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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6 February 2026 has been entered.
Information Disclosure Statements
The Information Disclosure Statements filed on 18 March 2026 and 2 October 2025 have been received and considered by the examiner.
Claim Amendments
Applicant’s amendment to claim 1 is acknowledged, though the claim is objected to for the reasons set forth below. It is also noted that while the status of claim 10 is reported as “currently amended”, no amendments beyond those that were made in the filing of 8 September 2025 are apparent.
Claim Objections
Claim 1 is objected to because the amendment to the claim is missing some words while duplicating other phrases. Based upon the contents of page 8 of the reply filed 6 February 2026, the following correction is suggested:
“… adding a sulfurizing agent to the alloy to allow the alloy and the sulfurizing agent to coexist, and under this condition
Appropriate correction is required.
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 1-10, 16-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Krofchak et al. (US Pat. No. 6,440,194 B1) in view of Rohde et al. (WO 2019/121086 A1; FOR 11 on the IDS filed 2 July 2025), Ishida et al. (US 2013/0269484 A1), and Takahashi (US PG Pub 2014/0318313 A1).
Regarding claim 1, Krofchak teaches an alloy processing method for producing a nickel- and/or cobalt-containing solution from an alloy comprising copper and nickel and/or cobalt (abstract), the method comprising: a leaching step that comprises subjecting the alloy while coesxisting with a sulfurizing agent to a leaching treatment with an acid to produce a leachate (metal alloy is passed through a dissolution step where the metal alloy is digested in sulfuric acid …copper in the metal allo[y] reacts with the hydrogen sulfide formed; column 2, lines 50-60); and an oxidation and neutralization step that comprises adding an oxidizing agent (addition of oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) and a neutralizing agent (addition of lime to raise the pH to about 3.5; column 3, lines 7,40) to the reduced solution to produce a solution containing nickel and/or cobalt (cobalt sulphate and nickel sulphate solution; column 3, lines 46-47).
Krofchak’s alloy being treated contains sulfur, which can be considered the sulfurizing agent, (col. 2, lines 48-49), and leads to formation of hydrogen sulfide which is essential to their method (col. 2, lines 55-65), but Krofchak does not teach adding a distinct sulfurizing agent, which is not inherently present, to the alloy to allow the alloy and the sulfurizing agent to coexist. Krofchak also does not teach a reduction step, following the leaching step, that comprises subjecting the leachate to a reduction treatment with a reducing agent to produce a reduced solution.
However, Ishida also teaches performing a leaching treatment to recover valuable metals from a mixture of cobalt, nickel and copper ([0046] and [0068]), and also teaches a sulfurizing step where a separate sulfurizing agent is added to solution ([0061]). In other words, Ishida teaches that if a sulfurization reaction is desired, a separate sulfurizing agent can be added to solution.
Furthermore, Takahashi teaches that it is desirable to recover valuable metals from alloys obtained by melting waste batteries (abstract and [0002]), and that these alloys will contain cobalt, nickel, and copper ([0040]), the same metals being recovered by Krofchak (abstract).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the method of Krofchak to the alloys obtained by the method of Takahashi, and to further add a sulfurizing agent to the alloy to allow the alloy and the sulfurizing agent to coexist. One of ordinary skill in the art would have been motivated to do so in order to precipitate copper sulfide from alloys that lack sulfur, such as the alloys taught by Takahashi which contain same valuable metals as can be recovered by the method of Krofchak. The addition of a sulfurizing agent would have been further obvious in view of Ishida, who teaches that sulfurizing agents can be added to a metal recovery system where they are required by not present, such as would be require to treat the alloys of Takahashi by the method of Krofchak.
Additionally, Rohde teaches subjecting a leachate that is the product that results after the leaching step to a reduction treatment with a reducing agent to produce a reduced solution where nickel and/or cobalt is used as the reducing agent (treating the solution obtained …with metallic nickel, cobalt or manganese; p. 11, ¶ 1). Rohde further teaches that the reduction step (step (c)) is particularly useful for removal of copper traces (p. 12, ¶ 4).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to include a reduction step following the leaching step, as taught by Rohde, in the alloy processing method of modified Krofchak. One of ordinary skill in the art would have been motivated to do so in order to remove traces of copper in the leachate, as taught by Rohde.
Regarding claim 2, modified Krofchak teaches the method of claim 1, where Takahashi teaches using alloys obtained through melting a discarded lithium ion battery ([0002]).
Regarding claim 3, modified Krofchak teaches the method of claim 1, as analyzed above, where the alloy is crushed to 1 mm (column 4, lines 59-60), and can therefore be considered a powder.
Regarding claim 4, modified Krofchak teaches the method of claim 1, as analyzed above, where Rohde teaches the reducing agent used in the reduction step being metallic nickel and the reduction treatment comprising bringing the leachate into contact with the metallic material (treating the solution obtained [after leaching] with metallic nickel; p. 11, ¶ 1).
Regarding claim 5, modified Krofchak teaches the methods of claim 1, as analyzed above, where Krofchak also teaches the oxidation and neutralization step comprising adding the oxidizing agent and the neutralizing agent simultaneously to the reduced solution or adding the oxidizing agent to the reduced solution and then adding the neutralizing agent to the mixture (residual iron was removed through redox reaction of ferrous (FeII) to ferric (FeIII) ions and precipitated out with pH increased to 3.5 with milk of lime—CaO; column 6, lines 35-37). Because the description of the processes in column 6 and in column 3 (by addition of lime to raise the pH to about 3.5 and by addition oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) are listed in opposite order, it is interpreted that either the oxidizing agent (oxygen) and the neutralizing agent (lime) are added simultaneously in both descriptions (column 3 and column 6), or that column 6 teaches the oxidizing agent being added before the neutralizing agent.
In any case, it is also noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any claimed order of steps is an obvious variant of the steps of the cited prior art.
Regarding claim 6, modified Krofchak teaches the method of claim 1, as analyzed above, but does not teach performing the leaching treatment at any specific oxidation-reduction potential.
However, Ishida also teaches performing a leaching treatment to recover valuable metals from a mixture of cobalt, nickel and copper ([0046] and [0068]), and does so at an oxidation-reduction potential (ORP) being controlled within a range of -100 mV or more and 550 mV or less with respect to a silver-silver chloride electrode as a reference electrode during the leaching treatment with an acid solution (it is preferable to adjust an oxidation reduction potential (ORP) (reference electrode: silver/silver-chloride electrode) to be in a range of -100 to 550 mV; paragraph 88), which overlaps with the instantly claimed range of 240 mV or more and 300 mV or less.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the leaching treatment at a potential of oxidation-reduction potential (ORP) being controlled within a range of -100 mV or more and 550 mV or less with respect to a silver-silver chloride electrode as a reference electrode during the leaching treatment with an acid solution, which overlaps with the instantly claimed range of 240 mV or more and 300 mV or less. One of ordinary skill in the art would have been motivated to do so because Ishida teaches that these potentials are preferable for the leaching of the same metals as in the method of modified Krofchak.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “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, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Regarding claim 7, modified Krofchak teaches the method of claim 6, as analyzed above, where Ishida further teaches adding an oxidizing agent to control the oxidation-reduction potential (it is preferable to adjust an oxidation reduction potential (ORP)… by adding nickel metal or blowing air or oxygen; oxygen is an oxidizing agent; paragraph 88).
Regarding claims 8 and 9, modified Krofchak teaches the method of claim 1, as analyzed above, where Krofchak teaches performing the leaching treatment at a pH being controlled within a range of 2.0 or less using an acid solution (claim 8), where the acid solution is a sulfuring acid-containing solution (claim 9; metal alloy is passed through a dissolution step where the metal alloy is digested in sulphuric acid solution with a pH not greater than about 2; column 2, lines 50-54). The pH range taught by Krofchak (<~2) overlaps with that of instant claim 8 (0.8-2.0). It is again noted that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art a prima facie case of obviousness exists, and that the courts have also found that 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. Therefore, the claimed range merely represents an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claim 10, modified Krofchak teaches the method of claim 1, as analyzed above, but Krofchak is silent regarding the temperature at which the leaching treatment is performed. However, Rohde teaches a leaching treatment being performed at a temperature in the range from 20°C to 130 °C and that when the process is carried out at temperatures below 100 °C it can be performed at normal pressure of 1 bar (p. 8 ¶ 3).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to perform the leaching treatment with an acid solution in the method of modified Krofchak with the leaching temperature being controlled within a range of 20 °C or more and 100 °C or less, as taught by Rohde, which overlaps with the instantly claimed range of 50 °C or more and 80 °C or less.
One of ordinary skill in the art would have been motivated to do so because Rohde teaches that temperatures of 20 °C-130°C can be used in a related process, but that temperatures above 100 °C will require higher pressure. Furthermore, it is commonly recognized in the art that higher temperatures result in faster reaction rates, and temperature is often a variable optimized by routine experimentation.
Generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here 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." Furthermore, it is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
Regarding claim 16, modified Krofchak teaches the method of claim 2, as analyzed above, where Krofchak teaches the alloy is crushed to 1 mm (column 4, lines 59-60), which can be considered a powder.
Regarding claim 17, modified Krofchak teaches the method of claim 2, as analyzed above, where Rohde teaches the reducing agent used in the reduction step being metallic nickel and the reduction treatment comprising bringing the leachate into contact with the metallic material (treating the solution obtained [after leaching] with metallic nickel; p. 11, ¶ 1).
Regarding claim 18, modified Krofchak teaches the method of claim 3, as analyzed above, where Rohde teaches the reducing agent used in the reduction step being metallic nickel and the reduction treatment comprising bringing the leachate into contact with the metallic material (treating the solution obtained [after leaching] with metallic nickel; p. 11, ¶ 1).
Regarding claim 19, modified Krofchak teaches the method of claim 2, as analyzed above, where Krofchak also teaches the oxidation and neutralization step comprising adding the oxidizing agent and the neutralizing agent simultaneously to the reduced solution or adding the oxidizing agent to the reduced solution and then adding the neutralizing agent to the mixture (residual iron was removed through redox reaction of ferrous (FeII) to ferric (FeIII) ions and precipitated out with pH increased to 3.5 with milk of lime—CaO; column 6, lines 35-37). Because the description of the processes in column 6 and in column 3 (by addition of lime to raise the pH to about 3.5 and by addition oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) are listed in opposite order, it is interpreted that either the oxidizing agent (oxygen) and the neutralizing agent (lime) are added simultaneously in both descriptions (column 3 and column 6), or that column 6 teaches the oxidizing agent being added before the neutralizing agent.
In any case, it is also noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any claimed order of steps is an obvious variant of the steps of the cited prior art .
Regarding claim 21, modified Krofchak teaches the method of claim 1, where Rohde teaches that in the reduction step the leachate is brought into contact with the metal to perform reduction treatment, as analyzed above, thereby obtaining a reduced solution having a copper concentration of 0.001 g/L or less (to provide [a]…solution with a copper content below 1 ppm; p. 18, line 39-40).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Krofchak (US Pat. No. 6,440,194 B1) in view of Rohde et al. (WO 2019/121086 A1), Ishida et al. (US 2013/0269484 A1), and Takahashi (US PG Pub 2014/0318313 A1), as applied to claim 1 above, and further in view of Jones et al. (US Pat. No. 6,699,302 B1; hereinafter “Jones”) and Sohn (“Hydrometallurgical Principals” in Encyclopedia of Materials Science and Technology, Volumes 1-11, Buschow et al. eds. (2001). Elsevier. [Retrieved on 3 June 2025]. Retrieved from the Internet: <URL: https://app.knovel.com/hotlink/pdf/id:kt00B7A3DQ/encyclopedia-materials/hydrometallurgical-principles>).
Regarding claim 11, modified Krofchak teaches the method of claim 1, as analyzed above, where the alloy is in the form of particles (metal alloy [was] crushed to 1 mm; column 4, lines 59-60). Krofchak does not teach the particles having a particle size of less than 500 μm.
However, Jones teaches that in a related hydrometallurgical treatment of alloys materials, which is the same field of endeavor as the method of Krofchak, these alloys can be atomized to a particle size of less than 100 μm (column 19, line 25-26), which falls within the claimed range of less than 500 μm. Jones also teaches that this atomization puts the alloy in a form that is suitable for subsequent hydrometallurgical recovery of metal values, e.g. using a suitable leaching process, and that atomization solves the problem of having to crush and mill tough alloys (column 5, lines 28-34).
Furthermore, Sohn teaches that in the hydrometallurgical treatment of materials preleach treatment usually starts with size reduction, as this accelerates leaching (p. 3977, Preleach Treatment of Raw Material).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use alloys where the alloy is in the form of particles with a particle size of less than 100 μm, as taught by Jones, in the method of Krofchak, thereby meeting the limitations of claim 11 where the particle size is less than 500 μm. One of ordinary skill in the art would have been motivated to do so in order to accelerate leaching, as taught by Sohn.
The courts have also found that “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, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Regarding claims 12 and 13, modified Krofchak teaches the method of claim 11, as analyzed above, where Jones teaches using an alloy in the form of an atomized powder resulting from an atomization process (alloy was water-atomized, the atomized alloy was then used for leaching; column 19, line 25-27; meeting claim 12), with a particle size of less than 100 μm (column 19, line 25), which meets the limitations of claim 13, which requires the alloy be in the form of a powder with a particle size of less than 150 μm.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Krofchak (US Pat. No. 6,440,194 B1) in view of Rohde et al. (WO 2019/121086 A1), Ishida et al. (US 2013/0269484 A1), and Takahashi (US PG Pub 2014/0318313 A1), as applied to claim 1 above, and further in view of Kleinsorgen et al. (US Pat. No. 5,858,061).
Regarding claim 14, modified Krofchak teaches the method of claim 1, as analyzed above, but is silent with regards to the alloy containing zinc and does not teach the further method steps of claim 14. Rohde does discuss zinc as an undesirable impurity (p. 2, ¶ 3), and further teaches solvent extraction as a further method of purification that can be used to remove additional impurities. Rohde does not specifically teach this technique as removing the zinc.
However, Kleinsorgen teaches a method for recovering alloys from battery waste (column 2, lines 58-61) which contains a zinc removal step that comprises subjecting a solution to a purification extraction to remove the zinc (the solvent extraction is a “purification extraction” since it completely excludes metal residues from the digestion solution with the exception of the metals Ni and Co; column 3, line 66-column 4, line 2; Kleinsorgen also explicitly names zinc (Zn) as one of the elements removed (column 4, line 14 and claim 1). Kleinsorgen also discloses that this step follows the removal of iron by increasing the pH (claim 1), which corresponds to performing the zinc-removal step on the post-neutralization solution resulting from the oxidation and neutralization step of modified Krofchak.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add to the method of modified Krofchak a zinc removal step that comprises subjecting a post-neutralization solution resulting from the oxidation and neutralization step to a solvent extraction treatment to remove the zinc, as taught by Kleinsorgen. One of ordinary skill in the art would have been motivated to so in order to obtain more pure nickel and cobalt, as taught desirable by Rohde.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Krofchak (US Pat. No. 6,440,194 B1) in view of Rohde et al. (WO 2019/121086 A1), Ishida et al. (US 2013/0269484 A1), and Takahashi (US PG Pub 2014/0318313 A1), as applied to claim 1 above, and further in view of Jones et al. (US Pat. No. 6,699,302 B1).
Regarding claim 15, modified Krofchak teaches the method of claim 1 where Takahashi teaches using an alloy obtained by melting a discarded lithium ion battery, where the discarded lithium ion battery is introduced into a roasting furnace to produce an oxidatively roasted product ([0033]-[0034]). None Takahashi, Krofchak, Rohde or Ishida teach the remaining limitations of claim 15.
However, Jones teaches introducing a roasted product and a reducing agent into a reduction furnace for reductive melting (the calcined product from the roaster is fed to a DC arc furnace together with a reductant; column 9, lines 26-28) to produce a molten metallic material (Fig.1, element 20; column 19, line 21 describes the alloy as molten) and a reduced slag (Fig. 1, element 22); and subjecting the molten metallic material to an atomization process to solidify the molten metallic material into a fine powder (alloy drawn directly from the arc furnace, is atomized so that it is in a form which is suitable for subsequent hydrometallurgical recovery of metal values, e.g. using a suitable leaching process; column 5, lines 29-32). Jones also teaches that atomization can replace crushing and milling (column 5, lines 33-34), so it is clear that this method produces a fine powder.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use in the method of modified Krofchak an alloy powder formed by the methods of Takahashi and Jones. In particular, one of ordinary skill in the art would have been motivated to use an alloy generated by introducing a discarded lithium ion battery into a roasting furnace to produce an oxidatively roasted product, as taught by Takahashi, because Takahashi teaches that their method enables the efficient recovery of valuable metals from waste materials (paragraph 1). They would have been further motivated to introduce the oxidatively roasted product and a reducing agent into a reduction furnace for reductive melting to produce a molten metallic material and a reduced slag and to subject the molten metallic material to an atomization process to solidify the molten metallic material into a fine powder, as taught by Jones, because doing so provides high recovery of desired metals (column 6, line 50-51) and reduces the need to crush and mill tough alloys (column 5, lines 33-34).
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, 2 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-5 of copending Application No. 18/690,282. Although the claims at issue are not identical, they are not patentably distinct from each other because one of ordinary skill in the art would find it obvious to combine the limitations of claims 3 and 4 in the ‘282 application to arrive at the limitations of instant claims 1 and 6. Claim 5 of the ‘282 application further teaches the limitations of claim 2. It would have been additionally obvious to add a sulfurizing agent in order to create the condition where the alloy and the sulfurizing agent coexist that is required by claim 1 of the ‘282 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 8 of US Pat. No. 12,500,283. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6 of the ‘283 patent recite all the limitations of instant claims 1 and 2. In particular, claims 1, 2, and 4 recite all the limitations found in instant claim 1 and it would have been obvious to combine the limitations of claim 2 with those of claim 1 and 4. Claim 6 of the ‘283 patent recites the further limitations of instant claim 2.
Claims 1-3, 5, 6, 8-9, 16, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 9 of copending Application No. 18/716,530 in view of Krofchak (US Pat. No. 6,440,194 B1).
Regarding instant claim 1, claim 4 of the ‘530 application teaches and an alloy processing method for producing a nickel- and/or cobalt-containing solution from an alloy comprising copper and nickel and/or cobalt, the method comprising: a leaching step that comprises subjecting the alloy to a leaching treatment with an acid in the presence of a sulfurizing agent to produce a leachate; and, a reduction step that comprises subjecting the leachate to a reduction treatment with a reducing agent to produce a reduced solution. It would have been obvious to one of ordinary skill in the art to add the sulfurizing agent such that it can coexist with the alloy, as is required by claim 1 of the ‘530 application. The claims do not teach the oxidation and neutralization step required by instant claim 1.
However, Krofchak teaches an alloy processing method for producing a nickel- and/or cobalt-containing solution from an alloy comprising copper and nickel and/or cobalt (abstract) with an oxidation and neutralization step that comprises adding an oxidizing agent (addition of oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) and a neutralizing agent (addition of lime to raise the pH to about 3.5; column 3, lines 7,40) to the reduced solution to produce a solution containing nickel and/or cobalt (cobalt sulphate and nickel sulphate solution; column 3, lines 46-47).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add the oxidation and neutralization steps taught by Krofchak to the method of the ‘530 application. One or ordinary skill in the art would have been motivated to so because Krofchak teaches that this step can remove iron (column 3, lines 6-7), thereby affording a more pure nickel and cobalt solution.
Regarding claim 2, claim 7 of the ‘530 application teaches use of an alloy obtained by melting a discarded lithium ion battery in the method of claim 1.
Regarding instant claim 3 and 16, modified claim 1 of the ‘530 application teaches the method of claim 1, as analyzed above, and Krofchak also teaches the alloy being crushed to 1 mm (column 4, lines 59-60, which can be considered a powder.
Regarding instant claim 5, modified ‘530 teaches the method of claim 1, as analyzed above, where Krofchak also teaches the oxidation and neutralization step comprising adding the oxidizing agent and the neutralizing agent simultaneously to the reduced solution or adding the oxidizing agent to the reduced solution and then adding the neutralizing agent to the mixture (residual iron was removed through redox reaction of ferrous (FeII) to ferric (FeIII) ions and precipitated out with pH increased to 3.5 with milk of lime—CaO; column 6, lines 35-37). Because the description of the processes in column 6 and in column 3 (by addition of lime to raise the pH to about 3.5 and by addition oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) are listed in opposite order, it is interpreted that either the oxidizing agent (oxygen) and the neutralizing agent (lime) are added simultaneously in both descriptions (column 3 and column 6), or that column 6 teaches the oxidizing agent being added before the neutralizing agent.
In any case, it is also noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any claimed order of steps is an obvious variant of the steps of the cited prior art.
Regarding instant claim 6, claim 1 of the ‘530 application also teaches the oxidation-reduction potential being controlled at 50 mV or more, which overlaps with the claimed range or between 240 mV or more and 300 mV or less.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
Regarding claims 8 and 9, modified ‘530 teaches the method of claim 1, as analyzed above, and Krofchak teaches performing the leaching treatment at a pH being controlled within a range of 2.0 or less using an acid solution (claim 8), where the acid solution is a sulfuring acid-containing solution (claim 9; metal alloy is passed through a dissolution step where the metal alloy is digested in sulphuric acid solution with a pH not greater than about 2; column 2, lines 50-54). The pH range taught by Krofchak (<~2) overlaps with that of instant claim 8 (0.8-2.0). It is again noted that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art a prima facie case of obviousness exists, and that the courts have also found that 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. Therefore, the claimed range merely represents an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claim 19, modified ‘530 teaches the limitations of claims 2 and 3, and Krofchak also teaches the oxidation and neutralization step comprising adding the oxidizing agent and the neutralizing agent simultaneously to the reduced solution or adding the oxidizing agent to the reduced solution and then adding the neutralizing agent to the mixture (residual iron was removed through redox reaction of ferrous (FeII) to ferric (FeIII) ions and precipitated out with pH increased to 3.5 with milk of lime—CaO; column 6, lines 35-37). Because the description of the processes in column 6 and in column 3 (by addition of lime to raise the pH to about 3.5 and by addition oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) are listed in opposite order, it is interpreted that either the oxidizing agent (oxygen) and the neutralizing agent (lime) are added simultaneously in both descriptions (column 3 and column 6), or that column 6 teaches the oxidizing agent being added before the neutralizing agent.
In any case, it is also noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any claimed order of steps is an obvious variant of the steps of the cited prior art.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5, 8-9, 16, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/579,520 in view of Krofchak (US Pat. No. 6,440,194 B1).
Regarding instant claim 1, claim 1 of the ‘520 application teaches and an alloy processing method for producing a nickel- and/or cobalt-containing solution from an alloy comprising copper and nickel and/or cobalt, the method comprising: a leaching step that comprises subjecting the alloy to a leaching treatment with an acid in the presence of a sulfurizing agent to produce a leachate; and, a reduction step that comprises subjecting the leachate to a reduction treatment with a reducing agent to produce a reduced solution. It would have been obvious to one of ordinary skill in the art to add the sulfurizing agent such that it can coexist with the alloy, as is required by claim 1 of the ‘520 application The claims do not teach the oxidation and neutralization step required by instant claim 1.
However, Krofchak teaches an alloy processing method for producing a nickel- and/or cobalt-containing solution from an alloy comprising copper and nickel and/or cobalt (abstract) with an oxidation and neutralization step that comprises adding an oxidizing agent (addition of oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) and a neutralizing agent (addition of lime to raise the pH to about 3.5; column 3, lines 7,40) to the reduced solution to produce a solution containing nickel and/or cobalt (cobalt sulphate and nickel sulphate solution; column 3, lines 46-47).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add the oxidation and neutralization steps taught by Krofchak to the method of the ‘520 application. One or ordinary skill in the art would have been motivated to so because Krofchak teaches that this step can remove iron (column 3, lines 6-7), thereby affording a more pure nickel and cobalt solution.
Regarding instant claim 2, claim 1 of the ‘520 application recites use of an alloy obtained by melting a discarded lithium ion battery.
Regarding instant claim 3 and 16, modified claim 1 of the ‘520 application teaches the method of claim 1, as analyzed above, and Krofchak also teaches the alloy being crushed to 1 mm (column 4, lines 59-60, which can be considered a powder.
Regarding claim 5, modified ‘520 teaches the methods of claim 1, as analyzed above, where Krofchak also teaches the oxidation and neutralization step comprising adding the oxidizing agent and the neutralizing agent simultaneously to the reduced solution or adding the oxidizing agent to the reduced solution and then adding the neutralizing agent to the mixture (residual iron was removed through redox reaction of ferrous (FeII) to ferric (FeIII) ions and precipitated out with pH increased to 3.5 with milk of lime—CaO; column 6, lines 35-37). Because the description of the processes in column 6 and in column 3 (by addition of lime to raise the pH to about 3.5 and by addition oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) are listed in opposite order, it is interpreted that either the oxidizing agent (oxygen) and the neutralizing agent (lime) are added simultaneously in both descriptions (column 3 and column 6), or that column 6 teaches the oxidizing agent being added before the neutralizing agent.
In any case, it is also noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any claimed order of steps is an obvious variant of the steps of the cited prior art.
Regarding claim 8, claim 6 of the ‘520 application teaches a pH range (0.80-1.6) that overlaps with the instantly claimed range (0.8-2.0). It is again noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05.01).
Regarding 9, modified ‘520 teaches the method of claim 8, as analyzed above, and Krofchak teaches the acid solution being a sulfuring acid-containing solution (metal alloy is passed through a dissolution step where the metal alloy is digested in sulphuric acid solution with a pH not greater than about 2; column 2, lines 50-54).
Regarding claim 19, modified ‘520 teaches the limitations of claims 2 and 3, and Krofchak also teaches the oxidation and neutralization step comprising adding the oxidizing agent and the neutralizing agent simultaneously to the reduced solution or adding the oxidizing agent to the reduced solution and then adding the neutralizing agent to the mixture (residual iron was removed through redox reaction of ferrous (FeII) to ferric (FeIII) ions and precipitated out with pH increased to 3.5 with milk of lime—CaO; column 6, lines 35-37). Because the description of the processes in column 6 and in column 3 (by addition of lime to raise the pH to about 3.5 and by addition oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) are listed in opposite order, it is interpreted that either the oxidizing agent (oxygen) and the neutralizing agent (lime) are added simultaneously in both descriptions (column 3 and column 6), or that column 6 teaches the oxidizing agent being added before the neutralizing agent.
In any case, it is also noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any claimed order of steps is an obvious variant of the steps of the cited prior art.
This is a provisional nonstatutory double patenting rejection.
Claims 1-3, 5, 8-9, 16, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/696,560 in view of Krofchak (US Pat. No. 6,440,194 B1).
Regarding instant claim 1, claim 1 of the ‘560 application teaches and an alloy processing method for producing a nickel- and/or cobalt-containing solution from an alloy comprising copper and nickel and/or cobalt, the method comprising: a leaching step that comprises subjecting the alloy to a leaching treatment with an acid in the presence of a sulfurizing agent to produce a leachate; and, a reduction step that comprises subjecting the leachate to a reduction treatment with a reducing agent to produce a reduced solution. It would have been obvious to one of ordinary skill in the art to add the sulfurizing agent such that it can coexist with the alloy, as is required by claim 1 of the ‘560 application. The claims do not teach the oxidation and neutralization step required by instant claim 1.
However, Krofchak teaches an alloy processing method for producing a nickel- and/or cobalt-containing solution from an alloy comprising copper and nickel and/or cobalt (abstract) with an oxidation and neutralization step that comprises adding an oxidizing agent (addition of oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) and a neutralizing agent (addition of lime to raise the pH to about 3.5; column 3, lines 7,40) to the reduced solution to produce a solution containing nickel and/or cobalt (cobalt sulphate and nickel sulphate solution; column 3, lines 46-47).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add the oxidation and neutralization steps taught by Krofchak to the method of the ‘560 application. One or ordinary skill in the art would have been motivated to so because Krofchak teaches that this step can remove iron (column 3, lines 6-7), thereby affording a more pure nickel and cobalt solution.
Regarding instant claims 2, claim 9 of the ‘560 application teaches use of an alloy obtained by melting a discarded lithium ion battery in the method of claim 1.
Regarding instant claim 3 and 16, modified claim 1 of the ‘560 application teaches the method of claim 1, as analyzed above, and Krofchak also teaches the alloy being crushed to 1 mm (column 4, lines 59-60), which can be considered a powder.
Regarding claim 5, modified ‘560 teaches the methods of claim 1, as analyzed above, where Krofchak also teaches the oxidation and neutralization step comprising adding the oxidizing agent and the neutralizing agent simultaneously to the reduced solution or adding the oxidizing agent to the reduced solution and then adding the neutralizing agent to the mixture (residual iron was removed through redox reaction of ferrous (FeII) to ferric (FeIII) ions and precipitated out with pH increased to 3.5 with milk of lime—CaO; column 6, lines 35-37). Because the description of the processes in column 6 and in column 3 (by addition of lime to raise the pH to about 3.5 and by addition oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) are listed in opposite order, it is interpreted that either the oxidizing agent (oxygen) and the neutralizing agent (lime) are added simultaneously in both descriptions (column 3 and column 6), or that column 6 teaches the oxidizing agent being added before the neutralizing agent.
In any case, it is also noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any claimed order of steps is an obvious variant of the steps of the cited prior art.
Regarding claims 8 and 9, modified ‘560 teaches the method of claim 1, as analyzed above, and Krofchak teaches performing the leaching treatment at a pH being controlled within a range of 2.0 or less using an acid solution (claim 8), where the acid solution is a sulfuring acid-containing solution (claim 9; metal alloy is passed through a dissolution step where the metal alloy is digested in sulphuric acid solution with a pH not greater than about 2; column 2, lines 50-54). The pH range taught by Krofchak (<~2) overlaps with that of instant claim 8 (0.8-2.0). It is again noted that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art a prima facie case of obviousness exists, and that the courts have also found that 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. Therefore, the claimed range merely represents an obvious variant and/or routine optimization of the values of the cited prior art.
Regarding claims 19 and 20, modified ‘560 teaches the limitations of claims 2 and 3, and Krofchak also teaches the oxidation and neutralization step comprising adding the oxidizing agent and the neutralizing agent simultaneously to the reduced solution or adding the oxidizing agent to the reduced solution and then adding the neutralizing agent to the mixture (residual iron was removed through redox reaction of ferrous (FeII) to ferric (FeIII) ions and precipitated out with pH increased to 3.5 with milk of lime—CaO; column 6, lines 35-37). Because the description of the processes in column 6 and in column 3 (by addition of lime to raise the pH to about 3.5 and by addition oxygen to convert ferrous iron to ferric iron; column 3, lines 40-41) are listed in opposite order, it is interpreted that either the oxidizing agent (oxygen) and the neutralizing agent (lime) are added simultaneously in both descriptions (column 3 and column 6), or that column 6 teaches the oxidizing agent being added before the neutralizing agent.
In any case, it is also noted that the courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any claimed order of steps is an obvious variant of the steps of the cited prior art.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments, page 10 of the reply filed 6 February 2026, with respect to the rejections under 35 USC § 103 over Krofchak have been fully considered and are persuasive: Krofchak does not teach adding a sulfurizing agent from an external source because the alloys they chose to treat do not require it. Therefore, the prior rejections have been withdrawn. However, upon further consideration, new grounds of rejection is made in view the additional teachings provided by Takahashi and Ishida, as analyzed above.
The two references newly applied to claim 1 were already used in the rejections of dependent claim in the prior Office action. These two references are now being relied upon to teach obvious modifications to Krofchak such that the method can be used to treat alloys that themselves to do not contain sulfur, as suggested by Takahashi, and therefore would require the addition of a sulfurizing agent from an external source, as taught by Ishida.
In response to applicant's argument that the instantly claimed method achieves more effective promotion of leaching from corrosion-resistant copper alloys, pages 8-9, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). See MPEP 2145(II).
Krofchak teaches that the presence of a sulfurization agent in the leaching solution allows for the precipitation and recovery of copper sulfide, thereby motivating the presence of a sulfurization agent in the leaching solution. The fact that the presence of such an agent further allows for better leaching of nickel and cobalt does not render the method otherwise suggested by prior art patentable.
Applicant’s remaining arguments regarding the prior art rejections are premised upon the shortcomings of Krofchak and Rohde, and are therefore moot in view of the new rejections set forth above.
Applicant’s arguments regarding the Double Patenting rejections are not persuasive, as in all instances it would have been obvious to one of ordinary skill in the art to add a sulfurizing agent to a method that specifically requires a sulfurizing agent to be present.
Conclusion
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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