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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 1-9 and 11-23 are currently under examination. Claims 24-25 are withdrawn from consideration. Claim 10 has been cancelled. Claims 1, 11 and 19 are amended.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/13/2025 has been entered.
Previous Grounds of Rejection
In the light of the amendments, the rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, with respect to claim 4 is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, with respect to claims 1-9 and 11-23 is withdrawn.
Regarding claims 1-9 and 11-29, in the light of the amendments, the rejection under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yang et al. (CN 102689923 A, applicant submitted in IDS) is withdrawn.
New grounds of rejections are set forth below.
New Grounds of Rejections
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.
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 1-9 and 11-18 are rejected under 35 U.S.C. 103 as obvious over Yang et al. (CN 102689923 A, applicant submitted in IDS).
Regarding claim 1, Yang et al teach a method for recycling lead-containing waste ([0018]) comprising:
(a) dissolving the lead-containing waste in an aqueous solution of reactant A including an organic acid of acetic acid (the instant claimed first acid) to form a solution of main product 1 at room temperature (the claimed water soluble first lead salt of lead acetate) ([0012]-[0019], [0066]);
(b) adding reactant B including an organic acid, other than acetic acid, such as a citric acid (the claimed second acid having the structure of CH(OH)(COOH)(CH2COOH)2) to the solution of the first lead acetate solution to form a lead-depleted solution and a precipitate of a second lead salt of citrate ([0013]-[0027]); and
(c) converting the precipitate of the second lead citrate salt into leady oxide, wherein the first lead acetate salt has a higher solubility in water at 25 0C than the second lead citrate salt.
It is known the lead citrate having the formula Pb3(citrate)2, a molar ratio of Pb to citric acid is 1:0.67. As such, to complete convert all Pb ions to citrate salt, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add an amount up to 0.67 moles of citric acid per mole of Pb to the resulted lead acetate as the instant claim.
Regarding claims 2-3, as discussed above, Yang et al teach a method for recycling lead-containing waste including Pb and/or PbO from lead-acid battery paste ([0018]).
Regarding claims 4-6, as discussed above, the process taught by Yang et al comprises lead acetate known having solubility 44.3 grams in 100 mL at 25 0C and slightly soluble in water (<100g/L). The molar ratio of lead-containing waste to aqueous HOAc is 1:1 ([0020]). 0.1 Kg lead power (containing about 0.457 mol of Pb) is mixed with 50% of an aqueous 0.457 mol HOAc at 25 0C for 30 minutes (Example 1) as the instant claims ([0062]-[0068]).
Since the reference of Yang et al. teach all of the claimed reagents, composition and method for recycling Pb-containing waste, the solubilities of the resulting 1st and 2nd lead salts would necessarily follow as set forth in MPEP 2112.01(II).[1]
Regarding claim 7, Yang et al. teach treating the lead-waste with redox reagent H2O2 as the instant claim 9{0031]).
Regarding claims 8-9, although Yang et al. do not specifically disclose the insoluble material comprising barium sulfate, carbon compounds and fibres as per applicant claims 8-9, the process taught by Yang et al. includes filtration and recycling as the instant claims.
Since the reference of Yang et al. teach all of the claimed reagents, composition and method of recycling lead-containing waste, the insoluble material in the waste material (i.e., barium sulfate, carbon compounds and fibres) would necessarily follow as set forth in MPEP 2112.01(II).[1]
Regarding claim 11, as discussed above, Yang et al. teach mixing 0.1 Kg lead power (containing about 0.457 mol of Pb) with 50% of an aqueous 0.457 mol HOAc, and then add 0.01 Kg citric acid at 25 0C for 30 minutes under agitation (Examples 1 and 6) ([0062]-[0068]).
Although, Yang et al. is silent as to the reaction pressure, it would be obvious to perform this at standard pressure which reads on the instant claimed conditions. There are no indications that this process is occurring at other than standard pressure.
Regarding claims 12-14, as discussed above, Yang et al. teach separating/recycling the lead-depleted aqueous solution containing residual lead from a precipitate of a second lead salt of citrate as the instant claim ([0013]-[0027]) and (Figures 1-15).
Regarding claims 15-17, as discussed above, the process taught by Yang et al. comprises converting the main product 2 (lead citrate salt) to leady oxide comprising PbO and/or Pb by heating <1000 0C in 1-60 minutes without excluding air([0029] and [0073], Fig. 1-15).
Although, Yang et al. is silent as to the reaction pressure, it would be obvious to perform this at standard pressure which reads on the instant claimed conditions. There are no indications that this process is occurring at other than standard pressure.
Regarding claim 18, the recycled leady oxide is used for lead-acid batter as the instant claim ([0001]-[0002]).
Claims 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. as applied to claim 1 above, and further in view of Wen et al. (CN 105895983 A, applicant submitted in IDS).
Regarding claims 19-23, as discussed above, the process taught by Yang et al comprises a lead-containing waste comprising PbSO4 as the instant claims ([0015]).
Although Yang et al. do not specifically disclose a pre-treatment of desulfurization as per applicant claims 20-23, Wen et al. teach a process of pre-treat lead-containing waste (2 Kg) with NaOH (2 Kg) ([0027]-[0031]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the pre-treatment of lead-containing waste with NaOH taught by Wen et al. in the process of recycling lead-containing waste taught by Yang et al. to obtain the invention as specified in the claims 19-23, motivated by the fact that NaOH pre-treatment results a lead precipitation and desulfurization impurity ([0027]-[0031]).
Since both of Yang et al. and Wen et al teach processes of recycling lead-containing waste, one would have a reasonable expectation of success.
Although Wen et al. do not specifically teach weight ratio of NaOH to PbSO4 and reducing the level of PbSO4 <500 ppm of as per applicant claims 19-23, such the ratio of NaOH to PbSO4, and reducing the amount of PbSO4 <500 ppm are recognized as a result-effective variable, it is well settled that determination of optimum values of cause effective variables such as the NaOH and reducing the sulfur content PbSO4<500 ppm are within the skill of one practicing in the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
The differences the amount of NaOH solution used and the sulfur containing PbSO4 level <500 ppm will not support the patentability of subject matter, this is a case of prima facie obviousness, as one having ordinary skill in the art at the time the invention was made, given the general conditions taught by Wen et al..
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments and Declaration submitted by Athan Fox on 08/13/2025, with respect to claims 1-9 and 11-23, have been considered but are not persuasive. The examiner would like to take this opportunity to address the Applicant's arguments.
Applicant argued Yang does not specifically disclose the use of up to 0.67 moles of citric acid per mole of lead ions-rather, it teaches that the molar ratio should be at least 1:1.
Yang does not link using a low amount of precipitant with a very high purity and yield, and therefore there is no recognized result in the prior art tied to the amount of precipitant.
It is well known know that higher amounts of reagents are generally a driver for completion of a reaction. It would therefore not have been expected that a reduced level of precipitant would lead to high yield, as lower levels of precipitant would be expected to lead to insufficient precipitation of lead and, consequently, lower conversion levels.
Accordingly, one having ordinary skill in the art would not have been motivated to use the low amount of citric acid as claimed with the expectation of providing high purity and yield. As described in paragraph 13 of the Fox Declaration, "reducing the level of precipitant leads to high yield" is unexpected, when because the exact opposite would be expected.
Further, as described in the Fox Declaration, Yang would not motivate one having ordinary skill in the art to use citric acid, let alone at the claimed amount. Nor is there any expectation that there is a link between reduced reagent burden and high purity and yield. Thus, the claims are non-obvious.
Thus, based on the above, the cited references fail to teach all the features of the instant claims, there is no motivation to combine the references, and there is no reasonable expectation of success in modifying Yang to achieve the instant claims.
Wen does not cure the deficiencies of Yang (Remarks, pages 7-9).
The Office respectfully disagrees. As discussed above, Yang et al teach a method for recycling lead-containing waste ([0018]) comprising:
(a) dissolving the lead-containing waste in an aqueous solution of reactant A including an organic acid of acetic acid (the instant claimed first acid) to form a solution of main product 1 at room temperature (the claimed water soluble first lead salt of lead acetate) ([0012]-[0019], [0066]);
(b) adding reactant B including an organic acid, other than acetic acid, such as a citric acid (the claimed second acid having the structure of CH(OH)(COOH)(CH2COOH)2) to the solution of the first lead acetate solution to form a lead-depleted solution and a precipitate of a second lead salt of citrate ([0013]-[0027]); and
(c) converting the precipitate of the second lead citrate salt into leady oxide, wherein the first lead acetate salt has a higher solubility in water at 25 0C than the second lead citrate salt.
It is known the lead citrate having the formula Pb3(citrate)2, a molar ratio of Pb to citric acid is 1:0.67. As such, to complete convert all Pb ions to citrate salt, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to add an amount up to 0.67 moles of citric acid per mole of Pb to the resulted lead acetate as the instant claim.
The unexpected results submitted by the Fox Declaration is insufficient to overcome the rejection of claims 1-9 and 11-23 as set forth above because: the results demonstrated by Fox are not commensurate in scope with the breadth of the claims. For example, the citric acid can be absent, according to the instant claim 1, wherein “up to 0.67 moles of citric acid per mole of lead ions” (emphasis added).
Since Yang et al. teach all of the claimed reagents, composition and method for recycling lead-containing waste, the physical properties of the resulting composition (i.e., higher yield and purity, etc.) would necessarily follow as set forth in MPEP 2112.01(II).[1]
As such, the rejection of claim 1 as set forth above is proper and stands.
The rejection for the remaining claims were either directly or indirectly dependent thereon stands.
Conclusion
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/ Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).