DETAILED ACTION
Application 18/165176, “PROCESSING THERMALLY PRETREATED AND UNTREATED BATTERIES AND THEIR PRODUCTION REJECTS”, was filed with the USPTO on 2/6/23 and claims priority from a foreign application filed on 2/8/22.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action on the merits is in response to communication filed on 4/23/26.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a decomposing device for mechanically decomposing…” at claim 1;
“a separating unit for separating…” at claim 1;
“fiber compactor unit configured for compacting…” at claim 1;
“grain size separating unit configured for separating…” at claim 13;
“metal separating unit configured for separating…” at claim 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-20 are is/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 pre-AIA the applicant regards as the invention.
Regarding claims 1 and 20, it is unclear what is meant by “wherein the fiber compactor unit is configured for compacting the lightweight portion whilst a separation of a further active material”.
More specifically, “a separation of a further active material” is a noun clause, without an action. “whilst” normally implies simultaneous action, but the noun clause does not have an action. The claim may be intended to mean -- wherein the fiber compactor unit is configured for compacting the lightweight portion whilst a separation of a further active material is performed--.
Allowable Subject Matter
Claim 12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
Regarding dependent claim 12, the closest prior art includes Turk (USP 6276619) and Ma (USP 8657929) which are relevant to the claimed invention as described in the rejection of base claim 1. The cited art fails to further teach the invention of claim 1, wherein the fiber compactor unit and the air flow are configured as described in claim 12. For example, the fiber compactor unit of Turk is a baghouse/filter system which would not be expected to further include the features of claim 12.
Additionally, an updated search has been performed, but has not yielded other closer prior art which can cure the deficiencies of the above cited art, or which independently teaches the invention of claim 12.
Therefore, claim 12 is not rejected under 35 USC 102 or 103, but is objected to for being dependent on a rejected base claim 1.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments filed on 4/23/26 have been fully considered and were found persuasive in part. Specifically, applicant’s argument on page 11 that the Alavi system requires the use of heated drums for drying the lightweight material before being fed to the screen; therefore, the system could not be modified in view of Turk such that air flow from the separation device flows onto the compactor as claimed, has been found persuasive. Applicant’s other arguments were found to be moot.
Therefore, the previously presented rejection has been withdrawn.
It is noted that new ground(s) of rejection has been presented in view of the added requirement “wherein the fiber compactor unit is configured for compacting the lightweight portion whilst a separation of a further active material [is performed]”, which is interpreted to further require simultaneous separation and compaction.
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 of this title, 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 1-3, 6, 8, 9 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Turk (USP 6276619) and Ma (USP 8657929).
Regarding claims 1, Turk teaches a system (Fig. 1), and corresponding method, for processing a feed material, the system comprising
a decomposing device (item 50) for mechanically decomposing the feed material to a lightweight portion and a heavyweight portion (lightweight and heavyweight portions included in discharge flow 55), wherein the decomposing device comprises an outlet for commonly discharging the lightweight portion and the heavyweight portion (item 55 flows through an outlet conduit),
a separating unit (item 70) for separating the lightweight portion from the heavyweight portion (lightweight portion goes up via 76, while heavyweight portion falls down via 74),
wherein the separating unit is coupled with the supplying device for receiving the lightweight portion and the heavyweight portion (a conduit guides mixed feed to the separating unit), and
a fiber compactor unit (item 78),
wherein the fiber compactor unit is coupled with the separating unit for receiving the lightweight portion (a conduit joins items 70 to item 78),
wherein the fiber compactor unit is configured for compacting the lightweight portion (as the airs stream 76 impinges on a collector/permeable bag/filter, dust is accumulated [compacted] thereon as described in c5:8-25),
wherein the fiber compactor unit comprises a perforated plate, on which the lightweight portion is placeable (the perforated plate is obvious in view of the “air permeable bags, filters, or other dust separation means” of c5:13-14),
wherein an air flow from the separating unit transports the lightweight portion in the fiber compactor unit (“air stream 76” conveys the separated lightweight material portion to the fiber compactor unit 78), wherein the air flow is directed such that the air flow passes the perforated plate and pushes the lightweight portion against the perforated plate (c5:8-25),
wherein the fiber compactor unit comprises a stripping unit for stripping off the lightweight portion from the perforated plate (“Dust collector 78 also preferably includes means for shaking dust from the collection bags or filters, and means for removing and collecting the accumulated dust”, c5:14-16).
Turk teaches that the fiber compactor unit (item 78) configured to include permeable bags, filters or other dust separation means (C5:14), and ideally exhausts clean air (c5:17-18), but does not appear to teach compactor unit configured for separation of a further portion of the feed material [interpreted as other than the dust which is collected as describe in c5:12-14], and that the air flow blows a further portion [other than the dust which is collected] of the feed through the perforated plate.
In the recycling art, Ma teaches that a single filter may be insufficient to fully remove dust and clean an exhaust air and accordingly teaches a system including multiple filters, which each provide increased level of filtering or selective filtration of certain materials, such that multiple portions of the dust are collected by the multiple filters, with a non-filtered portion of the feed passing through the first filters to secondary filters, so as to ultimately exhaust a clean gas (e.g. Fig. 1; c5:15-c2:13).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure the compactor unit of Turk for separation of a further portion of the feed material, and that the air flow blows a further portion [other than the dust which is collected in the first filter] of the feed through the perforated plate, for the benefit of configuring the unit to provide a higher degree of filtration due to the use of plural filters, and/or improved selectivity as the different filters can be configured to selectively separate different materials from the feed for collection as taught by Ma.
The requirement that compaction of the lightweight portion whilst a separation of further active material is found to be suggested by this combination because a baghouse/filter with multiple filters provides compaction on a first filter, whilst some portion of the medium passes through to be filtered by a subsequent filter.
Turk further teaches that the feed material may be a product to be recycled (c1:11-13), but does not appear to teach wherein the feed material is battery waste.
However, as to system claim 1, it has been held that ““[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” (MPEP 2115). Here, although the prior art system is configured to process a different type of waste feed, the claimed apparatus does not appear to include any specific and identifiable structural features which configure the system to process battery waste, specifically. Therefore, claim 1 is unpatentable over the apparatus of the cited art, notwithstanding the prior art apparatus being intended to process a different type of feed.
Regarding claim 2, the cited art remains as applied to claim 1. Turk further teaches wherein the mechanical decomposing device forms an impact reactor (“primary grinder… hammer mill”, c4:59-67).
Regarding claim 3, the cited art remains as applied to claim 2. Turk further teaches wherein the decomposing device (item 78) comprises an upper inlet for filling in the feed, wherein the feed is conveyable to the inlet (see Fig. 1 where the feed is fed to an upper inlet of the decomposing device 78.
Regarding claim 6, the cited art remains as applied to claim 1. Turk further teaches (Fig. 1) wherein the separating unit (item 70) is arranged downstream of the outlet (outlet of items 55).
Regarding claim 8-9, the cited art remains as applied to claim 1. Turk further teaches wherein the separating unit is a flow classification which comprises a blower for generating an air flow, wherein the blower is controllable such that, by the air flow, the lightweight portion is separatable from the heavyweight portion, and the lightweight portion is conveyable to the fiber compactor unit (see Fig. 1 item 70 is a cyclone separator, which must employ some form of blower for generating the cyclone air current. See also c5:8-25 which describe the air stream conveying material to the compactor unit).
Regarding claim 19, the cited art remains as applied to claim 1. Turk further teaches wherein the system comprises at least one conveyor (conduit leading items 55 to 70), wherein the conveyor is arranged between the outlet of the decomposing unit and the separating unit for transporting the lightweight portion and the heavyweight portion in the separating unit (see Fig. 1; see also “blower” item 60).
Claims 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Turk (USP 6276619), Ma (USP 8657929) and Ando (US 2022/0173447).
Regarding claim 4-5, the cited art remains as applied to claim 1. Turk does not appear to teach wherein the wherein the outlet of the decomposing device is closable, such that the outlet is selectively opened for conveying waste feed out of the decomposing device, wherein the flap is configured for sequentially opening and for discharging the lightweight portion and the heavyweight portion through the outlet for a predetermined discharging time, wherein the discharging time is 0.25 min to 5 min.
In the recycling art, Ando teaches a crusher (item 8) may be provided with a double flap damper (item 9) on the outlet thereof to facilitate supply to a sorter (item 10).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure the decomposing device of Turk to include a double flap damper on the outlet thereof, as taught by Ando, in order to control the flow of the crushed/decomposed material as it exits the decomposing device, which is the normal function of a double flap damper. Additionally, it is noted that automating a manual activity has been held to be prima facie obvious (MPEP 2144.04 III); therefore, the requirement that the flap is configured to be controllable and to sequentially open and discharge material at the claimed times is found to be obvious because the skilled artisan would couple a control unit to the system, including the double flap damper, in order to automate the operation of the system.
Claims 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Turk (USP 6276619), Ma (USP 8657929) and Oh (US 2023/0231214).
Regarding claim 7, the cited art remains as applied to claim 1. Turk does not explicitly teach wherein the wherein the separating unit comprises a sieve for separating the lightweight portion from the heavyweight portion
However, Turk does teach using a cyclone separator (item 70) for separating heavy and light materials (items 74 and 76, respectively).
Moreover, in the recycling art, Oh teaches that a cyclone separation may be used to separate particles by mass, and that such a device may utilize both centrifugal force and a screen to facilitate separation by size (paragraph [0051]).
Thus, the claimed invention, wherein the separating unit comprises a sieve for separating the lightweight portion from the heavyweight portion, would have been obvious to a person having ordinary skill in the art at the time of invention since a cyclone type air separator may itself include a sieve for size control as taught by Oh.
Claims 10 and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Turk (USP 6276619), Ma (USP 8657929) and Bielagus (USP 6283300).
Regarding claim 10, 15 and 16, the cited art remains as applied to claims 1 or 9. Turk teaches separating a heavyweight material from a lightweight material using, as a separating unit, an air separator (c5:8-25), but does appear to detail the structure of the air separator.
In the air separator art, Bielagus teaches an air separator configured to separate a feed material based on the physical attributes, such as density of its constituents (c1:11-20). Bielagus further teaches that the air separator may comprise a downpipe, in which the lightweight portion and the heavyweight portion are conveyable along a conveying direction in a loose manner, wherein the blower guides the air flow substantially perpendicular to the conveying direction, such that the lightweight portion is separatable from the heavyweight portion by the air flow (see Fig. 1; c3:66-c4:28). Bielagus further teaches that these elements are conventional for an air density separator (c4:36-52).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure the air separator of Turk to include the structure recited in claim 10, since this is conventional structure of an air separator which conveys a mixed density material into a downpipe, and utilizes a circumferential vortex of blown air to separate the lightweight portion from the heavyweight portion. As to claims 15 and 16, Bielagus teaches the separating unit including the claimed structure such as the suction unit, separating system, separating unit, air classifier system, cyclone separator, as described above, and illustrated in Bielagus Fig. 1 (see also rejection of claim 12 below). It is noted that the suction is first implemented in the chamber 24, which is an air classifier which separates heavy materials from light materials, and the cyclone separator 56 further separates the light material from a further active material, the light material being supplied to a fiber compactor in the combined embodiment. Thus, this structure is obvious to include in the Turk system for the same benefit of facilitating the separation required by Turk’s separating unit, the structure of which is not described in detail by Turk.
Claims 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Turk (USP 6276619), Ma (USP 8657929), Billy (US 2023/0223610) and Cai (US 2023/0246294).
Regarding claim 13-14, the cited art remains as applied to claims 1. Turk teaches a system which includes a separating unit that separates waste into a heavy weight portion comprising metals and a lightweight portion using an air separator, but does not appear to teach the system including, coupled to the separating unit, a grain size separating unit which separates metal portion from active material portion, or a metal separating unit which separates the metal portion.
In the recycling, Billy teaches a system which comprises a grain size separating unit which separates metal portion from active material portion for the benefit of increasing the number and amount of recovered products (paragraph [0010]).
In the recycling art, Cai teaches a system which comprises a metal separating unit which separates a metal portion, for example into copper and aluminum for the benefit of collecting the valuable metals (see Fig. 1).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure the system of Alavi to couple the separating unit to a grain size separating unit for separating metal and active material portions and a metal separating unit for separating metal portions for the benefit of increasing the number and amount of recovered products as taught by Billy and/or Cai.
Claims 17 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Turk (USP 6276619), Ma (USP 8657929) and Sturges (US 2020/0243922).
Regarding claim 17, the cited art remains as applied to claim 1. Turk does not appear to teach wherein the system further comprises a housing, in which at least the decomposing device, the separating unit and the fiber compactor unit are arranged and are sealed from the environment.
In the recycling art, Sturges teaches that the multiple components of a recycling system may be contained in a sealed enclosure (paragraphs [0003-0004]) because some recyclable components are known to be reactive with humid air (paragraph [0022]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure system of Turk to include a housing, in which at least the decomposing device, the separating unit and the fiber compactor unit are arranged and are sealed from the environment, for the benefit of protecting the recyclable components form undesirable reactions as taught by Sturges.
As to claim 18, Alavi further teaches the system including a suction unit and an air filter, configured such that exhaust vented to the atmosphere has reduced impurities (c3:55-63, where the cyclone 15 provides suction and is coupled with a filter 16/17, such that the exhaust is free of smell, which indicates impurities). Thus, in the Alavi-Sturges combined embodiment, it is obvious to provide a suction opening on the housing, coupled with the suction unit and air filter, so that cleaner gas can be emitted from the sealed environment within the housing.
Claims 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Munshi (USP 6664006), Turk (USP 6276619), Ma (USP 8657929).
Regarding claim 20, Munshi teaches that it is important that batteries be recycled, and further teaches a battery which is designed to be simple to recycle and handle because lacks flammable, toxic and corrosive compounds that complicate recycling of a conventional battery (c28:35-65), but does not teach a preferred apparatus for facilitating the recycling.
In the recycling art, as described in the rejection of claim 1, Turk in view of Ma teaches a recycling apparatus capable of recycling a material into components of different weight and type by use of a system including multiple separating devices and filters, and a corresponding method for using the apparatus which includes the claimed method steps.
It would have been obvious to a person having ordinary skill in the art at the time of invention to employ an apparatus such as that of Turk (in view of Ma), and its corresponding method of using including the claimed method steps, to recycle battery waste, since this apparatus is capable of effectively separating a waste material into its various constituents for the purpose of recycling.
Relevant or Related Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, though not necessarily pertinent to applicant’s invention as claimed.
Kaneko (USP 5478664) system for recovering material from battery utilizing sieves and gravity separation means;
Ando (US 2022/0140412) system for of recycling batteries with improved efficiency;
Ku (US 2022/0401963) system for processing battery waste comprising gaseous separator for separating battery materials;
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMIAH R SMITH whose telephone number is (571)270-7005. The examiner can normally be reached Mon-Fri: 9 AM-5 PM (EST).
Examiner interviews are available via telephone, in-person, and 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) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tiffany Legette-Thompson can be reached on (571)270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEREMIAH R SMITH/Primary Examiner, Art Unit 1723
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