown fails to teach that the anodes and the cathodes comprises a coating material as claimed. However, Nidola also discusses the electrolytic recovery of copper and teaches that an improved cathode material in terms of corrosion resistance, adherence and electronic transfer for improved metal deposit morphology comprises a cathode of, for example, hafnium (Hf) coated with silver (Ag) (Column 2, Lines 3-58). Therefore, it would have been obvious to form the cathode of Brown, and thus also the anode to maintain the reversible operation, of hafnium coated with silver in order to improve the corrosion resistance, adherence and electronic transfer for improved metal deposition as taught by Nidola.
However, the combination fails to further teach that the anodes and the cathode comprise silicon. However, Hoekje discusses electrodes and teaches that electrodes can be formed at a low cost by forming the electrodes as a coating on a silicon base rather than as the bulk metals (Column 1, Lines 48 to Column 2, Line 26). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the silver coated hafnium electrodes such that the hafnium itself is also a coating on a silicon base, in order to allow for a reduced cost as taught by Hoekje.
As to claim 2, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. The limitation “wherein the metal or mineral containing solution is acidic” merely limits a functional limitation of claim 1. Nonetheless, Brown further teaches that the metal containing solution is acidic, sulfuric acid (Column 3, Lines 36-44).
As to claim 3, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Brown further teaches that the flow cell is configured to operate continuously with at least a partial recycle, and thus formed at least partially closed loop (Column 4, Lines 3-5; Column 5, Lines 6-11; Figure 4).
As to claim 4, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Brown further teaches that the anodes and cathodes are plates with flow in and out of the reactor and thus that the metal containing solution flows around the plurality of electrodes (Column 3, Line 57 to Column 4, Line 9; Figures 1 and 4).
As to claim 5, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 4. Brown further teaches that the metal containing solution is at least partially supplied from above, and thus at least partially flows orthogonal to the applied voltage flowing between the electrodes (Column 4, Line 3, Line 57 to Column 4, Line 9; Figures 1 and 4).
As to claim 6, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Brown is silent as to the specific source of metal containing solution; however, these limitation are merely narrowing a functional limitation of “wherein the flow cell is configured to extract the target metal or mineral from the metal or mineral containing solution”. Apparatus claims must be distinguished from the prior art in terms of structure rather than function. Functional limitations do not serve to further limit apparatus claims beyond imparting the limitation that apparatus be capable of performing the claimed function (MPEP 2114). The apparatus of Brown would be capable of operating on any number of copper containing solutions including, for example, a refining stream.
As to claim 7, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. As discussed above, Brown teaches that the target metal comprises copper.
As to claim 8, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. The electrodes of the combination are silicon coated with hafnium and silver and are thus non-consumable and reusable.
As to claim 9, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Hoekje further teaches that an effective coating thickness on the silicon electrode is, for example, around 50 nm (2 micro inches) (Column 10, Lines 14-18).
As to claim 10, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Hoekje further teaches that an effective coating can be formed on the silicon electrode via electroplating (Example III).
As to claim 12, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Brown teaches that the electrodes are simple rectangular plates, thus non-porous (Column 3, Lines 57-73).
As to claim 15, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Brown teaches that the electrodes are simple rectangular plates, thus non-porous such that the metal containing solution flows around the electrodes (Column 3, Lines 57-73). Brown further teaches that the electrodes are presented in the same chamber without separators and thus that the solution flows at least partially in series (Figures 1 and 4).
As to claim 16, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Brown further teaches that the distance between the electrodes is, for example, 2.54 cm (1 inch) (Column 3, Lines 66-72).
As to claim 17, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Hoekje further teaches that an effective base electrode thickness is, for example, approximately 0.3 cm (1/8 inch) (Example I).
As to claim 18, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. As discussed above, the combination teaches that the coating comprises Ag and Hf.
As to claim 20, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Brown further teaches that the flow cell is configured to operate continuously with at least a partial recycle of the metal containing solution (Column 4, Lines 3-5; Column 5, Lines 6-11; Figure 4).
As to claim 21, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 20. As discussed above, the flow cell is configured to operate continuously, thus while the voltage is applied.
As to claim 22, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. The electrode of the combination is the same electrode as one of applicants’ disclosed embodiments, a silicon base with hafnium and silver coatings, and thus, as evidenced by at least applicants’ own disclosure, an electrode with a coating material that provides “increased extraction efficiency” (MPEP 2112).
As to claim 23, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. The electrode of the combination is the same electrode as one of applicants’ disclosed embodiments, a silicon base with hafnium and silver coatings, and thus, as evidenced by at least applicants’ own disclosure, an electrode with a coating material that provides “increased durability” (MPEP 2112).
As to claim 24, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. The limitations of claim 24 are functional limitations. Nonetheless, Brown specifically teaches that the recovered copper has a purity of 97% (Example 1).
As to claim 25, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. As discussed above, the combination teaches a hafnium and silver coating, thus two coatings.
As to claims 26, 27 and 28, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. Hoekje further teaches that the silicon electrode base can be monolithic (i.e. a solid piece) with a 99.5% silicon concentration (Example 1).
Claims 11, 14 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Brown, Nidola and Hoekje as applied to claim 1 above, and further in view of US 2018/0265996 A1 to Rosvall et al. (Rosvall) and further in view of US 2012/0312700 A1 to Bard et al. (Bard).
As to claims 11, 14 and 29, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. However, the combination fails to further teach that the electrodes surfaces are prepared as claimed. However, Rosvall also discusses electrodes for electrolysis and teaches that the surface should be roughened, via, for example, laser roughening, prior to coating, in order to increase the surface area of the electrode substrate and improve mechanical adhesion of the coating layer (Paragraph 0088). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the electrodes of the combination by roughening with laser roughening before coating in order to increase the surface area of the electrode substrate and improve mechanical adhesion as taught by Rosvall. Rosvall further teaches that the preferred roughness is from 5 to 15 microns (Paragraph 0114).
However, as discussed above, Rosvall teaches laser etching (roughening) and fails to contemplate ion-beam etching or HF etching. However, Bard also discusses roughened electrodes and teaches that ion-beam etching (irradiation) is a known equivalent to laser etching (Paragraph 0161). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to replace the known equivalent laser etching with ion-beam etching (MPEP 2144.06 II).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Brown, Nidola and Hoekje as applied to claim 1 above, and further in view of US 2024/0166566 A1 to Benck et al. (Benck).
As to claim 13, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. However, the combination fails to teach that the electrode material is porous. However, Benck also discusses electrorefining and teaches that porous electrodes can be utilized to achieve a higher specific surface area (Paragraph 0109). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the electrodes of the combination as porous electrodes in order to increase the surface area of the electrodes as taught by Benck.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-29 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-29 of copending Application No. 19/275,580 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 1-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, 11-19, 33-35, 37, 41, 45 and 47 of copending Application No. 18/750,807 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite narrower coating materials, but all materials are met the limitations of the pending claims wherein the additional coating materials are presented in the alternative. The copending claims also fail to specifically recite the limitations present in pending claims 20-24; however, these claim limitations are all functional or results limitations which are not patentably significant as the apparatus itself is identical and thus must be capable of performing the claimed function and achieving the claimed results (MPEP 2112 and 2114).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 22 and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 19/340,567 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because “one or more” would meet the limitation of “two or more”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-25 and 29 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-29 of copending Application No. 19/275,604 in view of Brown.
The copending claims claim all the limitations of the present claims, albeit broader, with the exception of providing the coating to the cathodes in addition to the anode. However, Brown also discusses electrolytic material recovery and teaches that the anode and cathode should be formed the same in order to allow for reversal and simple recovery of the product metal (Column 2, Line 61 to Column 3, Line 2). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the cathode with the same coating as the anode in order to allow for reversal and simple product recovery as taught by Brown.
This is a provisional nonstatutory double patenting rejection.
Claims 26, 27 and 28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/275,604 in view of Brown as discussed above and further in view of Hoekje.
The copending claims, in view of Brown, claim all the limitations of present claims 26-28, with the exception of the content of the silicon. However, Hoekje also discusses electrodes based with silicon and teaches that the silicon is effectively provided monolithically (single casting) in concentrations up to 99.9% pure elemental silicon (Column 3, Lines 57-61; Column 5, Lines 49-51). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide the silicon monolithically in concentration up to 99.9% pure with the reasonable expectation of effectively forming the electrode as taught by Hoekje.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claim 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims AND if the double patenting rejections are overcome.
The following is a statement of reasons for the indication of allowable subject matter: The primary reason for the indication of allowable subject matter is the narrowing of each of the plurality of anodes and cathode to comprise silicon coated with platinum and iridium. The prior art mainly teaches individually optimizing the coatings for anodes and cathodes and fails to teach platinum and iridium on a cathode formed of silicon in combination with platinum and iridium on an anode formed of silicon, in an apparatus for extracting a target metal or mineral from a metal or mineral containing solution. Brown teaches forming the anodes and cathodes of the same material, but fails to teach that these electrodes are coated with platinum and/or iridium. Nadia renders obvious replacing uncoated cathode materials with coated cathode materials, but specifically contemplates other coatings and fails to discuss platinum and iridium.
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794