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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/24/2026 and 06/30/2026 were considered by the examiner.
Response to Amendment
The amendment filed 05/29/2026 has been entered. Claims 1-12 remain pending in the application. Applicant's amendments to the claims have overcome the objection made to the drawings, thus the Examiner has withdrawn this objection.
Response to Arguments
Applicant’s arguments, see pages 7-9 of Remarks, filed 05/29/2026, with respect to the rejection(s) of claims 1-12 under U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of amendments to the claims.
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 1-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Miho et al. WO 2020171009 A1, as cited in the previous Office action (a translation is provided with this Office action) in view of Dara et al. CA 3124281 A1 (the US publication is cited herein for paragraph numbers, US 20220042182 A1).
Regarding claim 1, Miho teaches a method of producing lithium hydroxide (lithium recovery method, 0009; lithium hydroxide produced, 0195) comprising: providing a lithium ion extraction liquid, including:
a first mixing (first pH adjustment step S3, 0175) of mixing an aqueous solution (filtrate, 0175) containing lithium (dissolved lithium, 0172) and at least one element other than lithium (cobalt, 0172), and a base (alkaline aqueous solution is added, 0175), in a reaction tank (first pH adjustment tank 2, 0176) to form a first hydroxide of the at least one element other than lithium (aluminum hydroxide, iron hydroxide, 0176), with a pH regulated to 6 or more and 10 or less (4 to 7, 0175),
a second mixing (second pH adjustment step S5, 0180) of mixing the aqueous solution and the base (0180) to form a second hydroxide of the at least one element other than lithium (cobalt iron hydroxide, and even nickel hydroxide, 0181), with a pH regulated to 12 or more ( 7 or higher, 0180), and
removal of the first hydroxide of the at least one element other than lithium formed through the first mixing and the second hydroxide of the at least one element other than lithium formed through the second mixing (steps S4 and S6, 0174);
recovering only lithium ion from the lithium ion extraction liquid (filtrate of lithium and anions of organic acids, 0182) to a recovery liquid (filtrate is carbonated in step S8 which precipitates lithium carbonate in step S9 and the remaining filtrate is sent to electrodialysis step S10, 0183-0193, which recovers lithium in the recovery liquid of R3 of Figure 17; “recovering alkali,” 0198), with an electrochemical device including a Li-selectively permeable membrane (membrane 92, Figure 17); and
performing a regulation of pH by returning the lithium ion extraction liquid after recovering the lithium ion with the electrochemical device, without adding carbon dioxide, to the reaction tank (“the desalted solution… may also be supplied to the first pH adjustment step S3,” 0196).
Miho does not teach the exact claimed ranges of pH values, but rather teaches ranges that overlap with the claimed ranges of 6 or more and 10 or less (4 to 7, 0175) and 12 or more (7 or higher, 0180). However, 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. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform a method for preparing lithium hydroxide as suggested by Miho where the pH values of the hydroxide precipitation steps are in any workable or optimum range overlapping with 4-7 and 7 or higher as taught by Miho including the claimed ranges in order to obtain a pH suitable for the precipitation reactions.
Miho does not teach a step of performing a regulation of pH by returning the lithium ion extraction liquid with adding carbon dioxide, nor does Miho teach the step of electrochemical device recovery with adding carbon dioxide; therefore, Miho teaches the claimed limitation.
Furthermore, Dara teaches an analogous process for the recovery of lithium (title) from lithium sources such as brine. Dara is analogous art to the claimed invention because Dara is concerned with the recovery of lithium from brines (0002), as the instant invention is concerned with [0023], and Dara belongs to the same field of endeavor as Miho, because Dara also teaches the recovery of lithium from various sources (0039). Dara teaches that an ion exchange step is implemented for the selective adsorption of lithium (0188) and this step eliminates the need for a carbonization step as Dara teaches (0187; “used to eliminate many of these steps,” 0188). It would furthermore be obvious to one skilled in the art to combine the teachings of Miho and Dara and therefore arrive at the invention, which would use the ion exchange adsorption step taught by Dara and therefore not include a carbonization step as taught by Dara; one would be motivated to do so in order to avoid several costly steps to arrive at the lithium hydroxide product from lithium carbonate, as Dara teaches (0187).
Therefore one skilled in the art would arrive at the claimed invention prior to the effective filing date.
Regarding claim 2, Miho and Dara teach the invention as applied to claim 1. Miho further teaches that the providing the lithium ion extraction liquid further comprises concentrating lithium ion (concentration step S7, 0185).
Regarding claim 3, Miho and Dara teach the invention as applied to claim 2. Dara further teaches adsorbing lithium ion with an adsorbent (0188). It would be obvious to one skilled in the art to combine the teaching of concentration step S7 of Miho (0185) with the adsorption of lithium of Dara (0188); one would be motivated to do so in order to selectively separate lithium from ions such as calcium and magnesium, as both Dara (0188) and Miho (0207) teach; therefore one skilled in the art would arrive at the claimed invention, wherein the concentrating lithium ion step comprises adsorbing lithium ion with an adsorbent, prior to the effective filing date.
Regarding claim 4, Miho and Dara teach the invention as applied to claim 3. Miho further teaches an electrochemical device as discussed for claim 1 (0194). Miho does not teach that the process generates a gas and such a gas is used for the desorption of lithium ion adsorbed to the adsorbent.
However, Dara teaches that the lithium is desorbed from the ion exchange resin with HCl (0188) and teaches that a membrane electrolysis cell operating on LiCl generates the necessary HCl which is recycled to that step (0188). Dara further teaches that LiCl in such a cell produces chlorine gas at the anode of an electrolysis reaction (0101). Therefore Dara teaches the claimed limitation, wherein a gas generated from the electrochemical device is used for desorption of lithium ion adsorbed to the adsorbent. It would be obvious to one skilled in the art to combine this teaching of Dara with the teachings applied to claim 3, because Dara teaches that the presence of chlorine species is analogous to the presence of sulfate species (0189) and Miho teaches the electrochemical process with sulfate species (0195) as merely an exemplary embodiment of an inorganic acid (0195), teaching that an equivalent acid would be hydrochloric acid (0036). The courts have held that the selection of a known material based on its suitability for its intended use supports a prima facie case of obviousness; see MPEP 2144.07, Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). In this case it would be clear to one skilled in the art from the teachings of Miho and Dara to use chloride species as a suitable material for the electrochemical process taught by Miho. It would be obvious to one skilled in the art to combine the teachings of Dara and Miho by using the recirculation of HCl taught by Dara, from the electrolysis step to the ion exchange step; one would be motivated to do so in order to implement operational and capital cost savings, as Dara teaches (0185). Therefore one skilled in the art would arrive at the claimed invention prior to the effective filing date.
Regarding claim 5, Miho and Dara teach the invention as applied to claim 4. Dara teaches chlorine gas (0101), meeting the claimed limitation.
Regarding claim 6, Miho and Dara teach the invention as applied to claim 1. Miho further teaches recovering lithium as lithium hydroxide (0198); this meets the limitation of the method further comprising isolating lithium hydroxide from the recovery liquid.
Regarding claim 7, Miho and Dara teach the invention as applied to claim 6. Dara further teaches a step of crystallizing LiOH after obtaining LiOH from an electrochemical process (0173). It would be obvious to one skilled in the art to combine the teaching of Dara with the electrochemical isolation of lithium hydroxide taught by Miho (0198); one would be motivated to do so in order to obtain LiOH in crystalline form, in order to obtain a product ready for market, as Dara teaches (0173). Therefore one skilled in the art would arrive at the claimed invention, wherein the isolating comprises crystallization, prior to the effective filing date.
Regarding claim 8, Miho and Dara teach the invention as applied to claim 1. Miho further teaches iron (0176, 0181); this meets the limitation of the at least one element other than lithium is at least one element selected from the group consisting of calcium, magnesium, strontium, manganese, iron, zinc, and lead.
Regarding claim 9, Miho and Dara teach the invention as applied to claim 1. Miho further teaches that the base is alkaline (sodium hydroxide, potassium hydroxide, lithium hydroxide, 0175), therefore meeting the limitation of the base being at least one selected from the group consisting of an alkali metal hydroxide and an alkaline earth metal hydroxide.
Regarding claim 11, Miho and Dara teach the invention as applied to claim 3. Dara teaches the ion exchange resin (0188), thus meeting the limitation wherein the adsorbent is at least one selected from the group consisting of a titanium oxide-based adsorbent, a manganese oxide-based adsorbent, an antimony oxide- based adsorbent, an aluminum oxide-based adsorbent and an ion exchange resin.
Regarding claim 12, Miho and Dara teach the invention as applied to claim 1, wherein Dara teaches that the selective adsorption of lithium avoids the carbonization step (0188), thus teaching without adding an additional chemical as claimed. Miho further teaches that the regulation of pH is performed by returning the lithium ion extraction liquid after recovering the lithium ion with the electrochemical device, without adding an additional chemical, to the reaction tank (the regulation of pH is performed by returning the lithium ion extraction liquid directly to the reaction tank without the addition of any external chemicals, 0196, 0198, Figure 2). The recovery of lithium ion with the electrochemical device does not introduce an additional chemical other than water (0195, Figure 17). The regulation step of returning the liquid to the reaction tank is performed without addition of an additional chemical (0196, 0198), as claimed.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Miho and Dara, as applied to claim 1, and in further view of Hoshino 2017, WO 2017131051 A1, as cited in the previous Office action (a translation is provided with this Office action). A machine translation of Hoshino, provided with this office action, is cited herein.
Regarding claim 10, Miho and Dara disclose the method of producing lithium hydroxide as applied to claim 1 above.
Miho and Dara do not disclose that the Li-selectively permeable membrane contains an oxide or an oxynitride containing lithium. However, Hoshino discloses a lithium-selective membrane (title) comprised of lithium lanthanum titanate (p. 2 pp. 4); this composition contains a titanium-based oxide containing lithium, as required by the instant claim. It would be obvious to one skilled in the art before the effective filing date of the invention to combine the teachings of Miho, Dara, and Hoshino, by using the membrane taught by Hoshino, because Hoshino teaches that the membrane has high lithium selectivity (p. 4 pp. 2). One skilled in the art would therefore arrive at the claimed invention before the effective filing date.
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 Eileen Moudou whose telephone number is (571)272-1768. The examiner can normally be reached M-Th 8 AM - 4 PM EST.
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/Eileen Moudou/ Examiner, Art Unit 1738
/MICHAEL FORREST/ Primary Examiner, Art Unit 1738
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