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 Interpretation
The following interpretation of the claims is relied on in the remainder of this Action. Claim 1 has been amended to recite “wherein the waste positive electrode is not pulverized into a powder and is not sieved” (emphasis added). As Applicant accurately argues, the waste positive electrode material is a material comprising a current collector having a positive electrode active material layer coated thereon. Thus, the claim precludes a pulverizing into a powder a current collector having a positive electrode active material layer that is coated thereon, and precludes the current collector having a positive electrode active material layer coated thereon from being sieved Thus, the claim allows sieving of a composition comprising uncoated pieces of current collector, active electrode material powder, and carbon powder.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-8, and 10-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The disclosure provides written description support for the element precluding pulverizing waste positive electrode into a powder. This comes from the fact that at paragraphs [0104] of U.S. Patent Application Publication No. 2024/0039070 (“as-published specification”) describe the crushing step in accordance with the invention as possibly including various milling techniques, including hammer-milling, which the person of ordinary skill in the art at the time of inventio necessarily involve pulverizing at least a portion of the positive electrode into powder. This is further supported by paragraph [0105] that states that in a continuous process, it is important that the crushing step be sufficient to break down the electrode into pieces small enough to be “highly fluid”, which is understood to be powder. Thus, by positively reciting both crushing methods that do, and those that do not include pulverizing the waste positive electrode into powder, support can be found for a method that precludes such pulverization. Which is to say that the claim now precludes many of the methods of performing the crushing step recited as part of the invention in the as-filed disclosure.
However, there is no support for the additional negative limitation precluduing sieving of the waste positive electrode. The only portion of the as-filed disclosure Applicant points to mentioning anything related to this is paragraph [0007] of the as published specification, which merely states “A method of directly recycling a positive electrode active material from a waste positive electrode…is being studied. As such a method, there [is] . . . crushing and screening.” Paragraph [0011] adds no additional clarification to this, simply stating “the crushing & screening method may be performed through the simplest process among the above methods. However, it is difficult to completely separate a current collector and a positive electrode active material, the positive electrode active material, the positive size distribution of the positive electrode active material is changed during a crushing process, and the battery characteristics of the recycled positive electrode active material are deteriorated due to residual binder.” Even if in arguendo one presumes “screening” should be read to include sieving, this at best this suggests the screening is used for separating current collector and active material. It does not, however, suggest separating waste electrode active material from anything else. Thus, there is no support for the claim language that precludes sieving of waste positive electrode.
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.
Claim(s) 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over
Chinese Patent Publication No. 105 895 854 to Cao, citing to the previously provided machine translation ("Cao") in view of U.S. Patent No. 8,616,475 to Smith ("Smith"). Regarding claims 1, 14, and 16, Cao discloses a method of recycling scrap materials from positive electrodes of lithium ion batteries. Cao at paragraph [0013]. A first step of crushing the electrode into small pieces is performed, followed by heating these pieces in air at 450-650 C for 90-150 minutes. Id. at paragraphs [0014] and [0015]. After heating, the material is sieved such that the aluminum current collector is separated from the electrode material. Id. at paragraph [0016]. The remaining electrode material is then washed with aqueous alkaline solution for 30 minutes, followed by precipitation and separation of the precipitate from the supernatant. Id. at paragraph [0049].
Cao discloses that its method is used on positive electrodes from lithium ion batteries which are known to include binder and conductive additive. Moreover, Cao discloses that its process is aimed at separating the metal oxide material from the carbon-containing binder and conductive additives. Cao is silent regarding the final step of adding lithium precursor and annealing at 400-1000 C. Nonetheless, Smith discloses related separation methods for separating lithium metal oxide material from lithium ion battery cathodes and includes a final step of adding 0.2-3% lithium hydroxide to lithium metal oxide having been float-separated from carbon and heating in air at 735 C in order to make up for any stoichiometric deficiency in the lithium metal oxide obtained. Smith at column 4 lines 3-7 and 55-57. Thus, in order to ensure that there is no stoichiometric lithium deficiency in the materials of Cao, the person of ordinary skill in the art at the time of invention would have had reason to add lithium hydroxide and heat in an at 735 C. Because the disclosed process is substantially similar to that of Applicant, it will necessarily result in the claimed particle size distributions.
Further regarding claim 17, Cao discloses that its method can be used on any metal oxide active
material commonly used as active material in lithium ion batteries, including LiNiMgCo Oxide materials in accordance with claim 17. Cao. at paragraph [0039].
Claims 18 is rejected under 35 U.S.C. section 103 as being unpatentable over Cao in view of Smith and further in view of U.S. Patent Application Publication No. 2018/0138514 to Schauer ("Schauer"). Cao and Smith are applied as described above. As noted, they result in lithium metal oxides that can be used as lithium ion cathode active materials. They are silent regarding coating the annealed precipitate with a coating agent comprising metals or carbon and heating at 100-1200 C. Schauer discloses that coating positive electrode active material particles with carbon nanotube pulp leads to improved conductivity. Schauer at paragraph [0025]. This is achieved by coating the electrode active material particles, including LiNMC materials such as those discussed in Cao, followed by heating at 165 C. Thus, in order to improve conductivity of electrodes made from the recycled materials of Cao, the person of ordina ry would have had reason to coat those particles with carbon nanotube pulp volowed by heating at 165 C.
Response to Arguments
Applicant’s arguments filed August 10, 2026, have been considered, all of which are found unpersuasive to patentability of the claims.
The Office agrees that the method of Cao requires sieving as a means of separating current collector pieces from active material powder and remaining waste electrode material that was not fully separated into component parts after its heat treating step. However, as noted above, there is no support for such negative limitation in the as-filed disclosure.
Applicant argues that its method is limited to simply cutting or shredding the waste positive electrode into pieces of approximately 1 cm x 1 cm dimension, which is substantially different than the method of Cao which involves crushing its electrode into particles of dimension 0.1-1.5mm. This argument, however, focuses on a single disclosed embodiment in Applicant’s specification. Like Cao, Applicant discloses a step of crushing the waste electrode before heat treating. This is required in every instance of Applicant’s disclosure. In addition to the cutting into large particles, Applicant discloses various milling techniques, including the hammer-milling used in Smith, as acceptable methods of performing that crushing, all of which are considered to be appropriate for arriving at particles having the recited particle size morphology. Indeed, as noted above, Applicant’s disclosure favors pulverization into a fluidic powder for continuous processes1. Thus, while Applicant’s disclosure includes embodiments that preclude pulverization into powder as its crushing step, it discloses other embodiments that include such pulverization and still result in the recited morphological properties.
Applicant next argues that the heating step of Cao is not on waste electrode material because it happens after the crushing step. This argument ignores the direct statement in Cao that “the aluminum particles obtained by screening in step c have a small amount of residual cathode material and carbon on their surface” at paragraph [0042]. Thus, even if the pulverizing step of Cao separates some active material from current collector, it directly teaches that at least some particles that include current collector coated with cathode active material remain after pulverization and thus are present during the heat treating step.
Applicant next continues to argue that Cao’s heating step cannot be performed in air because such a process would necessarily lead to oxidation and removal of conductive carbon. This argument is in contradiction to not only the clearest reading of Cao (as explained in the previous Action), but is in contradiction with the teachings of Smith and Applicant’s own teachings. Like Cao, Smith discloses pulverizing cathode electrodes followed by heating to decompose the binder material. Smith specifically discloses that this process is carried out in air, followed by sieving. Smith expressly discloses that its heating step is performed in air at temperatures from 400-800 C. Importantly, the next step of Smith involves a float-separation step to separate the active material from conductive carbon that remains. Thus, Smith confirms that the plain reading of Cao does not conflict with the fact that conductive carbon remains after the heating step of Cao. Indeed, Smith discloses that the heating in air assists in modifying the surface of the conductive carbon that remains to assist in float separation, thereby giving reason to perform the heating in air.
Additionally, Applicant’s disclosure teaches that if the heating were performed in a reducing environment or inert environment, then neither the binder nor the conductive material would decompose, and instead would carbonize onto the surface of the active material. As-published specification at paragraph [0108]. Yet this is not observed in Cao, with its conductive carbon material freely separating from the active material via float separation. Thus, Applicant’s own teachings further support the plain reading of Cao that its inventive method, like the method which it is aimed to improve, involves heating in air.
Applicant next alleges that the pulverization and sieving cannot result in the recited particle size distribution. Applicant relies on its disclosure in the background of the invention that “crushing and screening method changes the particle size distribution”, and that Applicant’s method “avoids crushing all together”. This is unpersuasive for several reasons on top of the fact that there does not appear to be any peak broadening in the XRD data of the recycled material of Cao as one would expect its recycling process as a whole led to a reduction in particle size.
First, as already discussed, Applicant’s method requires crushing and, in some instances, pulverization into powder. Applicant discloses all of those methods can lead to the claimed particle size distribution. Thus, whatever is meant by the disclosure in the background of the invention, it cannot be applied as a blanket over any method involving crushing.
Further, even if Applicant’s disclosure can be applied broadly to all simple crushing and screening methods, Cao discloses more than simply crushing and screening. In particular, Cao discloses a substantially similar washing step to that disclosed by Applicant2. In Applicant’s remarks it notes that its washing step is performed “so that fine powder of the active material itself is removed with the supernatant.” removal of unwanted small particles. Whether Cao intends its washing step to achieve that or not, given its substantial similarity to that disclosed by Applicant, the Office finds sufficient evidence exists to find it will also necessarily achieve the same result of removing small particles. MPEP 2112.01 (citing In re Best 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.").
To the extent that Applicant is alleging that the sieving in Cao (or Smith) impact the particle size distribution of active material, it is noted that Smith uses 200 mesh (75 micron) and Cao discloses 200-400 mesh (38-75 micron) openings, and they do not screen out any active material in either case. Thus it is unclear how this step could impact the particle size distribution of the active material in any way since it is there to simply remove other things, like chunks of battery casing, aluminum current collector, etc..
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT P MCCONNELL whose telephone number is (571)270-7531. The examiner can normally be reached 9am to 5pm M-F.
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, Barbara Gilliam can be reached at 571-272-1330. The 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.
/WYATT P MCCONNELL/ Primary Examiner, Art Unit 1727
1 Indeed, without this disclosure of crushing until the point a fluid powder is formed, there would be no support for the negative limitation precluding pulverization into a powder, since the background of the invention recitation of “crushing and screening” is not specific enough to support pulverization into a powder.
2 Applicant discloses adding 1-100 grams of active material per 100 mL of a 0-15% by weight solution of lithium alkaline composition, such as lithium hydroxide. Cao discloses generally washing with a 1-8 molar solution of lithium hydroxide (0.24-19.2% by weight) and specifically, discloses washing 41 grams of active material in 500 mL of a 2 mol/L LiOH solution (4.8 % by weight).
Prosecution Insights