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 .
Applicant amended Claims 16, 27-28, and 32. Applicant canceled Claims 1-15, 17-18, 20, 26, and 29-31. Support for the amendments is found in the original filing. No new matter is presented.
Information Disclosure Statements
The information disclosure statements (IDS) submitted on 12/01/2022, and 04/22/2024 have been considered by the examiner.
Response to Amendment
Responsive to communications filed on 01/30/2026, amendments to the claims have been acknowledged.
The rejections over Takuya et al. JP 2016186113 A are maintained and new rejections in view of Yasuda et al. US 20010054331 A1 have been made necessitated by amendment.
Claim Interpretation
Applicant has amended Claim 1 and added independent Claims 31 and 32 which recite a method “consisting essentially of” instead of “comprising.” Comprising is open language, while “consisting essentially of” is a partially closed phrasing that “limits the scope of a claim to the specified materials or steps ‘and those that do not materially affect the basic and novel characteristic(s)’ of the claimed invention.” See MPEP § 2111.03. The MPEP further notes that “For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, ‘consisting essentially of’ will be construed as equivalent to ‘comprising.’” See MPEP § 2111.03. Further, Applicant discloses at Pages 30 and 31 that steps within the claimed methods are not limited, may be appropriately selected, and are optional e.g. “The other steps are not particularly limited and may be appropriately selected in accordance with the intended purpose,” “The thermal treatment time may be appropriately selected,” “The thermal treatment method is not particularly limited and may be appropriately selected in accordance with the intended purpose.”
As the basic and novel characteristics of the invention and how they relate to the methods for concentrating a valuable metal are not readily apparent from the Specification or claims and applicant has not directed to where in the specification a description of the basic and novel characteristics is found, for the purposes of applying prior art the method claims will be treated as open as consistent with MPEP § 2111.03.
Continued Examination Under 37 CFR 1.114
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on 09/25/2025.
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 16, 19, 21-23, 27-28, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Takuya et al. JP 2016186113 A view of Yamaguchi et al. JP 2014199774 A and Yasuda et al. US 20010054331 A1.
Regarding Claims 16 and 32, Takuya et al. ‘113 teaches a method for concentrating a valuable metal contained in lithium ion secondary batteries [0004]. The lithium ion secondary battery contains oxides containing manganese and nickel and or cobalt and is thermally treated to transform nickel and cobalt in the oxides into metals while maintaining manganese unchanged from the form of being in an oxidized state [0021, 0034]. Powdered or granular raw material (meeting the limitation for a granular aggregate) are formed containing cobalt and/or nickel, [0025]. modified Takuya et al. ‘113 teaches the limitations set forth above. Yamaguchi et al. ‘774 further teaches sorting pulverized product obtained in the pulverizing using a sieve having a mesh size of from 0.1 mm to 2.0 mm, (overlapping the range of the instant Claim 16 from 0.1 mm through [sic] 2.4 mm) , and performing second sorting of subjecting the fine-grained product obtained in the first sorting to separation utilizing difference in magnetic property [0065]. Yamaguchi ‘774 does not expressly teach classifying the pulverized product into coarse- and fine-grained categories.
However, to classify the pulverized product would have been obvious to one having ordinary skill in the art at the time of filing the invention based on the teachings of Yamaguchi ‘774 at [0065] that grain and mesh size are tunable for obtaining a desired amount of valuable product.
Further, it would have been obvious to one having ordinary skill in the art at the time of filing the invention to repeat steps by further pulverizing the product obtained in the first sorting and subject that product to second sorting in order to obtain a fine powder based on the teachings of Yamaguchi ‘774 at [0065] that grain and mesh size are tunable for obtaining a desired amount of valuable product containing either or both of cobalt and nickel, meeting the limitations of the instant Claim.
Yamaguchi et al. ‘774 further teaches roasting (thermal treatment) of the lithium ion secondary battery at 850 °C, lying within the range of the instant claims from 600 °C to 1,200 °C. The product obtained in the thermal treatment is pulverized and further treated in a roasting process (meeting the limitation of the instant claim for a further thermal treatment) at a temperature of 900 °C to 1000 °C to separate solid cobalt from the granular aggregate [0008], meeting the limitation of the instant Claims for recovering a product obtained in the further thermal treatment.
See MPEP 2144.05. In cases where 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).
As set forth above, to classify the pulverized product would have been obvious to one having ordinary skill in the art at the time of filing the invention based on the teachings of Yamaguchi ‘774 at [0065] that grain and mesh size are tunable for obtaining a desired amount of valuable product, meeting the limitations of the instant Claims.
Regarding the newly amended limitations of Claim 16, Takuya et al. ‘113 teaches at [0051], thermal treatment in a reducing atmosphere and does not expressly teach thermal treatment in an inert atmosphere.
However, Yasuda et al. ‘331 teaches recovering valuable metal from secondary lithium ion batteries by thermally treating the material in an inert atmosphere [0026].
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to thermally treat the lithium ion secondary battery or the positive electrode material thereof in an inert atmosphere in order to minimize oxidation of the materials and maximize the yield of nickel and cobalt recovered based on the teachings of Yasuda et al. ‘331 at [0025-0031]. Takuya et al. ‘113 sets forth at [0022] “The above lithium-ion battery recycling material (meeting the limitation for the lithium ion secondary battery or the positive electrode material thereof) can be roasted by a method already known.” It would have been obvious to one having ordinary skill in the art at the time of filing the invention to perform thermal treatment of the battery materials in Takuya et al. ‘113 in an inert atmosphere in order to minimize oxidation and maximize the yield of the extracted metal.
Regarding Claim 19, modified Takuya et al. ‘113 teaches the limitations set forth above. Yamaguchi et al. ‘774 further teaches magnetic sorting to recover cobalt [0008]. Takuya et al. ‘113 teaches a product in which manganese is concentrated is recovered [0035], meeting the limitation of the instant Claim.
Regarding Claim 21, modified Takuya et al. ‘113 teaches the limitations set forth above. Yamaguchi et al. ‘774 further teaches that in the thermal treatment, the lithium ion secondary battery is contained in a case containing aluminum [0003], and aluminum derived from the case is separated during the heating [0044], meeting the limitation of the instant Claim.
Regarding Claim 22 modified Takuya et al. ‘113 teaches the limitations set forth above. Yamaguchi et al. ‘774 further teaches sorting pulverized product obtained in the pulverizing using a sieve having a mesh size of from 0.1 mm to 2.0 mm, (notwithstanding the 112(b) rejection above overlapping the range of the instant Claim from 0.1 mm through [sic] 2.4 mm). The pulverization process may be conducted by a grinding pulverizer meeting the limitations for impact, shearing, or compression [0055].
Yamaguchi ‘774 does not expressly teach classifying the pulverized product into coarse- and fine-grained categories.
However, to classify the pulverized product would have been obvious to one having ordinary skill in the art at the time of filing the invention based on the teachings of Yamaguchi ‘774 at [0065] that grain and mesh size are tunable for obtaining a desired amount of valuable product, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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).
Regarding Claim 23, modified Takuya et al. ‘113 teaches the limitations set forth above. Yamaguchi et al. ‘774 further teaches a micrometer scaled aggregate at [0057] which overlaps and encompasses a cumulative 50% volume-based particle diameter D50 of the granular aggregate containing at least one metal selected form the group consisting of cobalt and nickel is 1µm or greater, meeting the limitation of the instant Claim.
See MPEP 2144.05. In cases where 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).
Regarding Claim 27, modified Takuya et al. ‘113 teaches the limitations set forth above. Yamaguchi et al. ‘774 further teaches adding carbon to create a reducing atmosphere during roasting (meeting the limitation for thermal treatment) at [0018], meeting the limitation of the instant Claim.
Regarding Claim 28, modified Takuya et al. ‘113 teaches the limitations set forth above. Yamaguchi et al. ‘774 further teaches adding carbon to create a reducing atmosphere during roasting (meeting the limitation for thermal treatment) at [0018], meeting the limitation of the instant Claim.
Regarding Claim 31, modified Takuya et al. ‘113 teaches the limitations set forth above. Yamaguchi et al. ‘774 further teaches a product in which cobalt is concentrated is magnetically sorted and recovered from a pulverized product of a thermally treated product obtained in a pulverizing step [0055-0056, 0084-0085], meeting the limitations of the instant Claim.
Claims 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Takuya et al. JP 2016186113 A in view of Yamaguchi et al. JP 2014199774 A and Yasuda et al. US 20010054331 A1 as applied to Claims 16, 19, 21-23, 27-28, and 31-32 above, further in view of Hayashi et al. JP 2016089209 A.
Regarding Claims 11-12 and 24, modified Takuya et al. ‘113 teaches the limitations set forth above and teaches crushing and sieving at [0024] but does not expressly teach wet magnetic sorting or give a specific flux density.
However, Hayashi et al. ‘209 teaches a method of recovering cobalt from lithium ion secondary batteries which includes wet magnetic sorting and wherein a magnetic flux density of a magnet in the magnetic sorting is between 500 and 3,000 Gauss (0.05 and 0.3 Tesla) [0024] lying within the range of the instant claim of 0.01 tesla or higher but 2 tesla or lower.
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to perform wet magnetic sorting at the flux density taught in Hayashi et al. ‘209 in order to efficiently recover cobalt from the material of Takuya et al. ‘113 based on the teachings of Hayashi et al. ‘209 at [0007], meeting the limitations of the instant Claim.
Regarding Claim 25, modified Takuya et al. ‘113 teaches the limitations set forth above. Yamaguchi et al. ‘774 but does not expressly teach wet magnetic sorting.
However, Hayashi et al. ‘209 teaches a method of recovering cobalt from lithium ion secondary batteries which includes wet magnetic sorting with 2.5 g dispersant in a 500 mL slurry (5000 mg/L) [0024].
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to perform wet magnetic sorting at the dispersant concentration taught in Hayashi et al. ‘209 in order to efficiently recover cobalt based on the teachings of Hayashi et al. ‘209 at [0007], meeting the limitations of the instant Claim.
Response to Arguments
Applicant's arguments filed 01/30/2026 have been fully considered but they are not persuasive.
The claims may be finally rejected if, in the opinion of the examiner, they are clearly open to rejection on grounds of record. See MPEP 706.07(a). Applicant argues the original rejections do not meet an initial burden of presenting a prima facie case of unpatentability with respect to the amended claims. Nonetheless, as necessitated by Applicant’s amendment to the claims filed 01/30/2026, the instant Claims are herein finally rejected under additional grounds.
Takuya et al. ‘113 sets forth at [0022] “The above lithium-ion battery recycling material (meeting the limitation for the lithium ion secondary battery or the positive electrode material thereof) can be roasted by a method already known.” As set forth above, it would have been obvious to one having ordinary skill in the art at the time of filing the invention to conduct the roasting of Takuya et al. ‘113 in an inert atmosphere in order to minimize oxidation of the materials and maximize the yield of nickel and cobalt recovered.
The teachings in Takuya et al. ‘113 at [0051] of a reducing atmosphere does not negate the obviousness for persons of ordinary skill in the art at the time of filing the invention to thermally treat the lithium ion secondary battery or the positive electrode material thereof in an inert atmosphere in order to minimize oxidation of the materials and maximize the yield of nickel and cobalt recovered based on the teachings of Yasuda et al. ‘331 at [0026].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
JP 5569457 B2 teaches heat treating waste lithium ion battery in nitrogen, an inert atmosphere.
US 9359659 B2 teaches heat treating waste lithium ion battery by roasting in a number of processing atmospheres including inert atmosphere.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORIAH S. SMOOT whose telephone number is (571)272-2634. The examiner can normally be reached M-F 8:30am - 5pm EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
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