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, 3, 7, and 11. Support for the amendments is found in the original filing. No new matter is presented.
Information Disclosure Statements
The information disclosure statements (IDS) submitted on 12/01/2022 and 06/26/2024 have been considered by the examiner.
Response to Amendment
Responsive to communications filed on 11/07/2025, amendments to the claims have been acknowledged.
The rejections over McCullough, Jr. et al. US 5264137 are maintained and new rejections over La et al. KR 102020238 B1 have been made necessitated by amendment.
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 1-11 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 the limitation "the cathode current collector" in Line 3. There is insufficient antecedent basis for this limitation in the claim and no mention of the source of a current collector. Appropriate correction is required.
Claims 2-11 are rejected for their ultimate 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 1-2 and 4-11 are rejected under 35 U.S.C. 103 as being unpatentable over La et al. KR 102020238 B1 in view of Song et al. KR 101731213 B1.
Regarding Claim 1, La et al. ‘238 teaches a method for recovering an active metal from a lithium secondary battery (Abstract). Notwithstanding the 112(b) rejection above, La et al. ‘238 teaches removing a cathode current collector from a waste cathode and obtaining cathode active material mixture including a lithium composite oxide from a waste cathode of the lithium secondary battery [0025, 0032]. La et al. ‘238 teaches recovering a lithium precursor by performing water washing treatment on the preliminary precursor mixture at [0009].
La et al. ‘238 further teaches forming a preliminary precursor mixture by reacting the cathode active material mixture with a reducing reaction gas but does not expressly teach the pressure of the gas applied [0009].
However, Song et al. ‘213 teaches a method for recovering active metal from a lithium secondary battery [0008] by reacting a cathode active material mixture with a reducing reaction gas under a pressure of 3 atm to 100 atm (approximately 3.03975 bar to 101.325 bar) [0035], overlapping the range of the instant Claim of 3 bar to 25 bar.
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to apply reducing gas in the method of La et al. ‘238 under a pressurized condition of 3 atm to 100 atm based on the teachings of Song et al. ‘213 in order to efficiently recover active metal from a lithium secondary battery. One of ordinary skill in the art at the time of filing the invention would have been motivated by a desire to effectively recover an active metal from a lithium secondary battery seek appropriate pressure values at which to react cathode active materials with reducing gas.
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 2, modified La et al. ‘238 teaches the limitations set forth above. La et al. ‘238 further teaches at [0053] that performed at 440 to 550 °C, overlapping the range of the instant Claim of 420 °C to 500 °C.
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 4, modified La et al. ‘238 teaches the limitations set forth above. La et al. ‘238 further teaches reacting cathode active material with reducing reaction gas is performed in a fluidized bed reactor [0014], meeting the limitations of the instant Claim.
Regarding Claim 5, modified La et al. ‘238 teaches the limitations set forth above. La et al. ‘238 further teaches the reducing reaction gas includes hydrogen and a carrier gas, and a concentration of hydrogen is 20% [0077], lying within the range of the instant Claim of 10 to 40 volume % hydrogen, meeting the limitations of the instant Claim.
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 6, modified La et al. ‘238 teaches the limitations set forth above. La et al. ‘238 further teaches the carrier gas is nitrogen [0077], meeting the limitation of the instant Claim.
Regarding Claim 7, modified La et al. ‘238 teaches the limitations set forth above. La et al. ‘238 further teaches at [0041] the cathode active material mixture can be prepared by pulverizing waste cathode to powder form (meeting the limitation of the instant Claim for dry pulverizing the waste cathode).
Regarding Claim 8, modified La et al. ‘238 teaches the limitations set forth above. La et al. ‘238 further teaches at [0052] the lithium composite oxide contains Ni, Co, or Mn, meeting the limitations of the instant Claim.
Regarding Claim 9, modified La et al. ‘238 teaches the limitations set forth above. La et al. ‘238 further teaches the preliminary precursor mixture comprises preliminary lithium precursor particles and transition-metal containing particles, and the transition metal-containing particles include Ni-containing particles, Co-containing particles and Mn-containing particles [0004, 0059], meeting the limitations of the instant Claim.
Regarding Claim 10, modified La et al. ‘238 teaches the limitations set forth above. La et al. ‘238 further teaches precipitating the transition metal-containing particles through the water washing treatment at [0062], meeting the limitation of the instant Claim.
Regarding Claim 11, modified La et al. ‘238 teaches the limitations set forth above. La et al. ‘238 further teaches recovering a transition metal precursor in a form of an acid salt by selectively treating the transition metal-containing particles with an acid solution at [0071], meeting the limitation of the instant Claim.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over La et al. KR 102020238 B1 in view of Song et al. KR 101731213 B1 as applied to Claims 1-2 and 4-11 above, further in view of Troegel DE 102016202458 A1.
Regarding Claim 3, modified La et al. ‘238 teaches the limitations set forth above. La et al. ‘238 teaches the step of reacting with the reducing reaction gas comprises supplying the reducing reaction gas into a reactor at a flow rate of 10 mL/min. La et al. ‘238 teaches an exemplary 1 hour heat treatment at [0076] during which reducing may take place [0044].
The teachings of La et al. ‘238 are not limited to a 1 hour reduction time. "[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). The one hour exemplary time is close to the claimed reaction time of less than 1 hour such that one of ordinary skill in the art at the time of filing the invention would expect the same or similar results to the instantly claimed range of less than 1 hour. See MPEP 2144.05.
Further, the teaching of La et al. ‘238 of reacting a cathode active material mixture for 1 hour overlaps the instantly claimed range of a reaction time of less than one hour.
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).
Additionally, Song et al. ‘213 teaches reacting a cathode active material mixture with a reducing reaction gas under a pressurized condition for 30 minutes to 3 hours at [0036], overlapping the range of the instant Claim of less than one hour.
It would have been obvious to modify the reducing reaction time of La et al. ‘238 in order to efficiently and economically recover an active metal from lithium secondary battery based on the teachings of Song et al. ‘213 at [0036].
Neither La et al. ‘238 nor Song et al. ‘213 expressly teach a flow rate of reducing gas.
However, Troegel ‘458 teaches a method of reacting active material from lithium ion batteries in a fluidized bed reactor [0053-0054] and teaches flow rates of up to 1 L per minute are suitable for the formation of a preliminary precursor mixture, overlapping the instantly claimed 5 to 50 mL/min per gram of the cathode active material mixture range. Though Troegel ‘458 reacts anode active material from spent lithium ion batteries, it remains analogous to the instantly claimed method of reacting cathode active material from spent lithium ion batteries as it utilizes the same type of reactor to recover active material from a lithium secondary battery. 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.
It would have been obvious to modify the reducing reaction time of La et al. ‘238 in order to efficiently recover an active metal from lithium secondary battery based on the teachings of Troegel ‘458 at [0053-0054].
Claims 1-2 and 4-11 are rejected under 35 U.S.C. 103 as being unpatentable over Na et al. KR 101897134 B1 in view of Song et al. KR 101731213 B1.
Regarding Claim 1, Na et al. ‘134 teaches a method for recovering an active metal from a lithium secondary battery [0004]. Notwithstanding the 112(b) rejection above, Na et al. ‘134 teaches removing the cathode current collector from a waste cathode and obtaining a cathode active material mixture including a lithium composite oxide from a waste cathode of the lithium secondary battery [0012]. Na et al. ‘134 teaches recovering a lithium precursor by performing water washing treatment on the preliminary precursor mixture [0010].
Na et al. ‘134 teaches forming a preliminary precursor mixture by reacting the cathode active material mixture with a reducing reaction gas but does not expressly teach the pressure of the gas applied [0013].
However, Song et al. ‘213 teaches a method for recovering active metal from a lithium secondary battery [0008] by reacting a cathode active material mixture with a reducing reaction gas under a pressure of 3 atm to 100 atm (approximately 3.03975 bar to 101.325 bar) [0035], overlapping the range of the instant Claim of 3 bar to 25 bar.
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to apply reducing gas in the method of Na et al. ‘134 under a pressurized condition of 3 atm to 100 atm based on the teachings of Song et al. ‘213 in order to efficiently recover active metal from a lithium secondary battery. One of ordinary skill in the art at the time of filing the invention would have been motivated by a desire to effectively recover an active metal from a lithium secondary battery seek appropriate pressure values at which to react cathode active materials with reducing gas.
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 2, modified Na et al. ‘134 teaches the limitations set forth above. Na et al. ‘134 further teaches at [0041] that reduction is performed at 100 to 500 °C, overlapping the range of the instant Claim of 420 °C to 500 °C.
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 4, modified Na et al. ‘134 teaches the limitations set forth above. Na et al. ‘134 further teaches reacting cathode active material with reducing reaction gas is performed in a fluidized bed reactor [0013], meeting the limitations of the instant Claim.
Regarding Claim 5, modified Na et al. ‘134 teaches the limitations set forth above. Na et al. ‘134 further teaches the reducing reaction gas includes hydrogen and a carrier gas, and a concentration of hydrogen is 20% [0064], lying within the range of the instant Claim of 10 to 40 volume % hydrogen, meeting the limitations of the instant Claim.
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 6, modified Na et al. ‘134 teaches the limitations set forth above. Na et al. ‘134 further teaches the carrier gas is nitrogen or argon [0047], meeting the limitation of the instant Claim.
Regarding Claim 7, modified Na et al. ‘134 teaches the limitations set forth above. Na et al. ‘134 further teaches at [0012] the cathode active material mixture can be prepared by pulverizing waste cathode to powder form (meeting the limitation of dry pulverizing the waste cathode).
Regarding Claim 8, modified Na et al. ‘134 teaches the limitations set forth above. Na et al. ‘134 further teaches at [0048, 0050] the lithium composite oxide contains Ni, Co, or Mn, meeting the limitations of the instant Claim.
Regarding Claim 9, modified Na et al. ‘134 teaches the limitations set forth above. Na et al. ‘134 further teaches the preliminary precursor mixture comprises preliminary lithium precursor powders and transition-metal containing powders, and the transition metal-containing powders include Ni-containing powders, Co-containing powders and Mn-containing powders (meeting the limitation for particles) [0004, 0040], meeting the limitations of the instant Claim.
Regarding Claim 10, modified Na et al. ‘134 teaches the limitations set forth above. Na et al. ‘134 further teaches precipitating the transition metal-containing particles through the water washing treatment at [0055], meeting the limitation of the instant Claim.
Regarding Claim 11, modified Na et al. ‘134 teaches the limitations set forth above. Na et al. ‘134 further teaches recovering a transition metal precursor in a form of an acid salt by selectively treating the transition metal-containing particles with an acid solution at [0058], meeting the limitation of the instant Claim.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Na et al. KR 101897134 B1 in view of Song et al. KR 101731213 B1 as applied to Claims 1-2 and 4-11 above, further in view of Troegel DE 102016202458 A1.
Regarding Claim 3, modified Na et al. ‘134 teaches the limitations set forth above. Na et al. ‘134, teaches the step of reacting with the reducing reaction gas comprises supplying the reducing reaction gas into a reactor at a flow rate of 10 mL/min. Na et al. ‘134 does teach an exemplary 2 hour heat treatment at [0064] during which reducing may take place.
The teachings of Na et al. ‘134 are not limited to a 2 hour reduction time. "[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).
Further, the teaching of Na et al. ‘134 of reacting a cathode active material mixture for 2 hours overlaps the instantly claimed range of a reaction time of less than one hour.
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).
Additionally, Song et al. ‘213 teaches reacting a cathode active material mixture with a reducing reaction gas under a pressurized condition for 30 minutes to 3 hours at [0036], overlapping the range of the instant Claim of less than one hour.
It would have been obvious to modify the reducing reaction time of Na et al. ‘134 in order to efficiently and economically recover an active metal from lithium secondary battery based on the teachings of Song et al. ‘213 at [0036].
Neither La et al. ‘238 nor Song et al. ‘213 expressly teach a flow rate of reducing gas.
However, Troegel ‘458 teaches a method of reacting active material from lithium ion batteries in a fluidized bed reactor [0053-0054] and teaches flow rates of up to 1 L per minute are suitable for the formation of a preliminary precursor mixture, overlapping the instantly claimed 5 to 50 mL/min per gram of the cathode active material range. Though Troegel ‘458 reacts anode active material from spent lithium ion batteries, it remains analogous to the instantly claimed method of reacting cathode active material from spent lithium ion batteries as it utilizes the same type of reactor to recover active material from a lithium secondary battery. 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.
It would have been obvious to modify the reducing reaction time of La et al. ‘238 in order to efficiently recover an active metal from lithium secondary battery based on the teachings of Troegel ‘458 at [0053-0054].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Each of the pending patent claims cited below recite methods for recovering an active metal from a lithium secondary battery, similar to the instant claims, but do not expressly recite a pressurized condition of 3 bar to 25 bar. Although the claims at issue are not identical, they are not patentably distinct from each other because a person of ordinary skill in the art at the time of filing the invention would look to the art for pressurized conditions suitable for recovering an active metal from lithium secondary battery, and would arrive at the instantly claimed method in view of Song et al. ‘213.
Claims 1 and 8-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-16 of U.S. P.G. Pub. US 20220395794 A1 in view of Song et al. ‘213. Copending Application No. 17/849,974 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. P.G. Pub. US 20220349022 A1 in view of Song et al. ‘213. Copending Application No. 17/855,444 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 6, 11-13, and 17 of U.S. P.G. Pub. US 20210115532 A1 in view of Song et al. ‘213. Copending Application No. 17/046,417 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, and 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-9, and 11 of U.S. P.G. Pub. US 20210028515 A1 in view of Song et al. ‘213. Copending Application No. 17/066,734 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 8, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 8, and 10-12 of U.S. P.G. Pub. US 20210273274 A1 in view of Song et al. ‘213. Copending Application No. 17/308,298 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, and 16 of U.S. P.G. Pub. US 20250207217 A1 in view of Song et al. ‘213. Copending Application No. 19/078,298 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. P.G. Pub. US 20220407133 A1 in view of Song et al. ‘213. Copending Application No. 17/889,608 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 11/07/2025 have been fully considered but they are not persuasive as to the 35 U.S.C. 103 rejections.
Applicant argues the presence of unexpected results regarding the claimed range of pressures applied to the cathode active material mixture. However, evidence of unexpected results must be commensurate in scope with the claimed invention. Song et al. ‘213 teaches at [0035] “The internal pressure of the furnace during the heat treatment is preferably 3 to 100 atm. If the pressure is less than 3 atm [approximately 3.03975 bar], the reduction reaction of the cathode material may occur insufficiently, and when the pressure exceeds 100 atm [approximately 101.325 bar], the reduction reaction is not increased, which is uneconomical.” (approximate conversion added).
The claims do not provide any information or limitation with respect to the yield; therefore, it remains that the reference teaches it would be effective to extract metal within the claimed range of pressures, 3 to 24 bar. Whether 88% yield or 98% yield, a lower percentage is not evidence that extraction does not work or would not provide desirable or functional results. Whether 24 bar or 26 bar, the claims do not provide patentable distinction based on the teachings of the reference. Applicant makes reference at Page 10 of the response to “efficient recovery” and “maximum yield.” As used, these are relative terms that encompass a wide and undefined rage of results. These terms are not reflected in the claims and additionally, these terms encompass all the results that are shown and would be expected from the teachings of the reference Song et al. ‘213. (3 to 100 atm).
Applicant has not differentiated so-called “efficient recovery” from the prior art method of La et al. ‘238 modified with the pressure ranges set forth in Song et al. ‘213. In other words, there is nothing to show that the results of the combination of references do not provide “efficient recovery” or “maximum yield.”
One of ordinary skill in the art at the time of filing the invention would have been motivated by a desire to effectively recover an active metal from a lithium secondary battery seek appropriate pressure values at which to react cathode active materials with reducing gas.
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, the comparative example of 88% would still be considered “efficient” and is higher than all but three of applicant’s own examples from Table 1 of the instant Specification [141] within the claimed pressure range and therefore is not evidence of unexpected results.
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 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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
Prosecution Insights