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 .
Status of Claims
Claims 1-11 are rejected.
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 1-3, and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tomioka et al. (JP H10255861 A, “Tomioka”) in view of Sakai et al. (US 6811923 B1, “Sakai”). The machine translation is used herein for citation purposes.
Regarding claim 1, Tomioka discloses a battery processing method (see [0001] “waste treatment method” & “treatment method or a recycling method for a used lithium ion battery”) comprising: a preparation step to prepare a pulverized piece including an electrode substrate and an active material layer (see [0008] “in order to effectively recycle a composite material product containing metals, inorganic substances, and organic substances, it is preferable to separate and sort the materials without lowering the original energy potential of each material”; see [0011] “active material layer of an electrode element portion”), the active material layer including a resin component and being provided on the electrode substrate (see [0040] “resin binder and the like in the electrode element portion”); a heating step to heat the pulverized piece at a temperature not lower than a degradation starting temperature of the resin component and lower than a degradation peak temperature of the resin component (see [0040] “when the heating temperature is set to about 300 °C or higher, the resin binder and the like in the electrode element portion are decomposed”); and a pulverization step to pulverize the pulverized piece (see [0042] “to easily peel and separate an active material layer of an electrode element part and pulverize the active material layer”), wherein in the heating step, the resin component is softened (see [0030] “heated to at least the softening point of the resin”), and in the pulverization step, the pulverized piece in a state where the resin component has been softened is pulverized by a hammer crusher (see [0138] “impact was applied with a hammer”) and thereby the active material layer is peeled from the electrode substrate (see [0042] “to easily peel and separate an active material layer of an electrode element part and pulverize the active material layer, and to perform the pulverization in a heated state at 200 °C or higher, if necessary, as a means for more efficiently performing the disposal of a battery”), and fragments of the electrode substrate from which the active material layer has been peeled are spread flatly (see [0042] & see [0055] “in this separation treatment, the electrode mixture on the surface, which is easily peeled off due to the decomposition of the binder, falls down from the mesh dish 35 and is easily separated from the support substrate”). Tomioka does not explicitly disclose have a particle area from 400 mm2 to 1000 mm2.
Sakai teaches “the positive electrode waste is processed into chips of 100x100 mm or less by means of a shredder” (see P31 col 31 par 6) and teaches peeling from a substrate (see P16 col 2 lines 65-67 & P17 col 3 par 1). Sakai teaches hammer mill (see P22 col 13 par 6 “the Li containing composite metal oxide obtained by the synthesis process is milled by use of a crusher, such as a ball mill, cutter mill, hammer mill, jet mill or the like”).
Tomioka and Sakai are analogous to the current invention because they are related to the same field of endeavor, namely process for producing waste electrodes (see P31 col 31 par 5).
Sakai teaches a range of 100x100 mm or less, which overlaps with the claimed range of 400 mm2 to 1000 mm2. MPEP 2144.05 I states that 'In the case where the 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)'.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the hammer disclosed by Toshiba (see [0138]) would crush the material in a similar manner as the hammer mill as taught by Sakai (see P22 col 13 par 6) and doing so would produce a chip size as taught by Sakai (see P31 col 31 par 6).
Regarding claim 2, Tomioka discloses the battery processing method of claim 1 and further discloses wherein a rate of peeling of the active material layer from the electrode substrate is 80% or more (see [0054] “the weight of the obtained cobalt oxide was measured, and the recovery rate of cobalt was calculated to be 98% which lies within the claimed range).
Regarding claim 3, Tomioka discloses the battery processing method of claim 1 and further discloses wherein the heating step and the pulverization step are carried out at the same time (see [0042] “to easily peel and separate an active material layer of an electrode element part and pulverize the active material layer, and to perform the pulverization in a heated state at 200 °C or higher, if necessary, as a means for more efficiently performing the disposal of a battery”).
Regarding claim 5, Toshiba discloses the battery processing method of claim 1 and further discloses wherein in the preparation step, the pulverized piece thus prepared includes a separator, and in the pulverization step, the separator, the electrode substrate, and the active material layer are separated from each other (see [0042] “to easily peel and separate an active material layer of an electrode element part and pulverize the active material layer, and to perform the pulverization in a heated state at 200 °C or higher, if necessary, as a means for more efficiently performing the disposal of a battery”; see [0049] “the other battery element parts (separator, solvent, metals) taken out are separately recovered”).
Regarding claim 6, Toshiba discloses the battery processing method of claim 5, and further discloses wherein the pulverized piece is heated to a temperature of less than a melting point of the separator (see [0030] “heated to at least the softening point of the resin”; see [0015] “heat treatment” & “lower than a temperature at which fluorine in the binder of the electrode element portion (electrode) does not volatize (PVdF: 400 °C., fluororubber: 300 °C) to volatilize only the organic binder component, so that the generation of harmful substances is suppressed, while the electrode support and the active material layer are easily peeled off due to a difference in thermal expansion”).
Regarding claim 7, Tomioka discloses the battery processing method of claim 5 and further discloses wherein the pulverized piece is heated to a temperature of less than 160 °C (see [0042] “to easily peel and separate an active material layer of an electrode element part and pulverize the active material layer, and to perform the pulverization in a heated state at 200 °C or higher, if necessary, as a means for more efficiently performing the disposal of a battery”; see [0015] “heat treatment” & “temperature higher than the temperature at the time of electrode production (generally 100 to 200 °C)”).
Tomioka discloses a range of 100 to 200 °C, which overlaps with the claimed range of less than 160 °C. MPEP 2144.05 I states that 'In the case where the 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)'.
Regarding claim 8, Toshiba discloses the battery processing method of claim 5 and further discloses wherein the separator is peeled from the electrode substrate and the active material in the pulverization step (see [0042] “to easily peel and separate an active material layer of an electrode element part and pulverize the active material layer, and to perform the pulverization in a heated state at 200 °C or higher, if necessary, as a means for more efficiently performing the disposal of a battery”; see [0049] "the other battery element parts (separator, solvent, metals) taken out are separately recovered”).
Regarding claim 9, Tomioka discloses the battery processing method of claim 1 and further discloses wherein the pulverized piece is heated to a temperature of less than 400 °C (see [0052] “support substrate and the active material (mixture) layer of the electrode can be effectively peeled off by heating at 400 °C”; see [0014] “heat treatment at a temperature of, for example, about 40 to 400 °C in order to remove the remaining solvents and binder components for peeling (decomposition) of the mixture from the substrate”).
Tomioka discloses a range of 40 to 400 °C, which overlaps with the claimed range of less than 400 °C. MPEP 2144.05 I states that 'In the case where the 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)'.
Regarding claim 10, Tomioka discloses the battery processing method of claim 1 and further discloses wherein the pulverized piece is heated to a temperature of less than or equal to 300 °C (see [0015] “heat treatment” & “temperature higher than the temperature at the time of electrode production (generally 100 to 200 °C)”).
Tomioka discloses a range of 100 to 200 °C, which overlaps with the claimed range of less than or equal to 300 °C. MPEP 2144.05 I states that 'In the case where the 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)'.
Regarding claim 11, Tomioka discloses the battery processing method of claim 1 and further discloses wherein the pulverized piece is heated to a temperature of from 120 °C to 180 °C (see [0015] “heat treatment” & “temperature higher than the temperature at the time of electrode production (generally 100 to 200 °C)”).
Tomioka discloses a range of 100 to 200 °C, which overlaps with the claimed range of 120 °C to 180 °C. MPEP 2144.05 I states that 'In the case where the 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)'.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Tomioka et al. (JP H10255861 A, “Tomioka”) in view of Sakai et al. (US 6811923 B1, “Sakai”) as applied to claim 1 above, and further in view of Kaplan et al. (US 20160045841 A1, “Kaplan”). The machine translation is used herein for citation purposes.
Regarding claim 4, Tomioka discloses the battery processing method of claim 1, but does not explicitly disclose wherein the heating step and the pulverization step are carried out repeatedly.
Kaplan teaches continuous process (see [0801] “the pulverization can be accomplished by continually grinding” & see [0807] “the leaching of the pulverized membrane electrode assemblies can be assisted by optional heating”).
Tomioka and Kaplan are analogous to the current invention because they are related to the same field of endeavor, namely battery recycling process (see [0012]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate continuous process, as suggested by Kaplan (see [0801]) into the battery processing method of Tomioka because a skilled artisan would recognize doing so improves the efficiency of the battery processing.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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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/S.A.A./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
