DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/30/2025 amending Claim 1 and adding new Claims 27 - 29 has been entered.
Duplicate Claims, Warning
Applicant is advised that should Claim 27 be found allowable, Claim 24 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). New Claim 27 merely incorporates the limitations of Claims 22 – 24, therefore the ‘long form’ versions of Claims 24 and 27 would be substantial duplicates of each other.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 6, l. 3 and Claim 12, l. 3 recite “refining device” which is interpreted as ‘device for refining’. Claims 6 and 12 further recite that the “refining device…configured to extract metal ions included in the metal ion recovery liquid as a solid containing the metal”. MPEP2181(I)(A) states that "device for," was one of a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for." Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096, 89 USPQ2d 1289, 1293-94 (Fed. Cir. 2008); Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354, 80 USPQ2d 1225, 1228 (Fed. Cir. 2006); Personalized Media, 161 F.3d at 704, 48 USPQ2d at 1886–87; Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1214-1215, 48 USPQ2d 1010, 1017 (Fed. Cir. 1998).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1, 3, 4, 7, 17 – 24, and 26 - 29 are rejected under 35 U.S.C. 103 as being unpatentable over Hoshino (2016/0201163A1) in view of Goldszal et al. (12,268,993) in view of Norman (4,129,494).
Regarding Claim 1, Hoshino teaches, in Fig. 6 and Paras. [0042] and [0055], the invention as claimed, including a metal ion recovery device (6 – Fig. 6) comprising: a raw solution tank (73, 100) that is configured to store a metal ion containing raw solution (100) including metal ions (50 – Fig. 1 and Para. [0042]); a recovery liquid tank (73, 200) that is configured to store a metal ion recovery liquid (200 - Paras. [0061] and [0062]) including metal ions (50 – Fig. 1 and Para. [0042]) recovered from the metal ion containing raw solution (100); a metal ion selective permeable membrane (10) that is configured to be in contact with the metal ion containing raw solution (100) on one side (Fig. 6 – right-hand side of 73), to be in contact with the metal ion recovery liquid (200) on another side (Fig. 6 – left-hand side of 73) and to selectively transmit the metal ions (50 – shown in Figs. 1 and 3) from the metal ion containing raw solution (100) to the metal ion recovery liquid (200); an anode (12) that is positioned to be in contact with the metal ion containing raw solution (100); a cathode (11) that is positioned to be in contact with the metal ion recovery liquid (200); and the metal ion selective permeable membrane (10) is a sintered body (Paras. [0043], [0053] and [0054] “plate-like sintered compact”).
Hoshino – Fig. 6 is silent on a first porous current collector that is formed of a conductive material and is in electrical connection with the metal ion selective permeable membrane and one of the anode and the cathode. However, Hoshino further teaches, in Para. [0052] and Figs. 4 and 5, a porous current collector (30 – Figs. 4 and 5) that is formed of a conductive material (Para. [0052] “Here, as the current collector 30, a sheet-like substance which is electrically conductive, porous, and flexible, such as a carbon felt sheet, or a sheet formed of fibers of such a metal as Ti, can be used.”); wherein the anode (12) is arranged to be electrically connected to the metal ion selective permeable membrane (10) through a first porous current collector (30), and the cathode (11) is arranged to be electrically connected to the metal ion selective permeable membrane (10) through a second porous current collector (30). Hoshino further teaches, in Para. [0052] “In this way, in order to make the potentials of the surfaces of the permselective membrane 10 (super lithium ion conductor) constant, and bring the surfaces into contact with the stock solution 100 and the recovery solution 200, it is effective to interpose a current collector 30 between the mesh-like negative electrode 11 and the permselective membrane 10, and between the mesh-like positive electrode 12 and the same as shown in, for example, FIG. 4.”
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the Hoshino – Fig. 6 embodiment with the first porous current collector that is formed of a conductive material and is in electrical connection with the metal ion selective permeable membrane and one of the anode and the cathode, further taught by the Hoshino – Figs. 4 and 5 embodiments, to facilitate making the potentials of the surfaces of the permselective membrane constant, and bring the surfaces into contact with the raw solution and the recovery liquid.
Hoshino is silent on a first spacer that is configured to maintain a first gap between the metal ion selective permeable membrane and the one of the anode and the cathode, the first porous current collector being housed in the first gap, wherein the first spacer is a frame shape, a column shape, or a rectangular parallelepipede.
Goldszal teaches, in Abstract and Figs. 1 – 11, an ion recover device having a first spacer (2.2 and 2.4 – Fig. 2) that is configured to maintain a first gap (designed and intended purpose of a spacer) between a metal ion selective permeable membrane (2.1 and 2.3 – Fig. 2) and the one of the anode (solid rectangle on left-hand side of Figs. 8 - 10) and the cathode (solid rectangle on right-hand side of Figs. 8 - 10), wherein the first spacer (2.2 and 2.4 – Fig. 2) is a frame shape (shown in Figs. 2 – 7, Col. 4, ll. 34 – 38 “…the spacer 2.2, 2.4 is substantially rectangular- or square-shaped and has a width and a height, the width…”). Norman teaches, in Figs. 1 – 4, an ion recover device having a first spacer (20) that is configured to maintain a first gap (designed and intended purpose of a spacer) between an anode (A) and an adjacent cathode (C) and a second spacer (21) that is configured to maintain a second gap (designed and intended purpose of a spacer) between a cathode (C) and an adjacent anode (A) wherein the first spacer and second spacer are rectangular parallelepipede shaped (As shown in Figs. 3 and 4, the spacers (20 and 21) were rectangular parallelepipede shaped, i.e., conventional brick or board shaped). Norman teaches, in Col. 4, ll. 1 – 5, that the “…interior sides are fitted with vertically disposed spacer slots or strips, so that the side edges of the electrodes fit into these slots or between the strips, to maintain a uniform spacing for the electrolyte to flow between each anode and cathode face”.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Hoshino, with the first spacer that is configured to maintain a first gap between the metal ion selective permeable membrane and the one of the anode and the cathode, wherein the first spacer is a frame shape or a rectangular parallelepipede, taught by Goldszal and Norman, because all the claimed elements, i.e., the metal ion recovery device having a raw solution tank, a recovery liquid tank, and a metal ion selective permeable membrane, an anode, a cathode, a first porous current collector, and a second porous current collector, and a first spacer maintains a first gap between a metal ion selective permeable membrane and the one of the anode and the cathode, wherein the first spacer is a frame shape or a rectangular parallelepipede, were known in the art, in combination each one of the components would perform the same function as it did separately, and one skilled in the art could have combined the elements as claimed by known methods, with no change in their respective functions, to yield predictable results, i.e., utilizing the first spacer and the second spacer would have facilitated maintaining uniform gaps/spacing between the metal ion selective permeable membrane and the anode and cathode, respectively which would have maintained uniform fluid flow by maintaining a uniform cross-sectional flow area, i.e., the gap, for the raw solution between the anode and the metal ion selective permeable membrane and for the metal ion recovery liquid between the cathode and the metal ion selective permeable membrane. KSR, 550 U.S. 398 (2007), 82 USPQ2d at 1395; MPEP 2143(A). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that in the combination of Hoshino, i.v., Goldszal and Norman, the first porous current collector would have been housed in the first gap formed by the first spacer because Hoshino taught, in Para. [0052], interposing a porous current collector between the anode and the metal ion selective permeable membrane and interposing a porous current collector between the cathode and the metal ion selective permeable membrane in order to make the potentials of the surfaces of the selective permeable membrane constant, and bring the surfaces into contact with the raw solution and the metal ion recovery liquid.
Re Claim 3, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above, and Hoshino further teaches, in Fig. 6, including wherein the raw solution tank (73, 100) and the recovery liquid tank (73, 200) are alternately arranged in parallel through the metal ion selective permeable membrane (10), shown in Fig. 6.
Re Claim 4, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above, and Hoshino further teaches, in Para. [0042], wherein the metal ion is a lithium ion (50).
Re Claim 7, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above, and Hoshino further teaches, in Abstract and Paras. [0060] and [0061], a metal ion recovery method comprising: using the metal ion recovery device according to claim 1, transmitting metal ions (50) included in the metal ion containing raw solution (100) stored in the raw solution tank (73, 100) of the metal ion recovery device through the metal ion selective permeable membrane (10), and recovering the metal ions (50) with the metal ion recovery liquid (200) stored in the recovery liquid tank (73, 100). Hoshino discloses, in Para. [0061], “…the recovery solution 200 after treatment is concentrated, and then added with a Na2CO3 aqueous solution, whereby Li2CO3 can be precipitated in an NaCl aqueous solution (salt water) to allow Li2CO3 to be easily extracted. Thereafter, by cleaning the Li2CO3 with pure water, or the like, Li2CO3 powder in a high concentration can be obtained.”
Re Claim 17, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above; except, wherein a thickness of the first spacer is configured to be equal to a thickness of the first porous current collector after the first porous current collector is provided in the metal ion recovery device.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that in the combination of Hoshino, i.v., Goldszal and Norman, the thickness of the first spacer would have been equal to a thickness of the first porous current collector after the first porous current collector is provided in the metal ion recovery device because, when said metal ion recovery device was assembled, said first porous current collector would have been sandwiched between and in electrical connection with the metal ion selective permeable membrane and one of the anode and the cathode, as recited in Claim 1 and taught by Hoshino – Para. [0052] and Figs. 4 and 5, wherein the thickness of the first spacer defined the assembled thickness between the metal ion selective permeable membrane and one of the anode and the cathode.
Re Claim 18, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above; except, wherein a thickness of the first spacer is configured to be less than a thickness of the first porous current collector before the first porous current collector is provided in the metal ion recovery device.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to modify Hoshino, i.v., Goldszal and Norman, to have the thickness of the first spacer is configured to be less than a thickness of the first porous current collector before the first porous current collector is provided in the metal ion recovery device because Applicant has not disclosed that “a thickness of the first spacer is configured to be less than a thickness of the first porous current collector before the first porous current collector is provided in the metal ion recovery device” provides an advantage, is used for a particular purpose, or solves a stated problem. In fact, Applicant’s Specification Para. [0041], disclosed “That is, the thickness of the first spacer 18 is preferably the same as the thickness of the porous current collector 17. The thickness of the porous current collector 17 before the porous current collector is provided in the metal ion recovery device 10a is preferably equal to or larger than the thickness of the first spacer 18.” Furthermore Claim 18 recitation of “a thickness of the first spacer is configured to be less than a thickness of the first porous current collector” is mutually exclusive of Claim 17 recitation of “thickness of the first spacer is configured to be equal to a thickness of the first porous current collector”. The mutually exclusive limitations of Claims 17 and 18 and the disclosure in Para. [0041] that the thickness of the porous current collector is preferably equal to or larger than the thickness of the first spacer is indicative of the fact that the claimed thicknesses are indeed a “Design Choice”, as all options perform equally well, and none of the options exhibits an advantage over the others. One of ordinary skill furthermore, would have expected Applicant’s invention to perform equally well with Hoshino’s teaching, in Paras. [0052] and [0053] and Figs. 4 and 5, that the porous current collector (30 - carbon felt sheet) was electrically conductive and flexible so that it would have conformed to the irregular surface, i.e., not-flat, of the metal ion selective permeable membrane to facilitate making the potentials of the surfaces of the metal ion selective permeable membrane constant.
Therefore, it would have been an obvious matter of design choice to modify Hoshino, i.v., Goldszal and Norman, to obtain the invention as specified in Claim 18.
Alternatively, Hoshino further teaches, in Para. [0053], that the metal ion selective permeable membrane had irregular surfaces, i.e., not-flat, and that the electrically conductive, flexible, and porous current collector (30 - carbon felt sheet) was used to facilitate making the potentials of the surfaces of the metal ion selective permeable membrane constant by conforming to the irregular surfaces, e.g., “increasing the adhesiveness to the surface having irregularities”.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that in the combination of Hoshino, i.v., Goldszal and Norman, having the thickness of the first spacer be less than a thickness of the first porous current collector before the first porous current collector is provided in the metal ion recovery device would have facilitated conforming the first porous current collector to the irregular surface of the metal ion selective permeable membrane because when said metal ion recovery device was assembled, said first porous current collector would have been compressed and sandwiched between and in electrical connection with the irregular surface of the metal ion selective permeable membrane and one of the anode and the cathode, as recited in Claim 1 and taught by Hoshino – Para. [0052] and Figs. 4 and 5, wherein the thickness of the first spacer defined the assembled thickness between the metal ion selective permeable membrane and one of the anode and the cathode.
Re Claim 19, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above, and Hoshino further teaches, in Figs. 4 and 5, further comprising: a second porous current collector (30) that is formed of the conductive material (Para. [0052] – carbon felt) and is in electrical connection with the metal ion selective permeable membrane (10) and the other one of the anode and the cathode (11), refer to the Claim 1 rejection above.
Hoshino, i.v., Goldszal and Norman, as discussed above, is silent on a second spacer that is configured to maintain a second gap between the metal ion selective permeable membrane and the other one of the anode and the cathode, the second porous current collector being housed in the second gap.
As discussed in the Claim 1 rejection above, Goldszal taught, in Abstract and Figs. 1 – 11, an ion recover device having a second spacer (2.2 and 2.4 – Fig. 2) that is configured to maintain a second gap (designed and intended purpose of a spacer) between a metal ion selective permeable membrane (2.1 and 2.3 – Fig. 2) and the one of the anode (solid rectangle on left-hand side of Figs. 8 - 10) and the cathode (solid rectangle on right-hand side of Figs. 8 - 10), wherein the second spacer (2.2 and 2.4 – Fig. 2) is a frame shape (shown in Figs. 2 – 7, Col. 4, ll. 34 – 38 “…the spacer 2.2, 2.4 is substantially rectangular- or square-shaped and has a width and a height, the width…”). Norman teaches, in Figs. 1 – 4, an ion recover device having a first spacer (20) that is configured to maintain a first gap (designed and intended purpose of a spacer) between an anode (A) and an adjacent cathode (C) and a second spacer (21) that is configured to maintain a second gap (designed and intended purpose of a spacer) between a cathode (C) and an adjacent anode (A) wherein the first spacer and second spacer are rectangular parallelepipede shaped (As shown in Figs. 3 and 4, the spacers (20 and 21) were rectangular parallelepipede shaped, i.e., conventional brick or board shaped). Norman teaches, in Col. 4, ll. 1 – 5, that the “…interior sides are fitted with vertically disposed spacer slots or strips, so that the side edges of the electrodes fit into these slots or between the strips, to maintain a uniform spacing for the electrolyte to flow between each anode and cathode face”.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Hoshino, with a second spacer that is configured to maintain a second gap between the metal ion selective permeable membrane and the other one of the anode and the cathode, taught by Goldszal and Norman, because all the claimed elements, i.e., the metal ion recovery device having a raw solution tank, a recovery liquid tank, and a metal ion selective permeable membrane, an anode, a cathode, a first porous current collector, and a second porous current collector, and a second spacer maintains a second gap between a metal ion selective permeable membrane and the one of the anode and the cathode, were known in the art, in combination each one of the components would perform the same function as it did separately, and one skilled in the art could have combined the elements as claimed by known methods, with no change in their respective functions, to yield predictable results, i.e., utilizing the first spacer and the second spacer would have facilitated maintaining uniform gaps/spacing between the metal ion selective permeable membrane and the anode and cathode, respectively which would have maintained uniform fluid flow by maintaining a uniform cross-sectional flow area, i.e., the gaps, for the raw solution between the anode and the metal ion selective permeable membrane and for the metal ion recovery liquid between the cathode and the metal ion selective permeable membrane. KSR, 550 U.S. 398 (2007), 82 USPQ2d at 1395; MPEP 2143(A). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that in the combination of Hoshino, i.v., Goldszal and Norman, the second porous current collector being housed in the second gap formed by the second spacer because Hoshino taught, in Para. [0052], interposing a porous current collector between the anode and the metal ion selective permeable membrane and interposing a porous current collector between the cathode and the metal ion selective permeable membrane in order to make the potentials of the surfaces of the selective permeable membrane constant, and bring the surfaces into contact with the raw solution and the metal ion recovery liquid.
Re Claim 20, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above; except, wherein a thickness of the second spacer is configured to be equal to a thickness of the second porous current collector after the second porous current collector is provided in the metal ion recovery device.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that in the combination of Hoshino, i.v., Goldszal and Norman, the thickness of the second spacer would have been equal to a thickness of the second porous current collector after the second porous current collector is provided in the metal ion recovery device because, when said metal ion recovery device was assembled, said second porous current collector would have been sandwiched between and in electrical connection with the metal ion selective permeable membrane and one of the anode and the cathode, as recited in Claim 19 and taught by Hoshino – Para. [0052] and Figs. 4 and 5, wherein the thickness of the second spacer defined the assembled thickness between the metal ion selective permeable membrane and one of the anode and the cathode.
Re Claim 21, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above; except, wherein a thickness of the second spacer is configured to be less than a thickness of the second porous current collector before the second porous current collector is provided in the metal ion recovery device.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to modify Hoshino, i.v., Goldszal and Norman, to have the thickness of the second spacer is configured to be less than a thickness of the second porous current collector before the second porous current collector is provided in the metal ion recovery device because Applicant has not disclosed that “a thickness of the second spacer is configured to be less than a thickness of the second porous current collector before the second porous current collector is provided in the metal ion recovery device” provides an advantage, is used for a particular purpose, or solves a stated problem. In fact, Applicant’s Specification Para. [0042], disclosed “That is, the thickness of the second spacer 19 is preferably the same as the thickness of the porous current collector 17. The thickness of the porous current collector 17 before the porous current collector is provided in the metal ion recovery device 10a is preferably equal to or larger than the thickness of the second spacer 19.” Furthermore Claim 21 recitation of “a thickness of the second spacer is configured to be less than a thickness of the second porous current collector” is mutually exclusive of Claim 20 recitation of “thickness of the second spacer is configured to be equal to a thickness of the second porous current collector”. The mutually exclusive limitations of Claims 20 and 21 and the disclosure in Para. [0042] that the thickness of the porous current collector is preferably equal to or larger than the thickness of the second spacer is indicative of the fact that the claimed thicknesses are indeed a “Design Choice”, as all options perform equally well, and none of the options exhibits an advantage over the others. One of ordinary skill furthermore, would have expected Applicant’s invention to perform equally well with Hoshino’s teaching, in Paras. [0052] and [0053] and Figs. 4 and 5, that the porous current collector (30 - carbon felt sheet) was electrically conductive and flexible so that it would have conformed to the irregular surface, i.e., not-flat, of the metal ion selective permeable membrane to facilitate making the potentials of the surfaces of the metal ion selective permeable membrane constant.
Therefore, it would have been an obvious matter of design choice to modify Hoshino, i.v., Goldszal and Norman, to obtain the invention as specified in Claim 21.
Alternatively, Hoshino further teaches, in Para. [0053], that the metal ion selective permeable membrane had irregular surfaces, i.e., not-flat, and that the electrically conductive, flexible, and porous current collector (30 - carbon felt sheet) was used to facilitate making the potentials of the surfaces of the metal ion selective permeable membrane constant by conforming to the irregular surfaces, e.g., “increasing the adhesiveness to the surface having irregularities”.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that in the combination of Hoshino, i.v., Goldszal and Norman, having the thickness of the second spacer be less than a thickness of the second porous current collector before the second porous current collector is provided in the metal ion recovery device would have facilitated conforming the second porous current collector to the irregular surface of the metal ion selective permeable membrane because when said metal ion recovery device was assembled, said second porous current collector would have been compressed and sandwiched between and in electrical connection with the irregular surface of the metal ion selective permeable membrane and one of the anode and the cathode, as recited in Claim 19 and taught by Hoshino – Para. [0052] and Figs. 4 and 5, wherein the thickness of the second spacer defined the assembled thickness between the metal ion selective permeable membrane and one of the anode and the cathode.
Re Claim 22, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above, and Hoshino further teaches, in Fig. 6, further comprising: a cell housing portion (right-hand side of 73) having an inlet (75) and an outlet (74) through each of which one of the metal ion containing raw solution (100) and the metal ion recovery liquid is flowable into and out of the metal ion recovery device (73); and a cell lid portion (left-hand side of 73) coupled to the cell housing portion (right-hand side of 73) and having an inlet (77) and an outlet (76) through each of which the other one of the metal ion containing raw solution and the metal ion recovery liquid (200) is flowable into and out of the metal ion recovery device (73).
As discussed in the Claim 1 rejection above, the combination of Hoshino, i.v., Goldszal and Norman, teaches that the first spacer is a first frame.
Hoshino, i.v., Goldszal and Norman, teaches a metal ion recovery device, i.e., base device, upon which the claimed invention can be seen as an improvement. Hoshino, i.v., Goldszal and Norman, as discussed above, is silent on said first spacer is configured to form a portion of one of the raw solution tank and the recovery liquid tank, and wherein each of the anode, the metal ion selective permeable membrane, the cathode, the first frame, and the first porous current collector are captured between the cell housing portion and the cell lid portion when the cell housing portion is coupled to the cell lid portion.
Goldszal further teaches, in Figs. 1 and 8 – 10 and Col. 7, ll. 50 - 67, an ion recovery device having a first spacer (2.2, 2.4) configured to form a portion of a tank and wherein each of an anode, an ion selective permeable membrane (2.1, 2.3), a cathode, a first spacer/frame (2.2, 2.4) are captured between the cell housing portion (1.1) and the cell lid portion (1.2) when the cell housing portion (1.1) is coupled (1.4 – tie bolts) to the cell lid portion (1.2).
Thus, improving a particular device (metal ion recovery device), based upon the teachings of such improvement in Goldszal, would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, i.e., applying this known improvement technique in the same manner to the metal ion recovery device of Hoshino, i.v., Goldszal and Norman, and the results would have been predictable and readily recognized, that arranging the anode, the metal ion selective permeable membrane, the cathode, the first frame, and the first porous current collector as a plurality of stacked laminates captured between the cell housing portion and the cell lid portion by tie bolts would have facilitated the first spacer/frame forming a portion of one of the raw solution tank and the recovery liquid tank. In other words, the central opening (3.1 – Fig. 3 or 5.5 – Fig. 5a) of the first spacer/frame (Fig. 3 or 5.1 - Fig. 5a) would have formed a portion of one of the raw solution tank and the recovery liquid tank when assembled with the other stacked laminates into the metal ion recovery device. KSR, 550 U.S. 398 (2007), 82 USPQ2d at 1396; MPEP 2143(C).
Re Claim 23, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above, including (discussed in the Claim 1 rejection above) further comprising: a second porous current collector (30 – Hoshino – Figs. 4 and 5) that is formed of the conductive material (carbon felt) and is in electrical connection with the metal ion selective permeable membrane (10) and the other one of the anode and the cathode (11).
Hoshino, i.v., Goldszal and Norman, as discussed above, is silent on a second frame that is configured to maintain a second gap between the metal ion selective permeable membrane and the other one of the anode and the cathode and to form a portion of the recovery liquid tank, the second porous current collector being housed in the second gap.
As discussed in the Claim 1 rejection above, Goldszal teaches, in Abstract and Figs. 1 – 11, an ion recover device having a second frame (2.2 and 2.4 – shown in Figs. 2 – 7, Col. 4, ll. 34 – 38 “…the spacer 2.2, 2.4 is substantially rectangular- or square-shaped and has a width and a height, the width…”) that is configured to maintain a second gap (designed and intended purpose of a spacer) between an ion selective permeable membrane (2.1 and 2.3 – Fig. 2) and the one of the anode (solid rectangle on left-hand side of Figs. 8 - 10) and the cathode (solid rectangle on right-hand side of Figs. 8 - 10) and to form a portion of a liquid tank [The central opening (3.1 – Fig. 3 or 5.5 – Fig. 5a) of the second frame (Fig. 3 or 5.1 - Fig. 5a) would have formed a portion of a liquid tank when assembled with the other stacked laminates into the ion recovery device.] Norman teaches, in Figs. 1 – 4, an ion recover device having a first spacer (20) that is configured to maintain a first gap (designed and intended purpose of a spacer) between an anode (A) and an adjacent cathode (C) and a second spacer (21) that is configured to maintain a second gap (designed and intended purpose of a spacer) between a cathode (C) and an adjacent anode (A) wherein the first spacer and second spacer are rectangular parallelepipede shaped (As shown in Figs. 3 and 4, the spacers (20 and 21) were rectangular parallelepipede shaped, i.e., conventional brick or board shaped). Norman teaches, in Col. 4, ll. 1 – 5, that the “…interior sides are fitted with vertically disposed spacer slots or strips, so that the side edges of the electrodes fit into these slots or between the strips, to maintain a uniform spacing for the electrolyte to flow between each anode and cathode face”.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Hoshino, i.v., Goldszal and Norman, with a second frame that is configured to maintain a second gap between the metal ion selective permeable membrane and the other one of the anode and the cathode and to form a portion of a liquid tank, taught by Goldszal and Norman, because all the claimed elements, i.e., the metal ion recovery device having a raw solution tank, a recovery liquid tank, and a metal ion selective permeable membrane, an anode, a cathode, a first porous current collector, and a second porous current collector, and a second frame that is configured to maintain a second gap between the metal ion selective permeable membrane and the other one of the anode and the cathode and to form a portion of a liquid tank, were known in the art, in combination each one of the components would perform the same function as it did separately, and one skilled in the art could have combined the elements as claimed by known methods, with no change in their respective functions, to yield predictable results, i.e., utilizing the first spacer and the second spacer would have facilitated maintaining uniform gaps/spacing between the metal ion selective permeable membrane and the anode and cathode, respectively which would have maintained uniform fluid flow by maintaining a uniform cross-sectional flow area, i.e., the gap, for the raw solution between the anode and the metal ion selective permeable membrane and for the metal ion recovery liquid between the cathode and the metal ion selective permeable membrane. KSR, 550 U.S. 398 (2007), 82 USPQ2d at 1395; MPEP 2143(A). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that in the combination of Hoshino, i.v., Goldszal and Norman, the second porous current collector would have been housed in the second gap formed by the second frame because Hoshino taught, in Para. [0052], interposing a porous current collector between the anode and the metal ion selective permeable membrane and interposing a porous current collector between the cathode and the metal ion selective permeable membrane in order to make the potentials of the surfaces of the selective permeable membrane constant, and bring the surfaces into contact with the raw solution and the metal ion recovery liquid.
Hoshino, i.v., Goldszal and Norman, as discussed above, is silent on wherein each of the second porous current collector and the second frame are captured between the cell housing portion and the cell lid portion when the cell housing portion is coupled to the cell lid portion.
As discussed in the Claim 22 rejection above, Goldszal further teaches, in Figs. 1 and 8 – 10 and Col. 7, ll. 50 - 67, an ion recovery device having a first frame (2.2) and a second frame (2.4) configured to form a portion of a tank and wherein each of an anode, a first spacer/frame (2.2), an ion selective permeable membrane (2.1, 2.3), a second spacer/frame (2.4), a cathode are captured between the cell housing portion (1.1) and the cell lid portion (1.2) when the cell housing portion (1.1) is coupled (1.4 – tie bolts) to the cell lid portion (1.2).
Thus, improving a particular device (metal ion recovery device), based upon the teachings of such improvement in Goldszal, would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, i.e., applying this known improvement technique in the same manner to the metal ion recovery device of Hoshino, i.v., Goldszal and Norman, and the results would have been predictable and readily recognized, that arranging the anode, the first frame and the first porous current collector, the metal ion selective permeable membrane, the second frame and the second porous current collector, and the cathode as a plurality of stacked laminates captured between the cell housing portion and the cell lid portion by tie bolts would have facilitated the first spacer/frame forming a portion of one of the raw solution tank and the recovery liquid tank and the second spacer/frame forming a portion of the other one of the raw solution tank and the recovery liquid tank. In other words, the central openings (3.1 – Fig. 3 or 5.5 – Fig. 5a) of the first spacer/frame and second spacer/frame (Fig. 3 or 5.1 - Fig. 5a) would have formed a portion of one of the raw solution tank and the recovery liquid tank when assembled with the other stacked laminates into the metal ion recovery device. KSR, 550 U.S. 398 (2007), 82 USPQ2d at 1396; MPEP 2143(C).
Re Claim 24, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above, including wherein the cell housing portion and the cell lid portion are configured to house a laminate consisting of the cathode, the first frame, the first porous current collector, the metal ion selective permeable membrane, the second porous current collector, the second frame, and the anode, refer to the Claim 23 rejection above.
Re Claim 26, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above, wherein the first spacer is a frame shape, refer to the Claim 1 rejection above.
Re Claim 27, Hoshino, i.v., Goldszal and Norman, teaches the invention as claimed and as discussed above, and Hoshino further teaches, in Fig. 6, further comprising: a cell housing portion (right-hand side of 73) having an inlet (75) and an outlet (74) through each of which one of the metal ion containing raw solution (100) and the metal ion recovery liquid is flowable into and out of the metal ion recovery device (73); and a cell lid portion (left-hand side of 73) coupled to the cell housing portion (right-hand side of 73) and having an inlet (77) and an outlet (76) through each of which the other one of the metal ion containing raw solution and the metal ion recovery liquid (200) is flowable into and out of the metal ion recovery device (73); a second porous current collector (30 – Hoshino – Figs. 4 and 5) that is formed of the conductive material (carbon felt) and is in electrical connection with the metal ion selective permeable membrane (10) and the other one of the anode and the cathode (11).
As discussed in the Claim 1 rejection above, the combination of Hoshino, i.v., Goldszal and Norman, teaches that the first spacer is a first frame.
Hoshino, i.v., Goldszal and Norman, teaches a metal ion recovery device, i.e., base device, upon which the claimed invention can be seen as an improvement. Hoshino, i.v., Goldszal and Norman, as discussed above, is silent on said first spacer is configured to form a portion of one of the raw solution tank and the recovery liquid tank, and wherein each of the anode, the metal ion selective permeable membrane, the cathode, the first frame, and the first porous current collector are captured between the cell housing portion and the cell lid portion when the cell housing portion is coupled to the cell lid portion.
Goldszal further teaches, in Figs. 1 and 8 – 10 and Col. 7, ll. 50 - 67, an ion recovery device having a first spacer (2.2, 2.4) configured to form a portion of a tank and wherein each of an anode, an ion selective permeable membrane (2.1, 2.3), a cathode, a first spacer/frame (2.2, 2.4) are captured between the cell housing portion (1.1) and the cell lid portion (1.2) when the cell housing portion (1.1) is coupled (1.4 – tie bolts) to the cell lid portion (1.2).
Thus, improving a particular device (metal ion recovery device), based upon the teachings of such improvement in Goldszal, would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, i.e., applying this known improvement technique in the same manner to the metal ion recovery device of Hoshino, i.v., Goldszal and Norman, and the results would have been predictable and readily recognized, that arranging the anode, the metal ion selective permeable membrane, the cathode, the first frame, and the first porous current collector as a plurality of stacked laminates captured between the cell housing portion and the cell lid portion by tie bolts would have facilitated the first spacer/frame forming a portion of one of the raw solution tank and the recovery liquid tank. In other words, the central opening (3.1 – Fig. 3 or 5.5 – Fig. 5a) of the first spacer/frame (Fig. 3 or 5.1 - Fig. 5a) would have formed a portion of one of the raw solution tank and the recovery liquid tank when assembled with the other stacked laminates into the metal ion recovery device. KSR, 550 U.S. 398 (2007), 82 USPQ2d at 1396; MPEP 2143(C).
Hoshino, i.v., Goldszal and Norman, as discussed above, is silent on a second frame that is configured to maintain a second gap between the metal ion selective permeable membrane and the other one of the anode and the cathode and to form a portion of the recovery liquid tank, the second porous current collector being housed in the second gap.
As discussed in the Claim 1 rejection above, Goldszal teaches, in Abstract and Figs. 1 – 11, an ion recover device having a second frame (2.2 and 2.4 – shown in Figs. 2 – 7, Col. 4, ll. 34 – 38 “…the spacer 2.2, 2.4 is substantially rectangular- or square-shaped and has a width and a height, the width…”) that is configured to maintain a second gap (designed and intended purpose of a spacer) between an ion selective permeable membrane (2.1 and 2.3 – Fig. 2) and the one of the anode (solid rectangle on left-hand side of Figs. 8 - 10) and the cathode (solid rectangle on right-hand side of Figs. 8 - 10) and to form a portion of a liquid tank [The central opening (3.1 – Fig. 3 or 5.5 – Fig. 5a) of the second frame (Fig. 3 or 5.1 - Fig. 5a) would have formed a portion of a liquid tank when assembled with the other stacked laminates into the ion recovery device.] Norman teaches, in Figs. 1 – 4, an ion recover device having a first spacer (20) that is configured to maintain a first gap (designed and intended purpose of a spacer) between an anode (A) and an adjacent cathode (C) and a second spacer (21) that is configured to maintain a second gap (designed and intended purpose of a spacer) between a cathode (C) and an adjacent anode (A) wherein the first spacer and second spacer are rectangular parallelepipede shaped (As shown in Figs. 3 and 4, the spacers (20 and 21) were rectangular parallelepipede shaped, i.e., conventional brick or board shaped). Norman teaches, in Col. 4, ll. 1 – 5, that the “…interior sides are fitted with vertically disposed spacer slots or strips, so that the side edges of the electrodes fit into these slots or between the strips, to maintain a uniform spacing for the electrolyte to flow between each anode and cathode face”.
It wo