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
Applicant's election with traverse of Group I, in the reply filed on December 26 is acknowledged. The traversal is on the following grounds:
The groups allegedly share a technical relationship that involves a special technical feature defining a contribution over the prior art.
This is not found persuasive because though the groups relating to each other as process and apparatus for its practice shows unity a priori, that is before considering the prior art, unity of invention still requires a common special technical feature that makes a contribution over the prior art (a posteriori), a requirement which is not met in this case as explained in the Restriction Requirement and below in the prior art rejections. See also PCT International Search and Preliminary Examination (ISPE) Guidelines, Chapter 10, paragraph 10.21 (Example 1). Applicant did not provide an explanation why the prior art cited in the Restriction Requirement did not demonstrate a lack of a shared special technical feature.
A search of all the claims would allegedly not impose a serious burden on the Office.
This is not found persuasive because establishment of a search burden is used to determine whether the Office may require restriction in national applications filed under 35 (U.S.C. 111(a). The analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis). See MPEP Chapter 1800, in particular MPEP § 1850, § 1875, and § 1893.03(d), for a detailed discussion of unity of invention under the Patent Cooperation Treaty (PCT).
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 26.
Claim Interpretation
Claim 9 recites the limitation “the filtrate formed in the crystallization” in line 2. While there is not explicit antecedent basis for “the filtrate”, a person having ordinary skill in the art would recognize that the crystallization would result in a precipitate phase (crystals) and a filtrate phase (liquid). The lack of antecedent basis does not, therefore, render the claim indefinite, and “the filtrate” is interpreted to be the liquid phase following crystallization of lithium hydroxide from the recovery liquid.
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.
Claim 11 is 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.
Claim 11 recites the limitations "the exhaust heat" and "the surplus heat" in line 2. There is insufficient antecedent basis for each of these respective limitations in the claim. While the claim recites that these limitations are "in the crystallization", which does have antecedent basis in claim 10, the provenance of "the exhaust heat" and "the surplus heat" are nonetheless unclear. For purposes of examination, these limitations will be interpreted to mean "an exhaust heat" and "a surplus heat", respectively, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
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.
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 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi (WO 2013/153692 A1) (the attached machine translation is referenced below), in view of Dai (CN 109650414 A, 2019) (the attached machine translation is referenced below), and further in view of Ball (U.S. 4,636,295, 1987).
Regarding claim 1, Kiguchi teaches a method for producing lithium hydroxide (Kiguchi, [00101]-[00102]), comprising recovering Li ions alone in a recovery liquid from a lithium ion extract (Kiguchi, [00102], concentrate) extracted from a processed member of a lithium secondary battery (Kiguchi, [00101], ternary active material cell seed NMC), using a Li permselective membrane (Kiguchi, [00102], “Table 2 shows the selective permeability of lithium and the ratio of impurity metals after electrodialysis obtained from the results of the metal ion concentrations of the desalted solution and concentrated solution before and after electrodialysis.”; see also Table 2 of original document), and producing lithium hydroxide from the recovery liquid (Kiguchi, [0070]-[0071], “The lithium solution purified as described above can be decomposed into lithium hydroxide and acid by electrolysis, and lithium hydroxide can be recovered.”), wherein:
the Li ions are recovered while the temperature of the recovery liquid is controlled at 0 to 90°C (Kiguchi, [0074]), which overlaps with the claimed range of 50°C or higher.
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the temperatures during Li ion recovery because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Further regarding the temperature during Li ion recovery, Ball teaches that, in membrane electrodialysis of lithium-containing solutions to recover lithium, the process is more efficient at higher temperatures (Ball, Col. 6, lines 47-54).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected a temperature of 90°C within Kiguchi’s range of 0 to 90°C because Ball teaches that membrane electrodialysis of lithium-containing solutions occurs with increasing efficiency with respect to temperature (Ball, Col. 6, lines 47-54). A person having ordinary skill in the art would have been motivated to select a temperature that would maximize efficiency while remaining within the temperature range prescribed by Kiguchi. In maximizing the efficiency of electrodialysis, it would be reasonable to expect a greater yield of the intended product lithium hydroxide in the recovery solution. Therefore, the results provided in Table 1 of the instant Specification showing a higher yield of lithium hydroxide monohydrate at a higher temperature are not unexpected over the teachings of the prior art, and a temperature of above 50°C would be obvious to select during recovery of Li ions into the recovery liquid of Kiguchi’s method.
Kiguchi does not explicitly teach that lithium hydroxide is separated from the recovery liquid. However, Dai teaches that lithium hydroxide separated from a lithium-containing solution resulting from membrane electrodialysis is useful as a material for lithium-ion batteries (Dai, [00145]-[00146], [00161]), and provides a method of separation to prepare battery-grade lithium hydroxide (Dai, [00163]-[00166]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have modified Kiguchi’s method by separating lithium hydroxide from the recovery liquid, as taught by Dai, as Dai teaches that doing so satisfies a market demand (Dai, [00145]-[00146]). A person having ordinary skill in the art would have been motivated to combine Kiguchi’s method with Dai’s separation to obtain a saleable lithium hydroxide product with a reasonable expectation of success.
Regarding claim 2, modified Kiguchi renders the lithium hydroxide production method according to claim 1 obvious, as discussed above, wherein the temperature is 90°C (Kiguchi, [0074] and Ball, Col. 6, lines 47-54; see discussion of claim 1 above regarding the obviousness of selecting 90°C).
Regarding claim 3, modified Kiguchi renders the lithium hydroxide production method according to claim 1 obvious, as discussed above, wherein the separation is by crystallization (Dai, [00162]-[00163]; see discussion of claim 1 above regarding the obviousness of using Dai’s separation method in Kiguchi’s production method).
Regarding claim 4, modified Kiguchi renders the lithium hydroxide production method according to claim 3 obvious, as discussed above, wherein the crystallization is cooling crystallization (Kiguchi, [00163], “The slurry enters the OLSO crystallizer for continuous cooling and crystallization control crystallization temperature is 35°C”).
Regarding claim 6, modified Kiguchi renders the lithium hydroxide production method according to claim 4 obvious, as discussed above, wherein the cooling crystallization is performed while the temperature of the recovery liquid for the crystallization is controlled at 35°C (Dai, [00163]).
Regarding claim 7, modified Kiguchi renders the lithium hydroxide production method according to claim 3 obvious, as discussed above, wherein the crystallization is evaporative crystallization (Dai, [00163], “The lithium hydroxide solution with a concentration of 1.5mol/L was evaporated by MVR evaporation concentrating device, and the crystal was concentrated and precipitated.”).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi (WO 2013/153692 A1) (see the attached machine translation), in view of Dai (CN 109650414 A, 2019) (the attached machine translation is referenced below), and further in view of Ball (U.S. 4,636,295, 1987), as applied to claim 7 above, and further evidenced by A.H. Lundberg (“Evaporators & Crystallizers”, 2024).
Regarding claim 8, modified Kiguchi renders the lithium hydroxide production method according to claim 7 obvious, as discussed above, but does not explicitly teach including adding pure water formed in the evaporative crystallization to filtrate or the recovery liquid. However, Dai, whose crystallization is rendered obvious for reasons already discussed, uses MVR evaporation concentration crystallization. A.H. Lundberg teaches that, in MVR, “Re-compression and re-use of the steam/vapour produced from the liquor itself, is used as the heat source to drive the evaporation process” (A.H. Lundberg, Page 2, lines 2-4). In re-compression and re-use of the steam produced during evaporation, pure water produced in the evaporative crystallization (steam) would be added to the recovery liquid as crystallization is taking place, as heat transfer from the steam to the recovery liquid would require the two phases to contact each other.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kiguchi (WO 2013/153692 A1) (see the attached machine translation) in view of Dai (CN 109650414 A, 2019) (see the attached machine translation), and further in view of Ball (U.S. 4,636,295, 1987) as applied to claim 1 above, and further in view of Arakawa (JP 2019-081953 A) (the attached machine translation is referenced below).
Regarding claim 13, modified Kiguchi renders the lithium hydroxide production method according to claim 1 obvious, as discussed above, wherein the Li permselective membrane contains Neocepta CIMS (Kiguchi, [00112], a lithium-selective membrane which differs from the claimed Li-containing oxide or oxynitride. However, Arakawa teaches Li-containing oxides that are suitable materials as lithium-selective membranes in electrodialysis (Arakawa, [0024]-[0026], Li0.29La0.57TiO3).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have substituted the Li permselective membrane used in Kiguchi for a Li-containing oxide as taught by Arakawa. Substitution of equivalents known for the same purpose has been held to be a prima facie case of obviousness. See Smith v. Hayashi, 209 USPQ 754. See also MPEP § 2144.06.II. The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, a Li-containing oxide taught by Arakawa was known to be suitable for the same purpose as the membrane used by Kiguchi, namely as a Li-permselective membrane for electrodialysis, so it would be obvious to substitute one for the other.
Furthermore, it would have been obvious to use Arakawa’s Li-containing oxide as a Li permselective membrane because Arakawa teaches that it can be made into a porous body with an increased surface area (Arakawa, [0026]) and can be configured for improved conduction efficiency of lithium ions into the recovery liquid (Arakawa, [0029]).
Allowable Subject Matter
Claims 5, 9-10, and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Kiguchi (WO 2013/153692 A1) (see the attached machine translation), Dai (CN 109650414 A, 2019) (the attached machine translation is referenced below), Ball (U.S. 4,636,295, 1987), Arakawa (JP 2019-081953 A) (see the attached machine translation), and Wang (CN 110002476 A, 2019) (the attached machine translation is referenced below) are considered to be the closest prior art to the instant claims.
Regarding claim 5, Kiguchi, together with Dai and Ball, renders the lithium hydroxide production method according to claim 4 obvious, as discussed above, but none of the cited prior art references teach or suggest that the cooling crystallization is performed with maintaining a positive pressure by blowing an inert gas into the recovery liquid for the crystallization. While Wang does teach the protection of the atmosphere above a lithium hydroxide crystallization process with inert gas (Wang, [0060]), there is no teaching or suggestion that a positive pressure is to be maintained during cooling crystallization, much less by blowing an inert gas into the recovery liquid.
Regarding claim 9 and its dependent claims 10-12, Kiguchi, together with Dai and Ball, renders the lithium hydroxide production method according to claim 3 obvious, as discussed above, but none of the cited prior art references teach or suggest adding the filtrate formed in the crystallization to the recovery liquid. While Wang does teach reusing the filtrate formed in a recrystallization of the lithium hydroxide, there is no teaching or suggestion that the filtrate of the instant claim is added to the recovery liquid. Instead, Wang teaches adding the filtrate resulting from the crystallization to a subsequent step of preparing lithium carbonate (Wang, [00102], [00111]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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, Anthony Zimmer can be reached at 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736