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 .
Response to Amendment
Acknowledgment is made to Applicant’s claim amendments received 6 April 2026. Claims 1, 7-10 and 12-30 are currently pending of which claims 1, 13, 19, 24, 25 and 27 are currently amended and claim 30 is new. Claims 2-6 and 11 have been cancelled.
Claim Rejections - 35 USC § 112
Acknowledgment is made to Applicant’s claim amendments received 6 April 2026. The rejections to the claims presented under 35 USC 112 in the Office Action of 15 January 2026 are withdrawn.
Claim Rejections - 35 USC § 102
Acknowledgment is made to Applicant’s claim amendments received 6 April 2026. The rejections to the claims presented under 35 USC 102 in the Office Action of 15 January 2026 are withdrawn.
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, 7-10, 12, 14, 17-20, 22-27, 29 and 30 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 claims 1, 20, 29 and 30, 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, an alloy of titanium and nickel or an alloy of titanium and palladium (Ti/Ni or Ti/Pd)) coated with silver (Ag) (Column 3, Lines 12-20). Therefore, it would have been obvious to form the cathode of Brown, and thus also the anode to maintain the reversible operation, of hafnium, Ti/Ni or Ti/Pd 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 electrodes such that the hafnium, Ti/Ni or Ti/Pd alloy itself is also a coating on a silicon base, in order to allow for a reduced cost as taught by Hoekje. Hoekje further teaches that the silicon electrode base can be monolithic (i.e. a solid piece) with a 99.5% silicon concentration (Example 1) and 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 7, 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 8, 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 9, 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 10, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. The electrodes of the combination are silicon coated with hafnium, Ti/Ni or Ti/Pd and silver and are thus non-consumable and reusable.
As to claim 12, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. The remaining limitations of the claim are product by process limitation, the means by which a product is formed does not determine patentability so long as the end product is the same (MPEP 2113). Nonetheless, Hoekje further teaches that an effective coating can be formed on the silicon electrode via electroplating (Example III).
As to claim 14, 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 17, 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 18, 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 19, 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 22, 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 23, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 22. As discussed above, the flow cell is configured to operate continuously, thus while the voltage is applied.
As to claim 24, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. The electrode of the combination with an electrocatalytic coating on silicon would provide “increased extraction efficiency” compared to silicon alone (MPEP 2112).
As to claim 25, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. The electrode of the combination with an electrocatalytic coating on silicon would provide “increased durability” (MPEP 2112).
As to claim 26, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. The limitations of claim 26 are functional limitations. Nonetheless, Brown specifically teaches that the recovered copper has a purity of 97% (Example 1).
As to claim 27, the combination of Brown, Nidola and Hoekje teaches the apparatus of claim 1. As discussed above, the combination teaches a hafnium, Ti/Ni or Ti/Pd and silver coating, thus two coatings.
Claims 13, 16 and 28 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 13, 16 and 28, 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 15 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 15, 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
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, 7-10, and 12-30 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 7-10, and 12-30 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.
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, 7-10, 12-27, 29 and 30 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 1, 7-27 and 29 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 Hoekje and further in view of Rosvall.
Copending claim 1 in view of Hoekje meets the limitations 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.
Allowable Subject Matter
Claim 21 would be allowable if the double patenting rejections were overcome. The following is a statement of reasons for the indication of allowable subject matter: The primary reason for the allowance is the narrowing of the anodes to comprise silicon and a platinum and iridium coating.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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