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 .
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.
Claim Amendments
Applicant’s amendments to the claims filed 7 May 2026 have been entered and considered for this Action. The prior claim objections and rejections under 35 USC § 112 are withdrawn.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-5 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (TW I644468 B) in view of Chaiko (US 2015/0211092 A1). The previously provided English machine translation of Lin (TW I644468 B) is used in the analysis below.
Regarding claim 1, Lin discloses a method of obtaining a metal from a spent lithium-ion battery (cobalt-containing solution from waste lithium ion batteries; [0011]), the method comprising:
separating an electrode portion from a crushed Li-ion battery (the positive electrode portion is crushed into powder by a grinder and then screened with a 60-mesh sieve to obtain a positive electrode portion powder with a particle size range smaller than 60 mesh; [0034]);
contacting a leaching solvent to the separated electrode portion to form an electrode dispersion (the lithium battery cathode material powder is added to a first acid solution; [0036]);
heating the electrode dispersion to a temperature of 80 °C by applying microwave radiation (it is extracted in a microwave system; [0036] and Table 1, which is translated below);
maintaining the temperature of the electrode dispersion at 80 °C for a period of 5 minutes by applying microwave radiation to the heated electrode dispersion (the extraction reaction temperature in the microwave system is 40°C to 100°C; [0036] and 80 °C for 5 min, in particular, from Table 1);
filtering the electrode dispersion to obtain the metal (subjected to a separation step (e.g., filtration or centrifugation); [0037]).
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Lin does not disclose the microwave radiation being applied intermittently in a plurality of pulses separated by non-irradiation intervals.
However, Chaiko also teaches use of microwave radiation during a leaching process ([0002]) and Chaiko further teaches that by applying the microwave intermittently in a plurality of pulses separated by non-irradiation intervals excessive heating of the leach slurry can be prevented ([0028] and Fig. 9-14).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the microwave heating in the method of Lin intermittently in a plurality of pulses separated by non-irradiation intervals. One of ordinary skill in the art would have been motivated to do so in order to prevent excessive heating of the leach solution, as taught by Chaiko.
Regarding claim 3, modified Lin teaches the method of claim 1 where the leaching solvent comprises sulfuric acid (Group II involved microwave extraction, using 2M sulfuric acid; [0046] referencing Table 1).
Regarding claims 4 and 5, modified Lin teaches the method of claim 1 and further teaches adding hydrogen peroxide to the leaching solvent ([0036] and Table 1). Though Lin uses hydrogen peroxide as a reducing agent, it is well known that hydrogen peroxide is also an oxidizing agent and therefore adding hydrogen peroxide meets the limitations of claims 4 and 5.
Regarding claims 9 and 10, modified Lin teaches the method of claim 1, where the electrode dispersion is heated to 80 °C for 5 minutes, which falls in the instantly claimed ranges of 60 °C to 80 °C for a period in a range from 30 seconds to 5 minutes, recited in claims 9 and 10.
Claims 2, 4-5, 7-8, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (TW I644468 B) in view of Chaiko (US 20150211092 A1), as applied to claims 1 and 3 above, and further in view of Wang et al. (CN 112322899 A). The previously provided English machine translations of Lin (TW I644468 B) and Wang et al. (CN 112322899 A) are used in the analysis below.
Regarding claim 2, modified Lin teaches the method of claim 1, but does not teach the metal comprising iron, aluminum, or copper.
However, Wang teaches a similar process to Lin for leaching waste lithium-ion battery electrodes ([0002]) using microwave radiation for heating during a sulfuric acid leaching step ([0056], [0085]-[0086]) in order to recover valuable metals ([0049] and [0100]). Wang further teaches that the metals recovered in the leachate can include aluminum, iron, and lithium as their sulfates (Example 3, [0101]-[0113] of translation; [0102] and [0108] of original, copied below).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the method of Lin to lithium iron phosphate electrodes in order to recover aluminum, iron, and lithium, thereby arriving at the instantly claimed invention. One of ordinary skill in the art would have been motivated to do so because Wang teaches that a similar method can be applied to batteries containing these materials in order to recycle them and recover valuable material that is otherwise discarded and cause serious environmental pollution ([0049]).
Regarding claims 4 and 5, modified Lin teaches the method of claim 3 and also teaches the addition of hydrogen peroxide to the sulfuric acid leaching solvent. Lin teaches that hydrogen peroxide, though it can be considered an oxidizing agent, actually serves the role of a reducing agent in their method.
However, Wang also teaches the inclusion of hydrogen peroxide in the sulfuric acid leaching solution applied to waste lithium ion batteries, and also teaches that hydrogen peroxide can serve as an oxidant to oxidize Fe2+ to Fe3+ and promote leaching ([0063]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include hydrogen peroxide in the sulfuric acid leaching solvent used by Lin in order to serve as an oxidizing agent, as taught by Wang. One of ordinary skill in the art would have been motivated to do so in order to promote the leaching process, as taught by Wang.
Regarding claims 7, 13 and 14, modified Lin teaches the method of claim 1 but does not explicitly mention stirring the electrode dispersion.
However, Wang teaches that their microwave reactor has a stirring device ([0069]) and that the stirring speed of the reaction is important in the heterogeneous reaction being performed during leaching with acid ([0070]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Lin to include stirring of the electrode dispersion while applying microwave radiation, to do so continuously, and to also stir during the step of maintaining the temperature of the electrode dispersion while applying microwave radiation, as taught by Wang. One of ordinary skill in the art would have been motivated to do so in order to ensure that the concentration of local reaction products is not too high and the acid concentration is not too low anywhere in the reaction mixture, as taught by Wang ([0070]).
Regarding claim 8, modified Lin teaches the method of claim 1, but does not explicitly discuss controlling application of the microwave radiation using a controller.
However, Wang teaches that in their microwave-heated leaching process the microwave power is continuously adjusted during the process to keep the material at the set temperature ([0086]). This implies that the heating is controlled by a controller. Even if it were not controlled by a controller but done manually, the courts have held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art. In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958); MPEP 2144.04(III).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to maintain the temperature of the electrode dispersion in the method of Lin by controlling the application of the microwave radiation using a controller, as taught by Wang. One of ordinary skill in the art would have been motivated to do so in order to control the temperature in the desired range more precisely. Such a modification represents the use of known technique to improve similar microwave leaching methods in the same way. MPEP 2143(C).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lin (TW I644468 B) in view of Chaiko (US 2015/0211092 A1), as applied to claim 1 above, and further in view of Wang et al. (US 2017/0077564 A1; hereinafter “WPI”). The previously provided English machine translation of Lin (TW I644468 B) is referenced in the analysis below.
Regarding claim 6, modified Lin teaches the method of claim 1 but is silent with respect to the pH of the leaching solvent. Though one would expect the pH of the sulfuric acid leaching solution to be less than 7.0 and likely fall in the claimed range, it may have also been less than zero.
However, like Lin, WPI also teaches the leaching of metals from lithium ion battery cathode materials using sulfuric acid and hydrogen peroxide ([0035]). WPI further teaches that control of pH allows for the selective extraction of certain metals and that a leaching solvent with a pH of between 3.0-7.0 keeps manganese, cobalt, and nickel in solution while precipitating iron, copper, and aluminum ([0036]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a leaching solvent with a pH of 3-7 in the method of Lin. One of ordinary skill would have been motivated to do so in order to afford selectivity to the leaching process and to separate manganese, cobalt, and nickel from iron, copper, and aluminum, as taught by WPI.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Lin (TW I644468 B) in view of Chaiko (US 20150211092 A1), as applied to claim 1 above, and further in view of Wang et al. (CN 112322899 A) and Jeong et al. (US 2013/0011731 A1). The previously provided English machine translations of Lin (TW I644468 B) and Wang et al. (CN 112322899 A) are used in the analysis below.
Regarding claim 11, modified Lin teaches the method of claim 1, but does not teach the electrode portion comprising the metal, and a black mass comprising graphite and metal oxides.
However, Wang teaches that their similar method can be applied to typical ternary lithium batteries, and Table 1 of Wang (provided below) shows the elements of the electrode portion used by Wang in one embodiment of their invention (Example 1).
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The sources of the elements in Table 1 can be attributed to the electrode portion comprising electrode metal (iron and copper) and a black mass comprising carbon (C from carbon black; [0052]) and metal oxide (Li, Ni, Co, Mn from ternary lithium nickel/cobalt/manganese oxide; [0004]). While the carbon black taught by Wang can be considered as comprising graphite, as suggested by the characterization of the typical lithium ion battery cathode comprising graphite in the instant specification [0019], Wang does not specifically mention graphite.
However, Jeong teaches that graphite can replace carbon black as the conducting agent in cathodes of lithium ion batteries ([0036]). This graphite would therefore end up in the black mass of lithium ion batteries so constructed.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use in the method of Lin electrodes portions comprised of the electrode metal and a black mass comprising graphite and metal oxides, as taught by Wang and Jeong. One of ordinary skill in the art would have been motivated to do so because Jeong and Want teach that such electrode portions would be recovered from the waste lithium ion batteries that Wang and Lin are aiming to recycle, and Wang shows that such compositions can be treated with a very similar method.
Regarding claim 12, modified Lin teaches the method of claim 11, but Lin does not teach filtering the electrode dispersion through a sieve to obtain a graphite powder.
Wang teaches filtering the electrode dispersion after microwave leaching to obtain a carbon powder (carbon black residue; [0100]). Wang does not use the term graphite to describe the carbon content of their cathode materials.
However, Jeong teaches that graphite can replace carbon black as the conducting agent in cathodes of lithium ion batteries ([0036]). This graphite would therefore end up replacing the carbon black of lithium ion batteries so constructed.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the method of Lin a filtering of the electrode dispersion through a sieve (see Claim Interpretation) to obtain a graphite powder. One of ordinary skill in the art would have been motivated to do so because Wang teaches that a filtering step allows the separation of the carbon residue from the metal-containing leachate, and Jeong teaches that in certain batteries this carbon will be a graphite powder instead of the carbon black taught by Wang.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,224,414 in view of Wang et al. (CN 112322899 A) and Chaiko (US 2015/0211092 A1). The previously provided English machine translation of Wang et al. (CN 112322899 A) is used in the analysis below.
The claims of the ‘414 patent require all the limitations of the instant claims except for 1 ) separating an electrode portion from a crushed Li-ion battery and subjecting this separated portion to the leaching solvent, and 2) the microwave radiation being applied intermittently in a plurality of pulses separated by non-irradiation intervals.
However, Wang teaches that lithium ion batteries should be crushed in a pre-treatment and because the methods of Wang are directed to the positive electrode portion, one of ordinary skill would have recognized they were also separated prior to microwave leaching ([0015] and [0036]).
Furthermore, Chaiko also teaches use of microwave radiation during a leaching process ([0002]) and also teaches that by applying the microwave intermittently in a plurality of pulses separated by non-irradiation intervals excessive heating of the leach slurry can be prevented ([0028] and Fig. 9-14).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to conduct these pre-treatment steps taught by Wang before engaging in the method of the ‘414 patent. One of ordinary skill in the art would have been motivated to do so because the electrode is the portion that will contain the metals, particularly those recited in claim 2 of the ‘414 patent and because they would have been simply combining prior art methods with the predictable result of having faster and more specific reactions occur by not using the whole battery.
It would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the microwave heating in the method of the ‘414 patent intermittently in a plurality of pulses separated by non-irradiation intervals. One of ordinary skill in the art would have been motivated to do so in order to prevent excessive heating of the leach solution, as taught by Chaiko.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,500,282 in view of Wang et al. (CN 112322899 A) and Chaiko (US 2015/0211092 A1). The previously provided English machine translation of Wang et al. (CN 112322899 A) is used in the analysis below.
Although claim 1 of the ‘895 application is drawn to a method of extracting black mass, it would also provide a method of obtaining a metal salt in the first filtrate, and therefore renders obvious all the limitations of instant claim 1, except for separating an electrode portion from a crushed Li-ion battery and the microwave radiation being applied intermittently in a plurality of pulses separated by non-irradiation intervals.
However, Wang teaches that lithium ion batteries should be crushed and because the methods of Wang are directed to the positive electrode portion, one of ordinary skill would have recognized they were also separated prior to microwave leaching ([0015] and [0036]).
Furthermore, Chaiko also teaches use of microwave radiation during a leaching process ([0002]) and also teaches that by applying the microwave intermittently in a plurality of pulses separated by non-irradiation intervals excessive heating of the leach slurry can be prevented ([0028] and Fig. 9-14).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to conduct these pre-treatment steps taught by Wang before engaging in the method of the ‘895 application. One of ordinary skill in the art would have been simply combining prior art methods with the predictable result of having faster and more specific reactions occur by not using the whole battery.
It would have been further obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the microwave heating in the method of the ‘282 patent intermittently in a plurality of pulses separated by non-irradiation intervals. One of ordinary skill in the art would have been motivated to do so in order to prevent excessive heating of the leach solution, as taught by Chaiko.
Wang also teaches that iron salts can be obtained from an analogous process, and therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method of claim 1 of the ‘895 patent to also do so, and to thereby arrive at the limitations of instant claim 2.
Claims 2-15 of the ‘282 patent recite the remaining limitations of the instant claims.
Response to Arguments
Applicant’s arguments, see pages 6-7 of the reply filed 7 May 2026, with respect to the rejection of claims 1, 3-5 and 9-10 under 35 USC § 102 have been fully considered and are persuasive: Lin does not teach the intermittent microwave treatment required by the amended claims. Therefore, all prior rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made in view of Chaiko, as analyzed above.
Applicant’s remaining arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the arguments.
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 Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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