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 .
Election/Restrictions
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/15/2026.
Priority
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:
Here, the parent application does not satisfy the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, under 35 U.S.C. 120 for claims 1-16 in the present application and claims 1-16 are not entitled to the benefit of the earlier filing date. As a continuation-in-part, claims 1-16 would be entitled to the filing date of the application which is 7/14/2023.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
A finding of failure to comply with the enablement requirement can be determined by an assessment of the Wands factors. See MPEP 2164.01(a).
The Wands factors as they relate to the present invention are as follows:
BREADTH OF THE CLAIMS: The claims are broad since there are no limitations on the composition of either the first or second brine, process conditions for preparation of the second brine, or process conditions for mixing and precipitation of the brines. A broad claim requires more detail for enablement.
NATURE OF THE INVENTION: The nature of the invention of the present invention is a chemical process which is more unpredictable and therefore requires more detail for enablement.
STATE OF THE PRIOR ART: The state of the prior art includes other processes for extraction from brines with CO2 bubbling and carbonate precipitation which is a relatively modern technique. Since it is a more modern technique more detail is needed to support enablement.
LEVEL OF ONE OF ORDINARY SKILL IN THE ART: The level of ordinary skill in the art is a chemical engineer of ordinary experience in chemical processes. Since process for extraction from brines with CO2 bubbling is a modern technique, it is reasonable to conclude that the person of ordinary skill would require more detail than is currently provided only in the claims.
LEVEL OF PREDICTABILITY: Chemical processes are unpredictable and therefore require more examples and detail for support.
AMOUNT OF DIRECTION PROVIDED BY THE INVENTOR: The Specification relates only to the process of the parent application which includes a natural brine feed where the “second brine” is the supernatant after precipitation of the natural brine which is then precipitated a second time by adding a second addition of CO2. The Drawings also support only this sequential reaction. The Specification provides no guidance for ambient temperature mixing, the composition or preparation of a second brine, mixing with the second brine with the CO2 brine, or precipitation of the mixture with a second brine.
WORKING EXAMPLES: A conclusion of lack of enablement is also supported since the Specification is absent working examples of the process as claimed.
QUANTITY OF EXPERIMENTATION NEEDED: The quantity of experimentation needed is unreasonable to practice the process because of the large number of possible brine compositions involved and expected differences on interactions with the brine when the compositions are changed. Furthermore, the process conditions required for each of the steps are unknown based on the Specification as filed since it describes a different process.
Based on the evidence regarding each of the above factors, the Specification, at the time of the application was filed, does not teach one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation.
Citation of Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nakano et al (US 10,315,926) teaches a method for selective lithium recovery as lithium carbonate from natural brines, the method comprising: Pumping CO2 gas bubbles into a brine at 260°C whereby CO2 bubbles mix with the brine, precipitating undesired elements or impurities from the brine, injecting CO2 gas into the vessel whereby CO2 mixes with the mixture and precipitating lithium out as lithium carbonate (see Col 4, Ln 12-42). Nakano does not teach a method comprising preparing a second brine comprising a selected material and mixing with the CO2 brine at an ambient temperature and pressure, and precipitating a selected material carbonate from the resultant mixture.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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