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 Arguments
Applicant's arguments filed March 18, 2026, have been fully considered but they are not persuasive.
Applicant contends that the rejection fails to consider Fujita as a whole, since the nitrogen atmosphere is only one of the listed suitable atmospheres, and therefore makes an improper obviousness argument (pp. 6-7). However, the cited example of Fujita uses an inert nitrogen atmosphere (Fujita [0029]). This is therefore an anticipation analysis, not an obviousness analysis, so consideration of suggested alternatives is not necessary.
Applicant contends that the disclosed purpose of Fujita is to recover of lithium carbonate, not lithium hydroxide (pp. 7-8). This is incorrect. Fujita teaches that the material may be eluted as lithium hydroxide and lithium carbonate (Fujita [0007]), and the only experimental example of leaching is performed with water (Fujita [0031]), which is not appropriate for extracting poorly-soluble lithium carbonate.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that Jaunsen is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Jaunsen is describing a chemical reaction between aqueous lithium hydroxide and carbon dioxide, which is clearly relevant to a reference extracting lithium hydroxide and lithium carbonate with water.
Applicant contends that the teachings of Weimer are not applicable to the method of Fujita, since Weimer is directed to the synthesis of non-oxide ceramic materials (pp. 9-12). However, the advantages listed by Weimer are not so limited.
"Since conventional carbothermal reduction processes involve the highly endothermic reaction of two solid starting reactants (carbon and an oxide), it is critical that energy be provided efficiently to the reaction mass and that the reactants be in intimate contact throughout the process. In addition, since a third solid species is formed as the product of the reaction and since it is difficult to remove unreacted precursors from the product, it is clear that high conversion of the limiting reactant must be obtained in the reactor. Clearly, an advantage of the fluidized bed reactor for carbothermal reduction synthesis is the ability to efficiently supply heat to drive the highly endothermic reactions" (Weimer p. 170, GENERAL CONSIDERATIONS).
These teaching address carbothermal reduction of oxides in general and are not limited to the production of carbides.
Applicant contends that the rejection of claim 4 relies on circular reasoning and improperly uses the instant specification as prior art (p. 12). This is incorrect. The cited passage is used to support an inherency argument, and such support does not need to qualify as prior art.
Applicant contends that the cited relationship between temperature and lithium carbonate content requires conditions not required by Fujita (specifically the atmosphere and washing conditions) (p. 12). This is incorrect. Fujita explicitly states that the reduction is performed in an inert nitrogen atmosphere (i.e. free of oxidizing and reducing gases), and the washing conditions are irrelevant to the contents of the precursor.
Applicant contends that LiMn2O4 and LiNiMnO4 do not satisfy the requirements of claim 13 (pp. 13-15). Applicant's arguments are based on a mathematical error. LiNiMnO4 is equivalent to Li0.5Ni0.5Mn0.5O2, which satisfies the claimed formula.
Applicant contends that He does not establish that LiMn2O4 and LiNiMnO4 are equivalents for carbothermal reduction (pp. 14-15). However, as Applicant points out, both are spinel materials, and the teachings of Fujita are specifically directed to spinel materials (Fujita [0003]).
Applicant contends that pulverization will not necessarily separate the current collector (pp. 15-16). However, pulverization will necessarily separate at least some of the material from the current collector. In addition, claim 15 does not explicitly require removing the cathode when pulverizing, but only when treating with an organic solvent.
The rejections are maintained.
Claim Rejections - 35 USC § 103
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.
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) 1, 3-6, 9-11, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujita et al. (JP 2011094227 A; all citations refer to the English translation attached to the office action mailed December 19, 2025) in view of Jaunsen ("The Behavior and Capabilities of Lithium Hydroxide Carbon Dioxide Scrubbers in a Deep Sea Environment". US Naval Academy Technical Report. USNA-TSPR-157, 1989) and Weimer ("Fluidized Bed Reactor Processes", Carbide, Nitride and Boride Materials Synthesis and Processing, pp. 169-180, 1997).
Regarding claim 1, Fujita teaches a method of recovering a lithium precursor comprising preparing a cathode active material including a lithium composite oxide (lithium manganate spinel); reacting the material with a carbon-based solid material (carbon black) in an inert atmosphere (nitrogen) that does not include an oxidizing or reducing gas at 850-1000 °C, which falls within the range of the instant claim, to form a mixture containing lithium oxide; and washing the mixture to separate the lithium precursor (lithium leaching operation) (Fujita [0027]-[0033] and [0007]).
Fujita does not teach that the washing treatment is performed in a carbon-dioxide free atmosphere. Jaunsen teaches that lithium hydroxide reacts with carbon dioxide to form lithium carbonate (Jaunsen Discussion of Theory). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to perform the washing treatment in a CO2-free environment in order to avoid converting the lithium hydroxide back to lithium carbonate.
The cathode material and carbon-based material are mixed without the addition of a solvent (i.e. dry-mixed) (Fujita [0029] and [0014]).
Fujita does not teach the use of a fluidized bed reactor. Weimer teaches that fluidized beds proved superior heat transfer and mixing conditions for carbothermal reduction (i.e. reacting with carbon-based reactants at elevated temperatures) (Weimer APPLICATION TO CARBOTHERMAL REDUCTION PROCESSES). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to perform the carbothermal reduction of Fujita in a fluidized bed in order to improve heat transfer and mixing conditions.
Regarding claim 3, modified Fujita gives examples at 850 and 1000 °C (Fujita Table 2), which falls within the range of the instant claim.
Regarding claim 4, modified Fujita does not teach that the lithium carbonate in the mixture is 1/10 or less relative to the weight of lithium oxide. Fujita teaches that the reaction is at 850 and 1000 °C (Fujita Table 2), and applicant has indicated that reaction temperatures above 840 °C result in less than 10% lithium carbonate (Table 1 of the instant specification). The reaction products of modified Fujita are therefore assumed to contain less than 10% lithium carbonate relative to lithium oxide.
Regarding claim 5, the carbon-based material is carbon black (Fujita [0029]).
Regarding claim 6, the inert gas comprises nitrogen (Fujita [0029]).
Regarding claim 9, modified Fujita teaches a cathode material:carbon ratio of 100:10 to 100:40 (10:1 to 2.5:1) (Fujita [0022]), which overlaps the range of the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to select an appropriate amount in the range disclosed by Fujita, including values within the range of the instant claim.
Regarding claim 10, modified Fujita teaches that the leaching (i.e. washing) step converts some of the lithium oxide to lithium hydroxide) (Fujita [0007]).
Regarding claim 11, modified Fujita teaches that the manganese component is not dissolved in the leaching process (Fujita [0031]-[0033]), so it must necessarily be precipitated in the residue.
Regarding claim 14, the cathode material is obtained from a waste lithium secondary battery (Fujita [0027]).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujita in view of Jaunsen and Weimer as applied to claim 1 above, and further in view of He et al. (US 2014/0077818 A1).
Regarding claim 13, modified Fujita does not teach a cathode active material of the claimed formula. Modified Fujita teaches the use of lithium manganate of the form LiMn2O4 (Fujita [0003]), and that the material may include Mn, Ni, Co, and Li (Fujita [0012]). He teaches that common lithium manganate active materials include LiMn2O4 and LiNiMnO4 (He [0020]). LiMn2O4 and LiNiMnO4 are therefore art-recognized equivalents for the same purpose, and substituting equivalents known for the same purpose is prima facie obvious (MPEP 2144.06 II). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to replace LiMnO4 with LiNiMnO4 (Chemical Formula 1 of the instant claim with x=0.5, a=0.5, b=0, M=Mn, and y=2, each of which falls within the range of the instant claim) in the method of modified Fujita, since both are manganate active materials.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujita in view of Jaunsen and Weimer as applied to claim 14 above, and further in view of Su et al. (US 2018/0102543 A1).
Regarding claim 15, preparing the mixture comprises separating the cathode from lithium battery waste and pulverizing the material (Fujita [0027] and [0016]). Modified Fujita does not teach that the cathode includes active material, a binder, and conductive material, or that the pulverization separates the material from a current collector. Su teaches that cathodes typically include an active material, a binder, and a conductive additive coated on a current collector. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to apply the methods of Fujita to any conventional cathode, including a typical cathode described by Su, and pulverizing such a cathode would necessarily separate active material from the current collector.
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 JAMES A CORNO JR whose telephone number is (571)270-0745. The examiner can normally be reached M-F 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niki Bakhtiari can be reached at (571) 272-3433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.A.C/ Examiner, Art Unit 1722
/ANCA EOFF/ Primary Examiner, Art Unit 1722
Prosecution Insights