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 8 August 2025. Claims 1, 3, 4 and 10 are currently pending and claims of which claims 5-9 are withdrawn from consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 4 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 1, at line 5 the claim recites a single cylindrical metal ion selective permeable membrane that partitions of a plurality of recovery liquid tanks; however, later at lines 19-21, the claim discusses a plurality of membranes facing each other. It is unclear as to how both of these things could be simultaneously true. Furthermore, there is insufficient antecedent basis for the second limitation.
As to claim 3, the claim recites two or more cylindrical metal ion selective permeable membranes. However, a plurality of membranes are already recited in claim 1, upon which claim 3 is dependent. Therefore, it is unclear as to if the limitation of claim 3 intends to refer back to that of claim 1 or to a new and separate limitation. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
As to claim 10, the claim narrows “the cylindrical metal ion selective permeable membrane”. However, claim 1 refers to a plurality of membranes. It is therefore unclear which of the membranes is being narrowed, a single membrane or the plurality of membranes. For the purpose of Examination, the claim has been broadly interpreted to include, at least, both of the above interpretations.
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.
Claims 1, 3, 4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 5,951,843 to Itoh et al. (Itoh).
As to claims 1, 3, 4 and 10, Itoh teaches a metal ion recovery device comprising a first tank containing a first solution and a plurality of ion selective permeable membranes (2) that partition a plurality of aligned second tanks, each within a separate one of the membranes, from the first tank and selectively transmits lithium ions, an anode electrically connected to one surface of each of the membranes (2) and a cathode electrically connected to a second surface of each of the membranes (2). Itoh teaches that either tank can be utilized as the raw solution tank configured to store a lithium ion containing raw solution and the recovery liquid for receiving the transmitted lithium ions, thus teaching an embodiment wherein the first tank is a raw solution tank and the anodes are located closer to the first tank than the second tanks, and wherein the second tanks are recovery liquid tanks and the cathodes are located closer to the second tanks than the first tank, thus arranged such that the surfaces of the selective membranes facing each other have the same polarity in the recovery liquid tanks which are adjacent. Itoh further teaches that the membrane can be formed with both ends open, thus rendering obvious, in a combination of features of Itoh, forming the plurality of membranes cylindrical with both ends open. Itoh further teaches that the anode and cathode are placed in contact with the membrane and along the entire membrane, thus matching an outer peripheral shape (i.e. all cylindrical) (Column 4, Lines 24-41; Column 9, Lines 19-36; Column 9, Line 49 to Column 10, Line 8; Column 14, Lines 29 to Column 15, Line 12; Figures 7 and 12).
Response to Arguments
Applicant's arguments filed 8 August 2025 have been fully considered but they are not persuasive.
Applicants argue that Itoh does not teach the newly amended claims. The Examiner disagrees. Applicant argue that the “honeycomb” embodiments of Itoh do not teach the claim limitations, the Examiner does not disagree. However, Applicant’s further argue that the embodiments as illustrated in Figures such as 9a and 9b also do not teach the claim limitations. The Examiner disagrees. Applicants argue, essentially, that the raw solution tank and the recovery tank of Itoh’s embodiment are switched and thus cannot meet the claim limitations. However, the Examiner disagrees. Itoh specifically teaches that “the inside of the tubular partition 2 can be used as either the feed chamber or the recovery chamber” (Column 4, Lines 27-29). Itoh thus specifically teaching, while not present in the figures, the reverse embodiment as claimed. In order to operate all of the insides as the recovery chamber, the polarity requirements of the claims would further be met.
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