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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Accordingly, means for: selectively extracting, distilling, removing and polishing are considered under 35 USC 112 (f) in claims 20 and 23.
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.
Claims 11, 14, 24 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 11: “may comprise” is an uncertain term, and indefinite.
Claim 14: “a precipitate” in unclear and indefinite. It is assumed as a noun representing a solid material, but then it can be any unlimited solids, and does not have any metes and bounds. The ion exchange or precipitation in the optional steps do not say what are removed in these steps, nor they are adequately disclosed. Claim 14 also has typos.
Claim 24: “the plurality of hollow fiber …” lacks antecedent basis.
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.
Claims 10 and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 10 and 24 recite the membrane as configured to initiate nucleation of crystals. The disclosure for this is in [0069] which describes providing a low energy surface or increasing the area. Increasing the membrane area cannot be considered as configuring or modifying the surface for nucleation. Increasing the area is also not quantitively described, thereby leaving one of ordinary skill with no clearly defined steps to design the membrane for the desired use. Applicant has not given any definition for the low energy surface nor details on how to provide the low energy surface. Therefore, it appears that applicant may not have possession of the claim element “membrane is configured to initiate nucleation of crystals.”
Claim Rejections - 35 USC § 102 and 103
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.
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.
Claim(s) 1, 2, 4, 6-14, 19, 20, 21, 23, 24, 26 and 27 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by, or in the alternative, under 35 USC 103 as being unpatentable over, Snydacker et al (US 11,377,362.)
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Claims 1,2, 4, 20: Fig. 2 of Snydacker is copied herein for reference. Fig. 3 is similar but uses HCl instead of nitric acid. A brine contains plurality of solutes. Snydacker’s interest is in purifying lithium, and process steps and the means for achieving them are the same, as is clear from the figure. Membrane distillation – see column 10. The lithium is removed by crystallization. The steps include polishing using NaOH, like applicant discloses and in claim 23. See the examples for details. Concentration is increased in step 202 as in claims 2. Ion exchange adsorption and acid desorption as in claim 4.
Claim 21: claim 21 alternately recites an adsorption column for selectively extracting. Snydacker teaches an ion exchange reactor, which is a column at step 201 in the examples.
The process as in claim 6 includes rinsing or washing residual brine with recycled water: see the figure and examples. Regarding the increasing of concentration in the mineral solution, see col. 24, “Liquid resource” in lines 33-60. Concentrated brine and seawater are examples of pre-concentrating, desalination effluent, etc., meaning they undergo concentration process. He minerals recited are anticipated in the source brine.
Claim 7: see the figure for the crystallization step.
Claim 9, 10 and 24: while Snydacker is silent on these claim, recovering heat from the solution is prima facie a well-known process and is not patentable. Applicant’s disclosure states the configuring the membrane for nucleation as providing more membrane area, without any quantitative details on how much more. However, this is also not a patentable invention because it is within the capability of one of skill in the art to design the membrane for the required area for performance as desired or required. Also, it is well-known that concentration polarization on the membrane surface causes salts to crystallize.
Claim 8: washing crystals with water removed from the mineral rich solution: while Snydacker is silent on this step, such washing is well-known for removal of solution or dissolved impurities trapped in void spaces in the crystals. See the NPL on Design of integrated crystal system by Wibowo, et.al., attached with an 892 (step I: identification of potential problems related to PSD.) Using the water recovered from the crystallization step would have been obvious – readily available purer water at the process temperature.
Claim 11: while Snydacker is silent, adding seed crystals, nucleation, raising temperature, etc., are all well-known process steps in crystallization, and are not patentable unless otherwise shown.
Claim 12: supersaturated state: while Snydacker is silent, concentration polarization is well-known in the membrane process, which inherently causes supersaturation on the membrane surface.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Claim 13: see Snydacker, col. 10, lines 15-28 about the temperature for membrane distillation at 40-90C.
Claim 19: while Snydacker teaches primarily lithium extraction, this same process can be used for extracting other minerals for the brine as well, which would have been prima facie obvious to one of ordinary skill. The eluting agent and/or eluting time may differ in the ion exchange separation step, but one of skill in the art would have the knowledge and capability to design this step. It is observed that while applicant discloses that the “first and/or second mineral may be lithium, potassium, calcium or magnesium” [0050], applicant discloses details only for lithium extraction.
Claim 14: polishing step prior to distillation. Snydacker teaches the polishing step as disclosed (adding NaOH) but after distillation. However, a change in the order of the process steps is prima facie obvious – se MPEP 2144.04.
Claims 16 and 21 (alternate membrane distillation) are rejected under 35 U.S.C. 103 as being unpatentable over Snydacker et al (US 11,377,362.) in view of GB 2229379 (GB) and further in view of Ghaffour et al (US 2017/0361277)
Snydacker, while teaching membrane distillation, does not provide details of the membrane distillation apparatus as claimed. Therefore, it would have been obvious to one of ordinary skill in the art to look up the relevant literature to find such details and one would use the teachings from these references thus found.
GB teaches a membrane distillation unit as claimed. See figure. Fig. 9 copied herein with annotations as the best representation of the GB’s teaching. It has the outer conduit 36, inner conduits 51, and plurality of tubular membranes 30 within each of the inner conduits as claimed.
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The membrane is tubular as in hollow fiber (hollow fibers are tubular membranes with small diameters.) Membrane is hydrophobic (abstract) with the intended purpose of passing/permeating water vapor from salt water. The flow arrangements are as claimed/disclosed by the applicant.
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While hollow fibers are also tubular membranes, Ghaffour teaches membrane distillation apparatus with hollow fiber membranes. The essential difference between the Ghaffour teaching and that of the applicant is that Ghaffour teaches an additional set of hollow fiber heat exchanger membranes in place of applicant’s inner conduits.
Therefore, it is readily apparent to one of ordinary skill in the art to combine the teachings of Ghaffour and GB with that of Snydacker to arrive at applicant’s claimed invention.
The following rationales from MPEP 2143 would also apply for combining the references to arrive at applicant’s invention:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
Note: the optional parts of claim 16 (and other claims) are ignored because they are optional.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
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/KRISHNAN S MENON/ Primary Examiner, Art Unit 1771
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