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 .
Specification
The attempt to incorporate subject matter into this application by reference to “GB 2016329.1” is ineffective because the disclosure recites “The present specification builds on the work described in GB patent application number 2016329.1 by providing a further process for electrolytically converting the organic lithium salt (e.g., lithium formate)…” (P12 PGPUB); however, this application could not be found.
Claim Objections
Applicant is advised that should claim 27 be found allowable, claim 28 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 24 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without at least either a cell configuration based on a repeating two-chamber configuration; (ii) a three-chamber configuration with bipolar membranes; and (iii) a four-chamber configuration including a central neutralisation chamber (P107.123.142.156-162.172), which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). The disclosure teaches such embodiments differentiate it from a general electrochemical cell leading to the increased organic acid amount including repeating two-chamber configuration; (ii) a three-chamber configuration with bipolar membranes; and (iii) a four-chamber configuration including a central neutralisation chamber (P107.123.142.156-162.172).
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.
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 are 24,25,27,33, and 35 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 24 recites the broad recitation 50% by weight, and the claim also recites 60%, 70%, 80%, or 90% by weight; claim 25 recites the broad recitation 60oC, and the claim also recites 70oC, 80oC, 90oC, or 100oC; claim 33 recites the broad recitation of at least 3 pairs, and the claim also recites 4, 6, 8, 10, 15, 20, 50, 100, 200, 300, or 350 pairs; claim 35 recites the broad recitation a pH above 4, and the claim also recites a pH above 5 or 6 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 27 recites the limitation "recycling wash liquor". However, the wash liquor is not identified in the claims relative to the electrochemical cell, or what the “wash liquor” comprises. What chambers are needed for the recycled liquor to be used in the cell? Is it fed to an anode or cathode with the cation membrane? One of ordinary skill in the art would not know if the recycled wash liquor is the leachate stream, or a different stream fed to a different chamber of the cell.
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 20-22, 24, and 37-39 are rejected under 35 U.S.C. 103 as being unpatentable over Arito et al. (JP 2012234732 A).
Regarding claim 20, Arito teaches a method for recycling lithium from an input material comprising lithium and one or more transition metals (P25-33), comprising the steps of: contacting said input material with a leaching medium comprising an organic acid, or acidic aqueous solution (P31-33); leaching lithium from the input material to form a leachate comprising an organic lithium salt (P33.37), wherein process with inorganic acid forms inorganic lithium salt and organic acid will form inorganic lithium salt as well-known electrochemical reaction (P33); electrolytically converting the organic lithium salt into an inorganic lithium salt in an electrochemical cell, wherein the electrochemical cell comprises an anode, a cathode and one or more cation exchange membranes (monovalent selectively permeable cation exchange membrane) which are selective to the transmission of monovalent lithium over multivalent transition metals such that the electrochemical cell functions to both convert the organic lithium salt into the inorganic lithium salt and also separate the lithium from multivalent transition metal impurities in the leachate (P34-42.47) and; recycling the organic acid from the electrochemical cell for re-use in the contacting and leaching steps (P38.60-65). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. MPEP 2144 Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112
Regarding claim 21, Arito teaches the inorganic lithium salt is lithium hydroxide (P16-18.49-54).
Regarding claim 22, Arito teaches the organic acid in the leaching medium may be formic acid (P33). While Arito is silent in specifically teaching the reaction of the leachate forming lithium formate and converting to the inorganic lithium salt in the electrochemical cell, the reaction is well-known, and one of ordinary skill in the art would understand the basic electrochemical formula and reaction that would convert the lithium formate into the desired inorganic lithium salt in the electrochemical cell. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112
Regarding claim 24, Arito teaches recycling the acid from the electrochemical cell (P37-41.47.56).
While Arito is silent in teaching at least 50% by weight of the organic acid in the medium is recycled to the electrochemical cell, it would have been obvious to one of ordinary skill in the art to optimize the amount of acid that can be recycled from at least a cost perspective and in doing so arrive at a rate of at least 50%.
Therefore, in the absence of new or unexpected results for which objective evidence commensurate in scope with the claim is offered, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to determine the optimum and maximum amount of recycled organic acid, to save on cost and arrive at an amount of at least 50% by weight. MPEP 2144
Regarding claim 37, Arito teaches input material comprises nickel in addition to the lithium (P20-21)
Regarding claim 38, Arito teaches the input material is lithium battery scrap material (P20)
Regarding claim 39, Arito teaches H+ ions formed at an anode and hydroxide ions formed at the cathode (P54; Fig. 1)
Claims 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Arito as applied to at least claim 20 above, and further in view of Zhi et al. (CN 108400403 A).
Regarding claim 25, Arito teaches selectively precipitating the inorganic lithium salt produced in the electrochemical cell with electrolysis at 90C forming a precipitant (P56.65-74).
Arito is silent in teaching selectively precipitating the inorganic lithium salt produced in the electrochemical cell at a temperature of at least 60C, 70C, 80C, 90C, or 100C; however, Zhi, in a similar field of endeavor, also teaches a method of preparing an inorganic lithium salt from lithium containing waste (abstract).
Zhi teaches precipitating inorganic lithium salt produced in an electrochemical cell at a temperature of at least 60C to ensure smooth generation of the lithium salt while preventing loss of lithium (P59-65).
Therefore, it would have been obvious to one of ordinary skill in the art to selectively precipitating the inorganic lithium salt produced in the electrochemical cell of Arito at a temperature of at least 60C, as taught by Zhi to improve the purity of the lithium salt. The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. MPEP 2143 C
Regarding claim 26, modified Arito in view of Zhi teaches recycling the supernatant from the precipitation is recycled to the electrochemical cell (Zhi; P59.63 and Arito; P38 teaching reusing desalting solution).
Regarding claim 27, modified Arito in view of Zhi teaches washing the precipitated inorganic lithium salt and recycling wash liquor to the electrochemical cell (P59-66).
Regarding claim 28, modified Arito in view of Zhi teaches washing the precipitated inorganic lithium salt and recycling wash liquor to the electrochemical cell (P59-66).
Claims 23 and 29-36 are rejected under 35 U.S.C. 103 as being unpatentable over Arito as applied to at least claim 20 above, and further in view of Mani (US 20010040093).
Regarding claim 23, Arito teaches desalting, or removing (P38-58), but is silent in teaching a multivalent metal separation step applied to the leachate to remove multivalent transition metal impurities prior to electrolysis of the leachate.
Mani teaches a process of regenerating an organic acid and inorganic monovalent salt via electrolysis (P36-40).
Mani is considered analogous art because it is reasonably pertinent to the problem faced by the inventor. In this case, both Mani and the instant application are concerned with the solving problems of recycling organic acid and a monovalent salt. It has been held that a reference is analogous art if it is reasonable pertinent to the problem faced by the inventor even if it is not in the same field of endeavor as the claimed invention. MPEP 2141.01(a)
Mani teaches a multivalent metal separation step applied to the leachate to remove multivalent transition metal impurities prior to electrolysis of the leachate to have long-term trouble free operation and high and steady current (P76-82.84-94.104.164).
Therefore, it would have been obvious to one of ordinary skill in the art to have a multivalent metal separation step applied to the leachate to remove multivalent transition metal impurities prior to electrolysis of the leachate of Arito to prevent long term trouble and improve operation, as taught by Mani. The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. MPEP 2143 C
Furthermore, with respect to the above combination of overall element, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
Regarding claim 29, Arito is silent in teaching the electrochemical cell comprises a diluate chamber for receiving the leachate and a concentrate chamber separated from the diluate chamber by a cation exchange membrane which selectively allows lithium ions to pass from the diluate chamber to the concentrate chamber forming the inorganic lithium salt in the concentrate chamber while blocking multivalent transition metals.
Mani teaches a method of using electrolysis to regenerate an organic acid (P45) and a concentrated alkaline stream (P70-72 - pH range 9-14 where LiOH pH ~12) range from a salt solution from a separate a monovalent alkali metal using a cation membrane that is selective to monovalent cations (P148).
Mani is considered analogous art because it is reasonably pertinent to the problem faced by the inventor. In this case, both Mani and the instant application are concerned with the solving problems of recycling organic acid and a monovalent salt. It has been held that a reference is analogous art if it is reasonable pertinent to the problem faced by the inventor even if it is not in the same field of endeavor as the claimed invention. MPEP 2141.01(a)
Mani teaches an electrochemical cell comprises a diluate chamber A for receiving the leachate and a concentrate chamber B separated from the diluate chamber by a cation exchange membrane 166 which selectively allows cations to pass from the diluate chamber A to the concentrate chamber B forming the base in the concentrate chamber while blocking multivalent transition metals (P40-42.106-108; Fig. 5.6).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application for the electrochemical cell of Arito to comprise a diluate chamber for receiving the leachate and a concentrate chamber separated from the diluate chamber by a cation exchange membrane which selectively allows lithium ions to pass from the diluate chamber to the concentrate chamber forming the inorganic lithium salt in the concentrate chamber while blocking multivalent transition metals, as taught by Mani, to have a high yield product and with monovalent passage in the membrane as taught by Arito to minimize contamination.
The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. MPEP 2143 C
Regarding claim 30, modified Arito in view of Mani teaches multivalent transition metals are periodically removed from the cation exchange membrane by chemically stripping (P75-78).
Regarding claim 31, modified Arito in view of Mani teaches the electrochemical cell comprises an electrode rinse compartment, or anolyte chamber in contact with an anode, the anolyte chamber being separated from the diluate chamber adjacent the anolyte chamber by a bipolar membrane, and wherein the electrochemical cell comprises a catholyte chamber in contact with a cathode, the catholyte chamber being separated from the concentrate chamber adjacent the catholyte chamber by a bipolar membrane.
Regarding claim 32, modified Arito in view of Mani teaches the electrochemical cell comprises more than one pair of diluate and concentrate chambers (P49.115-116; Fig. 6).
Regarding claim 33, modified Arito in view of Mani teaches the electrochemical cell comprises at least 3, 4, 6, 8, 10, 15, 20, 50, 100, 200, 300, or 350 pairs of diluate and concentrate chambers (P36.49.115-116; Fig. 6).
Regarding claim 34, modified Arito in view of Mani teaches an anolyte chamber in contact with an anode ER, the anolyte chamber being separated from the diluate chamber A adjacent the anolyte chamber by a cation exchange membrane 160 (P100-113; Fig. 6)
Regarding claim 35, modified Arito in view of Mani teaches a neutralization chamber, or salt chamber S disposed between the diluate chamber A and the concentrate chamber B, and wherein the neutralization chamber is maintained at a pH above 4, 5, or 6 (P30-50.107-118 – wherein all arrangements have end electrodes in solution – wherein neutral chamber, or salt chamber has a pH of 4.5-7 and above )
Regarding claim 36, modified Arito in view of Mani teaches a neutralization chamber, or salt chamber S disposed between the diluate chamber A and the concentrate chamber B, and wherein the neutralization chamber is maintained at a pH above a pKa of the organic acid (P37-45.107-118 – wherein organic acid pKa around 2.5 and the pH of neutral chamber with feed salt becomes alkaline 10-11, addition of base to maintain elected pH).
Conclusion
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/Amanda Rosenbaum/Examiner, Art Unit 1752
/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
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