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 . 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.
DETAILED NON-FINAL ACTION
This is the initial Office Action (OA), on the merits, based on the 18/127,027 application filed on March 28, 2023. Claims 1-7 are pending and have been fully considered. The examined claims are directed to an apparatus.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The Examiner has considered the information disclosure statements (IDS) submitted on 3-28-2023, 6-27-2025 and 10-23-2025. All references were considered except for those lined through. Examiner could not locate the reference called Chinese Office Action . . .mailed May 27, 2025 in the file. There is a duplicative IDS document dated 6/27/25 that is coded as an NPL, which is possibly a submission error.
Please refer to the signed copy of the PTO-1449 forms attached herewith.
Claim Interpretation
The examined claims are apparatus claims requiring only the positively recited structural components, although structured with physical features that can perform the stated functions or accomplish the intended uses. Functional limitations state either an intended use or operation, a manner of operating a device, apparatus or system, or what the apparatus/system does. Apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Also, a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Of course, in the patentability analysis of these apparatus/system claims, functional features are considered/not ignored and Applicant can and should employ such language where appropriate and helpful. However, if a prior art structure is capable of performing the intended use, or if such apparatus can operate in the manner described, then it meets the claim limitation (MPEP §§ 2114, 2173.05(g)).
The recited liquid, for example, is considered a material potentially contained within, transient or passing through, generated or produced, or otherwise worked upon by the apparatus rather than structural components of the apparatus.
According to the MPEP §2115 [R-2], a material or article worked upon does not limit apparatus claims: Expressions relating an apparatus to contents thereof during an intended operation are of no significance in determining patentability of apparatus claims. Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “inclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)).
In summary, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
In the patentability analysis, the Office applies the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification are not read into the claims. See MPEP §§2111, 2173.01 I. Unless otherwise specified, any citation to Applicant’s specification will generally refer to the original and any substitute or amended specification rather than a published application.
Examiner interprets limitations such as ‘configured,’ ‘configured to’ and/or ‘configured for’ as similar or equivalent to ‘set up to,’ ‘designed to,’ ‘capable of,’ or simply ‘can,’ in the context of an appropriate reference.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamasaki et al. (US20110059339; Yamasaki) (IDS of 10-23-2025).
In the patentability analysis below, the italicized portions represent functional aspects, whereas the bolded portions represent structure.
Regarding claims 1 and 3, Yamasaki discloses an active material separation apparatus 10 for separating an active material from a battery member 100 containing the active material 152 (Abstract, [0069]-[0074], Fig. 1-4 & 6), the active material separation apparatus comprising:
a container 11 ([0071]-[0076], Fig. 6);
a base member 14, 15 that is disposed inside the container and that is configured to support the battery member ([0071]-[0076], Fig. 6); and
a nozzle 21, 22 that is disposed above the container and that is configured to jet a liquid PW to the battery member ([0074], [0075], [0080], [0081], where the liquid can be an aqueous phosphoric acid solution and/or wash water), wherein the base member is movable at least in a horizontal direction ([0071], [0073], Fig. 6).
Additional Disclosure Included: Claim 3: The active material separation apparatus according to claim 1, wherein the base member is movable in a vertical direction ([0071], [0073], Fig. 6).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yamasaki et al. (US20110059339), as applied to claim 1 above.
Regarding claim 6, Yamasaki discloses the active material separation apparatus according to claim 1, except wherein an annular inner lid portion is provided inside the container.
Yamasaki discusses the use of a lid part 112 for the battery ([0063], [0068], [0069]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention been obvious to include an appropriately shaped lid or cover to assist in holding and protecting the container’s contents.
Regarding claim 7, Yamasaki discloses the active material separation apparatus according to claim 1, except wherein a collecting filter disposed inside the container is provided.
However, Yamasaki teaches that the water W containing the materials for treatment is taken out of the treatment bath 11 through an outlet port 26 at the bottom of the treatment bath 11 and is separated or filtered ([0099]).
At the time when the claimed invention was effectively filed, it would have been obvious to an ordinarily skilled artisan to alternately or in addition provide a collection filter inside the treatment tank for additional filtering where desired.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yamasaki et al. (US20110059339), as applied to claim 1 above, in view of Nishimura et al. (US5628973) (IDS of 10-23-2025).
Regarding claim 2, Yamasaki discloses the active material separation apparatus according to claim 1, except wherein a waste liquid part having an opening/closing valve is disposed below the container.
However, Yamasaki teaches the use of a port 26 disposed below the container ([0099], Fig. 6).
Nishimura discloses a treating method and a treating apparatus of a used lithium cell or battery, wherein a treating fluid is in contact with a negative electrode containing lithium of a lithium cell under a first condition to react a surface portion of the negative electrode, and a treating fluid is in contact with lithium existing inside an article formed on the surface of the negative electrode under a second condition (Abstract, col. 1, lines 1-3). Nishimura discloses the use of opening/closing valves for controlling fluid flow (col. 14, lines 7-65).
When the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to use an opening/closing valve disposed below the container, for more precise control of the release of liquid.
Conclusion
Examiner does not provide prior art for claims 4 and 5 at this juncture.
Examiner recommends that Applicant carefully review each identified reference and all objections/rejections before responding to this office action to properly advance the case in light of the pertinent objections/rejections and the prior art. With respect to the patentability analysis, Examiner has attempted to claim map to one or more of the most suitable structures or portions of a reference. However, with respect to all OAs, Examiner notes that citations to specific pages, columns, paragraphs, lines, figures or reference numerals, in any prior art or evidentiary reference, and any interpretation of such references, should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably disclosed and/or suggested to one having ordinary skill in the art. The use of publications and patents as references is not limited to what one or more applicant/inventor/patentee describes as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. MPEP §2123.
Examiner further recommends that for any substantive claim amendments made in response to this Office Action, or to otherwise advance prosecution, or for any remarks concerning support for added subject matter or claim priority, that Applicant include either a pinpoint citation to the original Specification (i.e. page and/or paragraph and/or line number and/or figure number) to indicate where Applicant is drawing support for such amendment or remarks, or a clear explanation indicating why the particular limitation is implicit or inherent to the original disclosure.
Electronic Inquiries
Any inquiry concerning this communication or an earlier communications from the examiner should be directed to Hayden Brewster whose telephone number is (571) 270-1065. The examiner can normally be reached M-Th 9 AM - 4 PM.
Alternatively, to contact the examiner, Applicant may send a communication, via e-mail or fax. Examiner’s direct fax number is: (571) 270-2065. Examiner's official e-mail address is: "Hayden.Brewster@uspto.gov." However, since e-mail communication may not be secure, Examiner will not respond to a substantive e-mail unless Applicant’s communication is in accordance with the provisions of MPEP §502.03 & related sections that discuss the required Authorization for Internet Communication (AIC). Nonetheless, all substantive communications will be made of record in Applicant’s file.
To facilitate the Internet communication authorization process, Applicant may file an appropriate letter, or may complete the USPTO SB439 fillable form available at https://www.uspto.gov/sites/default/files/documents/sb0439.pdf, preferably in advance of any substantive e-mail communication. Since one may use an electronic signature with this particular form, Applicant is encouraged to file this form via the Office’s system for electronic filing of patent correspondence (i.e., the electronic filing system (Patent Center)). Otherwise, a handwritten signature is required. In addition to Patent Center, Applicant can submit their Internet authorization request via US Postal Service, USPTO Customer Service Window, or Central Fax. Examiner can also provide a one-time oral authorization, but this will only apply to video conferencing. It is improper to request Internet Authorization via e-mail.
Examiner interviews are available via telephone, in-person, and via video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) form available at http://www.uspto.gov/interviewpractice, or Applicant may call Examiner, if preferable. Applicant can access a general list of patent application forms at either https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012 (applications filed on or after September 16, 2012) or https://www.uspto.gov/patent/forms/forms (applications filed before September 16, 2012). Note that the language in an AIR form is not a substitute for the requirements of an AIC, where appropriate. The mere filing of an Applicant Initiated Interview Request Form (PTOL-413A) or a Letter Requesting Interview with Examiner, in EFS-Web, may not apprise Examiner of such a request in a timely manner.
If attempts to reach the Examiner are unsuccessful, Applicant may reach Examiner’s supervisor, Bobby Ramdhanie at 571-270-3240. The central fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAYDEN BREWSTER/Examiner, AU 1779