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 13, 19, 24, 25 and 27 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 13, the claim recites the limitation “the plurality of silicon electrodes”. There is insufficient antecedent basis for this limitation in the claim.
As to claim 19, 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 24, 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 25, 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.
As to claim 27, the claim recites the limitation “the plurality of silicon electrodes”. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 7, 8, 9, 10, 22, 23, 24, 25 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0115609 A1 to Barker et al. (Barker).
As to claim 1, Barker teaches an electrochemical reactor configured for extracting a target metal, copper, from a copper containing solution, the electrochemical reactor comprising a flow cell (1), comprising a plurality of anodes (2) and a plurality of cathodes (3) arranged in an alternating array, the plurality of cathodes comprise a carbon material, steel, and the plurality of anodes comprising, for example, stainless steel coated with platinum or gold, the invention specifically directed to reducing the voltage for the electrolytic reaction and thus also comprising a voltage source of some sort configured to apply a voltage between the plurality of anodes and cathodes (Paragraphs 0023, 0024, 0025, 0030 and 0031; Figures 1 and 3).
As to claim 7, Barker teaches the apparatus of claim 1. Barker further teaches that the metal containing solution comprises sulfuric acid (Paragraphs 0024 and 0030).
As to claim 8, Barker teaches the apparatus of claim 1. Barker 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 Barker would be capable of operating on any number of copper containing solutions including, for example, a refining stream.
As to claim 9, Barker teaches the apparatus of claim 1. As discussed above, Barker teaches that the target metal comprises copper.
As to claim 10, Barker teaches the apparatus of claim 1. The electrodes of Barker comprise steel, resistant to the sulfuric acid, and are thus non-consumable and reusable.
As to claims 22 and 23, Barker teaches the apparatus of claim 1. Barker further teaches that the spent sulfuric acid is recirculated to the cell, thus a cell that is configured for continuous recirculation while the voltage is applied (Paragraph 0033).
As to claim 24, Barker teaches the apparatus of claim 1. The coating of the anodes of Barker is platinum, the same as one of applicants’ disclosed embodiments, 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 25, Barker teaches the apparatus of claim 1. The coating of the anodes of Barker is platinum, the same as one of applicants’ disclosed embodiments, 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 26, Barker teaches the apparatus of claim 1. The limitations of claim 26 are functional limitation. 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 the apparatus be capable of performing the claimed function (MPEP 2114). The apparatus of Barker is capable of achieving any number of copper purities depending upon the specific input solution and the operating conditions.
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 13, 16 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Barker 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 13, 16 and 28, Barker teaches the apparatus of claim 1. However, Barker 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).
Claims 14, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Barker as applied to claim 1 above, and further in view of US 2024/0166566 A1 to Benck et al. (Benck).
As to claims 14 and 17, Barker teaches the apparatus of claim 1. Barker further teaches that the anodes can be non-porous, i.e. plates (Paragraph 0050). However, Barker is silent as to the specific formation of the cathodes. However, Benck also discusses electrorefining and teaches that effective electrodes include all of plates, meshes, cloths, films and sponges (Paragraph 0092). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to form the cathodes also of plates, non-porous electrodes, with the reasonable expectation of effectively forming the cathodes. Thus a configuration in which the electrolyte flows around the non-porous electrodes.
Barker further teaches that the fluid flow is parallel through the anodes and cathodes (Paragraphs 0030 and 0031; Figure 1).
As to claim 15, Barker teaches the apparatus of claim 1. Barker further teaches that the anodes can be porous, i.e. mesh (Paragraph 0020). However, Barker is silent as to the specific formation of the cathodes. 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 cathodes of the combination as porous electrodes in order to increase the surface area of the electrodes as taught by Benck.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Barker as applied to claim 1 above, and further in view of US 2016/0024670 to Fiorucci et al. (Fiorucci).
As to claim 18, Barker teaches the apparatus of claim 1. However, Barker is silent as to the specific spacing between the plurality of alternating electrodes. However, Fiorucci also discusses the extraction of copper from a metal containing solution and teaches that an effective distance between adjacent electrodes is about 40 mm (Paragraph 0016). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to provide the electrodes of Barker with a spacing of 40 mm with the reasonable expectation of effectively forming the apparatus as taught by Fiorucci.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Barker as applied to claim 1 above, and further in view of US 5,516,408 to Peckham et al. (Peckham).
As to claims 20 and 21, Barker teaches the apparatus of claim 1. As discussed above, Barker teaches that the coating comprising platinum; however, fails to teach a platinum combination as claimed. However, Peckham also discusses the electrolytic production of copper from solution and teaches that iridium is a known equivalent anode coating to platinum (Column 8, Lines 56 to 59). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the iridium with the platinum as known equivalents for the same purpose (MPEP 2144.06 I).
Claims 1-12, 19 and 22-27 are rejected under 35 U.S.C. 103 as being unpatentable over Barker, under a second embodiment, in view of US 3,852,175 to Hoekje (Hoekje).
As to claims 1, 2 and 3, Barker teaches an electrochemical reactor configured for extracting a target metal, copper, from a copper containing solution, the electrochemical reactor comprising a flow cell (1), comprising a plurality of anodes (2) and a plurality of cathodes (3) arranged in an alternating array, the plurality of cathodes comprise a carbon material, steel, and the plurality of anodes comprising, titanium plated with platinum, the invention specifically directed to reducing the voltage for the electrolytic reaction and thus also comprising a voltage source of some sort configured to apply a voltage between the plurality of anodes and cathodes (Paragraphs 0019, 0024, 0025, 0030 and 0031; Figures 1 and 3). However, Barker fails to teach that the anodes comprise silicon.
However, Hoekje also discusses titanium based electrodes and teaches that effective and cheaper electrodes can be formed by forming the coating, including platinum, on a silicon base electrode (Column 1, Line 15 to Column 2, Line 26). Therefore, it would have been obvious to replace the platinum coated titanium electrode of Barker with a platinum coated silicon electrode in order to allow for reduced cost as taught by Hoekje.
As to claims 4, 5 and 6, the combination of Barker and Hoekje teaches the apparatus of claim 2. Hoekje further teaches that the silicon electrode base can be monolithic (i.e. a solid piece) with a 99.5% silicon concentration (Example 1).
As to claim 7, the combination of Barker and Hoekje teaches the apparatus of claim 1. Barker further teaches that the metal containing solution comprises sulfuric acid (Paragraphs 0024 and 0030).
As to claim 8, the combination of Barker and Hoekje teaches the apparatus of claim 1. Barker 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 Barker would be capable of operating on any number of copper containing solutions including, for example, a refining stream.
As to claim 9, the combination of Barker and Hoekje teaches the apparatus of claim 1. As discussed above, Barker teaches that the target metal comprises copper.
As to claim 10, the combination of Barker and Hoekje teaches the apparatus of claim 1. The electrodes of Barker comprise steel, resistant to the sulfuric acid, and are thus non-consumable and reusable.
As to claim 11, the combination of Barker 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 12, the combination of Barker 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 19, the combination of Barker 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 claims 22 and 23, the combination of Barker and Hoekje teaches the apparatus of claim 1. Barker further teaches that the spent sulfuric acid is recirculated to the cell, thus a cell that is configured for continuous recirculation while the voltage is applied (Paragraph 0033).
As to claim 24, the combination of Barker and Hoekje teaches the apparatus of claim 1. The coating of the anodes of Barker is platinum, the same as one of applicants’ disclosed embodiments, 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 25, the combination of Barker and Hoekje teaches the apparatus of claim 1. The coating of the anodes of Barker is platinum, the same as one of applicants’ disclosed embodiments, 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 26, the combination of Barker and Hoekje teaches the apparatus of claim 1. The limitations of claim 26 are functional limitation. 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 the apparatus be capable of performing the claimed function (MPEP 2114). The apparatus of Barker is capable of achieving any number of copper purities depending upon the specific input solution and the operating conditions.
As to claim 27, the combination of Barker and Hoekje teaches the apparatus of claim 1. As discussed above, Hoekje renders obvious a plurality of silicon electrodes. Barker further teaches that an effective electrode coating comprises platinum or gold (Paragraphs 0019 and 0020). It would have been obvious to one of ordinary skill in the art to utilize both platinum and gold in combination, as known coating equivalents, thus two coatings (MPEP 2144.06 I).
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Barker in view of Peckham.
As to claim 29, Barker teaches an electrochemical reactor configured for extracting a target metal, copper, from a copper containing solution, the electrochemical reactor comprising a flow cell (1), comprising a plurality of anodes (2) and a plurality of cathodes (3) arranged in an alternating array, the plurality of cathodes comprise a carbon material, steel, and the plurality of anodes comprising, for example, stainless steel coated with platinum or gold, the invention specifically directed to reducing the voltage for the electrolytic reaction and thus also comprising a voltage source of some sort configured to apply a voltage between the plurality of anodes and cathodes (Paragraphs 0023, 0024, 0025, 0030 and 0031; Figures 1 and 3).
As discussed above, Barker teaches that the coating comprising platinum; however, fails to teach a platinum combination as claimed. However, Peckham also discusses the electrolytic production of copper from solution and teaches that iridium is a known equivalent anode coating to platinum (Column 8, Lines 56 to 59). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to combine the iridium with the platinum as known equivalents for the same purpose (MPEP 2144.06 I).
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 1, 2 and 4-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 6-29 of copending Application No. 19/275,580 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are merely narrower, i.e. recite the silicon embodiment of the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2 and 4-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 6-29 of copending Application No. 19/235,243 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are merely narrower, i.e. recite the silicon embodiment of the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3 and 5 of copending Application No. 19/340,567 in view of Barker.
Copending claims 1, 2, 3 and 5 claims the limitation of present claim 1 with the exception of disclosing that the plurality of anodes and cathodes are arranged in an alternating array. However, this feature is rendered obvious by Barker teaching an effective arraignment of anodes and cathode in copper extraction form solution comprises an alternating array (Paragraphs 0030 and 0031; Figure 1).
This is a provisional nonstatutory double patenting rejection.
Claims 1, 2, 4, 7-27 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 6, 9, 11-19, 33, and 41 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 because the copending claims are merely narrower, i.e. recite more specific coatings that still meet the claim limitations.
This is a provisional nonstatutory double patenting rejection.
Claims 5 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/750,807 in view of Hoekje.
Copending claim 1 claims the limitation of present claims 5 and 6 with the exception of disclosing the concentration of the silicon forming the electrode. However, this feature is rendered obvious by Hoekje teaching an effective silicon concentration of, for example, 99.5 wt. % (Example 1).
This is a provisional nonstatutory double patenting rejection.
Claim 28 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/750,807 in view of Rosvall.
Copending claim 1 claims the limitation of present claim 28 with the exception of disclosing the desired roughness. However, this feature is rendered obvious by Rosvall teaching that the preferred roughness prior to coating is from 5 to 15 microns (Paragraph 0114).
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794