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 amendment filed 07/01/2025 has been entered. Claims 1-2, 7-12, and 21-23 are pending in this application and examined herein. Claims 1 and 10 are amended. Claims 3-6 and 13-20 are cancelled. Claim 23 is new.
The objection to claim 1 is withdrawn in view of the amendments to claim 1.
The rejections under 35 USC 112(a) to claims 1-2, 6-12, and 21-22 as failing to comply with the enablement requirement as requiring undue experimentation to practice the full scope of the claim are maintained.
The rejections under 35 USC 112(a) as failing to comply with the written description requirement to claims 1-2, 6-12, and 21-22 are withdrawn in view of the amendments to claim 1.
The rejections under 35 USC 112(b) to claims 1-2, 6-12, and 21-22 are withdrawn in view of the amendments to claim 1.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-2, 6-12, and 21-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the method for recycling spent LIB material containing Co3+ cations, an anode material, and a polymer material of at least one of a separator and/or a binder, subjecting the spent polymer-containing LIB material to mechanochemical processing by mechanical processing the spent polymer-containing LIB concurrently in the presence of aluminum that produces a reduction reaction of Co3+ cations to metallic Co0 as at least one of Co metal and/or Co metal alloy in the presence of spent LIB material; it does not reasonably provide enablement for the process using a metallic reducing agent broadly without further limitations to the scope of the claim. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
The broadest reasonable interpretation of claim 1 encompasses subjecting spent polymer-containing lithium-ion battery material to mechanochemical processing by mechanical processing the spent polymer-containing lithium-ion battery in air or under inert atmosphere concurrently in the presence of metallic reducing agent that produces a reduction reaction of Co3+ cations to metallic Co0 as at least one of Co metal and/or Co metal alloy in the presence of spent lithium-ion battery material. The specification discloses sufficient information for one of ordinary skill in the art to use aluminum, lithium, and calcium for this purpose; however, the specification does not provide direction on how to use metals besides aluminum, lithium, and calcium (such as at least one of Li, Na, K, Mg, Ca, Sr, Ba, Al, Zn, rare earth metal, mischmetal, and any combination thereof according to the spec at pg. 3 paragraph 2 and in claim 9, i.e., hundreds of different combinations of metal(s)) without further guidance.
The instant specification discloses working examples for the use of aluminum as the metallic reducing agent (Examples 1, 4, and 4a) without special conditions, whereas the use of Li and Ca requires inert oxygen and water free atmosphere (pg. 8 paragraph 2, Examples 2 and 3). The inventors do not provide any direction regarding how to use metals besides Al, Li, and Ca as the metallic reducing agent; and that air inert atmosphere are 2 choices of atmosphere during performing of the mechanical processing in claim 1. Further, at the time of filing, the state of the art was such that mechanochemical processing of spent polymer-containing lithium-ion batteries in the presence of metallic reducing agents to obtain metallic Co0 was limited, thus the requirement or lack thereof for oxygen and water-free atmospheres for metals besides Al, Ca, and Li were not taught or suggested by the prior art, nor could such conditions be predicted by one of ordinary skill in the art.
Thus, the disclosed examples and guidance provided in the specification do not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claim 1, as there would not have been sufficient guidance to successfully use the method as claimed for metals besides Li, Ca, or Al.
Further, none of claims 2, 6-12, or 21-22 further limit the claims so as to enable the broadest reasonable interpretation of the claimed subject matter.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-2, 6-12, and 21-23 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 1 recites the limitation "after addition" in line 7. The limitation is indefinite as there is no prior mention of “addition”, making unclear if “after addition” refers to after the mechanochemical processing of the lithium-ion battery,
Claim 23 recites the limitation "after addition" in lines 5-6. The limitation is indefinite as there is no prior mention of “addition”, making unclear if “after addition” refers to after the mechanochemical processing of the lithium-ion battery,
Claims dependent upon those rejected above, either directly or indirectly, are likewise rejected under this statute.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-2, 7-11 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 20190123402 A1, cited in Office Action dated 07/01/2025).
Regarding claim 1, Wang teaches a charge material for recycled lithium-ion batteries (i.e., a method for recycling spent lithium-ion battery material) (Title) used for extracting useful elements to produce active cathode materials (Abstract). Wang teaches crushing batteries (i.e., mechanical processing the spent polymer-containing lithium-ion battery material) [0026], where as Wang does not disclose any special atmosphere during the crushing, one of ordinary skill would reasonably infer the crushing to occur in air. Wang teaches the batteries comprise a cathode material [0032] containing LiCoO2 or LiNixMnyCozO2 (which comprise Co+3 cations) [0033], an anode material [0032], and a polymer material of a separator [0032] and a binder [0032].
Wang is silent to subjecting the spent polymer-containing lithium-ion battery material to mechanochemical processing by mechanical processing the spent polymer-containing lithium-ion battery material in the presence of a metallic reducing agent that produces a direct reduction reaction of the Co3+ cations to metallic Co0 as at least one of Co metal and/or Co metal alloy in the presence of the spent lithium-ion battery material. However, it is noted that page 17 of the present specification, discloses in Example 4A “Al was already present in the LIB cathode, the amount of the Al foil used in this experiment was reduced from the amounts used in other Examples” (i.e., Al present in LIB cathodes and acts as a reagent) and that “The formation of metallic Co became detectable after 2 hours of the process” (i.e., Al forms metallic Co under mechanical processing), in accord with the method as presently claimed. As Wang discloses substantially the same process that Applicant states produces this feature, one of ordinary skill would have a reasonable assumption that the features of claim 1 would also occur when practicing the method of Wang. See MPEP 2112 § (III-V) and 2112.01 § (I).
Regarding claim 23, as indicated above with respect to claim 1, Wang suggests a method for recycling spent lithium-ion battery material as presently claimed, as Wang teaches the presence of cathode comprising Al (i.e., metallic reducing agent consisting of Al) [0032], which would be expected by one of ordinary skill to form metallic cobalt as noted above.
Claims 2, 7-11 and 21-22 remain rejected as set forth in the Office Action dated 07/01/2025. Claims 2, 7-9, 11 and 21-22 have not been amended since that time, and the amendment to claims 10 are of an editorial nature and do not materially affect any statements made in the rejection in the prior Office Action. Therefore, the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claims.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claim 1 above, further in view of Owada et al. (JP 2017037807 A, machine translation original figures, supplied with Office Action mailed 11/25/2022).
Claim 6 remains rejected as set forth in the Office Action dated 07/01/2025. Claim 6 has not been amended since that time, therefore the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claims.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Wang as applied to claim 1 above, further in view of McCormick et al. (US 5328501 A, cited in Office Action mailed 11/25/2022).
Claim 12 remains rejected as set forth in the Office Action dated 07/01/2025. Claim 12 has not been amended since that time, therefore the previously presented grounds of rejection set forth how the prior art teaches or suggests all of the limitations of the claims.
Response to Arguments
Applicant's arguments filed 10/01/2025 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that Applicant’s amendments and arguments overcome the rejection of claims 1-2, 6-12, and 21-22 as failing to comply with the enablement requirement under 35 USC 112(a) (see pg. 4 of remarks), the Examiner respectfully disagrees.
While, as noted by Applicant, claim 1 has been amended to disclose the possible atmospheres during mechanochemical processing with Al, Ca, and Li, and that “air sensitive” reducing agents should be used in oxygen and water-free atmospheres, the instant claims and instant specification still do not set out which conditions should be used for each and every metal (and combination of metals) that may be used in the instant application as a “metallic reducing agent”. The instant specification discloses the metallic reducing agent may be at least one of Li, Na, K, Mg, Ca, Sr, Ba, Al, Zn, rare earth metal, mischmetal, and any combination thereof according to the spec at pg. 3 paragraph 2 and in claim 9, i.e., hundreds of different combinations of metal(s), where there is no disclosure as to which metals or combinations thereof besides Li, Ca, and Al are “air sensitive” in the instant application; nor is there any guidance given on how to determine if a metallic reducing agent is sufficiently “air sensitive” to require an inert environment.
Further, as at the time of filing, the state of the art was such that mechanochemical processing of spent polymer-containing lithium-ion batteries in the presence of metallic reducing agents to obtain metallic Co0 was limited, which metals or combinations thereof should be considered “air sensitive” in mechanochemical processing could not be predicted by one of ordinary skill in the art. Therefore, there is no basis within the instant application as to which conditions are suitable for each metallic reducing agent besides when the metallic reducing agent is Li, Ca, or Al, and one of ordinary skill in the art would instead need to conduct undue experimentation to determine the suitable atmospheres for each and every other of at least hundreds of potential metallic reducing agents in order to determine the broadest reasonable interpretation of the claimed subject matter.
Regarding Applicant’s argument that Wang discloses a hydrometallurgical process comprising crushing and grinding as a physical separation process, and not as mechanochemical reduction (see pg. 5-6 of remarks), it is noted that while Wang is silent to metallic Co and mechanochemical reactions, as noted above it has long been held that a rejection may be made when the prior art seems identical except that the prior art is silent to an inherent characteristic. As the instant specification discloses Al is present in lithium-ion batteries and acts as a reagent to reduce cobalt ions to metallic cobalt when lithium-ion battery cathodes are mechanically processed, and Wang discloses grinding and crushing battery components including lithium-ion batteries comprising cobalt ions and aluminum, Wang would necessarily form metallic cobalt (thereby comprising a “mechanochemical process”) as the same reagents, same process, and same conditions as are present in the instant specification are present in Wang, regardless of the purpose of crushing and grinding in the description of Wang or whether Wang discloses the presence of metallic cobalt.
Regarding Applicant’s argument that Owada uses thermal reduction to obtain cobalt or cobalt oxide followed by magnetic separation, which his distinct from mechanochemical reduction, and therefore would not separate metallic cobalt as claimed (see pg. 6 of remarks), the Examiner respectfully disagrees. As noted above, Wang necessarily produces magnetic cobalt as Wang teaches the same conditions that the instant specification discloses as creating magnetic cobalt as noted above, therefore as Wang teaches performing magnetic separation after grinding cobalt comprising material in the presence of Al (which produces metallic cobalt), and Owada teaches magnetic separation to be effective at separating metallic cobalt, the metallic cobalt inherently produced in the process of Wang, would be expected to be separated from non-magnetic by-products as claimed.
Regarding Applicant’s argument that McCormick is not analogous to Wang, and therefore there is no motivation to combine Wang’s aqueous acid leaching/oxide precipitation, with McCormick/s production of alloys (see pg. 6-7 of remarks), the Examiner respectfully disagrees, as previously noted, McCormick and Wang are analogous as both processes are directed to mechanical processing of a mix of metal compound and a reduced metal. While as Applicant notes, McCormick is specifically directed to mechanochemical processing which Wang does not disclose, and only inherently occurs, the advantages of using a liquid assistant agent of reducing rats of fracture and welding and preventing combustion by acting as a thermal diluent of McCormick would be recognized by one of ordinary skill to be generally pertinent and applicable to grinding/crushing such as in Wang.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nikolas T Pullen whose telephone number is (571)272-1995. The examiner can normally be reached Monday - Thursday: 10:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571)-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733