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 .
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 17797824 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim a method of reusing a positive electrode active material via, thermal treatment, washing, and annealing the scrap material, within their respective claim 1s. Furthermore, while Application No. 1779784 does not mention the application of grinding in claim 1, claim 15 of said application mentions acquiring the active material in the form of a powder. One of ordinary skill in the art would be able to identify that grinding would need to take place if the material layer is collected in a powder form.
Further, claim 2 of both applications addresses additional steps to the process in claim 1 requiring a surface coating for the annealed material.
Claim 4 of application No. ‘824 and claim 6 of application No. ‘865 require the use of a 0-15% lithium compound solution for the washing step.
Claim 7 of application No. ‘824 and claim 11 of application No. ‘865 both address the need for the lithium precursors to be selected from a group of LiOH, Li2CO3, LiNO3, and Li2O.
Claims 13 and 14 of application No. ‘824 and claims 15 and 16 of application No. ‘865 requires the annealing process to be performed in air at a temperature between 400-1000°C exceeding the melting point of a lithium precursor.
Claim 18 of application No. ‘824 and claim 20 of application No. ‘865 both address the fluorine content of the reusable active material, the fluorine content being 100ppm or less.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
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.
Claim 6 is 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.
Regarding claim 6, the limitation of the instant claim refers to the process of washing to be performed within one hour. The claim does not indicate if the washing period is with an hour of completion of the previous step or if the washing process would have a duration of an hour or less, making the claim indefinite.
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) 1,3-5,6,8,9,11-17,and 19- 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wuhan (CN 110842006 A) in view of Lee (US 20180212282).
Regarding claim 1, Wuhan discloses the process in which the active material undergoes dry heat treatment to purify the cathode material and separate the electrode from the current collector (Wuhan [012]). During the separation process, the separation of the current collector from the active material layer can be conducted in air. (Wuhan [029]) , corresponding to step (1-a)The active material is collected and then undergoes hydrothermal treatment in a lithium-ion solution where the active material is then washed and dried after undergoing the reaction (Wuhan [013]), corresponding to step (b-1). The recycled material is then crushed and screened into a fine powder (Wuhan [015]), which corresponds to step (b-2).
Wuhan does not mention adding a lithium precursor into after drying. However, Lee teaches that after washing and the resultant drying [step (b-1)] (Lee [0020]) adding lithium precursor before annealing (Lee [0035]) , corresponding to step (b-3). Lee further discloses that the active metal will be annealed, corresponding to step (c).
One of ordinary skill in the art would be able to apply the teachings of Lee to Wuhan, as adding lithium precursor into the powdered active material will supplement insufficient lithium and in order to improve electrode performance. See [0034] of Lee.
Regarding claim 3, Wuhan discloses the recycled material is grinded down into a powder (Wuhan [015]). Wuhan does not disclose the relationship between the size of a predetermined particle size. However, In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148). See MPEP 2144.06. Therefore, it would have been obvious to one of ordinary skill in the art, that with the knowledge of the primary particles size one can produce a particle with a size larger that the predetermined primary particle.
Regarding claim 4, Wuhan discloses the lithium composite transition metal oxide to comprise of LiNO (Wuhan [0033]). This disclosure fulfills the limitations set in the instant claim requiring the lithium composite metal oxide to comprise of nickel.
Regarding claim 5, Wuhan discloses that the thermal treatment applied at a temperature between 300-500°C. This disclosure fulfills the limitations set in the instant claim requiring the thermal treatment in the first step to be performed at 300-650°C.
Regarding claim 6, Wuhan discloses the use of a 4 mol./L LiOH solution which can be converted to give the weight percentage of 8.3% (Wuhan [0066]). Wuhan also teaches a time from 1-6 hours for the lithium replenishment (Wuhan [0039]). One of ordinary skill in the art would have been able to repeat the experiment based off of the prior art and have the result be of predictable yield similar to the claimed invention.
Regarding claim 8, Wuhan does not disclose the device used to grind down the active material. However, Lee discloses that a jet mill, or the like, is used during the grinding process (Lee [0023]). One of ordinary skill in the art would have been able to use a jet mill in order to grind down active materials.
Regarding claim 9, Wuhan discloses the process of hydrothermal treatment to the cathode material (Wuhan [0041]), but does not explicitly state that scrap material is added into a lithium-ion solution. However, since the hydrothermal process is known as lithium replenishment and the product would be a restored recycled material (Wuhan [0073]), it would have been obvious to one of ordinary skill in the art to add, the scraps of a material that is being recycled to a restoration process to reuse the product.
Regarding claim 11, Wuhan discloses the lithium content to be composed of LiNO3, Li2CO3, and LiOH (Wuhan [0033]). This disclosure fulfills the limitations set in the instant claim requiring the lithium precursor to be selected from a group comprised of LiNO3, Li2CO3, and LiOH.
Regarding claims 12, Wuhan discloses the need to perform lithium replenishment on lithium deficient materials, where the solution where the replenishment process takes place would contain the amount of lithium relative to the other transition metals in the material (Wuhan [0038]). This disclosure fulfils the limitations set in the instant claim requiring the lithium precursor to be added into a solution at a ratio of last lithium to other metals in the raw active material layer.
Regarding claims 13-14, Wuhan discloses that lithium replenishment would be applied by adding lithium precursor in a solution corresponding to the amount of lithium relative to the amount of lithium in the active material layer.
Since the amount of lithium is a result effective variable, with the prior art being drawn towards the process of lithium replenishment, it would not be inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); "Only if the 'results of optimizing a variable’ are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).It would have been obvious to one of ordinary skill in the art to apply the ratio of lithium, within the range the instant claim to ensure structural stability.
Regarding claim 15 and 16, Lee discloses the annealing process with lithium raw material compounds, occurring at temperatures between 500°C- 1200°C (Lee[0036]). Since annealing is a known process where it goes through a process of recovery, recrystallization, and grain growth; one of ordinary skill in the art would attempt to anneal the cathode material to generate a more durable product.
Furthermore while the annealing temperature is not fully overlapping withy the range presented in the instant claim, it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); "Only if the 'results of optimizing a variable’ are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to apply the temperature between the range the instant claim to ensure structural stability. Furthermore, since the process of annealing involves heat application followed by recrystallization, it would have been obvious to one of ordinary skill in the art to identify that the melting point of the lithium precursor would be exceeded.
Regarding claim 17, Wuhan discloses the active material is collected in a form of a coarse powder. This disclosure fulfills the limitations set in the instant claim requiring the active material to be produced in the form of a powder (Wuhan [0015]) while carbon and other impurities are removed from the active material (Wuhan [0071]).
Regarding claim 19, Wuhan discloses the importance of nickel, lithium, cobalt and manganese lithium-ion batteries, and how the desired result would be recycling the lithium and transition metals (Wuhan [0004]). While Wuhan does not disclose the formula for the recycled material Lee discloses a reusable material represented by the following formula LiaNixMnyCozMwO2+s (Lee [0038]) where M can be comprised of many elements. Furthermore, the range values of the variables in the formula are listed as such: 0.9 < a<2.0, 0<x<0.95, 0<y<0.8, 0<z<1.0, 0<w<0.1, -0.02<x<0.02, x+y+z <1. It would have been obvious to one of ordinary skill in the art to recognize that an active cathode would be composed of lithium, nickel, cobalt, manganese, oxygen, and a transition metal.
Regarding claim 20, Wuhan discloses that impurities are removed from the active material (Wuhan [0015]). While Wuhan does not disclose the ppm of fluorine within the active material, one of ordinary skill in the art would have been able to achieve a minimal amount of fluorine to guarantee the purity of the product.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wuhan (CN 110842006 A), in view of Lee (US 20180212282 A2), and further in view of Chen (CN 106505271 A).
Regarding claim 7, Wuhan does not disclose the process of washing the active material. However, Chen teaches to process the electrode material by stirring in the material into the solution (Chen [0011]). One of ordinary skill in the art would have been able to take the teaching of Chen and apply it to the process of Wuhan in order to improve lithium regeneration on the active material.
Claim(s) 2, 10, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wuhan (CN 110842006 A), in view of Lee (US 20180212282 A2), and further in view of Peng (CN110137449 A)
Regarding claim 2, Wuhan and Lee does not disclose the application of a surface coating being added to the active material. However, Peng discloses a spray drying process to coat the surface of graphite electrode fragments (Peng [0084]). One of ordinary skill in the art would have been able to apply the teaching of Peng to Wuhan in order to improve the cycle performance of the active material.
Regarding claim 10, Wuhan does not disclose the use of spray drying. However, Peng discloses a process in which a mixture of a ground material slurry is spray dried to obtain a coated precursor (Peng [0028]). This precursor is then carbonized to produce an active material (Peng [0029]). One of ordinary skill in the art would have been able to combine the teachings of Peng to Wuhan in order to reduce product volume and ensure heat sensitive material would not degrade.
Regarding claim 18, Wuhan does not disclose surface coating that comes from the annealing process. However, Lee discloses the process of an annealing process occurring at temperatures between 500 - 1200°C (Lee[0036]). On the other hand, Peng discloses the use of coated precursor materials, which contain an asphalt a carbon-based material (Peng [0084]). One of ordinary skill in the art would have been able to combine the processes in Peng and Lee in order to effectively construct a reusable electrode material.
Response to Arguments
Applicant’s arguments, see Applicant's Remarks, filed September 16, 2025, with respect to the rejection(s) of claim(s) 1-9,11, and 15-20 under 35 U.S.C. 103 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 in view of Wuhan (CN 110842006 A), in view of Chen (CN 106505271 A), Lee (20180212282) and Peng (CN 110137449 A).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNETTE H PHAN whose telephone number is (703)756-4520. The examiner can normally be reached M-F 8:30-6:30 EST.
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/ANNETTE PHAN/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736