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 .
DETAILED ACTION
Applicant elected Species 3, claims 1-9, 12-13, and 15-20 with traves. The traves is based on that 1) Species 1 and Species 2 are compatible, but not mutually exclusive; 2) Species 3 and Species 4 are specific embodiments, but not independent inventions; 3) Failure to Analyze Special Technical Features (STF).
In response,
The argument 1) is persuasive and the election/restriction requirement for Species 1 and Species 2 has been withdrawn.
The argument 2) is not persuasive since they related to treat different materials. The election/restriction requirement for Species 3 and Species 4 in the previous office action dated 7/16/2025 is still proper.
Regarding the argument 3), since there is no election/restriction requirement for different inventions, the “Analyze Special Technical Features (STF)” is not necessary.
Therefore, Claim 14 is withdrawn from consideration as non-elected claims, Claims 1-13 and 15-20 remain for examination, wherein claim 1 is an independent claim.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, and 10-13 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Hagiwara (US-PG-pub 2020/0354811 A1, thereafter PG’811).
Regarding claim 1, PG’811 teaches a manufacturing process for recovering valuable metal from the used battery pack by electronic furnace (Figs.1-2, par.[0002], and claims of PG’811), which reads on the method for recovering a valuable metal with an electronic furnace with electrode to generate an arc discharge (par.[0029] of PG’811) as claimed in the instant claim. PG’811 specify manufacturing process including charging raw material; heating and melting by electrode the raw materials to form an alloy and slag; separating the valuable metal (Figs.1-2, par.[0035]-[0058] of PG’811), which reads on all of the essential claimed manufacturing process steps as claimed in the instant claim. Therefore, claim 1 is anticipated by PG’811.
Regarding claim 3, PG’811 teaches applying electrodes with electric power from an unillustrated power source and applying the voltage to the electrodes generates an arc discharge, thereby heating (causing arc heating of) the target to be melted introduced into the furnace body and melting the target to be melted (par.[0029] and Figs.1 and 3-4 of PG’811), which reads on the claimed heating by electrodes and the electrode tip is not contact with the alloy formed as claimed in the instant claim.
Regarding claims 10 and 12, PG’811 teaches applying resin included in the battery pack BP functions as a reducing agent to reduce the an amount of the reducing agent (for example, coke) or amount of CO2 (Par.[0043] of PG’811), which reads on the claimed reductant and decreasing the amount of carbon in the raw material as claimed in the instant claims.
Regarding claim 11, PG’811 teaches applying flux for recovering the valuable metals (par.0003] of PG’811), which reads on the claimed flux as recited in the instant claim.
Regarding claim 13, PG’811 specify recovering the metal including Cu, Ni, and Ni (par.[0055] and [0069] of PG’811), which reads on the claimed valuable metal as recited in the instant claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 2 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over PG’811 in view of Maeba et al (JP 2014105348 A, with on-line translation, listed in IDS filed on 01/05/2023, thereafter JP’348).
Regarding claim 2, PG’811 teaches electric furnace includes wall (par.[0028] of Pg’811), but PG’811 does not specify the claimed wall cooling as claimed in the instant claim. However applying proper cooling for furnace wall is a well-known technique demonstrated by JP’348. JP’348 teaches a method of operating an electric furnace for ferronickel smelting, and more particularly, to protect the refractory by maintaining the coating amount adhering to the surface of the refractory constituting the furnace wall surface in a good condition with cooling water amount supplied to a furnace body periphery (Abstract, par.[0008], [0033], and Fig.9 of JP’348), which reads on the claimed cooling means for cooling the furnace wall (par.[0057] of US-PG-pub 2023/0250508 A1, corresponding to the instant specification of the instant application). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the well-known technique, that is cooling the electric furnace wall by cooling water, as demonstrated by JP’348 in the process of PG’811 since JP’348 indicates temperature control for the furnace wall by the cooling. (par.[0008] and [0033] of JP’348).
Regarding claim 15, which depends on claim 2, PG’811 in view of JP’348 is applied to the claim 2 as discussed above. PG’811 teaches applying electrodes with electric power from an unillustrated power source and applying the voltage to the electrodes generates an arc discharge, thereby heating (causing arc heating of) the target to be melted introduced into the furnace body and melting the target to be melted (par.[0029] and Figs.1 and 3-4 of PG’811), which reads on the claimed heating by electrodes and the electrode tip is not contact with the alloy formed as claimed in the instant claim.
Claims 4 and 17 are rejected under 35 U.S.C. 103(a) as being unpatentable over PG’811 in view of Casado et al (WO 2018189154 A1, thereafter WO’154).
Regarding claims 4 and 17, PG’811 teaches a step of introducing a material containing iron onto the battery packs BP. For example, the material containing iron is an iron scrap (scrap iron) FS (Fig. and par.[0039] of PG’811) which reads on the limitation of metal material over-layering the raw materials as claimed in the instant claims. PG’811 does not specify the sheet for of the scrap. However, applying a sheet form of scrap metal in the metal recovering process is well-known technique as demonstrated by WO’154. WO’154 teaches a manufacturing process of production of crude solder with electric arc furnace (Abstract, page 61, lns.3-15, and claims of WO’154). WO’154 specify that fine sheets of scrap metal are preferably used for the production waste recovering process (Page 35, line 33 to Col.36, line 4 of WO’154). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply metal scrap in sheet form as demonstrated by US’WO’154 in the process of PG’811 in order to improvs the metal recovering from the waste recovering process (Page 35, line 33 to Col.36, line 4 of WO’154).
Claims 5-7 and 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over PG’811 in view of Warde et al (US 4870655, listed in IDS filed on 11/06/2024, thereafter US’655).
Regarding claim 5, PG’811 teaches a manufacturing process for recovering valuable metal from the used battery pack by electronic furnace with electrodes (Figs.1-2, par.[0002], and claims of PG’811). PG’811 does not specify tip of the electrode being immersed in the slag. US’655 teaches a manufacturing process of applying a crucible having a metal shell for recovering precious metals from spent material (Abstract of US’655. US’655 teaches applying the electrodes extend from the roof and are submerged into the slag phase in order to improvs the melting of solid feed resting upon the surface of the slag phase (Fig.1, Col.4, lns.47-63 of US’655). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply electrode submerged into the slag phase as demonstrated by US’655 in the process of PG’811 in order to improvs the melting of solid feed resting upon the surface of the slag phase (Fig.1, Col.4, lns.47-63 of US’655).
Regarding claim 6, US’655 teaches additional feed material to contact with the slag (Col.4, ln.64 to Col.5, ln.48 of US’655).
Regarding claims 7 and 18, US’655 teaches that adjustments are made to such current changes by raising and lowering the electrode. (Col.6, lns.18-35 of US’655), which reads on the depth adjusting of the electrode as claimed in the instant claims.
Claims 8-9 and 19-20 are rejected under 35 U.S.C. 103(a) as being unpatentable over PG’811 in view of JP’348 and US’655.
Regarding claims 8 and 19, JP’348 specify applying graphite electrode (Fig.9, par.[0003] and [0008] of JP’348), which reads on the claimed limitation as claimed in the instant claims.
Regarding claims 9 and 20, claim 9 depends on claim 5; and claim 20 depends on claim 6. PG’811 in view of US’655 is applied to the claims 5-6 as discussed above. Regarding the cooling means as claimed in the instant claims 9 and 20, JP’348 teaches a method of operating an electric furnace for ferronickel smelting, and more particularly, to protect the refractory by maintaining the coating amount adhering to the surface of the refractory constituting the furnace wall surface in a good condition with cooling water amount supplied to a furnace body periphery (Abstract, par.[0008], [0033], and Fig.9 of JP’348), which reads on the claimed cooling means for cooling the furnace wall (par.[0057] of US-PG-pub 2023/0250508 A1, corresponding to the instant specification of the instant application). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the well-known technique, that is cooling the electric furnace wall by cooling water, as demonstrated by JP’348 in the process of PG’811 in view of US’655 since JP’348 indicates temperature control for the furnace wall by the cooling. (par.[0008] and [0033] of JP’348).
Claim 16 is rejected under 35 U.S.C. 103(a) as being unpatentable over PG’811 in view of JP’348 and further in view of WO’154.
Regarding claim 16, which depends on claim 2, PG’811 in view of JP’348 is applied to the claim 2 as discussed above. PG’811 in view of JP’348 does not specify the sheet for of the scrap. However, applying a sheet form of scrap metal in the metal recovering process is well-known technique as demonstrated by WO’154. WO’154 teaches a manufacturing process of production of crude solder with electric arc furnace (Abstract, page 61, lns.3-15, and claims of WO’154). WO’154 specify that fine sheets of scrap metal are preferably used for the production waste recovering process (Page 35, line 33 to Col.36, line 4 of WO’154). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply metal scrap in sheet form as demonstrated by US’WO’154 in the process of PG’811 in view of JP’348 in order to improvs the metal recovering from the waste recovering process (Page 35, line 33 to Col.36, line 4 of WO’154).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-13 and 15-20 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-16 of copending application No. 18/575894 (US-PG-pub 2024/0318281 A1).
Regarding Claims 1-13 and 15-20, although the conflicting claims are not identical, they are not patentable distinct from each other with claims 1-16 of copending application No. 18/575894 (US-PG-pub 2024/031828 A1). All of manufacturing process steps disclosed in claims 1-16 of copending application No. 18/575894 (US-PG-pub 2024/031828 A1) read on those as recited in the instant claims. Claims of copending application No. 18/575894 (US-PG-pub 2024/031828 A1) indicates the valuable metal recovery process by melting furnace with wall-cooling features. Thus, no patentable distinction was found in the instant claims compared with the claims 1-16 of copending application No. 18/575894 (US-PG-pub 2024/031828 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Claims 1-13 and 15-20 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-8 of copending application No. 18/575891 (US-PG-pub 2024/0240281 A1).
Regarding Claims 1-13 and 15-20, although the conflicting claims are not identical, they are not patentable distinct from each other with claims 1-8 of copending application No. 18/575891 (US-PG-pub 2024/0240281 A1). All of manufacturing process steps disclosed in claims 1-8 of copending application No. 18/575891 (US-PG-pub 2024/0240281 A1) read on those as recited in the instant claims. Claims of copending application No. 18/575891 (US-PG-pub 2024/0240281 A1) indicates the valuable metal recovery process by melting furnace with wall-cooling features. Thus, no patentable distinction was found in the instant claims compared with the claims 1-8 of copending application No. 18/575891 (US-PG-pub 2024/0240281 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Conclusion
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/JIE YANG/Primary Examiner, Art Unit 1734