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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on 17 November 2025 is acknowledged.
Newly submitted claims 21-24 are considered to be related and not distinct from the invention of Group I and have been examined in addition to claims 1-11.
Newly submitted claims 25-29, Group IV, are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The inventions of Group I and the invention Group IV are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have materially different mode of operation. The invention of Group I requires that the lithium and the extracting agent form a complex where the lithium is bound to the extracting agent while Group IV has no such requirement. Additionally, the invention of Group IV requires the use of multiple vessels while Group I has no such requirement. The inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Accordingly, claims 25-29 are withdrawn from consideration as being directed to an invention separate from the invention elected in the reply of 17 November 2025. See 37 CFR 1.142(b), 37 CFR 1.145, and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Information Disclosure Statement
The Information Disclosure Statement filed on 27 June 2023 has been received and considered by the Examiner.
Specification
The use of the terms Cyanex® (e.g., [0031] and [0065]) and Osorb® (e.g., [0034] and Table 2) which are a trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because of the following informalities:
As set forth in the prior Office action mailed 17 September 2025 (Claim and Specification Notes, page 2), lithium is not an alkali earth metal; accordingly, reference to “Lithium, and other alkali earth metals” in [0003] is objected to;
The formatting of CO2 ([0007]), H2SO4 and HNO3 ([0057]) lack appropriate subscript formatting.
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 22-23 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 22 recites the limitation “mixing a second brine having the first element,” but neither claim 22 nor claim 21 upon which it depends recite a “first brine”. Accordingly, the term “second brine” in claim 22 makes it unclear how many brine solutions must be utilized in the method of claim 22 in order to meet the claim limitations, and the claim is rejected. Claim 23 depends upon claim 22 without resolving the indefiniteness and is likewise rejected.
For the purposes of further examination, the term “second brine” in claim 22 will be interpreted as requiring a “second solution” to parallel the “mixing a solution” that appears in claim 21.
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 23 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 23 depends upon claim 22, which in turn depends upon claim 21. Claim 23 recites the limitation “further comprising recycling the extraction agent and the adsorbent media.” However, this limitation already appears in line 9 of claim 21, upon which claim 23 ultimately depends (“recycling the extraction agent and the adsorbent media to be used in a further extracting step”). Claim 23 therefore does not further limit claim 22 and is rejected.
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 § 102
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.
Claim 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sceresini (US 5,427,606 A).
Regarding claim 21, Sceresini discloses a method of extracting an element (recovery method for base metal values, e.g. copper; abstract), the method comprising:
mixing a solution having a first element with an extraction agent to form a first fluid having a first complex, the first complex including the first element bound to the extraction agent (forming an aqueous solution of a cyano-base metal complex … by adjusting the amount of available cyanide anion to said base metal cation to favour formation of said cyano-base metal complex anion; column 2, lines 13-20);
extracting the first element from the first fluid, at least by: adsorbing, via an adsorbent media, the first complex from the first fluid (adsorbing said cyan-base metal complex onto activated carbon; column 2, lines 21-22);
removing the first complex from the adsorbent media (stripping said cyano-base metal complex from said activated carbon as cyano base-metal complex; column 2, lines 26-27);
and separating the first element from the extraction agent in the first complex (subsequent recovery of the base metal values; column 2, line 29); and,
recycling the extraction agent to be used in a further extracting step (transport cyano-copper complexes for further processing to recover … the cyanide for reuse in the CIL plant; column 10, lines 15-16) and the adsorbent media to be used in a further extracting step (recovery for reuse of barren activated carbon; column 2, line 30).
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 24 is rejected under 35 U.S.C. 103 as being unpatentable over Sceresini (US 5,427,606 A), as applied to claim 21 above, and further in view of Lucien et al. (US 2004/0213715 A1).
Regarding claim 24, Sceresini discloses the process of claim 21, as analyzed above, and further discloses introducing the adsorbent media to a solvent to displace the first complex from the adsorbent media and separating the adsorbent media from the solvent and first complex (eluting said loaded carbon with an appropriate eluant; col. 7, lines 9-10). Sceresini is teaching a method to recover metals that have been released from the adsorbent (col. 2, line 10), but Sceresini does not disclose evaporating the solvent from the first complex.
However, isolation of compounds from solution by removal of solvent via evaporation is well known in the art. For example, Lucien teaches the recovery metal cyanide complexes eluted from an adsorbent (abstract), and further teaches that these metal cyanide complexes can be recovered after being released from the adsorbent (eluted) by evaporation of the solvent (eluant) ([0048]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to evaporate the solvent used to elute from the first complex in the method of Sceresini in order to recover the metal cyanide complex, as taught by Lucien. One of ordinary skill in the art would have been motivated to do so because Sceresini teaches that they want to recover the eluted metal and Lucien teaches that evaporation of the solvent is one way to accomplish this.
Allowable Subject Matter
Claims 1-11 are allowed.
Claim 22 would be allowable if rewritten to overcome the rejection 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 an examiner’s statement of reasons for allowance:
Claim 1 recites a method of extracting lithium from a brine comprising the steps of forming a lithium complex including lithium bound to an extraction agent, adsorbing said lithium complex via an adsorbent media, removing the lithium complex from the adsorbent media, and separating the lithium from the extraction agent.
Claim 22 recites a method of extracting lithium from a first fluid comprising the steps of forming a lithium complex including lithium bound to an extraction agent, adsorbing said lithium complex via an adsorbent media, removing the lithium complex from the adsorbent media, and separating the lithium from the extraction agent.
The prior art includes many examples of binding lithium to an extraction agent and of adsorbing lithium ions onto adsorption media, as recently reviewed by Disu et al. (“Review of recent advances in lithium extraction from subsurface brine,” Geoenergy Sci. Eng. 2024, 241, 213189). However, no examples were found in the prior art where a lithium complex is first formed from a solution and where that complex itself is adsorbed to an adsorption media and later removed as the lithium complex.
The closest prior art is Gluckman et al. (US 2023/0219919 A1). Gluckman discloses methods of selectively sequestering lithium from brines using extracting agents (extractants) and incorporating these extractants into adsorbents for ([0005]). However, Gluckman does not disclose or reasonably suggest binding lithium to the extracting agent and then adsorbing the bound lithium complex on to an adsorbing media and releasing the lithium complex from the adsorbing media.
Claims 2-11 contain all the limitations of claim 1 and are therefore also allowed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally 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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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738