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 .
Response to Amendment
Claims 1-10, 14-15, 17, 19-21 are pending in the application.
The amendment filed 01/23/2026 has been entered but does not place the application in condition for allowance. The amendments to claims 2, 5-6, 14, 17, and 21 overcome the rejections to the original claims under 24 U.S.C. 112(b).
New rejections follow.
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 7-8 and 17 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 7 recites “wherein the carboxylic acid group-containing monomer is selected from the group consisting of …” and includes species fluromaleic acid, difluoromaleic acid, fluoroalkyl hydrogen maleate, methacryloyl fluoride as possible species options. The claim is indefinite, because these species contain fluorine, therefore the limitations contradict the limitations of claim 1, which recite the copolymeric binder comprises a structural unit (a) that can be derived from a monomer consisting of a carboxylic acid group-containing monomer, and also recites the copolymeric binder is free of fluorine and silicon.
Claim 8 recites “wherein the carboxylic acid salt group-containing monomer is selected from the group consisting of …” and includes species fluoromaleic acid salt, difluoro maleic acid salt as possible species options. The claim is indefinite, because these species contain fluorine, therefore the limitations contradict the limitations of claim 1, which recite the copolymeric binder comprises a structural unit (a) that can be derived from a monomer consisting of a carboxylic acid group-containing monomer, and also recites the copolymeric binder is free of fluorine and silicon.
Claim 17 recites “wherein the nitrile group-containing monomer is selected from the group consisting of …” and includes species α-halogenoacrylonitrile and α -fluoroacrylonitrile as possible species, which would include species that conflict with the limitations of claim 1 reciting a copolymeric binder comprising of structural unit (c) derived from the nitrile group-containing monomer and wherein the copolymeric binder is free of fluorine and silicon.
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.
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 1-10, 14-15, 17, 19, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ho (US 20180013181 A1) in view of Le (US 20080187838 A1). Supporting evidence is provided by Merriam-Webster, “agent” definition 2b.
Regarding claim 1, Ho teaches a method for removing (delaminating) cathode material from aluminum foil and anode material from copper foil (a composite of electrode coating from metal substrate) of lithium-ion batteries (Abstract) by immersing the composite into a phosphate buffer solution ([0144]). The phosphate buffer solution is a delamination solution, because Ho discloses that cathode material was detached from the aluminum foil and anode material fell off the copper foil after stirring the chopped lithium-ion batteries in the solution for 2 hours at 20°C ([0144]). Additionally, Ho explicitly states in [0024] that the phosphate buffer solution (i.e., the delamination solution) can comprise a delamination agent and an aqueous solvent, as claimed:
“In some embodiments, the polar solvent is a buffer solution comprising a salt selected from the group consisting of lithium carbonate, lithium bicarbonate, lithium phosphate, sodium carbonate, sodium bicarbonate, sodium phosphate, potassium carbonate, potassium bicarbonate, potassium phosphate, ammonium carbonate, ammonium bicarbonate, ammonium phosphate, and combinations thereof.” In the cited text, Ho specifically teaches that the phosphate buffer solution (i.e., delamination solution) can comprise sodium phosphate (an alkali metal phosphate) in water, which is an aqueous solvent ([0024], [0144]). The sodium phosphate is a chemically and physically active principle in the delamination solution, i.e., an agent as defined by evidentiary reference Merriam-Webster (“agent” definition 2b), and therefore reads on the limitation of an alkali metal phosphate that functions as a delamination agent. Ho further teaches that the electrode materials were uniformly spread onto metal substrates ([0138], [0139]), which presumably would have been applied to either one side or both sides of the metal substrate as claimed.
Ho further teaches that the electrode coating can comprise a water-based binder or a mixture of water-based and organic-based binder materials ([0102]) and that the water-based binder materials can include a monomer containing a carboxylic acid group, a sulfonic acid group, or a combination thereof ([107]), thereby corresponding to the claimed structural unit (a). Furthermore, the taught pH range of about 6 to about 8 of the phosphate buffer solution in paragraph ([0024]) is expected to result in at least partial neutralization of acid groups present and thus provide the presence of acid salt groups in addition to their corresponding acid groups.
Ho is silent regarding use of a specific copolymeric binder further comprising a structural unit (b) and a structural unit (c); wherein structural unit (b) is derived from an amide group-containing monomer, and wherein structural unit (c) is derived from a nitrile group-containing monomer.
Analogous art Le teaches use of a lithium polyacrylate binder in lithium-ion cells ([0010]) and teaches that it can be made from a copolymer formed of methacrylic acid or acrylic acid ([0032]), corresponding to structural unit (a). A copolymer is formed of more than one species of monomer, and Le discloses suitable options for monomers used to form acrylic acid (or methacrylic acid) copolymers, disclosing “useful monomers that can be used to form these copolymers include, for example, … acrylonitriles, acrylamides, N-alkyl acrylamides, N, N-dialkylacrylamides, … and the like” ([0032]). Therefore, Le contemplates an acrylic acid (or methacrylic acid) copolymer binder that further includes an amide group-containing monomer (corresponding to claimed structural unit (b)) and a nitrile group-containing monomer (corresponding to claimed structural unit (c)).
Le is analogous art, because Le discloses an invention related to electrode binders for lithium-ion cells, and Applicant’s invention claims features of a binder for a process claim and discloses in their specification that the binder pertains to electrode binders.
Le also discloses that the taught binder has the benefit of improved battery capacities compared to conventional polymeric binders ([0009]-[0010]). Le further teaches that copolymers with a significant mole fraction of acrylic acid is preferred for high water solubility ([0032]). Given that Ho discloses that their composite delamination method dissolves the binder in a polar solvent such as an aqueous solvent (Ho: [0017], [0022]-[0024], [0027]), and also discloses that using aqueous media or water as solvent offers advantages of simple operation and environmentally benign processes ([0078]), a skilled artisan at the time the invention was filed would have found it obvious to have chosen Le’s copolymeric binder as the binder in the delamination method of modified Ho because its high water solubility is suitable for use with the taught delamination method and for its advantages of improved battery capacities.
Within the modified method of Ho, the combination of prior art teaches the copolymeric binder can be free of fluorine and silicon. Regarding the monomers of the copolymeric binder: Le and Ho teach examples of monomers having a carboxylic acid group such as acrylic acid and methacrylic acid (corresponding to species of structural unit (a)) without fluorine or silicon (Ho: [0108]; Le: [0032]); Le teaches monomers acrylonitriles (corresponding to species of structural unit (c) without fluorine or silicon), acrylamides, N-alkyl acrylamides, N, N-dialkylacrylamides ([0032]) (corresponding to species of structural unit (b) without fluorine or silicon).
Regarding claim 2, the combination above teaches the method of claim 1, and Ho discloses the concentration of sodium phosphate (i.e., an alkali metal phosphate that is a delamination agent) can be 0.05 M in the phosphate buffer ([0144]), which is within the claimed range.
Regarding claim 3, the combination above teaches the method of claim 1, and as previously pointed out in addressing claim 2, Ho teaches the delamination agent is a sodium phosphate (monosodium phosphate) ([0144], [0024]), which is a claimed species. Ho additionally discloses potassium phosphate (monopotassium phosphate) ([0024]) as another suitable option for a delamination agent, which is also a claimed species.
Regarding claim 4, the combination above teaches the method of claim 1, and as previously pointed out in addressing claim 1, Ho teaches the aqueous solvent is water ([0144]).
Regarding claim 5, the combination above teaches the method of claim 1, Ho further teaches that an aqueous solvent can comprise water as the major component and a minor component that is a volatile solvent, wherein the proportion of water in the aqueous solvent is greater than 50% and at most 95% ([0080]) of the total amount of water and solvents other than water. Ho further teaches that the minor component can be methanol, ethanol, isopropanol, n-propanol, butanol, acetone, dimethyl ketone, methyl ethyl ketone, ethyl acetate, isopropyl acetate, and propyl acetate, and combinations thereof ([0081]), which are claimed species.
Regarding claim 6, the combination above teaches the method of claim 1. As previously pointed out in addressing the limitations of claim 1, Le of the combination teaches the binder that can be made from a copolymer of acrylic acid or methacrylic acid or their derivatives and other monomers such as acrylonitrile and acrylamides ([0032]) and further teaches the proportion of acrylic acid (used to form structural unit (a)) within the copolymeric binder is at least about 50 mol% ([0032]), which overlaps with the claimed range of about 15% to about 80% by mol. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In the case where the 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); see MPEP 2144.025.
Regarding claim 7, the combination above teaches the method of claim 1, and as previously pointed out in addressing claim 1, Le and Ho teach examples of monomers having a carboxylic acid group such as acrylic acid and methacrylic acid (Ho: [0108]; Le: [0032]).
Regarding claim 8, the combination above teaches the method of claim 1. As previously pointed out in addressing the limitations of claim 1, the taught pH range of about 6 to about 8 of the phosphate buffer solution within the combination (Ho: [0024]) is expected to result in at least partial neutralization of acid groups present and thus provide the presence of acid salt groups in addition to their corresponding acid groups, wherein the acid group can be carboxylic acid group-containing monomers such as acrylic acid, methacrylic acid.
Regarding claims 9-10, the combination above teaches the method of claim 1, wherein the limitations of claim 1 recite the carboxylic acid group-containing monomer can be selected from the group including a carboxylic acid group-containing monomer and other options. The combination of prior art teaches that the carboxylic acid-group-containing monomer can be acrylic acid or methacrylic acid, therefore, the prior art satisfies the limitations of claim 9-10.
Regarding claim 14, the combination above teaches the method of claim 1.
Le of the combination teaches the binder can be made from a copolymer of acrylic acid or methacrylic acid or their derivatives and monomers such as acrylonitrile and acrylamides ([0032]) and also discloses that water solubility can be a function of the copolymer composition, therefore composition of components, such as concentrations of components, is a result-effective variable. It would have been obvious to one of ordinary skill in the art to have adjusted the proportion of structural unit (b) derived from an amide group-containing monomer within the method of modified Ho as taught by Le to optimize the water solubility given that Ho discloses that their composite delamination method dissolves the binder in a polar solvent such as an aqueous solvent (Ho: [0017], [0022]-[0024], [0027]), and also discloses that using aqueous media or water as solvent offers advantages of simple operation and environmentally benign processes ([0078]).
Regarding claim 15, the combination above teaches the method of claim 13, and as pointed out previously in addressing claim 1, Le teaches the lithium polyacrylate binder can include monomers of acrylamides within the copolymer ([0032]), which would include the claimed species acrylamide.
Regarding claim 17, the combination above teaches the method of claim 16, including that the nitrile group-containing monomer is acrylonitrile ([0032]). Additionally, Le also discloses that water solubility can be a function of the copolymer composition, therefore composition of components, such as concentrations of components, is a result-effective variable. It would have been obvious to one of ordinary skill in the art to have adjusted the proportion of structural unit (c) derived from a nitrile group-containing monomer within the method of modified Ho as taught by Le to optimize the water solubility given that Ho discloses that their composite delamination method dissolves the binder in a polar solvent such as an aqueous solvent (Ho: [0017], [0022]-[0024], [0027]), and also discloses that using aqueous media or water as solvent offers advantages of simple operation and environmentally benign processes ([0078]).
Regarding claim 19, the combination above teaches the method of claim 1, and Ho further teaches the metal substrate upon which a cathode layer or an anode layer is formed ([0074]) can be made from a thin plate (sheet or foil) made of aluminum, copper, platinum, gold, or silver, which include claimed species ([0075]).
Regarding claim 21, the combination above teaches the method of claim 1. Ho further teaches immersing 0.5 kg of used lithium-ion battery in 5L of the delamination solution (about 5 kg for an aqueous buffer) ([0154]), which is about 0.1 or 10% the weight ratio which is within the claimed range. Additionally, Ho further discloses the composite can be immersed into the delamination solution at various temperature ranges, including below 30°C or about room temperature 14-24°C or above 35-100°C to increase separation efficiency, which overlap and/or are within the claimed range ([0094]-[0095]). In the case where the 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); see MPEP 2144.025.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Ho (US 20180013181 A1) in view of Le (US 20080187838 A1) as applied to claim 1 above, and further in view of Jones (US 20220209245 A1).
Regarding claim 20, the combination above teaches the method of claim 1 but does not teach that the metal substrate is in the form of a porous body.
Jones is relied upon to teach the use of a porous metal substrate for the same function as a current collector ([03] lines 20-22) that can be made of metals such as aluminum, iron, stainless steel, copper, nickel, and titanium ([017]). Jones discloses the porous metal substrate can have a thickness of 0.5 to 1000 microns ([019]) and be formed as a wire mesh with apertures/void spaces ([022]), therefore reading on the limitation that the metal substrate is in the form of a porous body having a three-dimensional network structure. Jones further teaches use of the porous current collector preferably lowers the overall weight of the electrode ([03] lines 21-22). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the modified method of Ho to have used a porous metal substrate as current collector for the advantages of reducing the total electrode weight. Jones is analogous art, because Jones teaches an invention pertaining to metal substrates for electrode coatings, which is pertinent to the composites contemplated for use with Applicant’s delamination method.
Response to Arguments
Applicant’s arguments with respect to Koyama have been considered but are moot because the new ground of rejection does not rely on Koyama as a reference.
In response to Applicant’s arguments over Ho (p19 -20 of Remarks 01/23/2026), Ho directly discloses the claimed features of the delaminated solution of claim 1 as pointed out in the prior art rejections. Therefore, a skilled artisan would have found it obvious to have incorporated them given that Ho directly suggests them. Furthermore, the Courts have established that "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004); see MPEP 2123, II. The Courts have also established that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Regarding Applicant’s arguments against method steps disclosed in Ho, such as use of mechanical agitation, but not disclosed in Applicant’s instant specification, the claimed method does not preclude use of mechanical agitation. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The present combination of Ho in view of Le provides the teaching, suggestion, and motivation to use monomers of acrylonitriles (corresponding to structural unit (c)) and acrylamides, N-alkyl acrylamides, N, N-dialkylacrylamides (corresponding to structural unit (b)) within a copolymer of acrylic acid or methacrylic acid (corresponding to structural unit (a)) (in [0032], Le discusses binders of the invention utilizing polymer or copolymer of acrylic acid or methacrylic acid or their derivatives, and further discloses “useful monomers that can be used to form these copolymers include… acrylonitriles, acrylamides, N-alkyl acrylamides, N, N-dialkylacrylamides, …”). Additionally, the suggestion and motivation for the combination has been fully discussed in the prior art rejection above.
It is the Examiner’s opinion that the method taught by modified Ho would be capable of delaminating composites wherein the coating comprises the claimed copolymeric binder, given that the taught copolymer with the claimed acrylic acid content would have sufficient water solubility (Le: [0032]) and given that Ho discloses that their composite delamination method dissolves the binder in a polar solvent such as an aqueous solvent (Ho: [0017], [0022]-[0024], [0027]).
In response to Applicant’s arguments that the prior art references are silent with respect to the presence of all three claimed structural units in the copolymeric binder, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to Applicant's argument that Le is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Le is analogous art because Le discloses an invention related to electrode binders for lithium-ion cells, and Applicant’s invention is claiming features of binders for a process claim and Applicant discloses in their specification that the binders pertain to electrode binders. Jones is analogous art, because Jones teaches an invention pertaining to metal substrates for electrode coatings, which is pertinent to the composites contemplated for use with Applicant’s delamination method.
Lastly, the Examiner respectfully asserts that Applicant’s claimed invention is to a delamination method; however, many of Applicant’s arguments pertain to details of the composite materials used with the method rather than steps of the method itself.
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.
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/G.L.L./Examiner, Art Unit 1726
/BACH T DINH/Primary Examiner, Art Unit 1726 05/01/2026
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