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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/13/2026 has been entered.
The Applicant has added new claim 35. The pending claims are claims 18-20, 22-24, 26-35.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 18, 23, 24, 26-30, 32-34 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lin et al., US 6514311.
Regarding claim 18, Lin et al., teaches a process for the recovery of transition metals from batteries (abstract), comprising (a) treating a transition metal material (col. 2, lines 28-67) with a leaching agent to yield a leach (hydrochloric acid) (col., 2, lines 28-34), wherein the leach comprises dissolved copper impurities (col. 2, lines 28-46), wherein the transition metal material is a material that stems from lithium ion battery scraps (col. 4, lines 47-67 and col. 5, lines 1-9), and (b) depositing the dissolved copper impurities as elemental copper on a particulate deposition cathode (col. 4, lines 43-46) by electrolysis of an electrolyte (col. 5, lines 22-40) comprising the leach (col. 2, lines 28-32), wherein the deposition cathode is obtained at least partially from the transition metal material (col. 2, lines 28-67 and col. 3, lines 1-5) and wherein the deposition cathode is carbon or graphite (col. 4, lines 31-46), wherein the carbon is carbon powder (particles) (col. 3, lines 45-59).
Regarding claim 23, Lin et al., teaches wherein the electrolyte has a pH from 5 to 7 (col. 2, lines 28-67).
Regarding claim 24, Lin et al., teaches wherein the transition metal material is obtained from mechanically treated battery scraps (col. 4, lines 53-67 and col. 5, lines 1-15).
Regarding claim 26, Lin et al., teaches further comprising removing non- dissolved solids from the leach (col. 6, lines 15-58), wherein the non-dissolved solids are carbon particles (col. 4, lines 43-67 and col. 5, lines 1-9) and feeding the carbon particles into step (b) as deposition cathode (col. 4, lines 43-67 and col. 5, lines 1-9).
Regarding claim 27, Lin et al., teaches further comprising precipitating the transition metal as mixed hydroxides or mixed carbonates (col. 2, lines 28-67 and col. 3, lines 1-13).
Regarding claim 28, Lin et al., teaches wherein the leaching agent is an inorganic or organic aqueous acid (hydrochloric acid) (col. 2, lines 28-67 and col. 3, lines 1-13).
Regarding claim 29, Lin et al., teaches further comprising adjusting the pH value of the leach to 2.5 to 8 (pH 5-7), and removing precipitates of phosphates, oxides, hydroxides, and/or oxyhydroxides by solid-liquid separation (col. 2, lines 27-67).
Regarding claim 30, Lin et al., teaches wherein the deposition cathode is suspended in the electrolyte (col. 4, lines 31-46).
Regarding claim 32, Lin et al., teaches wherein the electrolyte is passed through the deposition cathode as a particulate filter-aid layer (col. 6, lines 2-13).
Regarding claim 33, Lin et al., teaches wherein the electrolysis is performed in an electrochemical filter flow cell (col. 6, lines 2-13).
Regarding claim 34, Lin et al., teaches wherein step (b) comprises applying a further electrochemical potential to the deposition cathode during the electrolysis (col. 4, lines 47-61) and depositing dissolved cobalt salts as elemental cobalt on the particulate electrode (col. 4, lines 31-46).
Thus, the claims are anticipated.
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.
Claim(s) 19, 20, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al., US 6514311.
Regarding claim 19, Lin et al., does not teach wherein the deposition cathode has a particle size d50 ranging from 1 pm to 1000 pm.
It has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In re Rose , 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Also see MPEP 2144.
Regarding claim 20, Lin et al., does not teach wherein the electrolyte comprises less than or equal to 4000 ppm of the copper impurities before the electrolysis.
However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation "In re Aller, 220 F.2d 454, 466, 105 USPO 233, 236 (OCPA 1955).
Regarding claim 22, Lin et al., does not teach wherein an electrochemical potential is applied to the deposition cathode during the electrolysis ranging from -50 mV to -500 mV with respect to the electrochemical potential of copper.
It has been held that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is critical evidence indicating such concentration or temperature is critical. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Regarding claim 23, Tezuka et al., does not teach the electrolyte has a pH 4).
However, paragraph (0021) teaches “the positive electrode active material is dissolved in acid (step 6) and the pH is adjusted (step 7) to separate and recover cobalt and lithium. Aluminum, copper, cobalt, and lithium can also be recovered individually by combining with the sulfuric acid used in step 5 and adjusting the pH (step 8), electrolysis (step 9), and further adjusting the pH (step 10).” (0021).
It has been held that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is critical evidence indicating such concentration or temperature is critical. in re Aller, 220 Foi2d 464, 456, 108 USPQ 233, 235 (COPA 1985).
8. Claim(s) 31 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al., US 6514311, in view of Tezuka et al., JP H11-97076A.
Regarding claim 31, Lin et al., does not teach wherein the concentration of the suspended deposition cathode in the electrolyte is from 0.01 wt % to 10 wt %.
Tezuka et al., teaches the concentration of the suspended deposition cathode in the electrolyte is from 0.01 wt% to 10 wt%. (0.01 wt% Fe; Table 3) (0.01 wt% Al; Table 3) (0.02 wt% Cu; Table 3) (0.02 wt% Cu; Table 3) (0.02 wt% Ni; Table 3).
Thus, it would have been obvious to one of ordinary skill in the art to insert the teachings of Tezuka into the teachings of Lin because Tezuka teaches “a method for treating batteries in order to safely and efficiently recover and reuse various metals from waste battery packs of primary and secondary batteries, such as lithium ion batteries” (0001).
Regarding claim 35, Lin et al., does not teach the concentration of the suspended deposition cathode in the electrolyte is from 0.1 to 2 wt%.
Tezuka teaches the concentration of the suspended deposition cathode in the electrolyte is from 0.1-2 wt% (Table 3).
Response to Arguments
9. Applicant's arguments filed 6/12/2025 have been fully considered but they are not persuasive.
The Applicant argues that “none of the newly cited sections in Lin teach or suggest the claimed particulate deposition cathode.”
However, Lin teaches a cathode solution/cathode well (col. 2, lines 28-46). The Application teaches “ [0001] The present invention relates to a process for the recovery of transition metals from batteries comprising treating a transition metal material with a leaching agent to yield a leach which contains dissolved copper impurities, and depositing the dissolved copper impurities as elemental copper on a particulate deposition cathode by electrolysis of an electrolyte containing the leach.”
Lin teaches the characteristics of a particulate deposition cathode, such as a process for the recovery of transition metals from batteries (col. 2, lines 28-32; col. 6, Example) and a leaching agent (hydrochloric acid (col. 2, lines 28-67) which provides dissolved copper impurities (col. 2, lines 28-67) (col. 4, lines 6-20), and depositing copper on a cathode by electrolysis (abstract; col. 2, lines 28-67). Thus, Lin teaches a particulate deposition cathode.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA J MARTIN whose telephone number is (571)272-1288. The examiner can normally be reached 7am-4pm.
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ANGELA J. MARTIN
Examiner
Art Unit 1727
/ANGELA J MARTIN/Examiner, Art Unit 1727