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 1, 13, and 14. Claims 2, 6-8, and 15 are cancelled. A new matter rejection is presented below.
Information Disclosure Statements
The information disclosure statements (IDS) submitted on 09/20/2022, 11/09/2023, 05/09/2024, 04/01/2025, 08/22/2025, 12/11/2025, and 04/07/2026 have been considered by the examiner.
Response to Amendment
Responsive to communications filed on 08/04/2026, amendments to the claims have been acknowledged.
The rejections over Ishida et al. JP 2026033232 A are maintained under additional grounds necessitated by amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-5, 9-10, 13-14, and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 and Claim 14 recite in Line 5 “adding a sulfurizing agent.” The instant Specification references a “sulfating agent.” Appropriate correction is required to address this addition of new matter. There is no support for “sulfurizing agent” in the original disclosure.
Claims 3-5, 9-10, 13, and 16 are rejected for their dependency on a rejected claim.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. JP 2016033232 A in view of Higaki et al. US 20200232066 A1.
Regarding Claim 1, Ishida et al. ‘232 teaches a method comprising a leaching step of obtaining a leachate by subjecting the alloy to a leaching treatment with acid, a reduction step of subjecting the leachate to reduction treatment using a reducing agent to obtain a solution [0013], and a solvent extraction step of obtaining a solution comprising nickel and/or cobalt by subjecting the solution obtained in the reduction step to a phosphate-based extractant (meeting the limitation for a phosphorous compound-based extractant) to extract zinc. While Applicant has pointed out the previously cited pH range referenced the leaching step in Ishida et al. ‘232, it remains that Ishida et al. ‘232 teaches in the solvent extraction step, the pH of the solution obtained in the reduction step is adjusted to a range of 1 or more and 3 or less prior to solvent extraction [0070], overlapping the instantly claimed range of 2.5 to 5.0.
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). Further, A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap but are merely close. See MPEP 2144.05(I).
Ishida et al. ‘232 further teaches an oxidation and neutralization step of adding an oxiding agent to the solution obtained in the reduction step and then adding a neutralizing agent to form a precipitate comprising iron and phosphorous, and separating the precipitate to obtain a neutralized solution comprising nickel, cobalt, and zinc [0079, 104-107].
A reference is prior art for all that it teaches and Ishida et al. ‘232 does not teach away from the inclusion of a sulfurizing agent, but merely states the use of a sulfurizing agent is non-preferred due to high cost [0027]. See MPEP 2123 II. Ishida et al. ‘232 does not expressly teach a sequence of adding sulfating agent before adding acid.
However, Higaki et al. ‘066 teaches adding sulfurizing agent (meeting the limitation for a sulfating agent) to a metal alloy comprising nickel and/or cobalt, copper, and zinc prior to adding acid yields a solid sulfide precipitate [0033-0036].
Though Higaki et al. ‘066 seeks to selectively leach copper, the extraction of zinc is an intended use of Claim 1 and additionally, it would have been obvious to one having ordinary skill in the art at the time of filing the invention to add a sulfurizing agent (meeting the limitation of a sulfating agent) to the metal alloy of Ishida et al. ‘232 prior to adding acid, in order to solidify the leachate and achieve selective separation of zinc.
Regarding Claims 3-4, Ishida et al. ‘232 teaches solvent extraction with phosphoric acid and teaches re-acidifying the neutralized solution for further extraction [0013]. Modified Ishida et al. ‘232 teaches back extraction of zinc, and obtaining zinc-containing post-back-extraction extractant and solution, and recycling of the back extractant [0074, 0113-0117], meeting the limitations of the instant Claims.
Regarding Claims 5 and 9-10, modified Ishida et al. ‘232 teaches the limitations set forth above. Ishida et al. ‘232 at [0001] and Higaki et al. ‘066 at [0002] teach treating an alloy obtained by melting a waste battery of a lithium-ion battery, meeting the limitations of the instant Claims.
Regarding Claim 13, Applicant has pointed out the previously cited pH range referenced the leaching step in Ishida et al. ‘232. Nonetheless, it remains that Ishida et al. ‘232 teaches in the solvent extraction step, the pH of the solution obtained in the reduction step is adjusted to a range of 1 or more and 3 or less prior to solvent extraction [0070], overlapping the instantly claimed range of 2.5 to 4.5.
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). Further, A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap but are merely close. See MPEP 2144.05(I).
Regarding Claim 14, Ishida et al. ‘232 teaches a method comprising a leaching step of obtaining a leachate by subjecting the alloy to a leaching treatment with acid, a reduction step of subjecting the leachate to reduction treatment using a reducing agent to obtain a solution [0013], and a solvent extraction step of obtaining a solution comprising nickel and/or cobalt by subjecting the solution obtained in the reduction step to a phosphate-based extractant (meeting the limitation for a phosphorous compound-based extractant) to extract zinc. Applicant has pointed out the previously cited pH range referenced the leaching step in Ishida et al. ‘232. Nonetheless, it remains that Ishida et al. ‘232 teaches in the solvent extraction step, the pH of the solution obtained in the reduction step is adjusted to a range of 1 or more and 3 or less prior to solvent extraction [0070], overlapping the instantly claimed range of 2.5 to 4.5.
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). Further, A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap but are merely close. See MPEP 2144.05(I).
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).
Ishida et al. ‘232 teaches solvent extraction with phosphoric acid and teaches re-acidifying the neutralized solution for further extraction [0013]. Modified Ishida et al. ‘232 teaches back extraction of zinc, and obtaining zinc-containing post-back-extraction extractant and solution, and recycling of the back extractant [0074, 0113-0117], meeting the limitations of the instant Claim.
Ishida et al. ‘232 further teaches an oxidation and neutralization step of adding an oxiding agent to the solution obtained in the reduction step and then adding a neutralizing agent to form a precipitate comprising iron and phosphorous, and separating the precipitate to obtain a neutralized solution comprising nickel, cobalt, and zinc [0079, 104-107].
A reference is prior art for all that it teaches and Ishida et al. ‘232 does not teach away from the inclusion of a sulfurizing agent, but merely states the use of a sulfurizing agent is non-preferred due to high cost [0027]. See MPEP 2123 II. Ishida et al. ‘232 does not expressly teach a sequence of adding sulfating agent before adding acid.
However, Higaki et al. ‘066 teaches adding sulfurizing agent (meeting the limitation of a sulfating agent) to a metal alloy comprising nickel and/or cobalt, copper, and zinc prior to adding acid yields a solid sulfide precipitate [0033-0036].
Though Higaki et al. ‘066 seeks to selectively leach copper, the extraction of zinc is an intended use of Claim 1 and additionally, it would have been obvious to one having ordinary skill in the art at the time of filing the invention to add a sulfurizing agent to the metal alloy of Ishida et al. ‘232 prior to adding acid, in order to solidify the leachate and achieve selective separation of zinc. Based on the teachings of Higaki et al. ‘066 at [0033]. See MPEP 2141.01(a) I. “[A] reference need not be from the same field of endeavor as the claimed invention in order to be analogous art.” Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Regarding Claim 16, modified Ishida et al. ‘232 teaches the limitations set forth above. Ishida et al. ‘232 at [0001] and Higaki et al. ‘066 at [0002] teach treating an alloy obtained by melting a waste battery of a lithium-ion battery, meeting the limitations of the instant Claim.
Response to Arguments
Applicant's arguments filed 08/04/2026 have been fully considered but they are not persuasive.
Applicant argues Ishida et al. ‘232 teaches away from the addition of a sulfurizing agent. However, a reference is prior art for all that it teaches and Ishida et al. ‘232 does not teach away from the inclusion of a sulfurizing agent, but merely states the use of a sulfurizing agent is non-preferred due to high cost [0027]. See MPEP 2123 II.
Applicant has pointed out the previously cited pH range referenced the leaching step in Ishida et al. ‘232. It remains that Ishida et al. ‘232 teaches in the solvent extraction step, the pH of the solution obtained in the reduction step is adjusted to a range of 1 or more and 3 or less prior to solvent extraction [0070], overlapping the instantly claimed range of 2.5 to 4.5. Applicant argues the claimed range does not significantly overlap the cited range. However, the claimed range overlaps the correctly cited range and it remains that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap but are merely close. See MPEP 2144.05(I). "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Ishida et al. ‘232 teaches solvent extraction with phosphoric acid and teaches re-acidifying the neutralized solution for further extraction [0013]. As set forth above, Higaki et al. ‘066 teaches adding sulfurizing agent (meeting the limitation of a sulfating agent) to a metal alloy comprising nickel and/or cobalt, copper, and zinc prior to adding acid yields a solid sulfide precipitate [0033-0036].
Though Higaki et al. ‘066 seeks to selectively leach copper, the extraction of zinc is an intended use of Claim 1 and it would have been obvious to one having ordinary skill in the art at the time of filing the invention to add a sulfurizing agent to the metal alloy of Ishida et al. ‘232 prior to adding acid, in order to solidify the leachate and achieve selective separation of zinc. Based on the teachings of Higaki et al. ‘066 at [0033]. See MPEP 2141.01(a) I. “[A] reference need not be from the same field of endeavor as the claimed invention in order to be analogous art.” Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
JP 60121236 A teaches back extraction to remove zinc from solvent.
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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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
