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 .
Claims 1-2,4,6-8,13-21 are under examination.
Priority
Applicants have better clarified the priority of the instant application 19/350,359 by defining the instant application as both a CIP of Application 16/063,993 and 18/240,059.
Oath
Please file the oath for this application. An oath is required before allowance.
Claim Objections
The claim objections have been withdrawn due to the claim amendments.
Response to Applicants Arguments/Amendments regarding the former 102/103 Rejections
The amendments have significantly changed the scope of the invention. This has resulted in the former rejections being withdrawn and new rejections being put forward.
Response to the former 112 Written Description Rejection
The term “artificial matter” has been removed from the claims. Therefore, the written description rejection is withdrawn.
Claim Rejections - 35 USC § 102
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 1,6,8,13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greene (5,055,402)
Greene discloses a method for recovering a metal or a metal compound comprising: an addition step of adding a dried matter of a cell of the red algae/Cyanidium (belonging to the order Cyanidiales) which would contain dried dead algae, a cell surface layer, and porphyrin from the algae to a metal solution; and an absorption step of causing the metal or the metal compound contained in the metal solution to be absorbed onto the cell derived from the dried matter, the cell surface layer thereof, or the porphyrin (Abstract; Column 1, lines 40-60; Column 9, lines 7-30; Column 13, last paragraph of Greene), wherein the metal comprises at least one selected from the group consisting of palladium, ruthenium, platinum, iridium contained in the metal solution to be selectively absorbed (Abstract, Column 11, lines 40-61 of Greene) as in instant Claim 1. Greene discloses a step of refining the metal or the metal compound absorbed onto the cell derived from the dried matter, the cell surface layer thereof, or the porphyrin thereof (Column 1, lines 5-15; Column 5, lines 1-25; Column 11, lines 29-61; Columns 19-20 of Greene) as in instant Claim 6. Greene discloses an additional step of adding a material derived from an alga belonging to the order Cyanidiales (Cyanidium—Column 13, line 67 of Greene) which is dead cells or a cell surface layer of an algae belonging to the order Cyanidiales, or porphyrin (Column 9, lines 30-60); and a recovery step of recovering a metal from the metal solution by the material derived from an alga belonging to the order Cyanidiales, wherein the recovery step involves selective recovery of palladium from a base metal mixture solution under acidic conditions (Column 5, lines 1-17; Column 11, lines 40-55; Claim 67; Column 20, lines 20-55 describe aqua regia/acidic solution used to recover platinum of Greene) as in instant Claim 8. Greene discloses wherein the dried matter of the cell is added to the metal solution (Column 11, lines 15-60 of Greene) as in instant Claim 13, Greene discloses wherein the dried matter of the cell surface layer is added to the metal solution (Column 11, lines 15-60 of Greene) as in instant Claim 14. The dried alga would also include porphyrin from the alga which would also be added (Column 11, lines 15-60) as in instant Claim 15. Greene discloses that the metal solution does not require gold; gold does not have to be present (Column 11, lines 40-55) as in instant Claim 16. Greene discloses a method for recovering a gold or a gold compound, comprising: an addition step of adding (i) a dried matter of a cell of the red algae belonging to the order Cyanidiales (Cyanidium) or a cell surface layer thereof, or (ii) porphyrin to a gold solution; and an absorption step of causing gold or the gold compound contained in the gold solution to be absorbed onto the cell derived from the dried matter, the cell surface layer thereof, or porphyrin at room temperature (Abstract, Column 1, line 10-12; Column 10, line 6; Column 11, lines 15-60; Column 13, line 68) as in instant Claim 17.
The reference anticipate the claim limitations.
Claims 17-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minoda “Recovery of rare earth elements from the sulfothermophilic red algal Galdieria sulphuraria using aqueous acid” Apply Microbiol Biotechnology (2015) 99: 1513-1519
Minoda discloses a method for recovering a gold or gold compound, comprising an addition step of adding a dried matter of a cell of the red algae belonging to the order Cyanidiales or a cell surface layer (present in the dried algae) thereof, or (ii) porphyrin to a gold solution (also present in dried algae); an absorption step of causing the gold compound contained in the gold solution to be absorbed onto the cell derived from the dried matter, the cell surface layer, thereof, or porphyrin at room temperature (Abstract of MInoda and Figure 5; Page 1515, Concentration-dependent recovery of the lanthanoid and Cu(II) ions under semi-anaerobic conditions) as in instant Claim 17, Minoda discloses wherein an amount of gold in the gold solution is 25 ppm or less (Page 1515, Concentration-dependent recovery of the lanthanoid and Cu(II) ions under semi-anaerobic conditions) as in instant Claim 18. Minoda discloses wherein the absorption step is performed within 30 minutes (Page 1518, left column of Minoda) as in instant Claim 19. Minoda discloses a metal recovery method comprising: an addition step of adding a material derived from an algae belonging to the order Cyanidiales, which is a dead cells or cell surface layer of an algae belonging to the order Cyanidiales, or porphyrin, a recovery step of recovering a metal from the metal solution by the material derived from an alga belonging to the order Cyanidiales, wherein the recovery step involves a selective recovery of gold from a base metal mixture solution under acidic conditions, and the recovery step is performed at room temperature (Abstract, Figure 5, and Page 1515; Concentration-dependent recovery of the lanthanoid and Cu(II) ions under semi-anaerobic conditions of Minoda) as in instant Claim 20. Minoda discloses wherein the absorption step is performed for within 30 minutes (Page 1518, left column of Minoda) as in instant Claim 21.
The reference anticipates the claim limitations.
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.
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 1-2,4,6,8,13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Greene (US 5,055,402)
Greene applies as above to teach claims 1,6,8,13-17. Greene teaches that dried/dead alga can be used to successfully absorb metals (Abstract of Greene). The metals that can be absorbed include the following: platinum, rhodium, palladium, ruthenium, iridium, gold, and/or silver. The amount of algae material used would be dependent upon the types of metals and/or metal concentration present in the metal solution as in instant Claim 2. Greene states that an acidic solution such as aqua regia can be used to assist with the metal recovery. The amount of aqua regia used would be dependent upon the amount of metal present in the solution and the amount of metal solution that needs to be treated as in instant Claim 4.
MPEP § 2144.05 (II) states the following: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In reKulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).
A review of the specification fails to provide evidence that the claimed concentrations are critical. Absent such evidence it would have been obvious to an artisan of ordinary skill at the time of effectively filing Greene to try a finite number of possible concentration of the algae and acid to predictably arrive at the claimed concentrations through routine optimization. An artisan would have a reasonable expectation of success in optimizing the concentrations of red algae and/or acid because determining such concentrations were long established in the art as demonstrated by the Greene reference. Thus, the Greene reference renders claims 2 and 4 obvious.
Claims 1,6-8,13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Greene (US 5,055,402) in view of Littlejohn et al. “Selective elution of nickel and cobalt from iminodiacetic acid cation exchange resin using ammoniacal solutions” Hydrometallurgy 141 (2014) 24-30.
Greene applies as above to teach claims 1,6,8,13-17. Greene applies as above to teach a method of recovering metals such as palladium, ruthenium, platinum, iridium, and osmium. Greene teaches that recovery is possible using such substances as sodium cyanide and aqua regia (Column 20). Greene does not teach that metal elution can be facilitated using a mixed solution containing ammonia and ammonium salts. However, Littlejohn teaches that metals can be successfully eluted using a mixture of aqueous ammonia, ammonium sulphate (an ammonium salt), and magnesium sulphate (Abstract of Littlejohn). It would have been obvious to an artisan of ordinary skill at the time of effective filing to have used the elution composition taught by Littlejohn. An artisan would have been motivated to have added the ammoniacal eluent composition taught by Littlejohn since it will allow for metals to be eluted and to be recovered (Abstract of Littlejohn). Because the elution composition of Littlejohn can successfully remove metals and allow them to be collected, there would have been a high expectation for success in using the elution composition of Littlejohn to remove/elute the metals absorbed by the dried algae (Abstract and Page 30, Conclusion Section of Littlejohn) as in instant Claim 7.
Greene teaches elution solution containing sodium cyanide and aqua regia that can remove/elute metals from algal absorption materials. Greene does not teach that such elution materials include an elution composition containing ammonia and ammonium salt. However, an artisan would have been motivated to have included an elution composition of Littlejohn (containing ammonia and ammonium salt) in place of sodium cyanide and aqua regia because Littlejohn also teaches that its composition of ammonia and ammonium salt can also successfully elute noble metals. Given the teachings of the cited references and the level of skill of an ordinary skilled artisan at the time of applicants’ invention, it must be considered, absent evidence to the contrary, that the ordinary skilled artisan would have had a reasonable expectation of success in practicing the claimed invention.
All the claimed elements were known in the prior art, and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combinations would have yielded predictable results to one or ordinary skill in the art at the time of the invention (See KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007). People of ordinary skill in the art will be highly educated individuals, possessing advanced degrees, including M.D. and Ph.D.s. They will be medical doctors, scientists, or engineers. Thus, these people most likely will be knowledgeable and well-read in the relevant literature and have the practical experience in metal recovery and agal culture. Therefore, the level of ordinary skill in this art is high.
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 1,13-15,17-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5,7-8 of U.S. Patent No. 12,577,633. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent 12,577,633 is a species of the instant set of claims. The claims of Patent 12,577,633 are species of the instant set of claims because they disclose the same limitations present in claims 1,13-15,17, and 20 in which gold/palladium are absorbed by dried algae, algae surface layer, or by porphyrin. In addition to the limitations disclosed in instant claims 1,13-15,17, and 20, the claims of Patent 12,577,633 also disclose the pH in which absorption occurs and how much metal (gold is absorbed).
The claims of Patent 12,577,633 does not teach that the amount of gold in the gold solution is 25 ppm or less and/or the absorption step is performed for 10 to 30 minutes. However, the Minoda reference teaches that the amount of gold in the solution is 25 ppm or less. An artisan would have been motivated included this level because it can be successfully absorbed by Cyanidiales as taught by Minoda. Minoda teaches an absorption under 30 minutes. An artisan would have been motivated to have used such an absorption time period because it is time enough to successfully absorb metals.
Claims 1-2,4,8-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22-23,25-26,29-31,41-45 of copending Application No. 18,240,059 (reference application) in view of Littlejohn et al. “Selective elution of nickel and cobalt from iminodiacetic acid cation exchange resin using ammoniacal solutions” Hydrometallury 141 (2014) 24-30 and Minoda “Recovery of rare earth elements from the sulfothermophilic red algal Galdieria sulphuraria using aqueous acid” Apply Microbiol Biotechnology (2015) 99: 1513-1519
Although the claims at issue are not identical, they are not patentably distinct from each other because the composition of claims 22-23,37-39,45 of 18/240,059 is able to successfully absorb the metal in a metal solution as required in instant claims 1 and 8. The composition of Application 18/240,059 includes a combination of dried matter of a cell of red algae from the family Cyanidiales combined with a metal solution. The dried red algae inherently absorbs and binds to metal solution. Littlejohn teaches how the metals can be eluted from such material (Abstract of Littlejohn). Instant claim 4 corresponds to claims 25-26 of Application 18/240,059. Claims 29-31,33 of Application 18/240,059 corresponds to instant claim 2. Claims 41-44 of Application 18/240,059 correspond to instant claim 9. Claims 38-39 of Application 18/240,059 correspond to instant claim 17. Claim 38 of Application 18/240,059 corresponds to instant claim 18. The claims of Application 18/240,059 do not address the appropriate absorption time or temperature during absorption. However, Minoda teaches that absorption can be within 30 minutes and at room temperature. Minoda also teaches using Cyanidiales algae to absorb metals. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
All claims stand rejected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN K VAN BUREN whose telephone number is (571)270-1025. The examiner can normally be reached M-F:9:30am-5:40pm; 9:00-10:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tracy Vivlemore can be reached at 571-272-2914. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAUREN K. VAN BUREN
Examiner
Art Unit 1638
/Tracy Vivlemore/Supervisory Primary Examiner, Art Unit 1638
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