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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/04/2025 has been entered.
Election/Restrictions
Upon reconsideration of the restriction requirement, it appears that Claims 1, 12, and 18 overlap in scope to such a degree that restriction between them is improper. Accordingly, Claims 12-20 are herein rejoined for examination, and are no longer subject to restriction.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al (Repurposing of Fruit Peel Waste as a Green Reductant for Recycling of Spent Lithium-Ion Batteries, Environmental Science and Technology, 2020).
It is noted that the above reference originates from a party related to but not identical to the inventors of the instant application – as such, until the difference between the inventors of the instant application and the authors of the paper can be properly attested to, no grace period under 35 U.S.C. 102(b)(1) applies.
Regarding Claim 1, Wu discloses A method of obtaining metal ions from a battery, the method comprising the steps of adding a crushed battery to a leaching solution comprising fruit peel and organic acid at a temperature above 80 0C, thereby obtaining a leachate comprising metal ions, adding a first precipitating agent to the leachate to form a filtrate and a first precipitate having a first metal ion and adding a second precipitating agent to the filtrate to obtain a second precipitate having a second metal ion (In Situ Precipitation of Metal Hydroxides: “To prepare the leaching solution, 5 g of black mass and 1 g of OP were mixed with 100 mL of 1.5 M H3Cit and allowed to react for 4 h at 100 °C…NaOH was used to recover Co from the black mass leachate by forming cobalt (II/III) hydroxide (Ksp = 5.92 × 10–15 and 1.6 × 10–44, respectively). To obtain cobalt hydroxide (II/III), the pH of the black mass leachate was first adjusted to 12 by addition of NaOH pellets to enable rapid precipitation of a hydroxide mixture that includes manganese hydroxide (Ksp = 2 × 10–13) and nickel hydroxide (Ksp = 5.48 × 10–16) along with a portion of cobalt hydroxide. Upon completion of the pH adjustment, the solution was immediately placed in the oven at the temperature of 80 °C for 30 min. The resultant cobalt-containing supernatant was then subjected to another round of precipitation via addition of ethanol (100%, vethanol/vsupernatant = 1:10) at the temperature of 80 °C overnight.”).
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.
Claim(s) 1-4, 6-11, 21-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (Use of grap---e seed as reductant for leaching of cobalt from spent lithium-ion batteries, Journal of Industrial and Engineering Chemistry, 2018), in view of Ahmed et al. (Fruit waste (peel) as bio-reductant to synthesize silver nanoparticles with antimicrobial, antioxidant and cytotoxic activities, Journal of Applied Biomedicine, 2018), hereinafter ‘Ahmed’, and further in view of Gu et al. (Recycling of mixed lithium-ion battery cathode materials with spent lead-acid battery electrolyte with the assistance of thermodynamic simulations, Journal of Cleaner Production, 2020), hereinafter ‘Gu’.
Regarding Claim 1, Zhang discloses a method of obtaining metal ions from a battery, the method comprising the steps of
adding a crushed battery to a leaching solution comprising fruit and organic acid at a temperature above 80 °C, thereby obtaining a leachate comprising metal ions (Leaching Studies: a spent LiCoO2 cathode material was subjected in leaching solution with a predetermined dosage of maleic acid and grape seed; Effect of temperature: a leaching trial was performed at 90°C),
Further regarding Claim 1, while Zhang discloses the use of fruit waste in leaching of cobalt from spent lithium-ion batteries as discussed above, and further discloses that grape seeds as utilized within the leaching process acts as a reductant (Introduction: “This study focuses on proposing a novel and green process of using grape seed as reductant for leaching of LiCoO2 material of spent LIBs…”; Effect of grape seed dosage: “…a steady increase of leaching efficiencies occurred with grape seed dosage increasing to 0.6 g/g. This can be attributed to the fact that grape seed acts as a reductant here to increase the rate of the leaching reaction.”; Reduction mechanism of grape seed: in chemical equation 5, it is shown that, by a reaction of lithium cobalt oxide with grape seed and malic acid, lithium and cobalt are chemically reduced), Zhang does not disclose the use of fruit peels, and only discloses the use of fruit seeds.
Ahmed discloses the use of fruit waste (peels) as a bio-reductant in the synthesis of silver nanoparticles (Title). A person of ordinary skill in the art would have recognized Ahmed as analogous to Zhang, as both references are drawn to the same field of endeavor as the claimed invention, the use of fruit waste as a source of chemical reducing agents - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Ahmed discloses that the use of fruit wastes, such as peels, is known in the art for being used in chemical reduction reactions, and previous studies have utilized fruit peels for such reduction, including banana peel, citrus peel, and punicia granatum peel (Introduction). Further, Ahmed discloses a study in which lemon, orange, and mosambi (sweet lemon) peels are used in a process of synthesizing silver nanoparticles, in which this fruit peel waste (FPW) is added to a silver nitrate solution, and after which it was confirmed that these FPWs resulted in the reduction of Ag+ to Ag0 (Bio-reduction of AgNPs). It is therefore known in the art that fruit peels are known to be used as reductants, in the same way as grape seeds are used in the disclosure of Zhang.
Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to substitute grape seeds as disclosed by Zhang with citrus peels, such as lemon, orange, and mosambi peels, as disclosed by Ahmed, as both grape seeds and citrus peels would have been recognized by one of skill in the art as suitable reduction reagents in view of Ahmed, and therefore both materials would have been predictably expected to reduce metals contained in batteries.
Further regarding Claim 1, while the process of Zhang as modified above produces a leachate solution as claimed, and further discloses precipitation of solids to generate a precipitate in a flowsheet representing the process (Fig. 1 of Zhang), Zhang does not disclose adding a first precipitating agent to the leachate, thereby obtaining a first precipitate comprising metal salt and filtrate, or adding a second precipitating agent to the filtrate to obtain a second precipitate.
Gu discloses a process for recycling of mixed lithium-ion battery cathode materials containing lithium, cobalt, nickel, and manganese (Abstract). A person of ordinary skill in the art would have recognized Gu as analogous to Zhang et al., as both references are drawn to the same field of endeavor as the claimed invention, recycling of metals including cobalt and lithium - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Gu discloses a two-step precipitation process for the separation of metals recycled from lithium batteries – namely, following an acid leaching step, Gu discloses adding sodium hydroxide to the leachate in order to form a precipitate, followed by subjecting the filtrate to a second precipitation utilizing varying amounts of ethanol, thereby resulting in a precipitate. This process results in 100% of Mn, Co, and Ni removed from the solution with no Li+ loss in the first precipitation step (5.3.2. Experimental results for precipitation of Mo, Co, Ni, and Pb), thereby resulting in a precipitate containing at least one metal ion, and a precipitation rate of 96.8% of Li2CO3 in the second precipitation step (5.4. Precipitation of Li2CO3), thereby resulting in a precipitate containing a second metal ion. Therefore, the process of precipitation disclosed by Gu is known to be successful in the production of pure lithium carbonate.
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to perform a two-step precipitation method as suggested by Gu in the process of Zhang as modified above, including adding a first precipitating agent, sodium hydroxide, to the leachate, thereby obtaining a first precipitate comprising metal salt and filtrate, and subsequently adding a second precipitating agent, ethanol, to the filtrate to obtain a second precipitate. Since such a method is known for the selective precipitation of lithium carbonate, and since the process of Zhang is drawn to the recovery of lithium for reuse, it would be obvious to perform such a precipitation in order to produce a lithium carbonate product ready for reuse.
Regarding Claim 2, Zhang discloses the method is performed at a temperature in the range of about 90 °C to about 120 °C (Effect of temperature: a leaching trial was performed at 90°C).
Regarding Claim 3, Zhang discloses the crushed battery is obtained by shredding, pulverizing, grinding, cutting, and/or blending a battery (Experimental: the cathode was cut into small parts).
Regarding Claim 4, Zhang as modified above suggests the use of lemon and orange peels as discussed above.
Regarding Claim 6, Zhang discloses drying and milling grape seeds into a powder to be utilized (Fig. 1). Given this, when substituting grape seeds for citrus peels as suggested by Ahmed, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize a powdered form of said citrus peels, as such a form is demonstrated by Zhang as effective for the disclosed leaching process.
Regarding Claim 7, the prior art meets the limitations of Claim 1 as shown above. Further, while Zhang does disclose drying and milling the grape seeds as discussed above, it is silent regarding the particle size the dried grapes are ground to; however, grinding of any particle, as performed in Zhang, is well known in the art to increase the surface area of the material being ground, thereby increasing the area of fruit waste exposed to the leaching solution. Further, the available surface area per unit volume has been shown by Zhang to affect the leaching efficiency of leached metals – Zhang discloses that, as the surface area per unit volume of the leaching solution decreased, so did the leaching efficiency (Effect of slurry density). As such, the particle size of the ground fruit waste is considered a variable that may be manipulated to materially affect the surface area of fruit waste available to the leaching process, thereby directly affecting the resulting leaching efficiency of the resulting leaching solution.
Accordingly, as the leaching efficiency of cobalt and lithium has been shown by Zhang to be a variable that can be modified, among others, by adjusting the particle size of fruit waste such that a particular surface area of fruit waste is achieved, the precise particle size of the ground fruit waste would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed range cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the particle size of the ground fruit waste in Zhang to obtain the desired leaching efficiency, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claim 8, Zhang discloses the use of maleic acid, as discussed above.
Regarding Claim 9 Zhang discloses using concentrations of maleic acid of 1M, 1.5M, 2M, and 2.5M (Fig. 2). Further, Zhang discloses other leaching studies utilizing citric acid, and discloses studies utilizing citric acid concentrations of 1.5M and 2M (Table 1). Given this, when substituting citric acid for malic acid as discussed above, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize any of the above concentrations of these acids, as these concentrations have been shown to effectively leach valuable metals from LiCoO2 batteries.
Regarding Claim 10, Zhang discloses leaching a battery to obtain cobalt (Title).
Regarding Claim 11, Zhang discloses the slurry density of leachate solutions of 20-80 g/L (Fig. 2).
Regarding Claim 21, while the disclosed embodiment of Zhang discloses the use of malic acid and not citric acid for use as an organic acid, Zhang does disclose that the use of green acids, such as malic acid and citric acid, are well-known reagents for leaching valuable metals from spent LiCoO2 batteries – see Introduction (“…leaching of spent LiCoO2 material by green organic acid such as citric acid, succinic acid, tartaric acid, malic acid, etc. have been reported.”; Table 1, No. 7, 9, and 12).
Accordingly, given that both malic acid and citric acid are known as green acids useful in leaching valuable metals from spent LiCoO2 batteries, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to substitute the use of malic acid with citric acid, as both would have been expected to act in the same predictable way when used in the leaching solution of Zhang, absent evidence associated with criticality associated with the use of citric acid as claimed.
Regarding Claim 22, Zhang as modified above makes obvious the use of sodium hydroxide as the first precipitation agent as discussed above. Regarding Claims 23-24, Zhang as modified above makes obvious the use of ethanol, an alcohol, as the second precipitation agent as discussed above.
Claim(s) 12-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (Use of grape seed as reductant for leaching of cobalt from spent lithium-ion batteries, Journal of Industrial and Engineering Chemistry, 2018), in view of Gu et al. (Recycling of mixed lithium-ion battery cathode materials with spent lead-acid battery electrolyte with the assistance of thermodynamic simulations, Journal of Cleaner Production, 2020), hereinafter ‘Gu’.
Regarding Claim 12, Zhang discloses a method of obtaining metal salt from a battery, the method comprising the steps of
adding a crushed battery to a leaching solution comprising fruit and organic acid at a temperature above 80 °C, thereby obtaining a leachate comprising metal ions (Leaching Studies: a spent LiCoO2 cathode material was subjected in leaching solution with a predetermined dosage of maleic acid and grape seed; Effect of temperature: a leaching trial was performed at 90°C),
Further regarding Claim 1, while the process of Zhang produces a leachate solution as claimed, and further discloses precipitation of solids to generate a precipitate in a flowsheet representing the process (Fig. 1 of Zhang), Zhang does not disclose adding a first precipitating agent to the leachate, thereby obtaining a first precipitate comprising metal salt and filtrate.
Gu discloses a process for recycling of mixed lithium-ion battery cathode materials containing lithium, cobalt, nickel, and manganese (Abstract). A person of ordinary skill in the art would have recognized Gu as analogous to Zhang et al., as both references are drawn to the same field of endeavor as the claimed invention, recycling of metals including cobalt and lithium - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Gu discloses a two-step precipitation process for the separation of metals recycled from lithium batteries – namely, following an acid leaching step, Gu discloses adding sodium hydroxide and Na2S to the leachate in order to form a precipitate, followed by subjecting the filtrate to a second precipitation utilizing varying amounts of ethanol, thereby resulting in a precipitate. This process results in 100% of Mn, Co, and Ni removed from the solution with no Li+ loss in the first precipitation step (5.3.2. Experimental results for precipitation of Mo, Co, Ni, and Pb), thereby resulting in a precipitate containing at least one metal ion, and a precipitation rate of 96.8% of Li2CO3 in the second precipitation step (5.4. Precipitation of Li2CO3), thereby resulting in a precipitate containing a second metal ion. Therefore, the process of precipitation disclosed by Gu is known to be successful in the production of pure lithium carbonate.
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to perform a two-step precipitation method as suggested by Gu in the process of Zhang as modified above, including adding a first precipitating agent, sodium hydroxide and Na2S, to the leachate, thereby obtaining a first precipitate comprising metal salt and filtrate, and subsequently adding a second precipitating agent, ethanol, to the filtrate to obtain a second precipitate. Since such a method is known for the selective precipitation of lithium carbonate, and since the process of Zhang is drawn to the recovery of lithium for reuse, it would be obvious to perform such a precipitation in order to produce a lithium carbonate product ready for reuse.
Regarding Claim 13, the process of Zhang as modified above makes obvious a step of adding a second precipitating agent to the filtrate of step (ii) to obtain a second precipitate (“…one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to perform a two-step precipitation method as suggested by Gu in the process of Zhang as modified above, including adding a first precipitating agent, sodium hydroxide, to the leachate, thereby obtaining a first precipitate comprising metal salt and filtrate, and subsequently adding a second precipitating agent, ethanol, to the filtrate to obtain a second precipitate.”)
Regarding Claim 14, Zhang as modified above makes obvious the use of sodium hydroxide as the first precipitating agent, as discussed above.
Regarding Claim 15, while Zang does not explicitly disclose that the battery utilized by the study contained nickel or manganese, Zang does disclose that “this process may be not only applied in leaching of valuable metals from spent LiCoO2 material, but also widely applied in leaching of valuable metals from other spent cathode metals (e.g. LiMn2O4, LiNixCoyMn1−x−yO2)” (Process analysis), which notably includes Mn- and Ni-conatining batteries. Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize such batteries in recovering Li and Co according to the process of Zhang.
Further, Gu shows (Fig. 1) that by adjusting the pH to 10 by the addition of a base, sodium hydroxide as discussed above, and subsequently adding Na2S, Ni and Mn components are precipitated, in a first precipitation, as sulfides. Therefore, in the process of Zhang as modified by Gu, in which an Ni- or Mn-containing Li-ion battery is subjected to the leaching process of Zhang and the precipitation of Gu, the first precipitation step would result in Mn and Ni sulfides, which are considered salts.
Regarding Claim 16, the second precipitating agent as suggested by Gu is ethanol, an alcohol, as discussed above.
Regarding Claim 17, Zhang as modified above is silent regarding the precipitation of cobalt in the second precipitation step; however, the properties of cobalt in both the mixture of Zhang as modified above and that of the instant invention cannot be mutually exclusive – therefore, the solubility of cobalt when ethanol is added to solution must be the same between both the prior art and the instant invention, especially considering both are derived from identical processes as shown above, and further are both derived from similar starting materials, that being lithium-ion batteries. Therefore, the formation of a precipitate comprising ethanol would necessarily occur in the process of Zhang as modified above, as products having the same or nearly the same composition cannot have mutually exclusive properties – see MPEP 2112.01.
Claim(s) 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (Use of grape seed as reductant for leaching of cobalt from spent lithium-ion batteries, Journal of Industrial and Engineering Chemistry, 2018), in view of Gu et al. (Recycling of mixed lithium-ion battery cathode materials with spent lead-acid battery electrolyte with the assistance of thermodynamic simulations, Journal of Cleaner Production, 2020), hereinafter ‘Gu’, and Park et al. (High-Yield One-Pot Recovery and Characterization of Nanostructured Cobalt Oxalate from Spent Lithium-Ion Batteries and Successive Re-Synthesis of LiCoO2, Metals, 2017), hereinafter ‘Park’.
Regarding Claim 18, Zhang discloses a method of obtaining metal ions from a battery, the method comprising the steps of
adding a crushed battery to a leaching solution comprising fruit and organic acid at a temperature above 80 °C, thereby obtaining a leachate comprising metal ions (Leaching Studies: a spent LiCoO2 cathode material was subjected in leaching solution with a predetermined dosage of maleic acid and grape seed; Effect of temperature: a leaching trial was performed at 90°C),
Further regarding Claim 1, while the process of Zhang as modified above produces a leachate solution as claimed, and further discloses precipitation of solids to generate a precipitate in a flowsheet representing the process (Fig. 1 of Zhang), Zhang does not disclose adding a first precipitating agent to the leachate, thereby obtaining a first precipitate comprising metal salt and filtrate.
Gu discloses a process for recycling of mixed lithium-ion battery cathode materials containing lithium, cobalt, nickel, and manganese (Abstract). A person of ordinary skill in the art would have recognized Gu as analogous to Zhang et al., as both references are drawn to the same field of endeavor as the claimed invention, recycling of metals including cobalt and lithium - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Gu discloses a staged precipitation process for separation of metals recycled from lithium batteries – namely, following an acid leaching step, Gu discloses adding a precipitating agent (e.g., sodium hydroxide) to the leachate in order to form a precipitate, and separating the precipitate from the remaining solution to provide a filtrate (5.3.2. Experimental results for precipitation of Mo, Co, Ni, and Pb), thereby resulting in a precipitate containing at least one metal ion. Gu further teaches that the filtrate may be subjected to additional precipitation step to form an additional precipitate (e.g., by the addition of a further precipitation agent), thereby evidencing the use of sequential precipitation/filtration steps on such a leachate/filtrate stream.
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to perform a two-step precipitation method as suggested by Gu in the process of Zhang as modified above, including adding a first precipitating agent, e.g., sodium hydroxide, to the leachate, thereby obtaining a first precipitate comprising metal salt and filtrate, and subsequently adding a second precipitating agent, ethanol, to the filtrate to obtain a second precipitate. Since such a method is known for the selective precipitation of lithium carbonate, and since the process of Zhang is drawn to the recovery of lithium for reuse, it would be obvious to perform such a precipitation in order to produce a lithium carbonate product ready for reuse.
Zhang as modified above does not disclose a step of mixing a second precipitate of step (iii) with a lithium salt and heating the resulting mixture to obtain a lithium cathode material.
Park discloses a method of resynthesizing lithium cobalt oxide from a recovered lithium filtrate (Abstract). A person of ordinary skill in the art would have recognized Park as analogous to Zhang as modified above, as both references are drawn to the same field of endeavor as the claimed invention, the recovery and reuse of lithium materials from lithium ion batteries - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. Particularly, Park discloses re-synthesizing lithium cobalt oxide as a cathode material by adding oxalic acid to a lithium cobalt battery leachate, resulting in precipitated cobalt oxalate precipitate, and that by the addition of lithium hydroxide and lithium carbonate (LiOH and Li2CO3), and after calcining the resulting mixture between 400 and 900 °C, LiCoO2 cathode material was synthesized (Section 3.2; see also Eq. (2) and synthesis description).
Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to further modify the process of Zhang as modified by Gu by selecting, as the second precipitation agent, a precipitation agent known to produce a transiton-metal salt precursor suitable for cathode regeneration (i.e., oxalic acid to form cobalt oxalate as suggested by Park), and mixing the resulting precipitate with a lithium salt such as lithium hydroxide and/or lithium carbonate and heating the mixture to obtain a lithium cathode material (i.e., lithium cobalt oxide) capable of use in a lithium ion battery, because Park expressly teaches that such transition-metal salt precipitates are suitable precursors for regeneration of lithium cathode materials by lithiation and calcination, and the combined references are all directed to recycling and reuse of spent lithium ion battery cathode materials.
Regarding Claim 19, Zhang as modified above suggests the use of lithium hydroxide and/or lithium carbonate as the lithium salt, as discussed above.
Regarding Claim 20, Zhang as modified above suggests the lithium cathode material is lithium cobalt oxide (LCO), as discussed above.
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, 3, 5-24 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 5, 9, and 19 of copending Application No. 18567255 in view of Gu, Ahmed, and Park.
This is a provisional nonstatutory double patenting rejection.
The ’255 application claims methods of obtaining metals from a battery by adding fruit to a solvent to form a mixture; subjecting the mixture to heat treatment (60-220°C), then adding a crushed battery to the resulting solution to obtain a leachate comprising metal ions. (Claims 1, 5.) The ’255 application claims adding an acid to the leaching solution. (Claim 9.) The ’255 application claims a subsequent step of adding a precipitating agent to the leachate to obtain a precipitate containing the metal salt. (Claim 19.)
The ’255 application does not specifically claim using fruit peel. The ’255 application does not claim a second precipitating step.
As explained above, Ahmed teaches that fruit peels are useful in the art for carrying out chemical reduction reactions. (OA at page 4.)
As explained above, Gu teaches a two-step precipitation process for sequentially separating metal ions from spent lithium batteries. (OA at page 5.)
It would have been obvious to substitute Ahmed’s fruit peels for the whole fruit of the ’255 application because Ahmed teaches that fruit peels act as metal reductants. It would have been further obvious to add a second precipitation step after the ’255 application’s method because Gu teaches parameters for sequentially removing useful ions from leachates of spent batteries.
Regarding Claim 18, it would be obvious to perform a step (iv) as claimed in view of Park to form a lithium cathode material comprising lithium cobalt oxide.
Response to Arguments
Applicant’s arguments, filed 12/18/2024, are acknowledged.
It is firstly noted that rejections over Wu that were withdrawn in the most previous Final Rejection has been reinstated. While the Examiner originally held the declaration attesting to the difference of inventorship was sufficient, the declaration was technically insufficient in that it did not give any precise explanation for the presence of the additional authors, instead making a generic statement that “the non-inventor authors did not contribute to the conception of the claimed invention.” A 130(a) declaration should provide “a reasonable explanation for the presence of additional authors.” MPEP 717.01(a)(1), factor (1). Therefore, until Applicant provides a sufficient, precise explanation for the presence of the additional authors, the document is considered prior art, and the rejection therefore maintained.
The 112(b) rejection of the prior Office action has been remedied and this rejection is therefore withdrawn.
With respect to arguments in regard to prior art rejections under section 102, Applicant’s arguments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under section 103 in view of Zhang, Ahmad, Gu, and Park. The arguments of Applicant submit that the disclosure of Zhang and Ahmed do not disclose the two-step precipitation required by the claims; this feature is made obvious by Gu, as shown above.
Applicant argues that the aim of Ahmed is to generate solid nanoparticles, not ionic solutions – this is not found persuasive, as the reference clearly teaches the use of fruit peels as reductants, and applicant has provided no evidence that a person of ordinary skill in the art wouldn’t have assumed from that known property that they would also act as reductants when added to a solution containing a crushed battery and organic acid.
Lastly, Applicant argues that there are unexpected results associated with the use of fruit seeds as claimed within in the specification, but there is no evidence that the skilled artisan would have found the outcome of the working examples to be anything more than what was predictable from the prior art, as disclosed in Ahmed.
Accordingly, Applicant’s arguments as they may apply to the new grounds of rejection above are not persuasive.
In response to applicant' s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application' s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Conclusion
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/L.E.L./ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738