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 .
Claim Objections
Claim 8 is objected to because of the following informalities:
In order to ensure proper antecedent basis, it is suggested to amend “wherein lithium carbonate” to “wherein the lithium carbonate” in claim 8, line 3. Appropriate correction is required.
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.
Claims 1, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Goda et al. (US 2022/0045375 A1) (Goda) in view of Ariyoshi et al. (JP 2019026531 A) (Ariyoshi).
The Examiner has provided a machine translation of JP 2019026531 A. The citation of the prior art in this rejection refer to the machine translation.
Regarding claim 1, Goda teaches a method for processing positive electrode active material waste of lithium ion secondary batteries, the waste containing cobalt, nickel, manganese and lithium (Goda, Abstract), wherein lithium carbonate is recovered from the waste material (Goda, Claim 10) (i.e., a method of recovering lithium carbonate from a cathode material of a waste lithium secondary battery, the method comprising (a) preparing scrap powder comprising lithium nickel cobalt manganese oxide). Further, Goda teaches wherein the scrap powder contains LiNixCoyMnzO2 (Goda, [0028]), and wherein the content of cobalt is from 0% by mass to 60% by mass; the content of nickel is from 0% by mass to 60% by mass; a content of manganese is from 0% by mass to 40% by mass, and a lithium content is from 2% by mass to 8% by mass. These values overlap with the x and y ranges of the presently claimed. For example, the molecular weight of lithium is 6.94 g/mol, nickel is 58.69 g/mol, cobalt is 58.93 g/mol, manganese is 54.94 g/mol, and O2 is 32 g/mol.
Therefore, when Li is 1 mole of the compound, there are 6.94 g of Li; when nickel is 0.33 mole, there are 19.37 g of nickel (i.e., 0.33 mol x 58.69 g/mol = 19.37 g); when cobalt is 0.33 mole, there are 19.45 g of cobalt (i.e., 0.33 mol x 58.93 g/mol = 19.45 g); when manganese is 0.34 mole, there are 18.68 g of manganese (i.e., 0.34 mol x 54.94 g/mol = 18.68 g), and the total mass of the compound would be 6.94 g + 19.37 g + 19.45 g + 18.68 g + 32 g = 96.44 g.
Therefore, lithium would be 7.2% by mass, nickel would be 20% by mass, cobalt would be 20.2% by mass, and manganese would be 19.4% by mass, which falls within the ranges of Goda and the mole percentages fall within the range of the presently claimed (LiNixCoyMn1-x-yO2 (0<x<1, 0<y<1)).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Goda teaches the method comprises mixing the positive electrode active material waste with carbon to obtain a mixture, wherein the carbon may be activated carbon (Goda, [0031]; [0034]), and roasting the mixture to decompose the composite metal oxide in the waste (i.e., (b) reducing and calcining the scrap powder using activated carbon), and wherein the the ratio of the mass of carbon to the total mass of positive electrode active material waste and the carbon in the mixture is preferably from 10% to 30% (Goda, [0032]). Therefore, the weight ratio of activated carbon to scrap powder is 10/90 = 0.11 or 11 wt% to 30/70 =0.43 or 43 wt%, which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Goda further teaches bringing the roasted powder into contact with water at a temperature of 10°C to 60°C, which overlaps with the range of the presently claimed, to dissolve the lithium contained in the roasted powder (Goda, [0042]; [0051]), wherein the water may be distilled water, purified water, pure water, ultrapure water or the like (Goda, [0048]) (i.e., soft water), and wherein the solution may be subjected to carbonation (i.e., adding CO2) by known methods to obtain lithium carbonate (Goda, [0055]) (i.e., (c) adding scrap powder reduced and calcined in step (b) and carbon dioxide gas to soft water). Further, during dissolution in water, the pulp concentration is from 50 g/L to 150 g/L, and wherein the pulp concentration means a ratio of the dry weight of the roasted powder or residue to an amount (L) of water (Goda, [0051]). As one liter of water weighs 1000 g, there are 1000 parts by weight of water per 50 parts by weight of scrap powder (i.e., 2000 parts by weight of water per 100 parts by weight of scrap powder) to 1000 parts by weight water per 150 parts by weight of scrap powder (i.e., 670 parts by weight water per 100 parts by weight scrap powder), which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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, Goda teaches extracting lithium carbonate (Goda, [0047]) (i.e., (f) obtain lithium carbonate).
Further, there is no teaching in Goda that a sodium carbonate salt is used during the first dissolution step. Rather, Goda teaches that a concentration of sodium in the lithium solution in the first dissolution step may be from 0 mg/L to 1000 mg/L (Goda, [0053]) (i.e., sodium concentration may be zero which would mean the sodium carbonate salt concentration would be 0, and therefore meets the limitation of “without using a sodium carbonate salt”).
However, Goda does not explicitly teach (a) the carbonation forms a lithium hydrogen carbonate solution; (b) the carbon dioxide gas is added at a pressure of 1 to 5 kgf/cm3 and a flow rate of 0.5 to 5 L/min; (c) performing solid-liquid separation of the lithium hydrogen carbonate solution; (d) converting lithium hydrogen carbonate into lithium carbonate by heating, evaporating and concentrating the lithium hydrogen carbonate solution separated; or (e) filtering the lithium carbonate to obtain lithium carbonate.
With respect to the differences (a), (c), (d), and (e), Ariyoshi teaches a method for producing lithium carbonate comprising dissolving a lithium compound and reacting it with carbonate ions in the water to generate carbonic acid (Ariyoshi, Abstract). Ariyoshi teaches the carbonate ions can be produced by blowing carbon dioxide into the water which reacts with the dissolved lithium to form lithium hydrogen carbonate (Ariyoshi, p. 2, Paragraph 8), and wherein the liquid temperature of water when contacted with lithium is preferably 5°C to 25°C (Ariyoshi, p. 3, Paragraph 7). Ariyoshi further teaches when the battery powder containing lithium compound is brought into contact with water, the residue remaining in the battery powder that does not dissolve in water is taken out by solid-liquid separation (Ariyoshi, p. 3, Paragraph 11). Further, Ariyoshi teaches the lithium hydrogen carbonate is converted into lithium carbonate by heating at a temperature of 50°C to 90°C (Ariyoshi, p. 4, Paragraph 2), followed by deoxidizing and concentrating the lithium carbonate (Ariyoshi, p. 4, Paragraph 6), and then separating the liquid into purified lithium carbonate and filtrate by solid-liquid separation (i.e., filtering to obtain lithium carbonate) (Ariyoshi, p. 4, Paragraph 6) (i.e., preparing lithium hydrogen carbonate solution by adding dissolved lithium and carbon dioxide gas to water; performing solid-liquid separation on the lithium hydrogen carbonate solution; and converting lithium hydrogen carbonate into lithium carbonate by heating, evaporating and concentrating the lithium hydrogen carbonate solution separated; and filtering the lithium carbonate converted to obtain lithium carbonate).
As Ariyoshi expressly teaches this method improves the dissolution of a lithium compound in water and produces high-grade lithium carbonate (Ariyoshi, Abstract, p. 1, Technical Field).
Ariyoshi is analogous art as it is drawn to recovering lithium carbonate from lithium ion secondary battery scrap (Ariyoshi, Abstract, p. 2, Paragraph 3).
In light of the motivation of adding carbon dioxide to the water to form lithium hydrogen carbonate; performing solid-liquid separation of the lithium hydrogen carbonate solution, and converting lithium hydrogen carbonate into lithium carbonate by heating, evaporating and concentrating the lithium hydrogen carbonate solution separated as disclosed by Ariyoshi, it therefore would have been obvious to one of ordinary skill in the art to modify the method of Goda by incorporating these steps, when the solution is subjected to carbonation in Goda, in order to improve the dissolution of the lithium compound in water and produce high-grade lithium carbonate, and thereby arrive at the claimed invention.
With respect to the difference (b), Goda, in view of Ariyoshi, teaches CO2 is added to the water (Goda, [0055]; Ariyoshi, p. 2, Paragraph 8), and wherein the CO2 forms carbonic acid in the water which reacts with the lithium to form lithium hydrogen carbonate (Ariyoshi, p. 2, Paragraph 8).
Although there are no disclosures on the CO2 pressure being 1 to 5 kgf/cm3 and flow rate being 0.5 to 5 L/min as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the flow rate and pressure, including over the amounts presently claimed, in order to sufficiently supply CO2 to form carbonic acid in a sufficient amount for the reaction between carbonic acid and lithium to take place.
Further, while Goda, in view of Ariyoshi, does not explicitly teach wherein since the lithium hydrogen carbonate has a higher solubility in water than lithium carbonate, when converting lithium carbonate into lithium hydrogen carbonate, an amount of water to be used to recover a same amount of lithium carbonate as an end product is reduced, and an amount of water to be evaporated during an evaporation concentration is reduced, resulting in reduced energy consumption, Goda, in view of Ariyoshi, teaches the method of recovering lithium carbonate that is substantially identical to the claimed method. Therefore, the method of Goda, in view of Ariyoshi, would inherently result in a reduced amount of water to be used and subsequently evaporated, and a reduced amount of energy consumption.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 6, Goda, in view of Ariyoshi, teaches the method of claim 4, wherein the heating, evaporating and concentrating step is performed at 50°C to 90°C (Ariyoshi, p. 4, Paragraph 2), which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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 8, Goda, in view of Ariyoshi, teaches the method of claim 1, wherein Li2CO3 is produced during the roasting step (Goda, [0036]), which is then dissolved in water during the dissolution step and combined with carbon dioxide to form lithium hydrogen carbonate (Goda, [0055]; Ariyoshi, p. 2, Paragraph 8), and then the lithium hydrogen carbonate is converted into lithium carbonate by heating at a temperature of 50°C to 90°C (Ariyoshi, p. 4, Paragraph 2) (i.e., lithium carbonate is produced in the step (b), and the produced lithium carbonate turns into the lithium hydrogen carbonate in the step (c) to be converted into lithium carbonate in the step (e)).
Response to Arguments
In response to applicant’s amendment to claim 1, the previous claim objections are withdrawn.
Applicant primarily argues:
“First of all, neither Goda nor Ariyoshi discloses or suggests the use of soft water at a
specifically defined temperature of 8 - 10°C. This range is critical to maximizing the solubility of lithium hydrogen carbonate, and preventing premature precipitation of lithium carbonate. These effects reduce the amount of water required and minimize the energy required for evaporation - advantages not recognized or predictable from either reference. Applicant respectfully notes that Federal Circuit precedent in Atofina v. Great Lakes Chemical Corp., 441 F.3d 991 (Fed. Cir. 2006) and In re Peterson, 315 F.3d 1325 (Fed. Cir. 2003) held that a claimed range that lies substantially outside a prior art range, particularly where the claimed range is narrower and demonstrates criticality, is not rendered obvious merely because of endpoint overlap.”
Remarks, p. 6
The examiner respectfully traverses as follows:
Firstly, Ariyoshi teaches “the liquid temperature at the time of contact between the lithium compound and water is preferably 5°C to 25°C. By setting the temperature of the water at the time of contact to such a relatively low temperature, lithium hydrogen carbonate having higher solubility as the temperature is lower can be more effectively generated in the liquid” (Ariyoshi, p. 3, Paragraph 7). Therefore, it is the examiner’s position that Goda and Ariyoshi teach this relationship between lower water temperature and higher solubility of lithium hydrogen carbonate/lithium carbonate, which would inherently reduce the amount of water required and minimize the energy required for evaporation.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Secondly, Goda teaches a range that overlaps even if it is only at the end point of 10°C. One of ordinary skill in the art is still capable of choosing 10°C as the temperature of the water because it is taught as part of the range of Goda. Additionally, there is motivation to choose the lower end of the range in Goda in both the teachings of Goda and Ariyoshi as both state the lower the temperature, the higher the solubility. Therefore, this overlapping range would make 10°C obvious because the advantages are predictable from the references themselves.
Applicant further argues:
“Further, the claimed process excludes the use of sodium carbonate salts. Neither Goda nor Ariyoshi teaches such exclusion. Avoiding sodium salts prevents contamination and simplifies purification, providing a nonobvious improvement in product purity. In contrast, Ariyoshi actually states that "sodium carbonate etc. can be mentioned as a specific example of carbonate in the case of adding carbonate" (page 3, paragraph 9), which teaches toward using sodium carbonate.”
Remarks, p. 6-7
The examiner respectfully traverses as follows:
Firstly, while applicant states the entire claimed process excludes the use of sodium carbonate salts, this exclusion is only recited in step (c). Therefore, the exclusion of sodium carbonate salts is limited to step (c) and not to steps (a)-(b), and (d)-(f).
Secondly, while applicant argues that Ariyoshi teaches the addition of a carbonate such as sodium carbonate, this addition of a carbonate such as sodium carbonate is taught to be an example of a method for supplying carbonate ions, not the only option. Further, the first example of the method for supplying carbonate ions is blowing carbon dioxide into the water (Ariyoshi, p. 3, Paragraph 2).
Therefore, given that Goda, in view of Ariyoshi, discloses the method that overlaps the presently claimed method, including adding carbon dioxide to the water to introduce carbonate ions, it therefore would be obvious to one of ordinary skill in the art, to use the carbon dioxide, which is both disclosed by Goda, in view of Ariyoshi, and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Further, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant further argues:
“In addition, there is no motivation to combine the applied references. The Office Action's rationale that one would incorporate Ariyoshi's process into Goda's system to improve dissolution is not supported. Goda already provides efficient lithium recovery, and Ariyoshi addresses a different system involving dissolution of simple lithium compounds. The combination requires hindsight and is therefore improper under KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
In fact, neither Goda nor Ariyoshi discloses or suggests the specific benefits of intending a higher solubility in water by converting lithium carbonate into lithium hydrogen carbonate to finally obtain lithium carbonate. While both references teach lithium hydrogen carbonate formation and conversion, neither recognizes or discloses the specific benefits of reduced water usage leading to reduced evaporation and energy consumption.”
Remarks, p. 7
The examiner respectfully traverses as follows:
It is the examiner’s position that there is proper motivation to combine the method of Goda with the method of Ariyoshi as both references want to increase the dissolution of the lithium compound in water (Goda, [0051]; Ariyoshi, p. 3, Paragraph 7).
Further, it is the Examiner’s position that hindsight was not used given both Goda and Ariyoshi are drawn to recovering lithium carbonate from lithium ion secondary battery scrap (Goda, Abstract; Ariyoshi, Abstract, p. 2, Paragraph 3), and given that the motivation to combine Ariyoshi with Goda comes from Ariyoshi itself, namely, in order to improve dissolution of the lithium compound in water (Ariyoshi, Abstract; p. 1, Technical Field), as set forth above.
Additionally, while applicant argues that Goda and Ariyoshi do not teach the increased solubility results in the specific benefits of reduced water usage leading to reduced evaporation and energy consumption, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant further argues:
“Applicant further notes that the aforementioned benefits of obtaining a higher solubility in water are also directly connected with the critical 8-10 °C temperature range. The higher solubility of lithium hydrogen carbonate at low temperatures enables the use of less water for the same lithium recovery, which in turn reduces energy requirements for evaporation. This represents a non-obvious advance over the prior art.”
Remarks, p. 7
The examiner respectfully traverses as follows:
Firstly, Goda teaches “the lower the liquid temperature, the higher the solubility of lithium carbonate. Therefore, it is preferable that the liquid temperature is lower” (Goda, [0051]). Additionally, Ariyoshi teaches “the liquid temperature at the time of contact between the lithium compound and water is preferably 5°C to 25°C. By setting the temperature of the water at the time of contact to such a relatively low temperature, lithium hydrogen carbonate having higher solubility as the temperature is lower can be more effectively generated in the liquid” (Ariyoshi, p. 3, Paragraph 7). Therefore, Goda and Ariyoshi both teach this relationship between lower water temperature and higher solubility of lithium hydrogen carbonate/lithium carbonate.
Further, as this is taught by Goda and Ariyoshi both teach a temperature range that overlaps the claimed range, it is clear that less water would be required for the lithium recovery and would reduce the energy requirement.
Further, even if Goda and Ariyoshi did not teach this advantage, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732