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 .
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.
Claims 1-16 are 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 1 recites “in a coexistence of a sulfating agent” in Line 5. While there is literal support for “coexistence” at least at [0035] of the instant Specification, it is unclear the nexus between the alloy, acid, and sulfating agent. Appropriate correction is required to establish a concrete actionable and repeatable method step as it pertains to the addition of, or presence of a sulfating agent.
Claim 1 recites “the sulfating agent is added first to the alloy and the acid is then added” in Lines 11-12. In part due to the use of the word “coexistence,” it is unclear whether the acid is added simultaneously with the sulfating agent, prior to the sulfating agent, after the sulfating agent, or some other meaning. The phrasing “is then added” further renders the claim unclear as to what entity the acid is added. Appropriate correction is required to establish positive active claim language to articulate any sequence of actionable and repeatable method steps.
Claim 1 recites “and then the solution is subjected to the solvent extraction” in Line 14 which presents the following issues of clarity:
“the solution” in Line 14 lacks proper antecedent basis as “a solution” in Line 7 is later referred to in Lines 9 and 13 as “the solution obtained in the reduction step.” It is unclear which “solution” is being referenced in Line 14.
Because “the solution obtained in the reduction step” in Line 14 is subjected to solvent extraction at Line 9, it is grammatically unclear the meaning of “and then” in terms of a sequence of method steps. Appropriate correction is required to establish within Claim 14 any order or sequence of actionable and repeatable method steps.
Claim 3 recites “a post-extraction solution” in Line 4 and Claim 6 recites “a post-extraction solution” in Line 4 which lacks literal antecedent basis. Previous mention is to “a post-back-extraction extractant.” Examiner notes the instant Specification describes “a post-back-extraction extractant and a post-back-extraction solution” at [0038]. Appropriate correction is required to make reference to any extractant or solution.
Claim 4 and Claim 7 recite “the acidic phosphorus compound-based extractant after back extraction is repeatedly used as the acidic phosphorous compound-based extractant in the solvent extraction step.” As used in the instant Claims, the word “repeatedly” is a relative term rendering the Claims indefinite. As back extraction is already a repeat use of the acidic phosphorous compound-based extractant, it is unclear how many times the action of Claim 4 and Claim 7 is conducted. The use of the word “repeatedly” is inherently repetitive as written regarding “back extraction”, rendering the Claims unclear as to how many times the solvent extraction step is ‘repeated.’ Appropriate correction or explanation is required.
Claim 13 recites “and then the solution is subjected the solvent extraction.” Applicant is encouraged to use consistency in reference to “a solvent extraction step” in Claim 1 Line 8. It is unclear whether the “solution” of Claim 13 is subjected to the solvent extraction step of Claim 1 Line 8 or some other “solvent extraction” process. Appropriate correction is required. Additionally, the phrase “and then” renders it unclear whether pH of the solution obtained in the reduction step is adjusted simultaneously with solvent extraction, prior to solvent extraction, after solvent extraction, or some other meaning. Appropriate correction is required to establish positive active claim language to articulate any sequence of actionable and repeatable method steps.
Claim 14 recites “the sulfating agent is added first to the alloy and the acid is then added” in Lines 10-11. In part due to the use of the word “coexistence,” it is unclear whether the acid is added simultaneously with the sulfating agent, prior to the sulfating agent, after the sulfating agent, or some other meaning. The phrasing “is then added” further renders the claim unclear as to what entity the acid is added. Appropriate correction is required to establish positive active claim language to articulate any sequence of actionable and repeatable method steps.
Claim 14 recites “a solution” in Line 6 and “a solution comprising nickel and/or cobalt” in Line 7. Claim 15 recites “obtaining a solution comprising nickel and/or cobalt” in Line 2 and “the obtained solution” in Line 4. It is unclear whether “the obtained solution” in Line 4 is the same, or different from the “solution” of Claim 14, other mentions of “solution” in Claim 15, or some other meaning. Appropriate correction is required to clearly set forth the components of the claimed method steps.
Claims 2, 5-6, 8-12, 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, Notwithstanding the 112(b) rejections above, 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. 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 to 5 prior to solvent extraction [0061], 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).
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 Claim 2, Notwithstanding the 112(b) rejections above, modified Ishida et al. ‘232 teaches the limitations set forth above and Ishida et al. ‘232 further teaches an oxidation and neutralization step at [0079], meeting the limitations of the instant Claim.
Regarding Claims 3-4, Notwithstanding the 112(b) rejections above, 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 6-7, Notwithstanding the 112(b) rejections above, modified Ishida et al. ‘232 teaches repeat use of back extractant [0074], meeting the limitations of the instant Claims.
Regarding Claims 5 and 8-12, 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, 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 to 5 prior to solvent extraction [0061], 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).
Regarding Claim 14, Notwithstanding the 112(b) rejections above, 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. 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 to 5 prior to solvent extraction [0061], overlapping the instantly claimed ranges 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).
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 (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. Based on the teachings of Higaki et a l. ‘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 15, Notwithstanding the 112(b) rejections above, modified Ishida et al. ‘232 teaches the limitations set forth above. Ishida et al. ‘232 further teaches an oxidation and neutralization step at [0079], meeting the limitations of the instant Claim.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
JP 2015183232 A teaches recovering nickel and cobalt by sulfiding an acid solution.
JP 2014218697 A teaches a method of back extracting zinc.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733