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 .
Priority
Receipt is acknowledged of a certified copy of JP 2020-144467 filed August 28, 2020 as required by 37 CFR 1.55. Receipt is also acknowledged of a copy of WO 2022/044934, the WIPO publication of PCT/JP2021/030249 filed August 18, 2021.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed December 17, 2025.
Claims Filing Date
December 17, 2025
Amended
1, 8-11
Cancelled
3, 4, 13, 14
Pending
1, 2, 5-12, 15-20
Withdrawn
5-11, 15-20
Under Examination
1, 2, 12
Withdrawn claims 8-11 were amended. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn– currently amended.” 37 C.F.R. 1.121(c)(2).
The applicant argues support for the claim amendments in original claims 3, 4, 10, 13, and 14 (Remarks p. 8 para. 3), where original claims 3 and 4 (13 and 14) are incorporated into claim 1 (Remarks p. 13 para. 3).
Response to Remarks filed December 17, 2025
Daigo
Applicant’s claim amendments, see amended claim 1 lines 22-25, filed December 17, 2025, with respect to Daigo have been fully considered and are persuasive. The rejection of Daigo has been withdrawn.
Amended claim 1 lines 22-25 incorporate the particle size distribution, (D90-D10)/D50, of previous claim 3, now cancelled, which was not rejected over Daigo in the August 21, 2025 Non-Final Rejection. Daigo discloses (d90-d10)/d50 of 1.5 or less ([0079]).
Kang
Applicant’s claim amendments, see amended claim 1 lines 19-21, filed December 17, 2025, with respect to Kang have been fully considered and are persuasive. The rejection of Kang has been withdrawn.
Amended claim 1 lines 19-21 incorporate the alloy powder composition of previous claim 4, now cancelled, which was not rejected of Kang in the August 21, 2024 Non-Final Rejection. Kang discloses a Ni718 alloy powder ([0087]-[0093]), which has a 0.30% max Cu, 1.00% max Co, 50.00-55.00% Ni, balance Fe, and 0.35% max Mn.
Yamamoto
Applicant's arguments filed December 17, 2025 with respect to Yamamoto have been fully considered but they are not persuasive.
The applicant argues the process limitations of original claim 10 provide a clear structural difference from that of the cited art (Remarks p. 13 para. 5).
The process limitations of original claim 10 are product-by-process limitations of the claimed alloy powder product. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art. MPEP 2113(I). While applicant alleges a structural difference between the cited claims and the prior art, explanation and evidence of the structure implied by the process steps and how it is not disclosed by the prior art has not been presented.
Yamamoto in view of Narumi renders obvious the claimed structural features of the alloy powder product of D50 (Yamamoto [0102]), oxygen content (Yamamoto [0011], [0020], [0025], [0040], [0084]-[0090], [0096]-[0098]), composition (Yamamoto [0055]-[0056], [0060]-[0063], STN Composition), and (D90-D10)/D50 (Narumi [0057]), such that the claim is unpatentable even if the prior product is made by a different process.
The applicant argues applicants’ invention is specifically designed for acid leaching treatment to selectively dissolve nickel and cobalt from copper-nickel-cobalt alloy powder recovered from waste lithium-ion batteries, which typically exhibits high corrosion resistance (Remarks p. 13 para. 6), where general copper-nickel-cobalt alloys have high corrosion resistance and may not dissolve at all when immersed in sulfuric acid for more than 24 hours, which is solved by the claimed invention controlling median diameter D50, oxygen content, and claimed particle size distribution (Remarks para. spanning pp. 13-14).
In response to applicant's argument that the claimed invention is specifically designed for acid leaching treatment to selectively dissolve nickel and cobalt from copper-nickel-cobalt alloy powder recovered from waste lithium-ion batteries, this feature of purpose or intended use of the claimed alloy powder is not recited in the pending claims. It also does not result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art.
Yamamoto in view of Narumi discloses an overlapping D50 (0.1 to 100 um) (Yamamoto [0102]), oxygen content (not more than 5000 ppm, 0.5%) (Yamamoto [0011], [0020], [0025], [0040], [0084]-[0090], [0096]-[0098]), composition (Cu, Co, Ni, Fe, and Mn) (Yamamoto [0055]-[0056], [0060]-[0063], STN Composition), and particle size distribution (more preferably greater than or equal to 1.0 and less than or equal to 3.5) (Narumi [0057]), such that a prima facie case of obviousness exists. MPEP 2144.05(I).
The applicant argues Narumi is directed to a different technical field and particle size range with an average particle size of 1 to 15 um ([0045]), which is 3 to 6 times smaller than the claimed target range of 30 to 85 um (Remarks p. 14 para. 2).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Yamamoto in view of Narumi discloses D50 of 0.1 to 100 um (Yamamoto [0102]) with a (D90-D10)/D50 more preferably greater than or equal to 1.0 and less than or equal to 3.5 to form a comparatively narrow particle distribution with a suppressed variation and decrease in dimensional accuracy (Narumi [0057]).
The particle size distribution, a relationship defined between D90, D50, and D10 of (D90-D10)/D50, as disclosed by Narumi is irrespective of the actual particle size values. Therefore it can be applied to the D50 of Yamamoto. Further the benefits disclosed by Narumi of a narrow particle size distribution with suppressed variation and decrease in dimensional accuracy are related to the relative relationship between D10, D50, and D90, which is not limited by the average particle size of Narumi.
The applicant argues Narumi improves dimensional accuracy during sintering ([0057]), whereas the claimed invention achieves selective dissolution (Remarks p. 14 para. 2).
Metallic powder satisfying Narumi’s particle size distribution advantageously has a comparatively narrow particle size distribution, which suppresses variation (Narumi [0057]). Similarly, according to applicant’s specification at [0033], the claimed particle size distribution also has variations in particle distribution that are preferably as small as possible. “Expected beneficial results are evidence of obviousness of a claimed invention.” MPEP 716.02(c)(I).
The applicant argues Narumi is directed to “comparatively narrow” particle size distributions ([0057]) with a lower limit of 0.5, which is outside the claimed lower limit of 2.50 (Remarks p. 14 para. 3).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. MPEP 2123(I). Narumi discloses (D90-D10)/D50 more preferably greater than or equal to 1.0 and less than or equal to 3.5 ([0057]), which overlaps with the claimed range of 2.50 to 3.00 such that a prima facie case of obviousness exists. MPEP 2144.05(I).
The applicant argues applicant’s Tables 1 and 2 demonstrate the criticality of the particle size distribution parameter with values of 2.58 to 2.93 within the claimed 2.50 to 3.00 range demonstrate excellent acid leaching properties (Remarks para. spanning pp. 14-15) and Example 8 has a (D90-D10)/D50 value of 2.38 has good acid leaching, but is produced by gas atomization, such that it is commercially unsuitable for large-scale production and a lower (D90-D10)/D50 limit reflects a practical manufacturing constraint (Remarks p. 15 para. 2).
To establish unexpected results over a claimed range, applicants should compare sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP 716.02(d)(II). Applicant’s Tables 1 and 2 do not meet the burden to establish criticality. Sufficient tests outside the claimed range have not been presented. Rather, Ex. 8 with a (D90-D10)/D50 of 2.38 (applicant’s specification [0093]) has the desired property of good acid leaching, indicating that even outside of the claimed (D90-D10)/D50 of 2.50 to 3.00 the alleged critical property is present.
Objective evidence of nonobvious is directed to criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc. MPEP 716.01(a). None of these listed categories include commercial unsuitability of a practical manufacturing constraint.
If applicant is alleging the claimed (D90-D10)/D50 has commercial success, then objective evidence of nonobviousness including commercial success must be commensurate in scope with the claims. MPEP 716.03(a)(I). Evidence of commercial success of the claimed invention, in particular due to water atomization instead of gas atomization, has not been presented. MPEP 716.03(b).
The applicant argues the (D90-D10)/D50 range of 2.50 to 3.00 is achieved by water atomization with water pressures of 6 to 20 MPa and water-to-alloy mass ratios of 5.0 to 70, which enables commercial-scale production (Remarks p. 15 para. 2).
“[E]ven though product-by-process claimed are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” MPEP 2113(I).
The claimed product feature of (D90-D10)/D50 of 2.50 to 3.00 is rendered obvious by Narumi’s disclosure of this feature being more preferably greater than or equal to 1.0 and less than or equal to 3.5 to form a comparatively narrow particle size distribution with suppressed variation and decrease in dimensional accuracy (Narumi [0057]).
The applicant argues Ex. 9 has a D50 of 110 um, exceeding the broader claimed range, and Ex. 10 has 2.20 mass% O, exceeding the claimed upper limit, with cross ratings for recovery rate confirming the criticality of D50 and oxygen content (Remarks p. 15 para. 2).
To establish unexpected results over a claimed range, applicants should compare sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP 716.02(d)(II). One example with a D50 outside of the claimed range and one example with an oxygen content outside of the claimed range is insufficient data to establish unexpected results over a claimed range.
For the above cited reasons the rejection over Yamamoto in view of Narumi is maintained.
Claim Objection
Claim 1 is objected to because of the following informalities:
Line 3 “the alloy powder is produced by produced by a method comprising” is grammatically incorrect.
Appropriate correction is required.
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, 2, and 12 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 lines 5-6 “an alloy containing copper (Cu), nickel (Ni), and cobalt (Co)” and lines 19-21 “the alloy powder comprises…copper (Cu),…cobalt (Co),…nickel (Ni),…iron (Fe), and…manganese (Mn)” renders the claim indefinite. How can an alloy comprising Cu, Ni, and Co produce an alloy powder that comprises Cu, Co, Ni, Fe, and Mn? Where do the Fe and Mn come from such that they are present in the alloy powder, but not required in the raw material to form an alloy? For the purpose of examination claim 1 will be interpreted as the alloy powder requiring the composition of lines 19-21 with Cu, Co, Ni, Fe, and Mn.
Claims 2 and 12 are rejected as depending from claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The D10, D50, and D90 relation in claim 12 lines 1-5 is already recited in claim 1 lines 22-25. Claim 12 depends on claim 2, which depends on claim 1. Therefore claim 12 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 2, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (US 2017/0170470 and STN Abstract and Composition) in view of Narumi (US 2015/0217371) as evidenced by Warzel (Warzel. Manufacture of Stainless Steel Powders. ASM Handbook, Volume 7, Powder Metallurgy. P. Samal and J. Newkirk, editors. ASM International 2015. 421-426.).
Regarding claim 1, Yamamoto discloses an alloy (negative electrode active material) powder ([0094]) comprising copper (Cu), nickel (Ni), and cobalt (Co) as constituents ([0055]-[0056], [0062]-[0063], STN Composition),
the alloy powder having a volume particle size distribution with a particle diameter at a cumulative percentage of 50% (D50) of 30 um or more and 85 um or less (0.1 to 100 um) ([0102]),
the alloy powder having an oxygen content of 0.01% by mass or more and 1.00% by mass or less (not more than 5000 ppm, 0.5%) ([0011], [0020], [0025], [0040], [0084]-[0090], [0096]-[0098]), and
wherein the alloy powder comprises: 24.0 to 80.0% by mass of copper (Cu) (balance, 90 at% or less) ; 0.1 to 15.0% by mass of cobalt (Co) (49.0 at% or less); 10.0 to 50.0% by mass of nickel (Ni) (9.0 at% or less); 0.01 to 10.0% by mass of iron (Fe) (49.0 at% or less); and 0.01 to 5.0% by mass of manganese (Mn) (9.0 at% or less) with the remainder being unavoidable impurities ([0055]-[0056], [0060]-[0063], STN Composition).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Yamamoto is silent to D10, D50, and D90 satisfying the claimed relationship.
Narumi discloses alloy powder ([0045]) with D10, D50, and D90 that satisfy the relation 2.50 ≤ (D90 - D10)/D50 ≤ 3.00, D10, D50, and D90 respectively representing a particle diameter at a cumulative percentage of 10%, a particle diameter at a cumulative percentage of 50%, and a particle diameter at a cumulative percentage of 90% in the volume particle size distribution (more preferably greater than or equal to 1.0 and less than or equal to 3.5) ([0057]).
It would have been obvious to one of ordinary skill in the art for the alloy powder of Yamamoto to satisfy (D90-D10)/D50 to more preferably be greater than or equal to 1.0 and less than or equal to 3.5 to form a comparatively narrow particle size distribution with a suppressed variation and decrease in dimensional accuracy (Narumi [0057]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Pending claim 1 line 1 is directed to an “alloy powder” product. Claim 1 lines 3-14 are product-by-process claims directed to a method of producing the alloy powder. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art. MPEP 2113(I).
Yamamoto as evidenced by Warzel discloses the alloy powder is produced by a method comprising:
heating and melting the raw material to form an alloy containing copper (Cu), nickel (Ni), and cobalt (Co) and slag (molten metal of a negative electrode active material of Cu, Co, Ni, Fe) (Yamamoto [0055]-[0056], [0060]-[0063], [0094], STN Composition);
separating the slag and recovering the alloy as an alloy raw material (water atomization includes slag removal before pouring the melt into the atomization chamber) (Yamamoto [0092]-[0093]; Warzel p. 422 col. 1 para. 4); and
heating and melting the alloy raw material to form a molten alloy (molten metal of a negative electrode active material of Cu, Co, Ni, Fe) (Yamamoto [0055]-[0056], [0060]-[0063], [0092], STN Composition; Warzel p. 422 col. 1 para. 4); and
dropping the molten alloy in a chamber of an atomizing apparatus and spraying water onto the dropping molten alloy to cool and form the alloy powder (water atomization) (Yamamoto [0092]-[0093]; Warzel p. 422 col. 1 para. 4, Fig. 2).
The product-by-process limitation of preparing waste lithium-ion batteries as a raw material has been considered and determined to be related to the composition of the claimed alloy powder as recited in lines 19-21. The prior art renders prima facie obvious this claimed composition (Yamamoto [0055]-[0056], [0060]-[0063], STN Composition). MPEP 2144.05(I).
The product-by-process limitations of the pressure of the sprayed water being 6 MPa or more and 20 MPa or less and the mass ratio of the amount of water spray to the dropping amount of the molten alloy being 5.0 times or more and 7.0 times or less of the water atomization process have been considered and determined to influence the size of the resulting alloy particles, such that they are not excessively large or fine (applicant’s specification [0040]-[0041]). With respect to alloy particle size, pending claim 1 recites in lines 15-16 D50 of 30 to 85 um and lines 22-25 (D90-D10)/D50 of 2.50 to 3.00, both of which are prima facie obvious over Yamamoto in view of Narumi (Yamamoto [0102]; Narumi [0057]). MPEP 2144.05(I).
Regarding claim 2, Yamamoto discloses the particle diameter at a cumulative percentage of 50% (D50) is 35 um or more and 55 um or less (0.1 to 100 um) ([0102]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 12, Yamamoto is silent to D10, D50, and D90 satisfying the claimed relationship.
Narumi discloses alloy powder ([0045]) with D10, D50, and D90 that satisfy the relation 2.50 ≤ (D90 - D10)/D50 ≤ 3.00, D10, D50, and D90 respectively representing a particle diameter at a cumulative percentage of 10%, a particle diameter at a cumulative percentage of 50%, and a particle diameter at a cumulative percentage of 90% in the volume particle size distribution (more preferably greater than or equal to 1.0 and less than or equal to 3.5) ([0057]).
It would have been obvious to one of ordinary skill in the art for the alloy powder of Yamamoto to satisfy (D90-D10)/D50 to more preferably be greater than or equal to 1.0 and less than or equal to 3.5 to form a comparatively narrow particle size distribution with a suppressed variation and decrease in dimensional accuracy (Narumi [0057]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Related Art
Xiao (CN 105177284 machine translation)
Xiao discloses an alloy powder ([0013], [0015]) comprising: 24.0 to 80.0% by mass of copper (Cu) (5-35%); 0.1 to 15.0% by mass of cobalt (Co) (5-35%); 10.0 to 50.0% by mass of nickel (Ni) (1-15%); 0.01 to 10.0% by mass of iron (Fe) (10-50%); and 0.01 to 5.0% by mass of manganese (Mn) (5-45%) with the remainder being unavoidable impurities ([0022]). The alloy powder of Xiao is produced by atomizing the alloy melt ([0019]).
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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/STEPHANI HILL/Examiner, Art Unit 1735