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 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 14-19 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 14 and 15, the phrase "so-called" renders the claim indefinite because it is unclear to what degree this extends the breadth of the claimed redox species. While an oxidizing and reducing species are understood, referring to them as “so-called” imparts a level of ambiguity into the breadth of the terms.
Regarding claim 15, the phrase second redox species renders the claim unclear as claim 15 depends from claim 12, which discloses no first redox species.
Regarding claim 16, the phrase “the pair of redox species” lacks antecedent basis as there are no such species in claim 12 from which claim 16 depends.
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.
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 12-17, 20 and 22-27 rejected under 35 U.S.C. 103 as being unpatentable over Deak et al. (US 10,270,139).
Regarding claim 12, Deak discloses a method for dismantling and recycling electrochemical batteries (i.e. generators) (title and abstract). Deak further discloses the electrochemical cells can contain and anode and cathode (column 1, lines 45-55) whereby the battery materials can contain sodium or lithium (column 1, lines 25-35; column 3, lines 10-15). Deak further discloses that the batteries can be discharged for recycling via immersion in a liquid water solution (column 20, lines 42-56) whereby such is commonly done once a battery loses enough voltage and no longer has useful life (column 16, lines 40 - 51). Deak further teaches that the water can be blended with a lithium or sodium hydroxide to facilitate removal of reactive materials (column 20, lines 50-55) whereby the foregoing hydroxides are by their nature ionic. Deak additionally teaches that the solution can contain calcium carbonate (column 24, lines 17-21) which by nature is conductive when in an aqueous solution. Calcium carbonate is by its nature a powder. Mixed with the ionic fluid means the powder is in solution, but it still reads on the claims as the foregoing amounts to a water-based ionic fluid containing a carbonate additive which is powder by its nature and becomes conductive in the presence of the aqueous solution.
Deak discloses the particulars of the present invention, as disclosed above, but does so through the collective teachings of their disclosure, rather than in one neatly packaged embodiment. However, the examiner notes that simply utilizing Deak for all that it teaches and looking to various portions of the reference would have been obvious for the purpose of producing a recycled battery. The MPEP (2163) notes that combining prior art elements according to known methods to yield predictable results is a matter of obviousness and the foregoing amounts to picking and choosing known additives and method steps all from within the same reference document.
Regarding claim 13, as noted above Deak discloses the electrodes containing lithium or sodium (column 1, lines 25-35; column 3, lines 10-15).
Regarding claims 14 and 15, as noted above water is present and water would be able to naturally act as a reducing and oxidizing agent depending on which electrode of the depleted battery it interacts with.
Regarding claims 16, water is considered organic.
Regarding claim 17, the metallic pair is not directly required and thus fails to overcome the prior art of record. Claim 16 lists as optional.
Regarding claim 20, Deak discloses the presence of iso-butanol (column 20, line 49) which would be ionic, to a degree, in the presence of the strong base of the metal hydroxide, discussed above.
Regarding claim 22, Deak discloses an inert atmosphere such as argon gas (column 17, lines 25-30).
Regarding claims 23, Deak discloses cutting the battery prior to liquid submersion (column 50-58). Cutting is considered dismantling.
Regarding claim 24, Deak discloses processing many cells at once (column 17, lines 30-38), which implies or renders highly obvious the fact that the cells are stored prior to processing as they must have been compiled prior to batch processing.
Regarding claim 25, as noted in claim 12, the use of calcium carbonate is known.
Regarding claims 26 and 27, Deak fails to explicitly teach the process being performed during transport to a site; however, the process for recycling is known and would be expected to work regardless of the location at which it is performed. The MPEP notes that it is not patentably distinguishing to use a known technique (treating a battery with an ionic solution) to improve similar devices (prepare a battery in transit for recycling) in the same way (prepare for recycling). Additionally, the MPEP notes that something that is work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. The foregoing is just a variation in the same field. See MPEP 2143.
Allowable Subject Matter
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. While deep eutectic solvents are well known, their use in the specific method, as provided in claim 12, is not taught or suggested in the prior art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sanchez et al, US20190229315, discloses a electrochemical generator system (abstract) which includes an electrolyte sandwiched between two electrodes (figure 16) whereby the electrolyte includes various conductive powders, one or more ionic liquids, and the possible presence of carbonates ([0106]-[0107]); however, the electrolyte is solid and it is not used for the purpose/method of discharging the battery.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL N ORLANDO whose telephone number is (571)270-5038. The examiner can normally be reached M-F 8:00 AM - 4:30 PM.
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, Alexa Neckel can be reached at (571) 272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746