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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 10 June 2026 is acknowledged.
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.
Claims 1, 2, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2019/141807 A to Sasaki et al. (Sasaki).
As to claim 1, Sasaki teaches a lithium recovery device including a processing tank (1) partitioned into a first tank (11) and a second tank (12), in which lithium ions are moved form an aqueous solution containing lithium ions stored in the first tank (11) to an aqueous solution stored in the second tank (12) comprising a lithium ion conducting electrolyte film (2) that partitions the processing tank (1), porous structure electrodes (31/32) in contact with both surfaces of the lithium ion conducting electrolyte film (2), a sub-electrode (4) provided in the second tank (12) so as to be spaced apart from the porous structure electrodes (31/32) and the lithium ion conducting electrolyte film (2), a first power supply (51) connected between the porous structure electrodes (31/32) with the first tank (11) side as a positive electrode, a second power supply (52) which connects in series to a negative electrode of the first power supply and has a negative electrode connected to the sub electrode (4), the apparatus capable of operating such that upon voltage application from the first power supply and the second power supply, a current flow from a positive electrode of the second power supply (Paragraphs 0031-0034; Figure 3; MPEP 2114).
As to claim 2, Sasaki teaches the apparatus of claim 1. The apparatus is Sasaki is further capable of applying voltage to the first power supply higher than or equal to a voltage applied to the lithium ion conducting electrolyte film to reach a reduction potential of at least one metal element contained in the lithium ion conducting electrolyte film (MPEP 2114).
As to claims 8 and 9, Sasaki teaches the apparatus of claims 1 and 2. Sasaki further teaches that the apparatus comprises a circulator for circulating an aqueous solution containing lithium ions between the outside and the inside of the first tank (11) (Paragraph 0036).
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.
Claims 3, 4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Sasaki as applied to claims 1 and 2 above, and further in view of US 2021/0292918 A1 to Shimizu et al. (Shimizu).
As to claims 3 and 7, Sasaki teaches the apparatus of claims 1 and 2. However, Sasaki fails to further teach that the apparatus comprises a heater. However, Shimizu also discusses electrolytic lithium recovery and teaches that the electrolyzer should be heated by a heating device in order to promote oxidation and reduction reactions at the respective electrodes (Paragraph 0047). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the apparatus of Sasaki with the addition of a heater for heating the electrolyzer, thus also heating the electrolyte film, in order to promote the oxidation and reduction reactions as taught by Shimizu.
As to claim 4, the combination of Sasaki and Shimizu teaches the apparatus of claim 3. Sasaki further teaches that the apparatus comprises a circulator for circulating an aqueous solution containing lithium ions between the outside and the inside of the first tank (11) (Paragraph 0036).
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 1, 2, 8 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/852,983 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitation of the present claims are claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/852,983 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitation of the present claims are claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 8 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of copending Application No. 18/685,284 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitation of the present claims are claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 18/579,613 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitation of the present claims are claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CIEL P Contreras whose telephone number is (571)270-7946. The examiner can normally be reached M-F 9 AM to 4 PM.
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/CIEL P CONTRERAS/Primary Examiner, Art Unit 1794
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