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 .
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.
Information Disclosure Statements
The Information Disclosure Statement filed on 5 February 2024 has been received and considered by the Examiner.
Preliminary Amendment
Applicant’s preliminary amendments to the claims and specification filed on 5 February 2024 have been entered and considered for this action.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-6 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.
The language of claim 1 is difficult to interpret, leaving the limitation of the claim unclear. In particular, the limitation of “obtaining a lithium containing solution in which a preliminary determined metallic element is reduced compared with an untreated lithium containing solution” is indefinite because it not clear what is meant by the word “reduced.” As written, the claim appears to require that a pre-selected metallic element is chemically reduced, but there is no evidence in the specification that a chemical reduction takes place. It could also mean that the concentration or amount of this element in solution is reduced, as in [0033], [0053], and [0057] of the specification, but no such words are used in the claim. It is also unclear if the “untreated lithium containing solution” is the same “untreated lithium containing solution” referenced in line 3 of the claim, in which case it should be referred to in line 6 as “the untreated lithium containing solution.”
Claim 1 additionally recites the limitation "the liquid passing into the column" in line 13. There is insufficient antecedent basis for this limitation in the claim. For the purposes of further examination, any liquid passing into the column will be considered as meeting this limitation.
Furthermore, it is unclear what precisely is required by the limitation introduced on lines 12-14, beginning “a portion of the untreated …”. For the purposes of further examination this limitation will be interpreted as “after starting a flow of the untreated lithium-containing solution through the column containing the ion-exchange resin, a preliminarily determined amount of solution eluted from the column is collected and excluded from the lithium containing solution.”
Claims 2-6 depend from claim 1 without resolving the indefiniteness and are likewise rejected.
Claim 2 is also indefinite because it is unclear what resins are to be considered of the “iminodiacetic acid type”. The addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). MPEP 2173.05(b)(III)(E). It is recommended to remove the word “type” from the claim.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Magnan et al. (US 2016/0032471 A1) in view of Kaukinen (“Ion exchange in hydrometallurgical recycling of Li-ion battery metals: production of Li-Ni-Co mixture,” Master’s Thesis, Lappeenranta-Lahti University of Technology, 2019, <URL: https://lutpub.lut.fi/handle/10024/160439>).
Regarding claim 1, Magnan teaches a method for producing a lithium containing solution comprising:
a neutralization step of obtaining an untreated lithium containing solution by adding alkali to a crude lithium containing solution ([0147]);
an ion-exchange step of obtaining a lithium containing solution in which a concentration of a preliminarily determined metallic element is reduced compared with the untreated lithium containing solution by bringing an ion-exchange resin into contact with the untreated lithium-containing solution ([0156]);
wherein in the ion-exchange step the preliminarily determined metallic element is removed by passing the untreated lithium containing solution through a column containing the ion-exchange resin ([0191]).
Magnan does not explicitly teach the remaining limitations of claim 1, which will be interpreted as requiring that after starting a flow of the untreated lithium-containing solution through the column containing the ion-exchange resin, a preliminarily determined amount of solution eluted from the column is collected and excluded from the lithium containing solution (see Claim Rejections – 35 USC § 112).
However, Kaukinen also teaches about purification of solutions using ion-exchange resins and that pure enough product metal solution can be collected starting after one BV of eluent has passed through the column (Possible collection of pure enough product metal solution can be done between 1 to 2,9 BVs; p. 50).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to collect and discard 1 BV of eluent from the column and exclude it from the lithium containing solution in the method of Magnan. One of ordinary skill in the art would have been motivated to do so because Kaukinen teaches that the first BV of eluent can be excluded in order to achieve higher purity product.
Regarding claim 2, modified Magnan teaches the method of claim 1, where Magnan teaches that the ion-exchange resin is a chelating resin (aminophosphonic resin) in its sodium form ([0191]). Magnan also teaches that any ion exchange resin that would be suitable for selectively removing divalent cations could alternatively be used, and that different ion exchange resin can be used for different metal cations. Magnan does not specifically teach the ion-exchange resin being an iminodiacetic acid (IDA) type resin.
However, Kaukinen teaches that an alternative to aminophosphonic acid resins (APA) are IDA resins (p. 28, ¶ 1) and that IDA resins are particularly effective at capturing copper (Table 3) and cobalt (p. 36, ¶ 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace the sodium form APA resin with a sodium form iminodiacetic acid type resin, thereby arriving at the invention of the instant claim. One of ordinary skill in the art would have been motivated to do so in order to remove copper and/or cobalt because Magnan teaches that alternative resins can be used to target different metals, and Kaukinen teaches that IPA resins can target copper and cobalt.
Regarding claim 3, modified Magnan teaches the method of claim 1, where Kaukinen teaches that the preliminarily determined amount is 1 BV.
Regarding claim 4, modified Magnan teaches the method of claim 1, where Magnan teaches the untreated lithium containing solution has a pH of about 9.5 to about 11.5, which overlaps with the instantly claimed range of 7 or more and 11 or less.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed range of pH merely represents an obvious variant of the values of the cited prior art.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Magnan et al. (US 2016/0032471 A1) in view of Kaukinen (“Ion exchange in hydrometallurgical recycling of Li-ion battery metals: production of Li-Ni-Co mixture,” Master’s Thesis, Lappeenranta-Lahti University of Technology, 2019, <URL: https://lutpub.lut.fi/handle/10024/160439>), as applied to claim 1 above, and further in view of Zbranek et al. (US 8,431,005 B1).
Regarding claims 5 and 6, modified Magnan teaches the method of claim 1, and additionally teaches using the lithium-containing solution so formed to produce lithium hydroxide by electrolysis or electrodialysis (abstract and [0212]).
Magnan also alludes to obtaining solid lithium hydroxide by crystallization ([0215] and [0245]), but is silent on the details of such steps, nor does Magnan teach any washing of obtained lithium hydroxide crystals.
However, Zbranek also teaches the separation of lithium from impure sources and further teaches that after using a membrane electrolysis process to convert alkali sulfates (such as lithium sulfate) to their hydroxides, that lithium hydroxide can be crystalized from solution and subjected to a washing step of washing the solid lithium hydroxide with a washing liquid of saturated lithium hydroxide (col. 23, lines 4-17).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the method of producing lithium hydroxide taught by Magnan a crystallization step of obtaining solid lithium hydroxide from the lithium hydroxide containing solution, as suggested by Magnan and taught by Zbranek, and a washing step of washing the solid lithium hydroxide with a washing liquid wherein the washing liquid is saturated lithium hydroxide solution, as taught by Zbranek.
One of ordinary skill in the art would have been motivated to do so because Zbranek teaches details on obtaining pure solids from a process analogous to that of Magnan where Magnan is silent on how to do so. One of ordinary skill would be additionally motivated to utilize Zbranek’s washing procedure because Zbranek teaches it can remove entrained sodium and potassium, thereby affording a more pure product, and because utilizing saturated lithium hydroxide solution would be expected to provide higher yield of product as it is not expected to dissolve any of the crystallized solids.
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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-10 of copending Application No. 17/797,397 in view of Kaukinen (“Ion exchange in hydrometallurgical recycling of Li-ion battery metals: production of Li-Ni-Co mixture,” Master’s Thesis, Lappeenranta-Lahti University of Technology, 2019, <URL: https://lutpub.lut.fi/handle/10024/160439>).
Regarding instant claims 1 and 3, claims 1 and 2 of the ‘397 application (claims filed 19 February 2026) each recite the steps of:
adding alkali to a lithium solution, which is interpreted as the neutralization step of instant claim 1;
a step of bringing the post-neutralization liquid into contact with an ion-exchange resin, which would serve to reduce the amount of a preliminarily determined metallic element.
Claim 8 of the ‘397 application teaches that the ion-exchange step can be performed using a column.
None of the claims of the ‘397 patent recite excluding from the post-ion exchange solution an initial portion of the eluent, as instant claim 1 is interpreted as requiring.
However, Kaukinen also teaches purifying a lithium-containing solution by an ion-exchange column, and further teaches that pure solution is obtained by collecting starting after 1 BV (p. 50).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use in the method of claims 1 and 2 of the ‘397 patent an ion-exchange solumn and to exclude from the obtained lithium-containing solution a predetermined amount of 1 BV, as suggested by Kaukinen (and claim 8), therby arriving at the claimed invention of instant claims 1 and 3.
Regarding instant claim 2, claims 5 and 7 of the ‘397 application each recite using an iminodiacetic type chelating resin in its sodium form.
This is a provisional nonstatutory double patenting rejection.
Claims 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-10 of copending Application No. 17/797,397 in view of Kaukinen (“Ion exchange in hydrometallurgical recycling of Li-ion battery metals: production of Li-Ni-Co mixture,” Master’s Thesis, Lappeenranta-Lahti University of Technology, 2019, <URL: https://lutpub.lut.fi/handle/10024/160439>), as applied to claim 1 above, and further in view of Magnan et al. (US 2016/0032471 A1).
Regarding instant claim 4, the claims of the ‘397 patent render instant claim 1 obvious in view of Kaukinen, and the fact that a “post-neutralization” liquid is obtained by adding alkali suggest the pH of such a solution would be 7 or greater, but no pH is actually recited in the claims of the ‘397 patent.
However, Magnan teaches a similar ion-exchange process and further teaches that the pH obtained after addition of alkali is about 9.5 to about 11.5 ([0147]), which overlaps with the instantly claimed range. It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed range of pH merely represent an obvious variant of the pH values taught by Magnan.
This is a provisional nonstatutory double patenting rejection.
Claims 5-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-10 of copending Application No. 17/797,397 in view of Kaukinen (“Ion exchange in hydrometallurgical recycling of Li-ion battery metals: production of Li-Ni-Co mixture,” Master’s Thesis, Lappeenranta-Lahti University of Technology, 2019, <URL: https://lutpub.lut.fi/handle/10024/160439>), as applied to claim 1 above, and further in view of Zbranek et al. (US 8,431,005 B1).
Regarding instant claims 5 and 6, the claims of the ‘397 patent render instant claim 1 obvious in view of Kaukinen, and claims 1 and 2 of the ‘397 patent further recite the step of converting the lithium-containing solution to a lithium hydroxide containing liquid by electrodialysis.
These claims do not recite any crystallization steps. However, it would have been obvious to one of ordinary skill in the art to isolate purified lithium hydroxide by crystallization. One of ordinary skill in the art would have been motivated to do so in order to obtain an easily stored and transportable pure solid.
Furthermore, Zbranek also teaches the separation of lithium from impure sources and further teaches that after using a membrane electrolysis process to convert alkali sulfates (such as lithium sulfate) to their hydroxides, that lithium hydroxide can be crystalized from solution and subjected to a washing step of washing the solid lithium hydroxide with a washing liquid of saturated lithium hydroxide (col. 23, lines 4-17).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the method of producing lithium hydroxide recited in the ‘397 patent a crystallization step of obtaining solid lithium hydroxide from the lithium hydroxide containing and a washing step of washing the solid lithium hydroxide with a washing liquid wherein the washing liquid is saturated lithium hydroxide solution, as taught by Zbranek.
One of ordinary skill in the art would have been motivated to do so because Zbranek teaches details on obtaining pure solids from a process analogous to that of the ‘397 patent. One of ordinary skill would be motivated to utilize Zbranek’s crystallization and washing procedure because Zbranek teaches it can provide pure solid lithium hydroxide, where the washing steps remove entrained sodium and potassium.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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