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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The IDS filed on 1/12/2024 has been considered by the examiner.
Claim Objections
Claims 1 and 2 are objected to because of the following informalities: claim 1 recites a step of “concentration-crystallization to an aqueous solution…” which reads unclearly. This is interpreted to read as the step of “concentration-crystallization of an aqueous solution…” such that the concentration and crystallization is done to the aqueous solution. Claim 2 encounters a similar issue by reciting inter alia “cooling crystallization to an aqueous solution…”. Appropriate correction is requested.
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 2-5 and 7 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.
Claim 2 recites “a step of separating the slurry obtained…” in line 5. This limitation lacks antecedent basis in the claim; “the slurry” is a limitation mentioned in claim 1 but claim 2 does not properly depend upon claim 1 and it is therefore unclear as to whether the scope of the invention of claim 2 includes the invention of claim 1.
Claims 3-5 and 7 recite “The process for producing lithium sulfate and a transition metal sulfate according to claim 1…” which lacks antecedent basis, as claim 1 recites only a process for producing lithium sulfate. To proceed with examination it will be interpreted that these claims, in order to properly depend on claim 1, refer to “the process for producing lithium sulfate according to claim 1.”
Claims 3-5 and 7 further recite inter alia “the cooling crystallization;” this limitation lacks antecedent basis in the claim, since “a cooling crystallization step” is not positively recited in claim 1.
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 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al. 2019 (CN 109706318 A), provided on the IDS filed 1/12/2024.
Regarding claim 2, Zhao teaches a process for producing a transition metal sulfate (“method of this invention yields … nickel cobalt manganese sulfate eutectic crystals,” 0007) comprising: a step of cooling crystallization to an aqueous solution comprising at least lithium sulfate and a transition metal sulfate as main components (Cooling crystallization: diluting the second solution II with the first centrifugal mother liquor water, cooling crystallization; 0007) so as to obtain a solid content of crystals comprising the transition metal sulfate (“nickel cobalt manganese sulfate eutectic crystals,” 0007), and a step of separating a slurry obtained in the cooling crystallization step into solid and liquid (centrifuging, 0007) so as to obtain a solid content of crystals comprising the transition metal sulfate and a crystallization mother liquor (eutectic crystals and a second centrifugal mother liquor water, 0007).
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.
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 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhao.
Regarding claim 1, Zhao teaches a process for producing lithium sulfate (“method of this invention yields lithium sulfate crystals,” 0007) comprising: a step of concentration-crystallization to an aqueous solution comprising at least lithium sulfate and a transition metal sulfate as main components (MVR evaporation crystallization: concentrating the second solution I by MVR evaporation, 0007), and a step of solid-liquid separation of the slurry obtained in the step of concentration-crystallization (centrifuging, 0007) so as to separate lithium crystals (0013) and a crystallization mother liquor (to obtain lithium sulfate and a first centrifugal mother liquor water, 0007).
While Zhao does not explicitly teach that the crystallization step obtains a slurry comprising lithium sulfate as a solid content, it would be obvious to one skilled in the art that such a condition would necessarily be present in the invention of Zhao. This condition must necessarily be present because the centrifuging directly leads to the obtaining of lithium sulfate crystals (0013), without any intermediate steps or interfering effects. Therefore lithium sulfate must be present in the concentrated solution in crystalline form, having been concentrated by the MVR evaporation crystallization step of step (4).
One of ordinary skill in the art would therefore arrive at the claimed invention prior to the effective filing date.
Regarding claim 3, Zhao teaches the method as applied to claim 1. Zhao also teaches an operation of introducing the crystallization mother liquor separated in the concentration-crystallization step into the cooling crystallization step of the transition metal sulfate process (step 4 into step 5, 0007). This is interpreted to meet the limitation of the instant claim, which otherwise does not depend on a claim that recites a “cooling crystallization step.”
Regarding claim 4, Zhao teaches the method as applied to claim 1. Zhao also teaches an operation of introducing the crystallization mother liquor separated in the cooling crystallization step into the concentration-crystallization step ("The mother liquor from the second centrifugation can be returned to the MVR for evaporation and crystallization," 0007). This is interpreted to meet the limitation of the instant claim, which otherwise does not depend on a claim that recites a “cooling crystallization step.”
Regarding claim 5, Zhao teaches the method as applied to claim 1. Zhao also teaches - an operation of introducing the crystallization mother liquor separated in the concentration-crystallization step into the cooling crystallization step and - an operation of introducing the crystallization mother liquor separated in the cooling crystallization step into the concentration-crystallization step (0007). This is interpreted to meet the limitations of the instant claim, which otherwise does not depend on a claim that recites a “cooling crystallization step.”
Regarding claim 6, Zhao teaches the method as applied to claim 1. Zhao also teaches that the operating temperature in the concentration- crystallization step is 20°C or higher (MVR step is conducted at 70-95°C, 0020).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zhao, as applied to claim 1, in view of Jogo et al. 2005 (JP 2005022887 A), provided on the IDS filed 1/12/2024.
Regarding claim 7, Zhao teaches the method as applied to claim 1. Zhao also teaches that the temperature is at 70°C, for the MVR step (0034), and then at 5°C, for the cooling crystallization step (0035). This meets the limitation of the temperatures being adjusted to values, these values being capable of creating a difference between the saturated solubility of each solute in the concentration-crystallization operation and the saturated solubility of each solute in the cooling crystallization operation, such a difference being 0.5 mol/kg or more in mass molarity (molality).
While Zhao does not teach this difference in molality values for each solute in each operation, Jogo teaches an analogous method for producing cobalt sulfate (0001) from a process that includes adding sulfuric acid at a temperature of 60°C or higher (0008) and then a cooling crystallization step of 30°C or below (0010); Jogo teaches that the difference in temperature values is critical because they control the solubility of both the cobalt sulfate (“The reason for maintaining the solution at 60°C or higher until dissolution is complete is that if the temperature is below 60°C, crystal precipitation may begin during dissolution, 0008; “ Furthermore, by cooling this solution to a predetermined temperature, cobalt sulfate is crystallized,” 0012) and lithium sulfate as well (“the solubility of Li2SO4 is greater at lower temperatures. Therefore, by increasing the temperature and filtering out the Li2SO4 that precipitates beyond its saturation solubility, the Li2SO4 will fall below its saturation solubility after cooling,” 0012 paragraph 2). Therefore it would be obvious to one skilled in the art before the effective filing date of the present invention that the temperature values taught by Zhao, at otherwise analogous conditions of pH, concentration, pressure, and similar parameters, to Jogo, would necessarily be able to obtain the condition required by the instant claim: that of creating a difference between saturated solubility of each solute in the concentration-crystallization operation and the saturated solubility of each solute in the cooling crystallization operation being at least 0.5 mol/kg.
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 is provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 2 of co-pending Application No. 18/578,923. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of co-pending ‘923 anticipates each and every limitation of claim 1. Claim 2 of co-pending ‘923 recites a process, comprising a concentration-crystallization step of an aqueous solution comprising at least lithium sulfate (lithium-containing aqueous nickel sulfate) and a transition metal sulfate (nickel sulfate) to obtain a slurry comprising lithium sulfate as a solid content (verbatim), and a solid-liquid separation step separating the slurry obtained in the concentration-crystallization step… to separate lithium crystals (solid content of lithium sulfate crystal) and a crystallization mother liquor (verbatim).
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/Eileen Moudou/Examiner, Art Unit 1738
/MICHAEL FORREST/Primary Examiner, Art Unit 1738
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