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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/2025 has been entered.
Response to Amendment
The amendment filed on 12/29/2025 has been entered. Claim(s) 1, 3-7, 10, 12-13, 15-17, 19-25 is/are pending in the application. Applicant’s amendments to the claims have overcome each and every objection and/or 112(b) rejection previously set forth in the office action mailed 11/18/2025.
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.
Claim(s) 1, 3-7, 10, 12-13, 15-17, 19-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (CN103526035A) in view of Toyotomi et al. (JP2002060852A).
Regarding Claims 1, 3, 7, and 19-21 and 23, Xiao teaches a method of recycling valuable metals from waste lithium-ion batteries (abstract, reading on claims 7 and 19-20) or other materials containing Cu, Co and Ni where the material undergoes reduction melting (abstract);
Separating the Cu-Co-Ni alloy and slag [0048];
Where the source of waster material may be one or more of copper smelting slag [0010-0014] where the composition of the waste batteries are 1-40% Fe, 5-10% Co, and 2-2.5% NI [0033], this is equivalent to a calculated grade of 0.2-0.6, overlapping with the claimed range of 0.32-0.9 and the claim 21 range of 0.34-0.9 and the claim 23 range of 0.360-0.90. In the case where a claimed range overlaps with a range taught by the prior art, a prima facie case of obviousness exists. (See MPEP 2144.05(I))
While the prior art teaches a reductive melting treatment; the prior art is silent regarding performing an oxidation treatment before reducing. However, Toyotomi teaches a method of recycling copper by melting and separation (abstract) where oxidation treatment may be performed first to oxidize impurities such as sulfur to collect in the form of slag [0043] which is followed by a reduction melting treatment to minimize oxygen content in the copper to less than 350 ppm [0045]. Therefore, one of ordinary skill in the art would have been motivated to modify the method of Xiao to perform oxidation treatment before reduction melting for the purpose of removing impurities such as sulfur from the copper containing scrap.
Regarding claims 4 and 10, the oxidation takes place in a furnace which is considered oxidative roasting [0041]
Regarding claims 5 and 11-13, the reduction occurs with graphite as a reducing agent [0017];
Regarding claims 6 and 15-17, 22 and 24-25, the reduction takes place at 1400-1600 C [0017] or simply above 1300 C [0044], overlapping with the claimed range 1300-1450 C. In the case where a claimed range overlaps with a range taught by the prior art, a prima facie case of obviousness exists. (See MPEP 2144.05(I)).
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
Applicant provides declarations filed 12/29/2025, which argues that while the prior art teaches a “theoretical” range of copper grade of 0.2-0.6 based on the starting composition of Cu 5-10%, Co 5-16%, Ni 2-2.5%; where applicant argues that since recovery rates of the alloy are taught to be 95% or greater, and an exemplary recovery rate of 96.9% Cu, 98.1% Co, and 96.8% Ni to the working examples 1-4 in Xiao, a theoretical copper grade range would be 0.296-0.305, not the theoretical range of 0.2-0.6, which does not overlap; further the actual working examples of Xiao have a starting composition of 0.296-0.305 outside of the claimed range. Further applicant argues that the claimed range of 0.32-0.9 enables processing at reduced temperatures evidenced by comparative examples 7 and 8 where a copper grade below 0.32 yields a higher melting temperature.
This is not persuasive. First, a prior art reference is relevant for all that it teaches, not just working examples; disclosed examples do not constitute a teaching away from a broader disclosure (See MPEP 2123 (I-II)); the prior art broad teaching of the composition of the waste batteries being 1-40% Fe, 5-10% Co, and 2-2.5% NI [0033] is equivalent to a calculated copper grade of 0.2-0.6; this is the relevant teaching relied upon, and the cited working examples are not considered to teach away from this broad teaching of the prior art. Second, applicant calculates copper grades using disclosed recovery rates, however, the claimed grade is for the reduced alloy product, before separation to recover the alloy; and the prior art teaching relied upon is the copper grade based on the starting material.
Last, the allegation of unexpected results from the claimed range is not persuasive when compared with the prior art range. Applicant’s data shows a Cu grade range of 0.32 or less yields an inferior melting range; however, the prior art range is 0.2-0.6, and the overlap of the claimed range lies in the majority of the prior art range; and the alleged unexpected property of a lower melting point would be present in the overlapping range of 0.32-0.6.
Conclusion
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/RICARDO D MORALES/Examiner, Art Unit 1738