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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05 JANUARY 2026 has been entered.
Claim Status
Rejected Claims: 13, 15-16, and 18-25
Withdrawn Claims: 1-12, and 17
Cancelled Claims: 14
Response to Amendment
The amendment filed on 05 JANUARY 2026 has been entered.
In view of the amendment to the claims, the amendment of claims 13, 15-16, and 18-25 has been acknowledged.
In view of the amendment to the claims, the rejections under 35 U.S.C. 102 have been withdrawn and new rejections under 35 U.S.C. 103 have been made.
Response to Arguments
Applicant’s arguments filed on 05 JANUARY 2026 have been fully considered.
Applicant argues that it would not be obvious to convert Mceachern et al (US Patent Application No. 20200299805 A1) hereinafter Mceachern to include the recirculation architecture as described in the newly amended limitation “piping connecting the oil and/or gas well to the process unit, wherein the treated water is returned to and used in the oil and/or gas well through the piping” because Mceachern is intended to be used for multiple sources and there is no specific mention of the reuse taught by Mceachern being explicitly directed back to an oil and/or gas well. (Arguments filed 05 JANUARY 2026, Page 7 to Page 8, Paragraph 3).
Applicant argues that Mceachern would be incompatible with a recirculation because there is an implication of aggregation of water from sources and there would need to be extensive piping required to accomplish such a task (Arguments filed 05 JANUARY 2026, Page 8, Paragraph 4 to Page 9, Paragraph 1).
Applicant argues, regarding the dependent claims, that claims 15-16 and 18-25 are allowable because claim 13 is allowable and claims 15-16 and 18-25 depend upon claim 13 (Arguments filed 05 JANUARY 2026, Page 9, Paragraphs 2-4).
The Examiner respectfully disagrees.
Regarding Applicant’s arguments that it would not be obvious to convert Mceachern with the recirculation architecture, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., recirculation architecture) are not recited in the rejected claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, Mceachern teaches the reuse of the cleaned water and then says that the recovery of lithium from water may receive fluids from a facility for the extraction of oil and may include other industrial sources (Paragraph 0015). From this teaching it is obvious that one or more facilities may be used as the source of produced water, not necessitating a collection of sources, and thus the reuse of water given that the system is only attached to an oil and gas well would naturally be that the water is sent back to the oil and gas well. Mceachern teaches many possible input streams but does not require multiple inputs at a given time.
Regarding Applicant’s arguments that Mceachern would be incompatible with piping, Mceachern requires fluid to be transported from the oil and gas well to the lithium recovery device and that cleaned water may be reused. According to MPEP 2144.08, it may be obvious to use a species when a genus is taught. Oil and/or gas wells utilize piping due to the high pressure requirements of oil and/or gas extraction from wells, and one of ordinary skill in the art would be well aware of piping as an option for fluid conveyance. Furthermore, there are only a small number of common fluid conveyances, such as pipes, tubes, hoses, and open troughs, with piping being one of the most common methods of transporting industrial contaminated water. In this case, the number of options for conveying fluids from an oil and/or gas well to another system is small and piping is a well-known industrial option, so one of ordinary skill in the art would be motivated to choose piping for its structural benefits to withstand pressure and enclosed nature to prevent further contamination of the fluid inside and/or to prevent escape of the contaminants in the water to the environment.
Regarding Applicant’s argument that claims 15-16 and 18-25 are allowable, claim 13 is not allowable and so claims 15-16 and 18-25 are also not allowable.
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 13, 15-16, 18-20, and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Mceachern et al (US Patent Application No. 20200299805 A1) hereinafter Mceachern.
Regarding Claim 13, Mceachern teaches a method of recovering lithium from energy process water (i.e., A system unit; Abstract), specifically mentioning produced water (i.e., for processing produced water from an oil and/or gas well; Paragraph 0002), comprising a lithium recovery system (i.e., a process unit comprising; Fig. 1, #100)
in which a separator (i.e., wherein the process unit comprises; a filtration unit; Fig. 3, #124) removes hydrocarbon contaminants (i.e., arranged and configured to extract oil and/or gas from the produced water) followed by a second separator (Fig. 3, #141) for the removal of alkaline earth contaminants (Paragraph 0023) where the second separator is preferred to be a specific ultrafiltration system (i.e., hereafter filter the produced water hereby producing permeate (filtrate) and retentate; Paragraphs 0027-0029)
which then feeds an absorbent reaction system (i.e., a separator; Fig. 3, #140) that includes one or more batch reactors (Fig. 3, #148) which consists of adsorbents such as cation exchange resins for the removal of lithium (i.e., that is configured to receive and process permeate (filtrate) from the produced water, wherein the separator is arranged and configured to extract lithium from the permeate; Paragraphs 0036-0037) to create cleaned water (i.e., to obtain treated water; Fig. 3, #150a; Paragraph 0043),
wherein the separator may include a metal adsorbent (Fig. 3, #149) which may be added in the reactors and the adsorbents generally used in the industry and preferred by the invention include ion sieves made from aluminum oxide (i.e., wherein the separator comprises one or more adsorbents including aluminum salt adsorbent for extracting lithium from the permeate; Paragraphs 0036-0037)
and that the lithium recovery system (Fig. 1, #100) may receive fluids (i.e., connecting the oil and/or gas well to the process unit; Fig. 1, #102) from facilities for extraction of oil (Fig. 1, #103; Paragraph 0015) such as water produced form oil and gas wells wherein the facility provides treatment allowing reclamation of water as a resource for reuse (Paragraphs 0006 and 0045).
Mceachern does not explicitly teach that the fluid connection is piping but does teach that fluids may be received by the lithium recovery system from the oil and gas well and that cleaned water may be reused. According to MPEP 2144.08, it may be obvious to use a species when a genus is taught. Oil and/or gas wells utilize piping due to the high pressure requirements of oil and/or gas extraction from wells, and one of ordinary skill in the art would be well aware of piping as an option for fluid conveyance. Furthermore, there are only a small number of common fluid conveyances, such as pipes, tubes, hoses, and open troughs, with piping being one of the most common methods of transporting industrial contaminated water. In this case, the number of options for conveying fluids from an oil and/or gas well to another system is small and piping is a well-known industrial option, so one of ordinary skill in the art would be motivated to choose piping for its structural benefits to withstand pressure and enclosed nature to prevent further contamination of the fluid inside and/or to prevent escape of the contaminants in the water to the environment.
Mceachern does not explicitly teach wherein the treated water is returned to and used in the oil and/or gas well through the piping. However if there is only an oil and/or gas well with water being treated by the lithium recovery system, the teaching of reuse of water would naturally lead to the cleaned water being sent back to the oil and/or gas well.
Furthermore, the limitation “wherein the treated water is returned to and used in the oil and/or gas well through the piping” is directed toward materials or articles worked upon by the claimed invention and is therefore not subject to patentability. The inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims (In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus holds no patentable weight. See MPEP §2115.
Regarding Claim 15, Mceachern makes obvious the system of claim 13. Mceachern further teaches that the absorbent reaction system (i.e., wherein the separator; Fig. 3, #140) consists of cation exchange resins for the removal of lithium (i.e., is arranged and configured to: a) extract lithium from the permeate is carried out by using an ion-exchange resin method that extracts lithium ions; Paragraphs 0036-0037) and that, after elution from the ion exchange process, the lithium elution fluid is further processed in a processing system (Fig. 3, #230; Paragraph 0044) in which lithium is precipitated out as lithium carbonate and separated by centripetal force or filtration (i.e., and b) recover Li+ as precipitates of Li2CO3; Fig. 3, #168 and 171; Paragraphs 0051-0052).
Regarding Claim 16, Mceachern makes obvious the system of claim 13. Mceachern further teaches that the absorbent reaction system (i.e., wherein the separator; Fig. 3, #140) consists of cation exchange resins for the removal of lithium (i.e., is arranged and configured to selectively remove lithium from the permeate; Paragraphs 0036-0037).
Regarding Claim 18, Mceachern makes obvious the system of claim 13. Mceachern further teaches that the absorbent reaction system (i.e., wherein the separator; Fig. 3, #140) consists of cation exchange resins for the removal of lithium (i.e., an extracting unit that is arranged and configured to extract lithium from the ion-exchange resin; Paragraphs 0036-0037) and that, after elution from the ion exchange process (i.e., a washing unit that is arranged and configured to wash the resin), the lithium elution fluid is further processed in a processing system (Fig. 3, #230; Paragraph 0044) in which lithium is precipitated out as lithium carbonate and separated by centripetal force or filtration (i.e., and recover Li+ as precipitates of Li2CO3 or LiOH when the ion-exchange resin has been treated in the washing unit; Fig. 3, #168 and 171; Paragraphs 0051-0052).
Regarding Claim 19, Mceachern makes obvious the system of claim 13. Mceachern further teaches that the absorbent reaction system (i.e., wherein the separator; Fig. 3, #140) consists of cation exchange resins for the removal of lithium (i.e., is configured to recover Li+; Paragraphs 0036-0037) and that, after elution from the ion exchange process (i.e., by extracting lithium from the ion-exchange resin), the lithium elution fluid is further processed in a processing system (Fig. 3, #230; Paragraph 0044) in which lithium is precipitated out as lithium carbonate and separated by centripetal force or filtration (i.e., (as precipitates of Li2CO3 or LiOH); recovering Li+ as precipitates of Li2CO3 or LiOH after a washing process; Fig. 3, #168 and 171; Paragraphs 0051-0052).
Regarding Claim 20, Mceachern makes obvious the system of claim 13. Mceachern further teaches that the absorbent reaction system (i.e., wherein the separator; Fig. 3, #140) consists of cation exchange resins for the removal of lithium (Paragraphs 0036-0037) and that, after elution from the ion exchange process, the lithium elution fluid is further processed in a processing system (Fig. 3, #230; Paragraph 0044) in which lithium is precipitated out as lithium carbonate and separated by filtration (i.e., comprises a filter assembly that is arranged and configured to recover Li+ (as precipitates of Li2CO3 or LiOH) by filtration and hereby retain precipitates of Li2CO3 or LiOH; Fig. 3, #168 and 171; Paragraphs 0051-0052).
Regarding Claim 24, Mceachern makes obvious the system of claim 13. Mceachern further teaches that the absorbent reaction system (Fig. 3, #140) consists of cation exchange resins for the removal of lithium (Paragraphs 0036-0037) and that, after elution from the ion exchange process, the lithium elution fluid is further processed in a processing system (Fig. 3, #230; Paragraph 0044) in which lithium is precipitated out as lithium carbonate (i.e., wherein the process unit comprises a first post-processing unit arranged and configured to concentrate or purify an output from a processing unit of the process unit; Fig. 3, #168; Paragraphs 0051-0052).
Regarding Claim 25, Mceachern makes obvious the system of claim 24. Mceachern further teaches that the absorbent reaction system (Fig. 3, #140) consists of cation exchange resins for the removal of lithium (Paragraphs 0036-0037) and that, after elution from the ion exchange process, the lithium elution fluid is further processed in a processing system (Fig. 3, #230; Paragraph 0044) in which lithium is precipitated out as lithium carbonate (Fig. 3, #168) and separated by centripetal force or filtration (i.e., wherein the process unit comprises a second post-processing unit arranged and configured to concentrate or dry an output from the first post-processing unit; Fig. 3, #171; Paragraphs 0051-0052).
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Mceachern with support from Bromley (US Patent Application No. 20240116001 A1) hereinafter Bromley.
Regarding Claim 21, Mceachern makes obvious the system of claim 13. Mceachern further teaches that the specific ultrafiltration system is RSLTM (replaceable skin layer) ultrafiltration (i.e., wherein the filtration unit is an ultrafiltration unit comprising; Fig. 3, #141; Paragraphs 0027-0029).
Bromley further teaches that the RSLTM ultrafiltration (Paragraph 0004) includes an RSLTM powder (Paragraph 0042) located on the membrane and the membrane is ceramic (i.e., wherein the membranes are made of a ceramic material) and in the shape of a sheet (i.e., flat sheet membranes; Paragraph 0041).
Regarding Claim 22, Mceachern with support from Bromley makes obvious the system of claim 21. Mceachern further teaches that the specific ultrafiltration system is RSLTM (replaceable skin layer) ultrafiltration (i.e., wherein the ultrafiltration unit comprises a number of; flat sheet membranes arranged in a membrane reactor; Fig. 3, #141 Paragraphs 0027-0029).
Bromley further teaches that the RSLTM ultrafiltration (Paragraph 0004) includes an RSLTM powder which is activated carbon (i.e., wherein granular activated carbon is present in the membrane reactor; Paragraph 0042) located on the membrane and the membrane is ceramic (i.e., ceramic) and in the shape of a sheet (i.e., flat sheet membranes; Paragraph 0041).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Mceachern as applied to claim 13 above, and further in view of Sanderson (US Patent No. 4357237 A) hereinafter Sanderson.
Regarding Claim 23, Mceachern makes obvious the system of claim 13. Mceachern further teaches that magnetic separation for the recovery of minerals from water is well known in the art (Paragraph 0017).
Mceachern does not explicitly teach wherein the process unit comprises a magnetic water treatment unit that is arranged and configured to initiate precipitation of particles.
However, Sanderson teaches a magnetic device that causes the precipitation of calcium and other minerals present in hard water into a loose slurry instead of as scale build-up (i.e., wherein the process unit comprises a magnetic water treatment unit that is arranged and configured to initiate precipitation of particles; Col. 2, Lines 11-29) that has the advantage of being structurally sound enough to prevent movement of the device and thus movement of the magnetic field during severe jolts caused by events such as a water hammer or others (Col. 3, Lines 50-66).
Sanderson is analogous to the claimed invention because it pertains to a device for the magnetic treatment of fluids such as water and natural gas (Abstract). It would have been obvious to one of ordinary skill in the art to modify the process taught by Mceachern with the magnetic separator as taught by Sanderson because the magnetic separator would precipitate calcium precipitation as scale on the walls of pipes/reactors and would also the device would maintain its position in adverse conditions such as a water hammer event.
Conclusion
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/A.A.G./Examiner, Art Unit 1777
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772