DETAILED ACTIONNotice 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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 29, 2026 has been entered.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13, 16-21 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bernardi et al. (WO 2012/163791 A1).
With regard to Claim 13, Bernardi teaches a system for treating a lithium solution comprising an ion exchange resin (Paragraph 0015, the invention relates to a method for producing a lithium chloride solution from a lithiated brine, characterized in that the separation of the lithium chloride from the other components of the lithiated brine is carried out by means of an ion exchange resin arranged in at least one column).
Bernardi teaches the ion exchange resin having a loading configuration with a feed input and a raffinate output; an elution configuration with an eluent input and an eluate output; a counterion form in the loading configuration; and, a lithium ion form in the elution configuration (Claims 1-5; Figs. 1-6, Paragraphs 0053-0055, The six columns 1, 2, 3, 4, 5, 6 are connected in series and are each equipped with five valves and pipes on which the valves are arranged:- two inlet valves, one for the supply of lithiated brine, the other for the supply of eluent; - two outlet valves, one used for extract recovery, the other for raffinate recovery; - and a valve controlling the connection of the column with the next column; also see Table 1 of original French document).
Bernardi teaches the system being configured to receive a feed stream comprising lithium ions and anions added to the resin through the feed input (Figs. 1-6; Paragraph 0058, the lithiated brine, containing in particular Li, Mg, SO4 and B, is introduced from a reservoir 13).
Bernardi teaches expelling a raffinate stream comprising monovalent cations other than Li from the ion exchange resin and the anions from the feed stream, from the resin through the raffinate output (Paragraph 0080, It is therefore possible to extract from the third zone, in this case in the lower part of the third column 3, a brine which has been stripped of most of its initial Li content and which now contains only a fraction of its initial Mg, SO4 and B contents. A part of this brine purified in Li and rich in Mg is extracted from the circuit by a pipe 23; see Fig. 5 for reference).
Bernardi teaches receiving an eluent stream comprising the monovalent cations and anions,
added to the resin through the eluent input (Figs. 1-6; Paragraph 0066, a volume of eluent is injected from reservoir 15 at the start of zone 1; also see Table 1 of original French document, Saumure d’élution (saumure sodée)).
Bernardi teaches providing an eluate stream comprising the lithium ions of the resin and the anions of the eluent stream, eluted from the resin through the eluate output (Paragraph 0080, an identical volume of extract is recovered at the outlet of zone 1 (bottom of column 5) via a pipe 24; see Fig. 5 for reference).
Bernardi teaches the system wherein when the feed stream is added to the ion exchange resin in the loading configuration, the raffinate stream is expelled and the ion exchange resin is converted to the elution configuration (Claims 1-5; Figs. 1-6, Paragraphs 0053-0055, The six columns 1, 2, 3, 4, 5, 6 are connected in series and are each equipped with five valves and pipes on which the valves are arranged:- two inlet valves, one for the supply of lithiated brine, the other for the supply of eluent; - two outlet valves, one used for extract recovery, the other for raffinate recovery; - and a valve controlling the connection of the column with the next column; also see Table 1 of original French document).
Bernardi is silent to the limitation wherein when the eluent stream is added to the ion exchange resin in the elution configuration, the eluate stream is eluted while the ion exchange resin is converted to the loading configuration simultaneously. However, as set forth in MPEP 2114.II., a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
With regard to Claims 16 and 17, Bernardi teaches the system wherein the ion exchange resin is arranged in a column, and wherein two or more columns are arranged in series (Claims 1 and 3; Paragraph 0047, The brine exiting from the lower part of one column is injected into the upper part of the next column, and the columns are thus connected in series to form a loop, the lower part of the last column being connected to the upper part of the first column).
With regard to Claim 18, Bernardi teaches the system wherein the columns arranged in
series are arranged in a continuous loop in a simulated moving bed process (SMB) (Claims 1 and 2; Paragraph 0040, The separation can be carried out in a simulated moving bed (SMB process, simulating moving bed), and preferably according to the simulated sequential moving bed (SSMB process, simulated sequential moving bed) process).
With regard to Claim 19, Bernardi teaches the system wherein the ion exchange resin is a strong acid cation exchange resin (Claim 7; Paragraph 0043, Preferably, a strongly acidic cationic resin containing at least sulfonic groups and having a precise particle size of between 200 and 800 μm is used so that the Li atoms can be accommodated between the grains as exclusively as possible).
With regard to Claim 20, Bernardi teaches the system wherein the ion exchange resin in
the loading configuration is in a Na+ or K+ form (Table 1 of original French document; Paragraph 0043, Li-rich brine (lithia-containing brine) is obtained by diluting crude Li brine containing more than 400 g/l of dissolved solids with distilled water. Dilution produces a brine containing 200-300 g/l of dissolved solids).
With regard to Claim 21, Bernardi is silent to the eluent stream comprising sodium hydroxide (NaOH), sodium bicarbonate (NaHCO3) or a mix of NaHCO3 and sodium carbonate (Na2CO3), instead teaching the eluent stream comprising sodium chloride (NaCl) (Fig. 1-6, Paragraph 0107, The elution brine at 300 g/l NaCl passes through the columns).
However, as set forth in MPEP 2114.II., a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
With regard to Claim 24, Bernardi teaches the system wherein the feed stream further comprises at least one of silica, chloride, boron and sulfate (Figs. 1-6; Paragraph 0058, the lithiated brine, containing in particular Li, Mg, SO4 and B, is introduced from a reservoir 13).
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.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Bernardi et al. (WO 2012/163791 A1) as applied to claims 13, 16-21 and 24 above, and further in view of Snydacker et al. (US 2019/0256987 A1).
With regard to Claim 22, Bernardi is silent to the system further comprising a crystallization stage, optionally including a precipitation stage using direct steam or boiling by indirect heat.
Snydacker teaches a crystallization stage following ion exchange treatment, optionally including a precipitation stage using direct steam or boiling by indirect heat (Figs. 9-12; Claim 202, optionally providing a first crystallizer to treat said lithium eluate of step (c) with a precipitant to precipitate said lithium salt and create a residual eluate; Paragraph 0236, a lithium salt solution is concentrated using evaporation. The lithium stream may be heated to a temperature less than its boiling point or to its boiling point to produce steam). Snydacker notes that obtained lithium compounds have applications in various fields, including batteries (Paragraph 0003, The concentrated lithium ion solution can be further processed into chemicals for the battery industry or other industries).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for Bernardi to teach a crystallization stage following ion exchange treatment, optionally including a precipitation stage using direct steam or boiling by indirect heat, as taught in Snydacker, as obtained lithium compounds have applications in various fields, including batteries.
Claims 22 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Bernardi et al. (WO 2012/163791 A1) as applied to claims 13, 16-21 and 24 above, and further in view of Hornbostel et al. (US 2019/0134607 A1).
With regard to Claim 22, Bernardi is silent to the system further comprising a crystallization stage, optionally including a precipitation stage using direct steam or boiling by indirect heat.
Hornbostel teaches a crystallization stage following ion exchange treatment, optionally including a precipitation stage using direct steam or boiling by indirect heat (Fig. 6; Paragraph 0087, Crystallizer 122 may crystallize lithium carbonate into lithium carbonate crystals, such as through addition of heat; Fig. 13; Paragraph 0089, The system shown in FIG. 13 is similar to the embodiment shown in FIG. 6, except that the output from reactor vessel 202 is further purified before being sent to the crystallizer). Hornbostel notes that obtained lithium compounds have applications in the field of batteries (Paragraph 0088, Lithium carbonate is a primary component in high capacity batteries, including automotive batteries, power tool batteries, and the like).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for Bernardi to teach a crystallization stage following ion exchange treatment, optionally including a precipitation stage using direct steam or boiling by indirect heat, as taught in Hornbostel, as obtained lithium compounds have applications in the field of batteries.
With regard to Claim 25, Bernardi is silent to the system further comprising a recycling loop configured for returning recycled water from the crystallization stage to the ion exchange resin as an eluent stream.
Hornbostel teaches a recycling loop configured for returning recycled water from the crystallization stage to the ion exchange resin as an eluent stream (Figs. 6 and 13; Paragraph 0087, Some carbonic acid solution may be pumped by recycle pump 130, heated by recycler heater 132, and reintroduced into reactor vessel 102 by recycle inlet valve 134, for example, to assist in recharging the porous particles;
Paragraph 0095, ion exchange columns 211 each have an outlet that allows for purified metal bicarbonate solution to be collected in a collection vessel 215 that will eventually be brought to crystallizer 222, or for bringing used eluent to be collected in vessel 228 to then be regenerated and re-used in the system again. It should be noted that FIG. 13 shows only one possible line configuration and that there are multiple other ways for the input and output lines in fluid communication with the ion exchange columns to be arranged for carrying purified metal bicarbonate solution to the crystallizer and for recycling used eluent back into the system).
Hornbostel further notes that adding a recycle loop would reduce waste and improve system efficiency (Paragraph 0093, The eluent used to run the ion exchange columns can be collected in brine collection vessel 228 and re-used in the system. In some examples, in-line purification apparatuses can be included to purify the eluent prior to its use again in running the sorbent column 202 and ion exchange columns 211, thus reducing the amount of eluent (water) needed to run the system).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for Bernardi to teach a recycling loop configured for returning recycled water from the crystallization stage to the ion exchange resin as an eluent stream, as taught in Hornbostel, to reduce waste and improve system efficiency.
Response to Arguments
Applicant’s arguments, see pages 6-9, filed May 29, 2026, with respect to the rejections of claims 13, 16-21 and 24 under 35 U.S.C. 102 in view of Bernardi et al. (WO 2012/163791 A1) and of claim 22 under 35 U.S.C. 103 over Bernardi in view of Snydacker et al. (US 2019/0256987 A1) have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made over claims 13, 16-21 and 24 under 35 U.S.C. 102 in view of Bernardi, of claim 22 under 35 U.S.C. 103 over Bernardi in view of Snydacker, and of claims 22 and 25 under 35 U.S.C. 103 over Bernardi in view of Hornbostel et al. (US 2019/0134607 A1).
Regarding the rejection of Claim 13 in view of Bernardi, in pages 7-8 of Applicant’s arguments, Applicant argues that Bernardi “does not teach or disclose converting a resin from a loading configuration (counterion form) to an elution configuration (lithium form) and then back to the loading configuration while eluting simultaneously an eluate stream comprising the lithium ions” and that Bernardi “do[es] not disclose the claimed two-way state conversion of the recited ion exchange resin as currently claimed”. The Examiner maintains the rejection.
In response, it is noted that although Bernardi is silent to the system wherein when the eluent stream is added to the ion exchange resin in the elution configuration, the eluate stream is eluted while the ion exchange resin is converted to the loading configuration simultaneously, the Examiner maintains that the apparatus of Bernardi teaches all structural limitations. The limitations of the system “wherein when the feed stream is added to the ion exchange resin in the loading configuration, the raffinate stream is expelled and the ion exchange resin is converted to the elution configuration” and “wherein when the eluent stream is added to the ion exchange resin in the elution configuration, the eluate stream is eluted while the ion exchange resin is converted to the loading configuration simultaneously” impart structure to the system in the sense that the apparatus must be capable of performing the steps as claimed. The limitations are directed to the manner of operating the apparatus.
As set forth in MPEP 2114.II., a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In this case, the Examiner maintains that Bernardi discloses the structural limitations of the apparatus as claimed. Bernardi discloses the ion exchange resin, with the loading and elution configurations (see Claim 13 rejection). Thus, the system of Bernardi can operate in the manner as recited in the claim.
Regarding the rejection of Claim 20 in view of Bernardi, in page 8 of Applicant’s arguments, Applicant argues that Bernardi “does not disclose the resin being in Na+ or K+ form in the claimed loading configuration”. The Examiner maintains the rejection and notes that while the brine of Paragraph 0007 is not necessarily used in the loading configuration, the composition of the brine used is disclosed in Table 1 containing sodium and potassium (see Claim 20 rejection). Further, the Examiner contends that the brine used has cations of sodium and potassium as the brine is an aqueous solution containing salts that dissociate in water, as further evidenced by Hornbostel (Paragraph 0032, Alkaline and alkaline earth ions such as Na+, Ca2+, and Mg2+ are usually present in very high concentrations in geothermal brines).
Regarding the rejection of Claim 21 in view of Bernardi, in page 8 of Applicant’s arguments, Applicant argues that the eluent stream composition “is a concrete system-and-operation limitation, not a mere intended use language”. The Examiner maintains the rejection.
The Examiner argues that although Bernardi is silent to the eluent stream comprising sodium hydroxide (NaOH), sodium bicarbonate (NaHCO3) or a mix of NaHCO3 and sodium carbonate (Na2CO3), the Examiner maintains that the apparatus of Bernardi teaches all structural limitations. The Examiner contends that the limitations pertaining to the eluent stream impart structure to the system in the sense that the limitations are directed to the manner of operating the apparatus.
As set forth in MPEP 2114.II., a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In this case, the Examiner maintains that Bernardi discloses the structural limitations of the apparatus as claimed. Bernardi discloses the ion exchange resin, with the loading and elution configurations (see Claim 13 rejection). Thus, the system of Bernardi can operate in the manner as recited in the claim. Furthermore, the Examiner notes that arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), see MPEP 716.01(c).II.
Regarding the rejection of Claim 22 over Bernardi in view of Snydacker, in page 8 of Applicant’s arguments, Applicant argues that “Regardless of Snydacker, there would be no motivation to modify Bernardi, since doing so would change the way the invention of Bernardi operates… there would be no expectation of success from the teachings of Bernardi”. The Examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Snydacker teaches a crystallization stage following ion exchange treatment, optionally including a precipitation stage using direct steam or boiling by indirect heat, which Bernardi is silent to (see Claim 22 rejection). Furthermore, the Examiner notes that Snydacker is used as a secondary reference to overcome the deficiencies of Bernardi with regard to Claim 22 alone. As explained above, the Examiner maintains that Bernardi meets the limitations of the system of Claim 13, as claimed. Furthermore, the Examiner notes that arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), see MPEP 716.01(c).II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDUL-RAHMAN YUSUF WALEED SMARI whose telephone number is (571)270-7302. The examiner can normally be reached M-Th 7:30-5, F 7:30-4.
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/ABDUL-RAHMAN YUSUF WALEED SMARI/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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