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 .
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 1-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 10-33 of U.S. Patent No. 12,151,211 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent claims recite substantially the same process, albeit with narrower scope via inclusion of an acid treatment step.
Instant claims 1-7 correspond to- and are anticipated by- reference claims 1-7 respectively.
Instant claims 8-31 correspond to- and are anticipated by- reference claims 10-33 respectively.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 5, 9, 11, 12, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jin et al (CN 209583655 U).
With respect to claim 1, Jin teaches methods of preparing lithium chloride [0002] which includes pretreating a lithium brine in a calcining device, filtering, and deacidifying [0043], and thereafter treating with an electrodialysis step to produce a lithium chloride fraction, and to separate out a fraction containing multivalent ions i.e. sulfates which may be returned to a previous step [0044] and purifying the chloride by nanofiltration. As best understood, the process of Jin anticipates the claimed invention, given the broadest reasonable interpretation.
With respect to claim 5, Jin suggests a salt lake brine which would be a natural brine [0020].
With respect to claim 9, Jin teaches returning multivalent reject i.e. a sulfate fraction upstream [0044].
With respect to claim 11, as above Jin teaches nanofiltration separating a chloride fraction (monovalent-enriched) from a sulfate fraction (multivalent enriched).
With respect to claim 12, Jin teaches treating the nanofiltered chloride fraction via concentrating electrodialysis [0044].
With respect to claim 16, Jin teaches starting with a 5% brine and producing up to 12% product [0044] i.e. at least doubling the concentration.
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.
Claims 2 and 3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jin et al.
The pretreatment includes a chelation step [0043] which would inherently reduce the presence of at least iron and heavy metals, absent clarification of specific requirements [0043], or, at minimum, recitation of chelation would render such a treatment obvious to one of ordinary skill in the art.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Jin et al in view of Ball et al (US 4,636,295 A).
With respect to claim 6, Jin teaches as above but is silent to the specific membranes employed in the electrodialysis step. However, Ball teaches Lithium purification by electrodialysis [Abs] and teaches that, depending upon the needs of the specific process, it can be desirable to use a series of anion- and cation-selective membranes which are also selective for univalent/monovalent ions [Col. 3 line 46-Col. 4 line 30]. It would have been obvious to employ such membranes in the process of Jin because Jin does not particularly limit, and so one of ordinary skill in the art would look to the art for guidance within the field of electrodialysis and lithium purification.
With respect to claim 7, Ball teaches that processed concentrate can be treated again by electrodialysis for further concentration, including with the use of the same unit e.g. in batches [Col. 7 lines 28-45]; as such, providing multiple treatment passes e.g. in a batchwise manner would have been obvious in the process of Jin for the same purpose.
Allowable Subject Matter
Claims 4, 8, 10, 13-15, and 17-31 are subject to a double patenting rejection as discussed above, but are free from the prior art.
The closest prior art is represented by Jin above. Jin is silent to details of the aforementioned claims such as recovery of other mineral products via the concentrating electrodialysis step, or combination of the process with a direct extraction process or a solvent extraction process, or related use of adsorbents or the like. Jin is further silent to the specific requirements of the nanofiltration membrane or the secondary electrodialysis device and, compared to the claim requirements, teaches a significantly lower concentration in the product stream.
The prior art as a whole does not remedy the deficiencies of Jin and, alone or in combination, would not lead one of ordinary skill in the art to arrive at the specific claimed operating conditions or material requirements employed by the instant claimed invention. While various concepts regarding electrodialysis membranes, nanofiltration membranes, lithium extraction, and the like are individually known in the art, the prior art does not teach or suggest them within the context of a process similar to Jin’s and would not lead one of ordinary skill in the art to combine them with the teachings of Jin in a manner sufficient to arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY R SPIES whose telephone number is (571)272-3469. The examiner can normally be reached Mon-Thurs 8AM-4PM.
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/BRADLEY R SPIES/Primary Examiner, Art Unit 1776
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