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 .
The previous indication of allowable subject matter in Claims 1-18 in the Final Office Action mailed 03/25/2026 is hereby withdrawn, in light of the new prior art rejections provided below. Any inconvenience to applicant is sincerely regretted.
Applicant canceled Claims 19-20, overcoming the new matter rejections made 03/25/2026.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. KR 102372248 B1.
Regarding Claim 1, Lee et al. ‘248 discloses a treating method for a positive electrode for a waste lithium ion battery (meeting the limitation for a non-aqueous electrolyte secondary battery) which comprises a positive electrode having a foil containing Al [0015] and an active material which is a metal composite oxide [0016], the method comprising heating the positive electrode in a heating treatment; after the heating treatment, reacting the foil and the active material and melting the positive electrode by spontaneous heat generation using a heat of reaction of the reacting the foil and the active material to obtain a molten material, and separating the molten material into a metal material containing a metal constituting the metal composite oxide and a slag [0015], meeting the limitations of the instant 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 2-4, 8, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. KR 102372248 B1 in view of Yamaguchi JP 2014199774 A.
Regarding Claims 2-4, 8, and 12, Lee et al. ‘248 discloses the limitations set forth above but does not expressly teach the positive electrode comprises a binder.
However, Yamaguchi ‘774 teaches a method of treating a positive electrode material in a lithium ion secondary battery (meeting the limitation for a non-aqueous electrolyte secondary battery) which comprises a positive electrode material comprising a metal foil and an active material adhered to the surface of the metal foil via a binder [0053]. Yamaguchi ‘774 further teaches heat treating the battery at a temperature range of 400°C to 600°C at which the binder decomposes and the aluminum foil does not melt and powder [0044].
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to use the battery of Yamaguchi ‘774 in the treatment method of Lee et al. ‘248 in order to improve the efficiency of recovery and recyclability based on the teachings of Lee et al. ‘248 at [0059] and ease separation of active material from the positive electrode based on the teachings of Yamaguchi ‘774 at [0044].
Lee et al. ‘248 teaches the melting point of lithium hydroxide as 462 °C, a temperature lying within the instantly claimed range of 400 °C - 600 °C. Lee et al. ‘248 further teaches at [0083] applying reaction temperatures appropriate for metal recovery and it would have been obvious to one having ordinary skill in the art at the time of filing the invention to heat treat at a temperature of 462 °C in order to both prevent the powdering of aluminum and decompose the binder, based on the teachings of Yamaguchi ‘774 at [0044]. 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. The heat treatment temperature range of 400 °C -600 °C overlaps the instantly claimed range of 400°C to 650°C, meeting the limitations of the instant Claims.
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). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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).
Regarding Claims 5, 7, 9-11, and 13-18, modified Lee et al. ‘248 teaches the limitations set forth above and Lee et al. ‘248 further teaches extracting metal from secondary lithium ion batteries that may be used or defective [0004], meeting the limitations of the instant claims for the positive electrode being a used or unused non-aqueous electrolyte secondary battery, or process scrap generated in a production process for the non-aqueous electrolyte secondary battery.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 10189083 B2 teaches low temperature extraction of metals from spent lithium ion batteries.
JP H1046266 A teaches recovering cobalt from waste batteries at 600 °C.
JP 2019131871 A teaches extracting valuable metal from process waste batteries.
US 20020090553 A1 teaches firing combustion of a positive electrode.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
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