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 .
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 1-18 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 “effective alkalinity” in line 3 and line 4. However, the meaning of “effective alkalinity” is not defined. Appropriate correction is required.
Claim 3 recites “the alkalinity”. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 3 recites “the ratio of the alkalinity to the concentration of dissolved species”. The scope of dissolved species is unclear. Some organic material may be dissolved in brine, it’s unclear whether organic material changes the effective alkalinity. Many metal ions are present in natural brine, it’s unclear whether “the concentration of dissolved species” includes all the metal ions. Appropriate correction is required.
Claims 4-8 and 10-18 recite “effective alkalinity”. However, the meaning of “effective alkalinity” is not defined. Appropriate correction is required.
Claim 7 recites “the reactant species”. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 7 recites “selecting the reactant species for lithium to be recovered”. The scope of the reactant species is unclear. Appropriate correction is required.
Claim 8 recites “screening the brine”. The meaning of “screening the brine” is unclear. Appropriate clarification is required.
Claim 10 recites “the mainstream”. It’s unclear which process stream is the mainstream. Appropriate correction is required.
Claims 11-18 recites “effective alkalinity”. However, the meaning of “effective alkalinity” is not defined. Appropriate correction is required.
Claim 15 recites “screening the brine”. The meaning of “screening the brine” is unclear. Appropriate clarification is required.
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.
Claims 1-7, 9, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Battaglia (Ind. Eng. Chem. Res. Vol. 61, 2022, Page 13589-13602), and further in view of Momont (US 5,298,174).
Regarding claims 1, 3, 7 and 9, Battaglia teaches a method for extracting lithium, comprising providing a synthetic solution as simulated brine; and adjusting the amount of [CO32-]/[Li+] or [OH-]/[Li+] to maximize the precipitation of Li2CO3 (Abstract; Page 13591-13597; Fig. 4; Fig. 14). Since the amount of [CO32-]/[Li+] or [OH-]/[Li+] in the solution determines the effective alkalinity, adjusting the amount of [CO32-]/[Li+] or [OH-]/[Li+] to maximize the precipitation of Li2CO3 disclosed by Battaglia meets the limitation adjusting the effective alkalinity in the brine to a preset value as recited in claim 1. Since Battaglia discloses that the synthetic solution is a simulated brine and that natural brine has been used to extract lithium (Page 13589-13592), it would be obvious to one of ordinary skill in the art to apply the method of Battaglia to extract lithium from natural brine.
Battaglia discloses heating the solution to a temperature of 80 ºC and precipitating Li2CO3 (Page 13593-13599). Battaglia does not disclose using heat exchanger to raise the temperature. However, using heat exchanger to raise liquid medium temperature to save energy is well-known to one of ordinary skill in the art as evidenced by Momont. Momont discloses using heat exchanger to heat liquid medium to desired temperature (Col 3, Ln 4-31). It would be obvious to one of ordinary skill in the art to heat brine solution using a heat exchanger as taught by Momont in the process of Battaglia in order to save energy and cost.
Regarding claim 2, Battaglia discloses separating Li2CO3 precipitates by vacuum filtration (Page 13592; 2nd column), which meets the limitation concentrating the precipitated material, separating lithium precipitate and exiting the spent brine from the system as recited in claim 2.
Regarding claims 4-6 and 12-14, Battaglia discloses that increasing CO32-]/[Li+] amount from 0.25 to 1 improves the recovery of Li, however, when the CO32-]/[Li+] amount is increased from 1 to 2, there was only slight increase in the recovery of Li and the Li purity is slightly decreased (Page 13593; Fig. 4). Battaglia also discloses that increasing [OH-]/[Li+] amount from 1 to 2 improves the recovery of Li, however, when the [OH-]/[Li+] amount is increased from 2 to 4, there was only slight increase in the recovery of Li and the Li purity is slightly decreased (Fig. 14). Thus, it would be obvious to one of ordinary skill in the art to optimize the CO32-]/[Li+] or [OH-]/[Li+] amount in the process of Battaglia in order to maximize Li recovery and purity as disclosed by Battaglia. See MPEP 2144.05 II. Since effective alkalinity is directly related to the CO32-]/[Li+] or [OH-]/[Li+] amount in solution, optimizing CO32-]/[Li+] or [OH-]/[Li+] amount disclosed by Battaglia includes optimizing effective alkalinity. Thus, claims 4-6 and 12-14 are obvious over Battaglia in view of Momont.
Regarding claim 11, Battaglia teaches a method for extracting lithium, comprising providing a synthetic solution as simulated brine; and adjusting the amount of [CO32-]/[Li+] or [OH-]/[Li+] to maximize the precipitation of Li2CO3 (Abstract; Page 13591-13597; Fig. 4; Fig. 14). Since the amount of [CO32-]/[Li+] or [OH-]/[Li+] in the solution determines the effective alkalinity, adjusting the amount of [CO32-]/[Li+] or [OH-]/[Li+] to maximize the precipitation of Li2CO3 meets the limitation adjusting the effective alkalinity in the brine to a preset value as recited in claim 11. Since Battaglia discloses that the synthetic solution is a simulated brine and that natural brine has been used to extract lithium (Page 13589-13592), it would be obvious to one of ordinary skill in the art to apply the method of Battaglia to extract lithium from natural brine. Battaglia discloses separating Li2CO3 precipitates by vacuum filtration (Page 13592; 2nd column), which meets the limitation concentrating the precipitated material, separating lithium precipitate and exiting the spent brine from the system as recited in claim 11.
Battaglia discloses heating the solution to a temperature of 80 ºC and precipitating Li2CO3 (Page 13593-13599). Battaglia does not disclose using heat exchanger to raise the temperature. However, using heat exchanger to raise liquid medium temperature to save energy is well-known to one of ordinary skill in the art as evidenced by Momont. Momont discloses using heat exchanger to heat liquid medium to desired temperature (Col 3, Ln 4-31). It would be obvious to one of ordinary skill in the art to heat brine solution using a heat exchanger as taught by Momont in the process of Battaglia in order to save energy and cost.
Claims 8 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Battaglia (Ind. Eng. Chem. Res. Vol. 61, 2022, Page 13589-13602) in view of Momont (US 5,298,174), and further in view of Nakano (US 2018/0222761).
Regarding claim 8, Battaglia in view of Momont does not teach screening the brine prior to adjusting effective alkalinity. Nakano teaches a method of recovering Li from natural brine and discloses that screening out solids of impurities prior to precipitating Li ([0016] to [0019]). Thus, it would be obvious to one of ordinary skill in the art to screen out solids of impurities as taught by Nakano in the process of Battaglia in view of Momont in order to improve the purity of Li precipitates.
Regarding claim 15, Battaglia teaches a method for extracting lithium, comprising providing a synthetic solution as simulated brine; and adjusting the amount of [CO32-]/[Li+] or [OH-]/[Li+] to maximize the precipitation of Li2CO3 (Abstract; Page 13591-13597; Fig. 4; Fig. 14). Since the amount of [CO32-]/[Li+] or [OH-]/[Li+] in the solution determines the effective alkalinity, adjusting the amount of [CO32-]/[Li+] or [OH-]/[Li+] to maximize the precipitation of Li2CO3 meets the limitation adjusting the effective alkalinity in the brine to a preset value as recited in claim 15. Since Battaglia discloses that the synthetic solution is a simulated brine and that natural brine has been used to extract lithium (Page 13589-13592), it would be obvious to one of ordinary skill in the art to apply the method of Battaglia to extract lithium from natural brine. Battaglia discloses separating Li2CO3 precipitates by vacuum filtration (Page 13592; 2nd column), which meets the limitation concentrating the precipitated material, separating lithium precipitate and exiting the spent brine from the system as recited in claim 15.
Battaglia discloses heating the solution to a temperature of 80 ºC and precipitating Li2CO3 (Page 13593-13599). Battaglia does not disclose using heat exchanger to raise the temperature. However, using heat exchanger to raise liquid medium temperature to save energy is well-known to one of ordinary skill in the art as evidenced by Momont. Momont discloses using heat exchanger to heat liquid medium to desired temperature (Col 3, Ln 4-31). It would be obvious to one of ordinary skill in the art to heat brine solution using a heat exchanger as taught by Momont in the process of Battaglia in order to save energy and cost.
Battaglia in view of Momont does not teach screening the brine prior to adjusting effective alkalinity. Nakano teaches a method of recovering Li from natural brine and discloses that screening out solids of impurities prior to precipitating Li ([0016] to [0019]). Thus, it would be obvious to one of ordinary skill in the art to screen out solids of impurities as taught by Nakano in the process of Battaglia in view of Momont in order to improve the purity of Li precipitates.
Regarding claims 16-18, Battaglia discloses that increasing CO32-]/[Li+] amount from 0.25 to 1 improves the recovery of Li, however, when the CO32-]/[Li+] amount is increased from 1 to 2, there was only slight increase in the recovery of Li and the Li purity is slightly decreased (Page 13593; Fig. 4). Battaglia also discloses that increasing [OH-]/[Li+] amount from 1 to 2 improves the recovery of Li, however, when the [OH-]/[Li+] amount is increased from 2 to 4, there was only slight increase in the recovery of Li and the Li purity is slightly decreased (Fig. 14). Thus, it would be obvious to one of ordinary skill in the art to optimize the CO32-]/[Li+] or [OH-]/[Li+] amount in the process of Battaglia in order to maximize Li recovery and purity as disclosed by Battaglia. See MPEP 2144.05 II. Since effective alkalinity is directly related to the CO32-]/[Li+] or [OH-]/[Li+] amount in solution, optimizing CO32-]/[Li+] or [OH-]/[Li+] amount disclosed by Battaglia includes optimizing effective alkalinity. Thus, claims 16-18 are obvious over Battaglia in view of Momont and Nakano.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Battaglia (Ind. Eng. Chem. Res. Vol. 61, 2022, Page 13589-13602) in view of Momont (US 5,298,174), as applied to claim 1 above, and further in view of Dai (US 2020/0385280).
Regarding claim 10, Battaglia in view of Momont does not teach that the spent brine is returned to Li recovery process. Dai teaches a method of recovering Li from brine and discloses that the unacceptable carbonized mother liquor (spent brine) obtained by the solid-liquid separation is continuously introduced into the mixture to continuously separate out lithium carbonate slurry or to be used for pH adjustment ([0040]; [0115] to [0169]). Thus, it would be obvious to one of ordinary skill in the art to introduce the spent brine into the mixture as taught by Dai in the process of Battaglia in view of Momont in order to continuously separate out lithium carbonate and adjust pH as disclosed in Dai. It would be obvious to one of ordinary skill in the art that the amount of spent brine added to the mixture should be adjusted based on the target pH. Thus, claim 10 is obvious over Battaglia in view of Momont and Dai.
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/738052 (US 20250376382). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 of copending Application No. 18/738055 teach all the limitations recited in the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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