Ex Parte Mehta

Board of Patent Appeals and Interferences

Jul 8, 2002

08931635 (B.P.A.I. Jul. 8, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte VIJAY CHANDRAKANT MEHTA
__________
Appeal No. 2001-1440
Application 08/931,635
___________
ON BRIEF
___________
Before OWENS, KRATZ and PAWLIKOWSKI, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1 and 3-
33, which are all of the claims remaining in the application.
THE INVENTION
The appellant’s claimed invention is directed toward a
method for preparing a lithium salt by metathesis of a lithium
Appeal No. 2001-1440
Application 08/931,635

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salt and a sodium salt or a potassium salt. Claims 1 and 27 are
illustrative:
1. A method for preparing a lithium salt of formula LiX,
comprising:
reacting lithium salt selected from lithium chloride,
lithium sulfate, and combinations thereof with NaX or KX in an
aqueous solution;
adding an organic solvent to the aqueous solution to produce
a semiaqueous solution; and
removing the precipitated solids from the semiaqueous
solution to obtain a LiX solution.
27. A method for preparing a lithium salt of formula LiX,
comprising:
reacting lithium salt selected from lithium chloride,
lithium sulfate, and combinations thereof with NaX or KX in a
semiaqueous solution comprising water and an organic solvent to
produce LiX, the amount of water in the semiaqueous solution
being between about 1 and about 4 moles per mole of LiX; and
removing the precipitated solids from the solution to obtain
a LiX solution.
THE REFERENCE
Hermann 3,278,260 Oct. 11, 1966
THE REJECTION
Claims 1 and 3-33 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hermann.
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Application 08/931,635

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OPINION
We reverse the rejection of claims 1 and 3-26 and affirm the
rejection of claims 27-33.
Claim construction
During patent prosecution, claims are to be given their
broadest reasonable interpretation consistent with the
specification, as the claim language would have been read by one
of ordinary skill in the art in view of the specification and
prior art. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989); In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983); In re Herz, 537 F.2d 549, 551, 190
USPQ 461, 463 (CCPA 1976); In re Okuzawa, 537 F.2d 545, 548, 190
USPQ 464, 466 (CCPA 1976).
The appellant’s specification divides solutions into three
groups: aqueous, semiaqueous (containing water and organic
solvent), and organic (page 3, lines 14-21; page 5, lines 6-10;
page 7, lines 5-11; page 9, lines 5-11). Hence, we interpret
“aqueous solution” in the appellant’s claims as being a solution
which contains no organic solvent.
Rejection of claims 1, 3-6 and 8-26
Hermann discloses a method for preparing lithium chloride by
reacting lithium sulfate with sodium chloride or potassium
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Application 08/931,635

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chloride in alcohol (col. 2, lines 21-69). The alcohol
preferably contains a small amount of dissolved water to cause
the reaction to proceed at a much more rapid rate (col. 2,
lines 40-44; col. 4, lines 39-41 and 59-61). Precipitated solids
are separated from the semiaqueous solution to obtain a lithium
chloride solution (col. 2, lines 25-32 and 58-65; col. 4,
lines 28-31). Hermann does not disclose reacting the lithium
sulfate with the sodium chloride or potassium chloride in an
aqueous solution and adding an organic solvent to the aqueous
solution (independent claims 1, 9 and 26) or dissolving the
lithium sulfate and sodium chloride or potassium chloride in an
aqueous solution, and adding an organic solvent to the aqueous
solution (independent claims 10 and 15).
The examiner argues that the methods of Hermann and the
appellant differ only in the order in which the reactants are
contacted with the water and the organic solvent, i.e., Hermann
contacts the reactants simultaneously with water and organic
solvent, whereas the appellant first contacts the reactants with
water and then adds organic solvent to the reaction mixture
(brief, page 4). Merely reversing the order of adding the water
and organic solvent, the examiner argues, is not a patentable
modification. See id.
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Hermann, however, adds the water for the purpose of
increasing the rate of the reaction which takes place in the
organic solvent (col. 2, lines 40-44). The examiner has not
explained, and it is not apparent, how the disclosure of using
water for this purpose would have led one of ordinary skill in
the art to react the lithium sulfate and sodium chloride or
potassium chloride in an aqueous solution and to add an organic
solvent to the aqueous solution. Consequently, the examiner has
not carried the burden of establishing a prima facie case of
obviousness of the method recited in the appellant’s
claims 1, 3-6 and 8-26. Accordingly, we reverse the rejection
these claims.
Rejection of claim 7
Claim 7 requires that lithium nitrate or lithium bromide is
made in an aqueous, semiaqueous or organic solution.
The examiner argues that one of ordinary skill in the art
would have expected lithium nitrate and lithium bromide to react
similarly to Hermann’s lithium chloride (answer, page 4). This
is mere speculation, and such speculation is not a sufficient
basis for a prima facie case of obviousness. See In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968); In re Sporck, 301 F.2d 686, 690, 133 USPQ
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Application 08/931,635

1 21 Kirk-Othmer Encyclo. Chem. Tech. 378-79 (John Wiley &
Sons, 3rd ed. 1983). A copy of this reference is provided to the
appellant with this decision.
2 This ratio would be higher for incomplete reaction of
Li2SO4 to LiCl.
6
360, 364 (CCPA 1962). We therefore reverse the rejection of
claim 7.
Rejection of claims 27-33
The appellant states that claims 27-33 stand or fall
together (brief, page 5). We therefore limit our discussion of
the rejection of claims 27-33 to one claim in this group, i.e.,
claim 27. See In re Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d
1127, 1129 n.2 (Fed. Cir. 1995); 37 CFR § 1.192(c)(7)(1997).
In Hermann’s example II, 21.8 g KCl are reacted with 16.5 g
Li2SO4 at 25ºC in 100 ml n-butanol saturated with water, and
solids are removed from the solution. At 25ºC the solubility of
water in n-butanol is 20.5 wt%.1 Hence, the n-butanol contains
16.6 g or 0.92 moles water. Based upon complete reaction of the
Li2SO4 to LiCl, the product contains 0.30 moles LiCl. The molar
ratio of water to LiCl, therefore, is 3, which falls within the
scope of the appellant’s claim 27.2 Hermann’s example II,
therefore, at least would have fairly suggested, to one of
ordinary skill in the art, water/LiCl molar ratios within the
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range of about 1 to about 4 as recited in the appellant’s
claim 27.
The appellant argues that Hermann discloses use of a small
amount of water, not about 1 to about 4 moles per mole of LiX as
recited in claim 27 (brief, page 8). As discussed above, the
water/LiCl molar ratios which would have been fairly suggested to
one of ordinary skill in the art by Hermann include values within
the range of about 1 to about 4.
For the above reasons we conclude that the method recited in
the appellant’s claim 27 would have been obvious to one of
ordinary skill in the art within the meaning of 35 U.S.C. § 103.
Accordingly, we affirm the rejection of this claim and claims 28-
33 which stand or fall therewith.
DECISION
The rejection of claims 1 and 3-33 under 35 U.S.C. § 103
over Hermann is reversed as to claims 1 and 3-26 and affirmed as
to claims 27-33.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PETER F. KRATZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
TJO/ki
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