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 .
Response to Amendment
The preliminary amendment filed on 09/09/2024 is entered and acknowledged by the Examiner. Claims 1-20 and 22-28 have been amended. Claims 1-28 are currently pending in the instant application.
Priority
This application is a 371 of PCT/FR2023/050297 (filed on 03/06/2023). Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in Bolivia, Argentina, and France on 03/10/2022 and 10/26/2022.
Information Disclosure Statement
The information disclosure statements (IDS) filed on 09/06/2024 and 03/06/2026 are in compliance with the provisions of 37 CFR 1.97 and have been considered by the examiner. An initialed copy accompanies this Office Action.
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, 3-9, and 28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-9, and 11-13 of copending Application No. 19/344,289 (reference application, as filed on 09/29/2025). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application discloses a composition and device containing all the claimed components within the claimed proportions of the instant application. The reference application anticipates the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-9 and 11-28 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0314784 A1 (hereinafter Lecocq).
Regarding claims 1, 4 and 7-9, Lecocq discloses a crystalline solid material and a method for preparing the crystalline solid material having a formula (LiCl)x·2Al(OH)3·nH2O wherein n is between 0.01 and 10, x is between 0.4 and 1 (See Abstract; [0001] and [0002]). The crystalline solid material of Lecocq has a formula, i.e., (LiCl)x·2Al(OH)3·nH2O, that meets the claimed lithiated bayerite crystallite as described by the Applicant (See page 7, lines 6-10, of the present Specification). The crystalline solid material of Lecocq comprises at least elements Li, Cl, Al, O and H. In one embodiment, Lecocq discloses a paste (a product) comprises of the crystalline solid material and water (See [0234]). The crystalline solid material having Al=23 wt%, Li=3 wt%, and Cl=15.1 wt% (See [0239]). Lecocq discloses that the crystallites is between 0.5-15 nm (See [0064]), which is overlaps the claimed crystallite mean size of 10-25 nm.
Lecocq failed to discloses a product having a combined aluminum hydroxide and boehmite content of 10% or less as recited in claim 1.
However, Lecocq discloses a reaction mixture of boehmite precipitate and lithium chloride in the presence of water to form a suspension of (LiCl)x·2Al(OH)3·nH2O, then filtered, washed, and dried (See [0069], [0072] and [0073]). The filtration and washing steps would remove any unreacted or extra boehmite to yield a product with a boehmite content of 10% or less as claimed. Lecocq discloses that the Boehmite is a poorly crystalline (See [0022] and [0178]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to limit the Boehmite content in order to reduce the amount of poorly crystalline in the solid crystalline material of Lecocq and improve lithium adsorption capacity and adsorption kinetics.
Regarding claim 2, Lecocq discloses that the crystalline solid material having Al=23 wt%, Li=3 wt%, and Cl=15.1 wt% (See [0239]) and elements other than Li, Cl, Al, O and H (See [0119], e.g., Na, K, and Rb to name a few).
Regarding claims 3 and 5-6, Lecocq exemplify a product containing 35.5g of paste (solid crystalline material) with 4.7g of water (See [0234]). This would yield a water content of about 11.7%, which is within the claimed range of 1-95% of water.
Regarding claims 11-27, the instant method claims are directly or indirectly depended from product claim 1 and are deemed as product-by-process claims that are not limited to the manipulations of the recited steps, only the structure limited by the steps. Therefore, the patentability of the product does not depend on its method of production and the claimed steps were not given patentable weight. It is noted that a method limitation incorporated into a product claim does not patentably distinguish the product because what is given patentable consideration is the product itself and not the manner in which the product was made. Therefore, the patentability of a product is independent of how it was made. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product and, if there is any difference, the difference would have been minor and obvious. Determination of patentability of a product-by-process claim is based on the scope of the product itself. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113.
Regarding claim 28, Lecocq discloses a lithium extraction device comprising the solid crystalline material (See claim).
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
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 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.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHANH TUAN NGUYEN whose telephone number is (571)272-8082. The examiner can normally be reached M-F 9:00 AM to 5:00 PM EST.
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, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHANH T NGUYEN/Primary Examiner, Art Unit 1761
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