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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 7, 2026 has been entered.
Response to Amendment
The amendment filed on July 7, 2026 has been made of record and entered.
Claims 5-7, 9, 11-17, and 19 have been amended.
Claims 1 and 3-20 are currently pending in this application and under consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 recites the limitation “wherein the sorbent is (a) uncoated, and/or (b) mixed with an organic or inorganic binder, or a combination of an organic and inorganic binder”. However, Claim 1 requires an uncoated sorbent. The “or” case of Claim 4 can be reasonably interpreted as replacing an uncoated sorbent with a mixed sorbent. As set forth in MPEP 608.01(n).III., “if claim 1 recites the combination of elements A, B, C, and D, a claim reciting the structure of claim 1 in which D was omitted or replaced by E would not be a proper dependent claim, even though it placed further limitations on the remaining elements or added still other elements.” Therefore, Claim 4 fails to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 3-13 and 15-19 are rejected under 35 U.S.C. 103 as being obvious over Snydacker et al. (US 2019/0256987 A1).
With regard to Claim 1, Snydacker teaches a method of producing lithium concentrate from a lithium source (Abstract).
Snydacker teaches contacting the lithium source with an uncoated ion exchange sorbent to sorb lithium (Paragraph 0095, Lithium is optionally extracted from such liquid resources using an ion exchange process based on inorganic ion exchange materials. These inorganic ion exchange materials absorb lithium from a liquid resource while releasing hydrogen, and then elute lithium in acid while absorbing hydrogen; Claim 209, said ion exchange particles comprise coated ion exchange particles, uncoated ion exchange particles, or combinations thereof).
Snydacker teaches producing a lithium concentrate, by desorbing the lithium from the sorbent by proton exchange using an acidic desorption fluid having a pH which is not so low as to degrade the sorbent and monitoring the pH until a steady-state pH is reached (Claim 202; Paragraph 0122, treating said lithium-enriched ion exchange material in said ion exchange unit with an acid solution, wherein said lithium ions from said lithium-enriched ion exchange material are exchanged with hydrogen ions from said acid solution to produce a lithium eluate; Paragraph 0158, contacting said lithium-selective ion exchange media with water to remove residual brine from the media, contacting said lithium-selective ion exchange media with acid to absorb protons while releasing lithium ions and producing a lithium solution; Claim 203, said pH modulation maintains an equilibrium in favor of hydrogen ions from said hydrogen-rich ion exchange particles being exchanged with lithium ions from said liquid resource).
While Snydacker does not explicitly teach a pH between about 1.0 and about 2.5, Snydacker discloses a wide range of acids and acid concentrations used for recovering lithium (Paragraphs 0373-0374; the acid solution comprises hydrochloric acid, sulfuric acid, phosphoric acid, hydrobromic acid, chloric acid, perchloric acid, nitric acid, formic acid, acetic acid, or combinations thereof… the acid used for recovering lithium from the ion exchange system has a concentration selected from the following list: less than 0.1 M, less than 1.0 M, less than 5 M, less than 10 M, or combinations thereof). An acid concentration of less than 0.1 M, for example, hydrochloric acid, results in a pH greater than 1.
As set forth in MPEP 2144.05.I, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to Claim 3, while Snydacker does not explicitly teach the pH of the desorption step between about 1.7 and about 1.9, Snydacker discloses a wide range of acids and acid concentrations used for recovering lithium (Paragraphs 0373-0374; the acid solution comprises hydrochloric acid, sulfuric acid, phosphoric acid, hydrobromic acid, chloric acid, perchloric acid, nitric acid, formic acid, acetic acid, or combinations thereof… the acid used for recovering lithium from the ion exchange system has a concentration selected from the following list: less than 0.1 M, less than 1.0 M, less than 5 M, less than 10 M, or combinations thereof). An acid concentration of less than 0.1 M, for example, hydrochloric acid, results in a pH greater than 1.
As set forth in MPEP 2144.05.I, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to Claim 4, Snydacker teaches the method wherein the sorbent is (a) uncoated, and/or (b) mixed with an organic or inorganic binder, or a combination of an organic and inorganic binder (Claim 209, said ion exchange particles comprise coated ion exchange particles, uncoated ion exchange particles, or combinations thereof; Claim 211, said coating material of said coated ion exchange particles comprises a chloro-polymer, a fluoro-polymer, a chloro-fluoro-polymer, a hydrophilic polymer, a hydrophobic polymer, co-polymers thereof, mixtures thereof, or combinations thereof; Paragraph 0356, the matrix material is a polymer that is dissolved and mixed with the ion exchange particles and/or filler material using a solvent from the following list: n-methyl-2-pyrrolidone, dimethyl sulfoxide, tetrahydrofuran, dimethylformamide, dimethylacetamide, methyl ethyl ketone, or combinations thereof. In some embodiments, the filler material is a salt that is dissolved and mixed with the ion exchange particles and/or matrix material using a solvent from the following list: water, ethanol, iso-propyl alcohol, acetone, or combinations thereof).
With regard to Claim 5, Snydacker teaches the method wherein the acidic desorption fluid used in the desorption step comprises sulfuric acid, hydrochloric acid or phosphoric acid (Paragraph 0015, In one embodiment, said acid solution is a solution of hydrochloric acid, sulfuric acid, phosphoric acid, hydrobromic acid, chloric acid, perchloric acid, nitric acid, formic acid, acetic acid, or combinations thereof).
With regard to Claim 6, Snydacker teaches the method wherein the lithium source is a brine solution having a Li concentration between about 1 to about 10,000 ppm (Paragraph 0363, a liquid resource is selected with a lithium concentration selected from the following list…less than 10,000 ppm, less than 1,000 ppm, less than 100 ppm, less than 10 ppm, or combinations thereof…less than 5,000 ppm, less than 500 ppm, less than 50 ppm, or combinations thereof).
With regard to Claim 7, Snydacker teaches the method wherein the produced lithium concentrate is polished to remove multivalent ions and further concentrated to a final Li concentration greater than about 10,000 ppm (Example 6, Paragraph 0454, The resulting lithium chloride eluate is…polished to remove trace amounts of divalent ions; Example 9, Paragraph 0467, The retentate contains a concentrated lithium solution with a lithium concentration around 40,000 mg/L; Paragraph 0470, The purification system is used to remove divalent and multivalent impurities through addition of sodium hydroxide and sodium carbonate). Given a density of lithium of 0.534 g/mL, the lithium concentration of Example 9 is (40000 mg/L)/(0.534 g/mL) = 74906 ppm.
With regard to Claim 8, Snydacker teaches the method further comprising a step of reacting the lithium concentrate with phosphate anions to produce lithium phosphate (Paragraph 0225, In one embodiment of a chemical precipitation unit, a lithium solution is treated with phosphate species to precipitate Li3PO4).
With regard to Claim 9, Snydacker teaches the method wherein the phosphate anions comprise one or more of phosphoric acid, potassium phosphate monobasic, potassium phosphate dibasic, potassium phosphate tribasic, sodium phosphate monobasic, sodium phosphate dibasic, or sodium phosphate tribasic, ammonium phosphate monobasic, ammonium phosphate dibasic, or ammonium phosphate tribasic (Paragraph 0025, In one embodiment of a chemical precipitation unit, a lithium chloride, lithium sulfate, or other lithium salt solution is treated with sodium phosphate, other phosphate compounds, or combinations thereof to precipitate Li3PO4).
With regard to Claim 10, Snydacker teaches the method further comprising a step of converting the lithium phosphate to lithium hydroxide or lithium carbonate, by reaction with calcium hydroxide or by electrolysis (Paragraph 0184, In one embodiment, an electrolysis system converts a lithium salt solution to form a lithium hydroxide solution, an acidified solution, and optionally a dilute lithium salt solution. In one embodiment, the lithium salt solution is or is derived from a lithium eluate solution, produced by an ion exchange system, that has optionally been concentrated and/or purified).
In Paragraph 0183, Snydacker converts a lithium sulfate solution into lithium hydroxide by electrolysis. However, the reference discloses that lithium phosphate can be used in place of lithium sulfate (Claim 207; said lithium salt is lithium carbonate, lithium bicarbonate, lithium hydroxide, lithium chloride, lithium bromide, lithium sulfate, lithium bisulfate, lithium phosphate).
As set forth in MPEP 2144.07, The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
With regard to Claims 11-12, Snydacker teaches the method wherein the lithium concentrate has at least 100 ppm of Li but not greater than about 3000 ppm, when reacting with phosphate anions, and wherein the lithium concentrate has a Li concentration greater than about 1000 ppm (Paragraph 0227, In one embodiment, the concentration of lithium in the Li-containing solution fed into the chemical precipitation unit may be greater than 1,000 mg/L…).
As set forth in MPEP 2144.05.I, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to Claim 13, Snydacker teaches the method wherein the acidic desorption fluid used in the desorption step comprises phosphoric acid (Paragraph 0015, In one embodiment, said acid solution is a solution of hydrochloric acid, sulfuric acid, phosphoric acid, hydrobromic acid, chloric acid, perchloric acid, nitric acid, formic acid, acetic acid, or combinations thereof).
With regard to Claim 15, Snydacker teaches the method wherein a Ti-based sorbent is used as the ion exchange sorbent (Paragraph 0341, an ion exchange material comprises LiFePO4, Li2SnO3, Li2MnO3, Li2TiO3, Li4Ti5O12, Li4Mn5O12, Li1.6Mn1.6O4, solid solutions thereof, or combinations thereof).
While Snydacker does not explicitly teach that the acidic desorption fluid used in the desorption step has a pH between about 1.7 and about 1.9, Snydacker discloses a wide range of acids and acid concentrations used for recovering lithium (Paragraphs 0373-0374; the acid solution comprises hydrochloric acid, sulfuric acid, phosphoric acid, hydrobromic acid, chloric acid, perchloric acid, nitric acid, formic acid, acetic acid, or combinations thereof… the acid used for recovering lithium from the ion exchange system has a concentration selected from the following list: less than 0.1 M, less than 1.0 M, less than 5 M, less than 10 M, or combinations thereof). An acid concentration of less than 0.1 M, for example, hydrochloric acid, results in a pH greater than 1.
As set forth in MPEP 2144.05.I, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to Claim 16-17, Snydacker teaches the method wherein the Ti-based sorbent is first added to water and the pH of the mixture is lowered by adding an inorganic or organic acid to the desorption fluid, wherein the acid is a polyprotic acid which acts as a buffering agent (Paragraph 0158, contacting said lithium-selective ion exchange media with water to remove residual brine from the media, contacting said lithium-selective ion exchange media with acid to absorb protons while releasing lithium ions and producing a lithium solution; Paragraph 0015, In one embodiment, said acid solution is a solution of hydrochloric acid, sulfuric acid, phosphoric acid, hydrobromic acid, chloric acid, perchloric acid, nitric acid, formic acid, acetic acid, or combinations thereof).
With regard to Claim 18, Snydacker teaches the method wherein a Mn-based sorbent is used as the ion exchange sorbent (Examples 1-17, Li4Mn5O12).
While Snydacker does not explicitly teach the process wherein the desorption step is in a desorption fluid having a concentration of acid and sorbent such that the molar ratio between the initial H+ and final Li+ concentration is between about 0.5 and 8.0, Snydacker discloses a wide range of acids and acid concentrations used for recovering lithium (Paragraphs 0373-0374; the acid solution comprises hydrochloric acid, sulfuric acid, phosphoric acid, hydrobromic acid, chloric acid, perchloric acid, nitric acid, formic acid, acetic acid, or combinations thereof… the acid used for recovering lithium from the ion exchange system has a concentration selected from the following list: less than 0.1 M, less than 1.0 M, less than 5 M, less than 10 M, or combinations thereof). An acid concentration of less than 0.1 M, for example, hydrochloric acid, results in a pH greater than 1.
As set forth in MPEP 2144.05.I, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
With regard to Claim 19, Snydacker teaches the method wherein the Mn-based sorbent has the formula H1-2Mn1-2O3-4 (Paragraph 0341, an ion exchange material comprises LiFePO4, Li2SnO3, Li2MnO3, Li2TiO3, Li4Ti5O12, Li4Mn5O12, Li1.6Mn1.6O4, solid solutions thereof, or combinations thereof).
Claims 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Snydacker et al. (US 2019/0256987 A1) in view of Song et al. (“Recovery of lithium from spent lithium-ion batteries using precipitation and electrodialysis techniques”).
With regard to Claims 14 and 20, Snydacker teaches the method wherein conversion of lithium
phosphate to LiOH·H2O by electrolysis is performed in a multi-compartment electrolysis unit (Paragraph 0184, In one embodiment, an electrolysis system converts a lithium salt solution to form a lithium hydroxide solution, an acidified solution, and optionally a dilute lithium salt solution. In one embodiment, the lithium salt solution is or is derived from a lithium eluate solution, produced by an ion exchange system, that has optionally been concentrated and/or purified; Paragraph 0214, In some embodiments, the membrane electrolysis cell is an electrodialysis cell with multiple compartments. In some embodiments, the electrodialysis cell may have more than about two, more than about five, more than about 10, or more than about twenty compartments).
Snydacker is silent to dissolving the lithium phosphate in a mineral acid which then serves as anolyte or feed solution.
Song teaches dissolving the lithium phosphate in a mineral acid which then serves as anolyte or feed solution (Page 336, it can be assumed that if Li3PO4 is dissolved by acid, the lithium cations and phosphorus anions may be separated by electrodialysis. Dissolving Li3PO4 as anolyte, under the effect of electrodialysis with cation exchange membranes, the cathode chamber may obtain high concentration LiOH which can be directly prepared for Li2CO3 product; Figure 1, H3PO4). Song does this to increase separation of lithium and phosphorus, providing an efficient and green process for recovering lithium from spent lithium-ion batteries (I. Introduction, Page 335, Considering the current global lithium production with respect to projected demand, recovery and recycling of lithium are very important for the lithium metal economy which should be well studied).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention for Snydacker to teach dissolving the lithium phosphate in a mineral acid which then serves as anolyte or feed solution, as taught by Song, to increase separation of lithium and phosphorus, providing an efficient and green process for recovering lithium from spent lithium-ion batteries.
Response to Arguments
Applicant’s arguments filed July 7, 2026, with respect to the rejections of claims 1, 3-13 and 15-19 under 35 U.S.C. 103 in view of Snydacker et al. (US 2019/0256987 A1) and of claims 14 and 20 over Snydacker et al. in view of Song et al. (“Recovery of lithium from spent lithium-ion batteries using precipitation and electrodialysis techniques”) have been fully considered and are not persuasive.
Regarding the rejection of Claim 1 in view of Snydacker, in pages 5-6 of Applicant’s arguments, Applicant argues that “the inventors have unexpectedly discovered that lithium desorption is possible using an uncoated ion exchange sorbent. This surprising result was achieved by identifying a controlled acidic desorption window, with a pH between about 1.0 and about 2.5. Within this carefully defined range, lithium can be effectively released from the uncoated ion exchange sorbent without causing any chemical degradation to the sorbent”. Applicant refers to Example 1 of the instant specification to support this finding.
As set forth in MPEP 716.02(b), the burden is on Applicant to establish that the results are unexpected and significant. “The evidence relied upon should establish ‘that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.’” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). Further, "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992). The Examiner contends that Applicant has not proven unexpected results commensurate in scope with the claim. The Examiner contends that the sorbent of Snydacker can be used without significant chemical degradation to the sorbent. For example, Snydacker discloses that the ion exchange reaction is performed repeatedly while maintaining adequate lithium uptake capacity over greater than 1,000 cycles (Paragraph 0375, In some embodiments, the ion exchange beads perform the ion exchange reaction repeatedly while maintaining adequate lithium uptake capacity over a number of cycles selected from the following list: greater than 10 cycles, greater than 30 cycles, greater than 100 cycles, greater than 300 cycles, or greater than 1,000 cycles). As set forth in MPEP 716.02(c).II., "Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." In re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (CCPA 1967).
On page 6 of Applicant’s arguments, Applicant argues that “Snydacker does not explicitly direct a person of ordinary skill to select an uncoated sorbent and operate it in the claimed pH range to avoid sorbent degradation. The examiner's position therefore depends on selecting isolated features from separate Snydacker disclosures and reconstructing Applicant's claimed process with hindsight, rather than on a teaching or motivation in Snydacker itself”. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant further argues that “Snydacker's working examples point away from the claimed approach because Snydacker repeatedly uses coated ion exchange particles, particularly Li4Mn5O12 particles with ZrO2 or SiO2 coatings. Thus, Snydacker addresses the acid-degradation problem by adding a protective coating. Nowhere does Snydacker direct itself to solving the problem of enabling ion exchange with an uncoated sorbent”. The Examiner respectfully disagrees and notes that Claim 209 of Snydacker discloses uncoated ion exchange particles (see Claim 1 rejection). Further, while Examples 1-11, 14, and 16 of Snydacker disclose coating the ion exchange material, Examples 12-13, 15, and 17 do not disclose coating. Furthermore, as set forth in MPEP 2123.II., disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Conclusion
Claims 1 and 3-20 are pending. Claims 1 and 3-20 are rejected. No claims are allowed.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABDUL-RAHMAN YUSUF WALEED SMARI/Examiner, Art Unit 1736
/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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