DETAILED ACTION
Claims 1-26 were subjected to restriction requirement mailed on 03/11/2026.
Applicants filed a response, and elected Group I, claims 1-19, and withdrew claims 20-26, with traverse on 05/11/2026.
Claims 1-26 are pending, and claims 20-26 are withdrawn after consideration.
Claims 1-19 are rejected.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-12 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 15-17, 19, 21, 23-25 and 27 of copending Application No. 19145802 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons set forth below.
The present claims require “A method of producing a lithium concentrate from a calcined ore comprising spodumene particles and other mineral particles, the method comprising selectively screening the spodumene particles from the calcined ore to obtain the lithium concentrate, wherein the spodumene particles have a beta crystal structure and the other mineral particles have a crystal structure substantially similar prior to and after calcination.”.
The patent/co-pending claims meet all limitations of the present claims. Specifically, application claim 1 recites, A method of recovering lithium concentrate from an ore containing spodumene, the method comprising: crushing the ore to obtain a fine fraction and a coarse fraction; calcining the coarse fraction, preferably at a temperature of from about 950 to about 1100˚C to obtain a calcined coarse fraction comprising spodumene particles having a beta crystal structure; selectively screening the calcined coarse fraction to separate out the spodumene particles and produce screened spodumene particles.
Given application claim 1 recites a method comprising crushed ore containing spodumene from about 950 to about 1100 ˚C, a method identical or substantially identical to that of the presently claimed, therefore it is clear that application claim 1 would necessarily and inherently meet the claimed limitation of “and the other mineral particles have a crystal structure substantially similar prior to and after calcination”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Election/Restrictions
Applicant’s election of Group I, species 1-19, in the reply filed on 05/11/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 20-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/11/2026.
Claim Interpretation
Claim 17, recites a phrase “being free of chemical reagent”. The examiner interprets that the phrase refers to being free of additional added chemical reagent, besides the calcined ore and its components, according to specification [0021].
Claim Objections
Claims 12-13 are objected to because of the following informalities:
Claim 12, line 2, it is suggested to amend “fines ore particles” to “fine ore particles”, to be consistent with the disclosure in specification, [0023]).
Claim 13, line 2, it is suggested to amend “fines ore particles” to “fine ore particles”, to be consistent with the disclosure in specification, [0023]).
Appropriate correction is required.
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.
Claims 1-19 are 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 1, line 5, recites a phrase “a crystal structure substantially similar prior to and after calcination”. However, it is unclear that the phrase refers to, i.e., what is considered “substantially similar”. The examiner interprets that the phrase refers to the crystal structure does not expand and fragilize after calcination. Interpretation is speculative. Clarification is requested.
Regarding dependent claims 2-19, these claims does not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Claim 4, line 2, recites a phrase “3%”. However, it is unclear what the phrase refers to, i.e., what % is based on, by mass, by molar amount, etc. The examiner interprets that the phrase refers to 3% by mass. Interpretation is speculative. Clarification is requested.
Claim 5, line 2, recites a phrase “2%”. However, it is unclear what the phrase refers to, i.e., what % is based on, by mass, by molar amount, etc. The examiner interprets that the phrase refers to 2% by mass. Interpretation is speculative. Clarification is requested.
Claim 7, recites a phrase “grinding and/milling the calcined ore producing crushed ore”. However, it is unclear what the phrase refers to, as according to specification ([0022]-[0023]), crushed ore is prepared prior calcination.
The examiner interprets that the phrase refers to “grinding and/milling an ore producing crushed ore”. Interpretation is speculative. Clarification is requested.
Regarding dependent claims 8-11, these claims does not remedy the deficiencies of parent claim 7 noted above, and are rejected for the same rationale.
Claim 19 depends on claim 17 and recites “the lithium salt”. However, claim 17 does not provide antecedent basis for “the lithium salt”. The examiner interprets that claim 19 depends on claim 18. Interpretation is speculative. Clarification is requested.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 5-10, 12, 14 and 17-19 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Olle et al., WO 2016/156671A1 (Olle) (provided in IDS received on 09/29/2023).
Regarding claims 1 and 6-7, Olle discloses in a third embodiment, the raw material is ore. The pre-crushed and possibly ground ore can be heat treated (reading upon calcined ore), after which the beta- spodumene is recovered from the material obtained, e.g., by screen enrichment; “screen enrichment” refers to the separation and recovery of the desired granules by using one or several screens (Olle, page 7, lines 16-20); in a preferred embodiment, the material removed from the heating zone is screened in order to separate host rock and deads, such as quartz and spar, from the beta- spodumene (Olle, page 10, lines 11-15) (reading upon selectively screening the spodumene particles from the calcined ore to obtain the lithium concentrate, wherein the spodumene particles have a beta crystal structure).
Olle further discloses when host rock and quartz and other deads can also be screened out of the spodumene. This is based on the fact that, unlike the host rock particles and deads, such as quartz and spar, the spodumene itself becomes finer during heat treatment (reading upon the other mineral particles have a crystal structure substantially similar prior to and after calcination according to interpretation set forth above in 112b section) (Olle, page 5, lines 20-25).
Regarding claim 5, as applied to claim 1, Olle discloses the host rock and deads, such as quartz and spar (reading upon the other mineral particles), which would necessarily comprise less than about 2% Li2O, given that they are not lithium compounds.
Regarding claims 8-10, 12 and 14, as applied to claim 1, Olle discloses a first alpha- spodumene granule fraction, the average granule size of which is 0.5-6 mm (reading upon the coarse particles), and a second alpha- spodumene granule fraction, the average granule size of which is 0.02-1 mm (reading upon the fine particles), are fed to the heating zone, the first and second granule fractions being fed to the heating zone either simultaneously or consecutively (Olle, page 13, lines 9-15).
Olle further discloses in the heating zone, the alpha-spodumene is most suitably brought to phase transformation at a temperature of 950-1080˚C (Olle, page 8, lines 12-16).
Regarding claim 17, as applied to claim 1, given that Olle being free of additional added chemical reagent, besides the calcined ore and its components, therefore, it is clear that Olle meets the presently claimed
Regarding claims 18-19, Olle further teaches lithium is recovered from the beta-spodumene obtained and lithium carbonate (Li2CO3) is formed (page 10, lines 16-26).
Furthermore, the recitation in the claims that obtaining a lithium salt from the lithium concentrate is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Olle discloses the method of producing a lithium concentrate as presently claimed, it is clear that the method of producing a lithium concentrate would be capable of performing the intended use, i.e. obtaining a lithium salt, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
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.
Claim(s) 2-3, 11, 13 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Olle.
Regarding claim 2, as applied to claim 1, Olle teaches the beta-spodumene passing the screen with a mesh size of about 0.3-1.0 mm (Olle, page 14, bottom paragraph), i.e., the particle size of the beta-spodumene would be below about 0.3-1.0 mm, which overlaps the range of the presently claimed.
As set forth in MPEP 2144.05, 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).
Regarding claim 3, as applied to claim 1, Olle teaches beta-spodumene is produced, which comprises granules that pass a screen, the mesh size of which is at least 0.3 mm, and most about 1.2 mm (Olle, page 14, lines 26-30), which overlap the range of the presently claimed.
As set forth in MPEP 2144.05, 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).
Regarding claim 11, as applied to claim 8, Olle teaches a second alpha- spodumene granule fraction, the average granule size of which is 0.02-1 mm (reading upon the fine particles), which overlaps the range of the presently claimed.
Regarding claim 13, as applied to claim 8, Olle teaches a first alpha- spodumene granule fraction, the average granule size of which is 0.5-6 mm (reading upon the coarse particles), and a second alpha- spodumene granule fraction, the average granule size of which is 0.02-1 mm (reading upon the fine particles), are fed to the heating zone, the first and second granule fractions being fed to the heating zone either simultaneously or consecutively (Olle, page 13, lines 9-15).
Given that Olle teaches the first and second granule fractions being fed to the heating zone consecutively (i.e., separately), it therefore would have been obvious to a person of ordinary skill in the art to calcine the first and second granule fractions, separately.
In general, the transposition of process steps, or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes. Ex parte Rubin (POBA 1959) 128 U.S.P.Q. 440, Cohn v. Comr. Pats. (DCDC 1966) 251 F Supp 378, 148 U.S.P.Q. 486.
Regarding claims 15-16, as applied to claim 1, Olle teaches spodumene becomes finer during heat treatment, which allows host rock and quartz and other deads to be screened out (Olle, page 5, lines 20-25). It therefore would have been obvious to a person of ordinary skill in the art to determine if the spodumene becomes finer, by visual inspection or size distribution analysis (i.e., common techniques to determine particle size reduction), in order to make sure that host rock and quartz and other deads can be screened out, and thereby arrive at the claimed invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Olle as applied to claim 1 above, and further in view of Peltosaari et al., Mechanical enrichment of converted spodumene by selective sieving, Minerals Engineering, 2016 (Peltosaari) (provided in IDS received on 09/29/2023).
Regarding claim 4, as applied to claim 1, Olle does not explicitly disclose wherein the lithium concentrate comprises at least about 3% of Li2O.
With respect to the difference, Peltosaari teaches enrichment of converted spodumene by selective screening (Peltosaari, Title & Abstract). Peltosaari specifically teaches autogeneous and ball mill grinding were used to increase the separation efficiency between the spodumene and the gangue minerals; the Li2O contents of the concentrates were increased to 6.8%, 5.8%, 5.9% and 5.0% (i.e., by mass) (Peltosaari, Abstract).
As Peltosaari expressly teaches, autogenous and ball mill grinding are used as pretreatment to enhance the separation efficiency between the spodumene and the gangue minerals (Peltosaari, page 31, right column, 2nd paragraph; page 39, Conclusion).
Peltosaari is analogous art as Peltosaari is drawn to enrichment of converted spodumene by selective screening.
In light of the motivation of autogeneous and ball mill grinding, as taught by Peltosaari, it therefore would have been obvious to a person of ordinary skill in the art to vary grinding intensity prior selective screening, to increase Li2O content of the concentrates, and arrive at Li2O contents of the concentrates were increased to 6.8%, 5.8%, 5.9% and 5.0% by mass, depending on the ore quality, and thereby arrive the claimed invention.
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
Prosecution Insights