DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Status of Claims
Claims 3-5, 8-9, 11-12, 14-16 and 35 are currently under examination. Claims 19-24, 30, 32 are withdrawn from consideration. Claims 1-2, 6-7, 10, 13, 17-18, 25-29, 31 and 33-34 have been cancelled. Claim 35 is newly added. Claims 3-5 and 11-12 are amended.
Previous Grounds of Rejection
In the light of the amendments, the objection is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is withdrawn.
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Shukutani et al. (JP 2013-187142 A applicants submitted in IDS; IP.com Machine-generated English translation is attached and cited for page.) with respect to claims 1 and 5 is withdrawn Among them, claim 1 has been cancelled.
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over Shukutani et al. and in view of Iida et al. (JP 2011-124127 A applicants submitted in IDS) with respectfully to claims 2-4, 8-9, 11-12 and 14-15 is withdrawn. Among them, claim 2 has been cancelled.
In the light of the amendments, the rejection under 35 U.S.C. 103 as being unpatentable over the combined references of Shukutani et al. as applied to claim 1 above, and in view of Tani et al. (JP H11-167936 A applicants submitted in IDS; IP.com Machine-generated English translation is attached) with respect to claim 16 is withdrawn.
New grounds of rejections are set forth below.
New Grounds of Rejections
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 4 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.
Claim 4 recites the limitation "the lithium ion secondary battery finishes igniting" in line 1. There is no the igniting step in the precede step in the claim 4. An appropriated correction is required.
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.
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.
Claims 3-5, 8-9, 11-12, 14-15 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Shukutani et al. (JP 2013-187142 A applicants submitted in IDS; IP.com Machine-generated English translation is attached and cited for page.), and in view of Iida et al. (JP 2011-124127 A applicants submitted in IDS; IP.com Machine-generated English translation is attached).
Regarding claims 3-4, Shukutani et al. teach a method for recovering lithium comprising thermally treating a lithium ion secondary battery (Abstract, page 2). The secondary battery used generates a high voltage. Recovering process cannot performed efficiently due to a long period of time for the discharging the battery (page 4).
Although Shukutani et al. do not specifically disclose a lithium ion secondary battery having a residual voltage higher than or equal to 80% of a normal voltage as per applicant claims 3-4, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to use the secondary battery having a residual voltage higher than or equal to 80% of a rated voltage as specified in the claims 3-4, motivated by the fact that it improves the efficiency of the recovering process (page 4).
The battery pack that has been subjected to the heat treatment is crushed (the instant claimed pulverizing the thermally treated product), magnetic sorting, and then converting lithium hydroxide (the recovering lithium from the pulverized product).
Although Shukutani et al. do not specifically disclose the heating temperature between 350 0C and 430 0C as per applicant claims 3-4, Iida et al. a method for recovering metal from battery pack comprising thermal treatment at first temperature at about 500 0C, pulverization, washing sieving, sorting and collecting steps (pages 3 and 8-11).The first roasting temperature is appropriately selected as the time required for the disappearance of the resin material in the battery pack. It is confirmed that a valuable metal element is efficiently recovered by setting the first roasting temperature and time (page 8).
The references differ from Applicant's recitations of claims by not disclosing identical ranges (temperature between 350 0C and 430 0C vs about 500 0C). However, the reference discloses "overlapping" ranges or “close” range, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). “About” permits some tolerance. A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap and/or are close enough that one of ordinary skill in the art would have expected them to achieve the same heating results for thermal decomposition of the resin material in the battery pack. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.I.
Furthermore, according the instant specification, when thermal treatment was performed by elevating the temperature in the furnace from about 20° C to 430° C, ignition from the storing the temperature in the furnace rose from 700° C to 960° C in ten minutes ([0260]-[0262], PGPUB US 2023/0104457 A1). As such, the lithium ion secondary battery in the furnace is heated to the temperature from 700° C to 960° C.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the heating treatments including initial at temperature of about 500 0C taught by Iida et al. in the process taught by Shukutani et al to obtain the invention as specified in the claim 3-4 as an alternative heating treatments, and one of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary. It is motivated by the fact that it effectively using a heat source for heating, by controlling the first temperature (i.e., 500 0C, igniting the battery) to melt metal parts in the battery, and the second temperature at 800 0C (Iida et al., pages 8-9).
Since both of Shukutani et al. and Iida et al. teach recovering lither from battery comprising heating treatments, one would have a reasonable expectation of success.
Since the combined references of Shukutani et al. and Iida et al. teach all of the claimed reagents, composition and method of recovering Li, the physical properties of the thermally treating lithium ion secondary battery (i.e., igniting and further thermally treated at 750-1085 0C) would necessarily follow as set forth in MPEP 2112.01(II).[1]
Regarding claim 5, the process taught by Shukutani et al comprises heating the second lithium battery in a heat treatment tank (the instant claimed storing container).
Regarding claim 8, the process taught by the combined references of Iida et al and Shukutani et al comprises heating the second lithium battery in a heat treatment tank and melting metal parts in the battery (Iida et al., pages 8-9). As such, a melting point of the heat treatment tank is higher than a temperature at which the battery.
Regarding claim 9, the process taught by the combined references of Iida et al and Shukutani et al comprises a flame in a gas heating burner (Iida et al. pages 8-9).
Regarding claim 11, the process taught by the combined references of Iida et al and Shukutani et al comprises pulverizing, washing, vibration sieving, screen, magnetic sorting, magnetic separating, washing with water to convert lithium hydroxide, and collecting steps as the instant claims (Iida et al., pages 5-6 and 11-12; Shukutani et al. page 7).
The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to pulverizing, classifying the pulverized product (sieving, screen, sorting) to obtain a coarse-grained and a fine-grained product, since it has been held to be within the general skill of a worker in the arts of Shukutani et al. and Iida et al. to select materials on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 U.S.P.Q 416.
Regarding claim 12, the process taught by the combined references of Iida et al and Shukutani et al comprises pulverizing, washing with water to convert lithium hydroxide as the instant claim (Shukutani et al., page 7).
Regarding claims 14-15, the process taught by the combined references of Iida et al and Shukutani et al comprises pulverizing, washing, vibration sieving, screen, magnetic sorting, magnetic separating, washing with water to convert lithium hydroxide, and collecting steps (Iida et al., pages 11-12; Shukutani et al. page 7). As such, after magnetic sorting, the magnetically attractable metals such as Co and Ni are separated from non-magnetically materials as the instant claim.
Regarding claim 35, as discussed above, since the combined references of Shukutani et al. and Iida et al. teach all of the claimed reagents, composition and method of recovering Li, the physical properties of the thermally treating lithium ion secondary battery (i.e., igniting and further thermally treated at 750-1085 0C) would necessarily follow as set forth in MPEP 2112.01(II).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over the combined references of Shukutani et al. as applied to claim 1 above, and in view of Tani et al. (JP H11-167936 A applicants submitted in IDS; IP.com Machine-generated English translation is attached).
Regarding claim 16, as discussed above, the process taught by the combined references of Iida et al and Shukutani et al comprises the recovering from electrolyte (Shukutani et al., page 3).
Although the combined references of Shukutani et al. and Iida et al. do not specifically disclose removing fluorine as per applicant claim 16, Tani et al. slaking lime solution having calcium hydroxide to react with the electrolyte separated in the electrolyte separation step and filtered the resulting reaction solutions to obtain CaF2 (page 4, and claim 8-9).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the lime solution taught by Tani et al. in the combined references taught by Shukutani et al and Iida et. al. as an alternative treatment an electrolyte containing the fluorine to obtain the invention as specified in the claim 16, and one of ordinary skill in the art would expect to achieve the same beneficial results and same function, absent evidence to the contrary.
Since all Shukutani et al., Iida et al and Tani et al. of teach recovering lithium from battery, one would have a reasonable expectation of success.
Response to Arguments
With regards to the previous Grounds of Rejection
Applicant's arguments with respect to claims 3-5, 8-9, 11-12, 14-16 and 35 filed on 12/05/2025 have been considered but are moot in view of the new grounds of rejection.
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 YUN QIAN whose telephone number is (571)270-5834. The examiner can normally be reached Monday-Thursday 10:00am-4:00pm.
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YUN . QIAN
Examiner
Art Unit 1732
/YUN QIAN/Primary Examiner, Art Unit 1738
[1][1] “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).