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 .
Claim Status
The Amendment filed on 27 September 2024 has been entered; claims 142-164 remain pending.
Claim Objections
Claim 144 is objected to because of the following informalities: regarding claim 144, there is an extra space before the period. 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 159 and 163 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.
With respect to claim 159, the term “high nickel alloy” is a relative term which renders the claim indefinite. The term “high nickel alloy” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, the Examiner will interpret the limitation “high nickel alloy” as being met by a teaching of a “nickel alloy”.
With respect to claim 163, the term “hard carbon” is a relative term which renders the claim indefinite. The term “hard carbon” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, the Examiner will interpret the limitation “hard carbon” as being met by a teaching of “carbon”.
With continued reference to claim 163, the phrase "diamond-like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "like"), thereby rendering the scope of the claim(s) unascertainable. Terms such as "-like" are similar to terms such as "or the like" or "and the like" which have been held to be indefinite in a claim since they extend the otherwise definite scope of terms to an indefinite scope. See Ex parte Caldwell, 1906 CD 58 (Commr. Pats. 1905); Ex parte Remark, 15 USPQ2d 1498 (BPAI 1990). Also similar to the use of "-type" which has been held to be indefinite in a claim for these reasons. See Ex parte Copenhaver, 109 USPQ 118. See MPEP 2173.05(b) (sections E-F).
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(s) 142-147, 149-151, and 154-164 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Snydacker et al. (WO 2019/168941), hereinafter “Snydacker”.
With respect to claims 142-145, Snydacker discloses an ion exchange reactor (“device”) (Paragraphs [0052-0054]) for lithium extraction from a liquid resource (Paragraphs [0052, 0115]), the ion exchange reactor (“device”) comprising a stirred tank (“one or more vessels”) and an ion exchange element inside the stirred tank (“one or more vessels”), where the ion exchange element comprises more than one and up to 100 internal filters comprising two layers of polymer mesh (Paragraphs [0059, 0070], wherein the multi-layer meshes comprise at least one porous finer mesh for filtration and a porous coarser mesh for structural support of the finer mesh, wherein the finer mesh and coarser mesh of one filter correspond to a “first permeable partition” and a “first flow distribution scaffold”, and the finer mesh and coarser mesh of another filter corresponds to a “second permeable partition” and a “second flow distribution scaffold”, wherein the beds of ion exchange material are positioned in between the first and second flow distribution scaffolds, and the first and second permeable partitions (Paragraphs [0058-0060, 0062, 0069, 0070]).
With respect to claims 146 and 147, Snydacker teaches a plurality of ion exchange reactors joined to form a network (Paragraphs [0091-0093]), wherein brine (“liquid resource”) flows in series manner through a plurality of ion exchange reactor vessels (see Paragraphs [0015, 0016, 0091, 00164]).
With respect to claims 149-151 and 162-164, Snydacker teaches wherein said ion exchange material is a coated ion exchange material that are particles with a coating that is selected from SiO2, TiO2, ZrO2, polyvinylidene difluoride, polyvinyl chloride, polystyrene, polybutadiene, polydivinylbenzene, or combinations thereof (Paragraphs [0052, 00110, 00111, 0174]).
With respect to claim 154, Snydacker teaches a pH modulation setup (Paragraphs [0057-0059, 0099, 0180]; “pH controller”), in which base can be added (“increasing the pH”) (Paragraphs [0099, 00107]).
With respect to claims 155 and 156, Snydacker teaches that the particle traps can be embodied as polymer meshes including polyetheretherketone, ethylene tetrafluorethylene, polyethylene terephthalate, polypropylene, and combinations thereof. which serve to retain (“immobilize”) ion exchange particles (see Paragraphs [0091, 0065, 00134]).
With respect to claim 157, Snydacker teaches wherein the ion exchange material selectively absorbs lithium (and exchanges hydrogen and lithium ions upon elution) (Paragraphs [0002, 0003, 0006]).
With respect to claims 158-160, Snydacker teaches a wherein the one or more ion exchange material beds are mounted inside tanks on multilayered polymer mesh particle trap structural supports, wherein the one or more polymer meshes comprise polyetheretherketone,
ethylene tetrafluorethylene, polyethylene terephthalate, polypropylene, and combinations
thereof (see Snydacker: Paragraphs [0019, 0029, 0065]).
With respect to claim 161, Snydacker teaches wherein said ion exchange material comprises LiFePO4, LiMnPO4, Li2TiO3, Li2MnO3, Li2SnO3, Li4Ti5O12, Li4Mn5O12, LiMn2O4, Li1.6Mn1.6O4, LiAlO2, LiCuO2, LiTiO2, Li4TiO4, Li7Ti11O24, Li3VO4, Li2Si307, LiCuP2O7, modifications thereof, solid solutions thereof, or a combination thereof (Paragraph [00109]).
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.
Claims 148 is rejected under 35 U.S.C. 103 as being unpatentable over Snydacker et al. (WO 2019/168941) in view of Scates et al. (U.S. Patent Publication # 2016/0289154), hereinafter “Snydacker” and “Scates”.
With respect to claim 148, Snydacker teaches series ion exchange, but does not specifically disclose parallel cation exchange.
Scates discloses parallel cation exchange (Paragraph [0126]).
It would have been obvious to one or ordinary skill in the art at the time the invention was effectively filed to add a parallel ion exchange component to the system of Snydacker because the cation exchange systems of Snydacker and Scates are both directed to lithium ion exchange (see Scates: Paragraph [0126]), and because Scates discloses that it should be understood that a plurality of cationic exchange resin beds may be used in series or parallel for efficient metal removal (Paragraphs [0126, 0127]), taken to mean this was conventional practice at the time the instant invention was effectively filed.
Claims 152 and 153 are rejected under 35 U.S.C. 103 as being unpatentable over Snydacker et al. (WO 2019/168941) in view of Henderson et al. (U.S. Patent Publication # 20190055140), hereinafter “Snydacker” and “Henderson”.
With respect to claim 152 and 153, Snydacker does not specifically disclose that a change in hydrostatic pressure of the liquid resource when it flows through the bed of ion exchange material is less than 50 psi.
Henderson discloses an operating pressure for an ion exchange bed of below about 30 psi, or about 10 psi (“hydrostatic pressure”) of the liquid resource as it flows through the ion exchange bed (Paragraphs [0096]), such that pressure drop across the ion exchange bed is less than 5 psi (“change in hydrostatic pressure from the inlet to the outlet is less than 50 psi”).
It would have been obvious to one or ordinary skill in the art at the time the invention was effectively filed to modify the device and ion exchange bed particles with the operating pressure of about 10 psi and pressure drop across the ion exchange bed of less than 5 psi as taught by Henderson to the device of Snydacker because Snydacker discloses that one or more pressure sensors are used to detect failure of a filter and particle trap (see Paragraph [0072]), and because Henderson teaches that these operating pressures and minimal pressure drop can be obtained by designing ion exchange beds to desired depths (Paragraph [0096]), the advantage of which would have been obvious to the ordinary artisan in order to lower energy costs and minimize wear and tear on the ion exchange material.
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 142-164 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,986,816. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of instant claim 142 is encompassed by the scope of claim 1 of Patent (‘816).
With respect to instant claim 142, claims 8 and 23 of Patent (‘816) teaches a system/device for lithium extraction from a liquid resource, comprising walls (which make up one or more vessels) comprising one or more beds comprising ion exchange material, one or more flow distributors which are embodied as perforated plates (“first and second flow distribution scaffolds”), and two or more filters (“first and second permeable partitions”) which contain the ion exchange material (see claim 21), meeting the limitations of the recited “ion exchange element” of instant claim 142. It would have been obvious to one of ordinary skill in the art to combine the embodiments of claims 8 and 23 of Patent (‘816), as both claim 8 and 23 depend from claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLARE M PERRIN whose telephone number is (571)270-5952. The examiner can normally be reached 9AM-6PM EST M-F.
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/CLARE M. PERRIN/
Primary Examiner
Art Unit 1779
/CLARE M PERRIN/Primary Examiner, Art Unit 1779 15 January 2026