From the patent attorney
My friend, the patent attorney was out of town, so it took a little longer than expected for him to get back to me. He has reviewed both patents and here is his direct quote:
No, you are correct. This last set of Office Actions are very promising, as the Examiner provided an indication of allowable subject matter, and the only issue remaining is the double patenting rejection.
The applicant should file a terminal disclaimer in both cases as their next filing, which will obviate the double patenting rejection and prompt a notice of allowance in both cases.
So, once the applicant files the terminal disclaimer we’ll have to wait for the Examiner to issue a notice of allowance. The applicant then has 3 months from the transmission date to pay the issue fee. Once that is done you’ll then wait for the Issue Notification, which provides the patent number and the issue or publication date. The patent is enforceable as of the issue date, and damages can be claimed for infringement that occurred as early as the application publication date, which was 9-26-2019 for application publication no. 2019/0292065 A1.
The fact that the examiner issued a non-final action less than 2 months after an RCE is encouraging. RCEs can place a case at the back of the line and sometimes then take another 18 months to get a next action.
It would be disappointing to see the applicant do anything other than file a terminal disclaimer as their next action. It’s not worth continuing to argue with the PTO once they have reached this stage. Filing a terminal disclaimer means that the enforceable term of application serial no. 16/171,109 cannot extend beyond the expiration of appln. ser. no. 16/171,107. But given that both cases were filed on the same day (10-25-2018) that’s not an issue here. There was also application serial number 16/170,316 that’s abandoned, and an international filing that can be extended to multiple countries or regions outside the US.
The inventor John Burba is a prolific inventor with patents issued to Simbol, FMC Corp., Secure Natural Resources LLC, Molycorp Minerals LLC, Alger Alternative Energy, and Dow Chemical.
The claims appear to have decent breadth, both cases directed to a modular extraction system. The ‘107 case is more specific in that it recites limitations to sorbent material extracts lithium from oilfield brine input stream, whereas the ‘109 is limited to extracting “at least one constituent”. Dependent claim 7 however specifies that the at least one constituent is lithium, which in part prompted the double patenting rejection due to overlap of claimed subject matter.
One possible design around, which may or may not be feasible, is to use an extraction system that doesn’t use tanks, or that uses a type of sorbent material not disclosed in claim 4 of the ‘109 application, but there may be technical limitations keeping competition from utilizing alternative methods. In any event, the Examiner indicated on page 2 of the non-final action that tank size and pressure is critical, and a “substantially sharp concentration profile between the oil field brine input stream and the dilute stream that is presented to the sorbent material …” appears to be inventive. Congrats!
