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 .
Claims 1-15 are pending and under consideration for this Office Action.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 61943700, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed application does not provide any support for the method of selectively precipitating lithium sulfate monohydrate from an acidic aqueous composition. However, the prior-filed application PCT/CA2015/000115 does have support for the claims. Therefore, the effective filing date of the instant claims is 02/24/2015.
Claim Objections
Claim 8 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 7. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 10 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 9. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim(s) 1-6 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by May (US 2608465 A)
Claim 1: May discloses a method of selectively precipitating lithium sulfate monohydrate (see e.g. col 1, lines 1-2; col 2, lines 3-5) from an acidic aqueous composition (see e.g. col 2, lines 36-44) comprising lithium sulfate and sulfuric acid (see e.g. col 2, lines 36-44), the method comprising removing water from the acidic composition by heating the acidic aqueous composition to obtain crystalline lithium sulfate monohydrate (see e.g. col 2, lines 55-62), and separating the crystalline lithium sulfate monohydrate from the acidic aqueous composition (see e.g. col 3, lines 33-35).
Claim 2: May discloses the heating of the acidic aqueous composition is at 120 oC (see e.g. col 4, lines 64-65).
Claim 3: May discloses the heating of the acidic aqueous composition is at 120 oC (see e.g. col 4, lines 64-65).
Claim 4: May discloses the heating of the acidic aqueous composition is at 120 oC (see e.g. col 4, lines 64-65).
Claim 5: May discloses the heating of the acidic aqueous composition is at 120 oC (see e.g. col 4, lines 64-65).
Claim 6: May discloses that the separating is carried out by filtration (see e.g. col 3, lines 33-35).
Claim 14: May discloses that the acidic aqueous composition further comprises sodium sulfate (see e.g. col 1, lines 14-18).
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) 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over May.
Claim 7: May does not explicitly teach a filtration temperature. However, the stream sent to the filtration step (see e.g. #39 on Fig 2) is a mixture of solutions from the evaporator (see e.g. #38 on Fig 2) and the acid solution (see e.g. #18 on Fig 2). A person having ordinary skill in the art before the effective filing date of the instant invention would understand that unless a temperature is specified, the solutions would be at room temperature. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the solution entering the filtration step would be between 20 oC (room temperature) and 120 oC (the evaporation step, see e.g. col 4, lines 64-65).
Claim 8: May does not explicitly teach a filtration temperature. However, the stream sent to the filtration step (see e.g. #39 on Fig 2) is a mixture of solutions from the evaporator (see e.g. #38 on Fig 2) and the acid solution (see e.g. #18 on Fig 2). A person having ordinary skill in the art before the effective filing date of the instant invention would understand that unless a temperature is specified, the solutions would be at room temperature. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the solution entering the filtration step would be between 20 oC (room temperature) and 120 oC (the evaporation step, see e.g. col 4, lines 64-65).
Claim 9: May does not explicitly teach a filtration temperature. However, the stream sent to the filtration step (see e.g. #39 on Fig 2) is a mixture of solutions from the evaporator (see e.g. #38 on Fig 2) and the acid solution (see e.g. #18 on Fig 2). A person having ordinary skill in the art before the effective filing date of the instant invention would understand that unless a temperature is specified, the solutions would be at room temperature. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the solution entering the filtration step would be between 20 oC (room temperature) and 120 oC (the evaporation step, see e.g. col 4, lines 64-65). This range overlaps with the claimed range of 20 oC to about 100 oC. MPEP § 2144.05 I states ‘In the case where the claimed ranges "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)’.
Claim 10: May does not explicitly teach a filtration temperature. However, the stream sent to the filtration step (see e.g. #39 on Fig 2) is a mixture of solutions from the evaporator (see e.g. #38 on Fig 2) and the acid solution (see e.g. #18 on Fig 2). A person having ordinary skill in the art before the effective filing date of the instant invention would understand that unless a temperature is specified, the solutions would be at room temperature. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the solution entering the filtration step would be between 20 oC (room temperature) and 120 oC (the evaporation step, see e.g. col 4, lines 64-65). This range overlaps with the claimed range of 20 oC to about 100 oC. MPEP § 2144.05 I states ‘In the case where the claimed ranges "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)’.
Claim 11: May does not explicitly teach a filtration temperature. However, the stream sent to the filtration step (see e.g. #39 on Fig 2) is a mixture of solutions from the evaporator (see e.g. #38 on Fig 2) and the acid solution (see e.g. #18 on Fig 2). A person having ordinary skill in the art before the effective filing date of the instant invention would understand that unless a temperature is specified, the solutions would be at room temperature. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the solution entering the filtration step would be between 20 oC (room temperature) and 120 oC (the evaporation step, see e.g. col 4, lines 64-65). This range overlaps with the claimed range of 20 oC to about 80 oC. MPEP § 2144.05 I states ‘In the case where the claimed ranges "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)’.
Claim 12: May does not explicitly teach a filtration temperature. However, the stream sent to the filtration step (see e.g. #39 on Fig 2) is a mixture of solutions from the evaporator (see e.g. #38 on Fig 2) and the acid solution (see e.g. #18 on Fig 2). A person having ordinary skill in the art before the effective filing date of the instant invention would understand that unless a temperature is specified, the solutions would be at room temperature. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the solution entering the filtration step would be between 20 oC (room temperature) and 120 oC (the evaporation step, see e.g. col 4, lines 64-65). This range overlaps with the claimed range of 20 oC to about 50 oC. MPEP § 2144.05 I states ‘In the case where the claimed ranges "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)’.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over May in view of Ball et al (US 4636295 A) and Archambault et al (US 3017243 A).
Claim 13: May does not explicitly teach that the acidic aqueous composition further comprises lithium bisulfate. However, May does not provide specific requirements on how lithium phosphate solution used in the process is formed (see e.g. col 1, lines 1-18). Ball teaches that often time it is desirable to extract lithium salts from ores and other natural brines (see e.g. col 1, lines 10-22). One such ore is spodumene (see e.g. Archambault – col 1, lines 1-16). According to Archambault, when sulfuric acid is added to the ore, both lithium sulfate and lithium bisulphate are formed (see e.g. col 4, lines 63-68). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention that the acidic aqueous composition would also include lithium bisulfate when using ores like spodumene as the lithium source.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over May in view of Ball.
Claim 15: May does not explicitly teach that the acidic aqueous composition is obtained from an electromembrane process. Ball teaches the following regarding extracting lithium from brines (see e.g. col 1, lines 20-37):
In the recovery of lithium from natural, predominantly chloride, brines, which vary widely in composition, an economical recovery depends not only on the lithium content but also on the concentrations of interfering ions, especially calcium and magnesium. Magnesium is particularly troublesome because its chemical behaviour in solution is very similar to that of lithium.
The process of Ball removes said magnesium from acidic lithium solution (see e.g. col 5, lines 13-20) using an electromembrane process (see e.g. col 2, lines 11-19). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant invention to modify the method of May generating the acidic aqueous composition from an electromembrane process as taught in Ball to remove problematic magnesium from the solution.
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.
Claim 1 and 15 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of Patent No. US 10544512 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1: Claim 17 of 10544512 claims a method of selectively precipitating lithium sulfate (1: “ recovering lithium sulfate”) monohydrate (17: “said lithium sulfate is recovered from said second aqueous composition in the form of lithium sulfate monohydrate”) from an acidic aqueous composition comprising lithium sulfate and sulfuric acid (1: “an acidic aqueous composition comprising sulfuric acid and optionally comprising lithium sulfate”), the method comprising removing water from the acidic composition by heating the acidic aqueous composition (1: “removing water from said second aqueous composition”) to obtain crystalline lithium sulfate monohydrate (17: “said lithium sulfate is recovered”), and separating the crystalline lithium sulfate monohydrate from the acidic aqueous composition (1: “said lithium sulfate monohydrate is recovered from said second aqueous composition by carrying out a solid-liquid separation to recover said lithium sulfate monohydrate”).
Claim 15: Claim 17 of 10544512 claims that the acidic aqueous composition is obtained from an electromembrane process (1: “submitting said first aqueous composition comprising lithium sulfate to an electromembrane process”).
Claim 1 and 15 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11085121 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1: Claim 11 of 11085121 claims a method of selectively precipitating lithium sulfate monohydrate (11: “causes precipitation of lithium sulfate monohydrate”) from an acidic aqueous composition comprising lithium sulfate and sulfuric acid (1: “increasing concentration of acid”), the method comprising removing water from the acidic composition by heating the acidic aqueous composition (11: “removing water from said second aqueous composition causes precipitation of lithium sulfate monohydrate”) to obtain crystalline lithium sulfate monohydrate (11: “precipitation of lithium sulfate monohydrate”), and separating the crystalline lithium sulfate monohydrate from the acidic aqueous composition (11: “precipitation of lithium sulfate monohydrate”).
Claim 15: Claim 11 of 10544512 claims that the acidic aqueous composition is obtained from an electromembrane process (1: “submitting a first aqueous composition comprising lithium sulfate to an electromembrane process”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER W KEELING whose telephone number is (571)272-9961. The examiner can normally be reached 7:30 AM - 4:00 PM. 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, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER W KEELING/Primary Examiner, Art Unit 1795
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