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 17 April 2026 has been entered; claims 142, 143, 145-149, 151-163, 165-167 remain pending.
Response to Arguments
Applicant’s arguments, see Pages 7-8 of the Remarks, filed 17 April 2026, with respect to the objection to claim 144 and the rejections of claims 159 and 163 under 35 USC 112(b) have been fully considered and are persuasive. The objection to claim 144 and the rejections of claims 159 and 163 under 35 USC 112(b) have been withdrawn in light of Applicant’s amendments to the claims. Regarding the Double patenting rejection over Patent 11,986,816, the Examiner acknowledges Applicant’s response on Page 8 of the Response, and maintains this rejection below.
Applicant’s arguments, see Pages 8-10 of the Remarks, filed 17 April 2026, with respect to the rejections of claims 142-147, 149-151, and 154-164 under 35 USC 102(a)(1) and the rejection of claims 148, 152, and 153 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn; however, upon further consideration, new grounds of rejections are made in view of newly cited references Eaton et al. (U.S. Patent # 7828969) and Bruce et al. (U.S. Patent # 6214493), as necessitated by amendment, and as discussed in detail below.
Briefly, the ion exchange media of Snydacker is modified by the teachings of Bruce in the 103 rejections below, and upon finding Eaton (applied to new claims 165-167), the Examiner also applied Eaton by itself to reject claims 142, 143, 145, 149, 151, 155-160, 163, and 165-167 under 35 USC 102(a)(1), and claims 152 and 153 under 35 USC 103.
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.
Claims 142, 143, 145, 149, 151, 155-160, 163, and 165-167 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eaton et al. (U.S. Patent # 7828969), hereinafter “Eaton”.
With respect to claims 142, 143, 145, 149, 151, 155, 156, 158, 165-167, Eaton teaches a filter device comprising housing 50 (“a vessel”) comprising stacked disks of polymeric webs 54 comprising sorbent particles and/or ion exchange media (Abstract; Fig. 5; Column 8, lines 46-49), including an embodiment of 7 layers of coconut/carbon particle web (two of which could be the “first flow distribution scaffold” and the “first permeable partition”), several layers of targeted ion exchange particles (“bed of ion exchange material”; “third layer”; “uncoated or coated”), followed by 3 more layers of coconut/sorbent particle web (two of which could be the “first flow distribution scaffold” and the “first permeable partition”), wherein the layers are secured with an adhesive around the circumference, which is considered to be consistent with recited “seal” in claim 166, as no liquid can escape around the edges of the media layers (Example 5 within Column 18, line 52 through Column 19, line 12), wherein the polymer webs are a porous “matrix material” according to claims 145 and 151 that serves to immobilize the ion exchange material within the disk or in neighboring disks as recited in claims 155 and 156 as a “perforated material” or “mesh material”. The above layered wen structure allows for the ion exchange web layers (“bed”) to be contained between the first and second flow distribution scaffold, indicated as the coconut/carbon webs as discussed above.
With respect to the preamble limitations “for lithium extraction from a liquid resource”, the Examiner submits that these intended use limitations are not assigned patentable weight in device claim 142; since Eaton teaches the components recited in the body of the claim, it is capable of performing the intended use of “lithium extraction”. Claim 157 is rejected with claim 142 as it recites a method of using the device, which again is not assigned patentable weight.
Regarding claims 159 and 160, Eaton discloses polypropylene webs (see Column 2, lines 3-6; Column 3, lines 66-67).
With respect to claim 163, Eaton teaches that the sorbent particles can be embodied as activated carbon (Column 3, lines 37-42).
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 152 and 153 are rejected under 35 U.S.C. 103 as being unpatentable over Eaton et al. (U.S. Patent # 7828969), hereinafter “Eaton”.
Regarding claims 152 and 153, Eaton teaches the filter has a pressure drop of less than 150mm water (in some embodiments less than 75mm or less than 30 mm) at a uniform air velocity of 5.3 cm per second under ambient conditions (see Column 3, lines 43-52), which is reported differently as compared to the psi units of claims 152 and 153; however, Eaton makes it clear that minimization of pressure drop over the filter (from inlet to outlet) is desirable. It has been held that where the claimed parameters/properties may be expressed differently and thus may be distinct from what is disclosed in the prior art, it is incumbent upon applicants to establish that such difference is unobvious. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to employ the particular parameters as claimed, since it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33, and In re Russell, 169 USPQ 426.
Claims 142, 143, 145-149, 151, and 154-163 are rejected under 35 U.S.C. 103 as being unpatentable over Snydacker et al. (WO 2019/168941) in view of Bruce et al. (U.S. Patent # 6214493), hereinafter “Snydacker” and “Bruce”.
With respect to claims 142, 143, and 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]).
Snydacker does not specifically teach that the ion exchange media is arranged in stacks of layers between the permeable partitions.
Bruce teaches a stack of layered ion exchange material (Abstract; Fig. 3; Column 1, line 54 through Column 2, line 37).
It would have been obvious to one of ordinary skill in the art to replace the ion exchange media of Snydacker with the ion exchange mineral stacked layers of Bruce because Snydacker teaches that the ion exchange material can be embodied as manganese oxide minerals (Paragraph [0109]), and because Bruce teaches that the disclosed stack of ion exchange media layers extract lithium chemically or electrochemically, and then used again to adsorb lithium from aqueous solution (Column 2, lines 57-62; Column 5, line 52 through Column 6, line 12).
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, 162, and 163, 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]).
Claims 148 is rejected under 35 U.S.C. 103 as being unpatentable over Snydacker et al. (WO 2019/168941) in view of Bruce et al. (U.S. Patent # 6214493) as applied to claim 146 above, and further in view of Scates et al. (U.S. Patent Publication # 2016/0289154), hereinafter “Snydacker”, “Bruce”, 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 Bruce et al. (U.S. Patent # 6214493) as applied to claim 142 above, and further 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.
Claims 165-167 are rejected under 35 U.S.C. 103 as being unpatentable over Snydacker et al. (WO 2019/168941) in view of Bruce et al. (U.S. Patent # 6214493) as applied to claim 142 above, and further in view of Eaton et al. (U.S. Patent # 7828969), hereinafter “Snydacker”, “Bruce” and “Eaton”.
Snydacker in view of Bruce does not specifically teach that the layers are stacked in the recited manner.
Eaton teaches stacked disks of polymeric layers comprising sorbent particles and/or ion exchange media (Abstract; Fig. 5; Column 8, lines 46-49), including an embodiment of 7 layers of coconut/sorbent particle scaffold (two of which could be the “first flow distribution scaffold” and the “first permeable partition”), several layers of targeted ion exchange material (“bed of ion exchange material”; “third layer”), followed by 3 more layers of coconut/sorbent particle scaffold (two of which could be the “first flow distribution scaffold” and the “first permeable partition”), wherein the layers are secured with an adhesive around the circumference, which is considered to be consistent with recited “seal” in claim 166, as no liquid can escape around the edges of the media layers (see Example 5 within Column 18, line 52 through Column 19, line 12).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to add the layered structure of Eaton to the media of Snydacker in view of Bruce because Eaton discloses that the ion exchange layers can be targeted for metal ion exchange applications (Column 2, lines 46-67; Column 3, lines 37-42), wherein the polymer webs provide a support structure for the sorbent/ion exchange particles which prevents sloughing, and allow for high flow rates, low pressure drop, and high service life (see Column 3, lines 3-12, 27-28; Column 7, lines 35-40).
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, 143, 145-149, 151-163, 165-167 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,986,816 in view of Bruce et al. (U.S. Patent # 6214493). 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.
Claims 8/23 of Patent (‘816) do not specifically teach a grouping of stacked layers positioned within the first and second permeable partitions.
Bruce teaches a stack of layered ion exchange material (Abstract; Fig. 3; Column 1, line 54 through Column 2, line 37).
It would have been obvious to one of ordinary skill in the art to replace the ion exchange media of claims 8/23 of Patent (‘816) with the ion exchange mineral stacked layers of Bruce because Patent (‘816) teaches that the ion exchange material can be embodied as manganese oxide minerals (claim 18), and because Bruce teaches that the disclosed stack of ion exchange media layers extract lithium chemically or electrochemically, and then used again to adsorb lithium from aqueous solution (Column 2, lines 57-62; Column 5, line 52 through Column 6, line 12).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 16 June 2026
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