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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Figs. 1, 2, and 4 feature circled numerals which appear to have insufficient description in the instant Specification. An Example is provided below. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
[AltContent: arrow][AltContent: arrow]Example:
PNG
media_image1.png
1421
1005
media_image1.png
Greyscale
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 1-12 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 1 recites “producing aluminum hydroxide” in Lines 2-3. It is unclear the metes and bounds of what amounts to “producing” and the term in context is a relative term rendering the claim indefinite. The term “producing” does not convey a specific actionable and repeatable method step to persons of ordinary skill in the art and could include for example addition, or some other meaning entirely.
Regarding Claims 1, 2, 8, 9, and 11, it is unclear whether the “aluminum hydroxide” in Claim 1 is the same “aluminum hydroxide” in Claims 2, 8, 9, and 11. Appropriate correction is required to establish a clearer nexus between the limitation “aluminum hydroxide” and the act of “producing” in Claim 1 and the recitation of “aluminum hydroxide” in Claims 2, 8, 9, and 11.
Claim 8 recites “a compound contained in the second slurry” in Lines 16-17 and “the compound” in Line 17. As used, the term “compound” is an indefinite term rendering the claim indefinite. It is unclear the source of any “compound” which renders the metes and bounds of what constitutes a “compound” unclear from the claim as presently recited. Appropriate correction is required.
Claim 8 recites “a first aqueous lithium salt solution” in Line 4. It is unclear whether this is the same “aqueous liquid” of Claim 1 on which Claim 8 depends, or some other solution entirely. Similarly, Claim 9 recites “the first aqueous liquid salt solution” in Lines 2-3 and Claim 10 recites “the first aqueous liquid salt solution” in Line 4. Claims 8 and 10 additionally recite a “second aqueous lithium salt solution.” Appropriate correction is required to establish a nexus between the steps of Claims 8-10 and the step of Claim 1 on which Claims 8-10 depend regarding the presence of a lithium salt solution.
Claim 8 recites “high-purity aqueous lithium salt solution” in Line 12. As used the term “high-purity” is a relative term rendering the claim indefinite. The term “high-purity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required to present actionable and repeatable method claims with positive active claim language.
Claim 12 recites “producing aluminum phosphate from the second slurry” in Lines 2-3, presenting the following issues of clarity:
Claim 12 recites “producing aluminum phosphate” in Lines 2-3. It is unclear the metes and bounds of what amounts to “producing” and the term in context is a relative term rendering the claim indefinite. The term “producing” does not convey a specific actionable and repeatable method step to persons of ordinary skill in the art and could include for example addition, or some other meaning entirely.
It is unclear the nexus between “producing aluminum phosphate” in Claim 12 and the limitation “to provide a precipitate of aluminum phosphate” in Lines 5-6 of Claim 8 on which Claim 12 depends. A clearer nexus must be provided to establish the presence of aluminum phosphate in Claim 12.
Claims 3-7 are rejected for their dependency on a rejected claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being clearly anticipated by Harrison et al. US 20190225854 A1.
Regarding Claim 1, Notwithstanding the 112(b) rejections above, Harrison et al. ‘854 discloses a method for recovering lithium from aqueous liquid containing a lithium salt, the method comprising producing aluminum hydroxide in an aqueous liquid containing the lithium salt [0119].
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 2-4 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Harrison et al. US 20190225854 A1 as applied to Claim 1 above in view of Ishimori et al. JP 5632169 B2 and further in view of Zheng et al. CN 112310500 B.
Regarding Claims 2 and 7, Harrison et al. ‘854 discloses the limitations set forth above and teaches separating lithium as lithium carbonate [0270] but does not expressly teach a phosphorylation step, first and second solid-liquid separation steps, pH adjustment step.
However, Ishimori et al. ‘619 teaches a method for recovering lithium from aqueous liquid containing a lithium salt comprising a phosphorylation step of adding a metal phosphate and an alkali metal hydroxide to an aqueous liquid containing a lithium salt to produce a solid containing lithium phosphate and the metal hydroxide (Page 3, Translation). Ishimori et al. ‘619 teaches a first solid-liquid separation step of separating the sold containing lithium phosphate and metal hydroxide, a pH adjustment step of adding hydrochloric acid, sulfuric acid, or nitric acid (meeting the limitation for mineral acid) (Page 7, Translation) to a suspension obtained by suspending a solid separated in the first solid-liquid separation step in water to adjust pH of the suspension to 1 to 10 (Page 3, Translation). Ishimori et al. ‘619 teaches a second solid-liquid separation step of solid-liquid separation of a metal phosphate-lithium salt aqueous solution obtained in the pH adjustment step; and a lithium separation step of separating lithium as lithium carbonate from an aqueous lithium salt solution obtained in the second solid-liquid separation step, wherein metal phosphate obtained in the second solid-liquid separation step is reused in the phosphorylation step (Pages 5-6, Translation).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05. In cases where claimed ranges "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. Cir. 1990).
Though Ishimori et al. ‘619 teaches the use of alkali or heavy metal phosphates (Page 7, Translation), this does not teach away from the use of an aluminum phosphate. See MPEP 2123.II. It would have been obvious to one having ordinary skill in the art at the time of filing the invention to substitute the metal phosphate of Ishimori et al. ‘619 with aluminum phosphate in order to sufficiently remove aluminum impurity from waste lithium and increase the efficiency of lithium recovery from an aqueous liquid containing lithium salt, meeting the limitations of the instant Claim.
Zheng et al. ‘500 further provides express motivation to remove aluminum impurity from waste lithium by acidifying an aqueous liquid containing a lithium salt with mineral acid (Abstract), [0006]. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 3, modified Harrison et al. ‘854 teaches the limitations set forth above. Ishimori et al. ‘619 further teaches carbonating an aqueous lithium salt solution obtained in the second-solid liquid separation step to provide lithium carbonate (Page 4, Translation), meeting the limitations of the instant Claim.
Regarding Claim 4, modified Harrison et al. ‘854 teaches the limitations set forth above. Harrison et al. ‘854 further teaches the lithium separation comprises a membrane electrolysis of an aqueous lithium salt solution with an ion-exchange membrane to provide a lithium hydroxide aqueous solution [0282].
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to conduct membrane electrolysis on the aqueous lithium salt solution obtained in the second solid-liquid separation step of modified Harrison et al. ‘854 in order to provide a concentrated solution free of impurity ions, meeting the limitations of the instant Claim.
Regarding Claim 8, modified Harrison et al. ‘854 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, Ishimori et al. ‘619 further teaches adjusting pH of a first slurry including a mixture of lithium phosphate obtained from a first aqueous lithium salt solution, as a raw material, containing a lithium salt with 3.00 g/L in terms of lithium, lying within the instantly claimed range of 0.1 to 70 g/L, and a metal hydroxide to a pH range of 1 to 10 to precipitate a metal phosphate (Pages 3-4), a step of filtering off and removing the precipitate of metal phosphate from a first slurry containing the mixture of lithium phosphate and metal hydroxide to provide a second aqueous lithium salt solution; and filtering off and removing a precipitate of metal phosphate form a second slurry obtained by adding a metal salt to the second aqueous lithium solution to provide a high concentration lithium solution. The second slurry pH of 1 to 10 satisfies condition 1, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where claimed ranges "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. Cir. 1990).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 9, modified Harrison et al. ‘854 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, Harrison et al. ‘854 further teaches adding aluminum salt [0117] and phosphoric acid [0261] to bring the solution to a pH of greater than 10 [0262], overlapping the instantly claimed range of 8 to 14, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where claimed ranges "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. Cir. 1990).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 10, modified Harrison et al. ‘854 teaches the limitations set forth above. Ishimori et al. ‘619 further teaches reusing the metal phosphate residue (Page 5, Translation).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to add the precipitate of aluminum phosphate filtered off from the first or second slurry or modified Harrison et al. ‘854 to the first or second aqueous lithium salt solution in order to recycle the aluminum phosphate and increase the recovery of lithium based on the teachings of Ishimori et al. ‘619 at (Page 5, Translation), meeting the limitations of the instant Claim.
Regarding Claim 11, modified Harrison et al. ‘854 teaches the limitations set forth above. Ishimori et al. ‘619 further teaches forming a concentrated lithium solution (Page 7, Translation).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to filter off the mixture of lithium phosphate and aluminum hydroxide from the first slurry and disperse it in a smaller amount of water than the first aqueous lithium salt solution to provide a first slurry containing a mixture of concentrated lithium phosphate and aluminum hydroxide in order to increase the recovery of lithium based on the teachings of Ishimori et al. ‘619 at (Page 2, Translation), meeting the limitations of the instant Claim.
Regarding Claim 12, modified Harrison et al. ‘854 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, Harrison et al. ‘854 further teaches producing a metal phosphate at a temperature range between about 40 °C and 120 °C [0238], overlapping the instantly claimed range of 50 °C or less.
See MPEP 2144.05. In cases where claimed ranges "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. Cir. 1990).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Harrison et al. US 20190225854 A1 in view of Ishimori et al. JP 5632169 B2 and Zheng et al. CN 112310500 B as applied to Claims 2-4 and 7-12 above and further in view of NPL Diaz Nieto et al.
Regarding Claims 5-6, modified Harrison et al. ‘854 teaches the limitations set forth above. Harrison et al. ‘854 does not expressly teach its membrane electrolysis step is powered with renewable energy.
However, NPL Diaz Nieto et al. teaches powering membrane electrolysis for a lithium recovery process with solar energy in order to reduce energy costs (Section 3.5).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to power the membrane electrolysis step of modified Harrison et al. ‘854 with solar energy in order to reduce energy costs based on the teachings of NPL Diaz Nieto at (Section 3.5), meeting the limitations of the instant Claim.
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 and 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12294053 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite a method that includes the production of aluminum hydroxide in aqueous liquid containing lithium salt and further include nearly identical method steps regarding the precipitation of aluminum hydroxide.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Ryabtsev, A. D., L. T. Menzheres, and A. V. Ten. "Sorption of Lithium from Brine onto Granular LiCl· 2Al (OH) 3· m H2O Sorbent under Dynamic Conditions." Russian Journal of Applied Chemistry 75.7 (2002): 1069-1074. teaches using aluminum salt as a sorbent in an aqueous liquid containing lithium salt.
US 20210123119 A1 teaches lithium recovery and selective precipitation of lithium and aluminum from lithium battery slag.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORIAH S. SMOOT whose telephone number is (571)272-2634. The examiner can normally be reached M-F 8:30am - 5pm EDT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
