DETAILED CORRESPONDENCE
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), which papers have been placed of record in the file.
Information Disclosure Statement
3. Information disclosure statements (IDS), submitted July 13, 2023 and June 3, 2025, have been received and considered by the examiner.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Objections
5. Claims 1-2 are objected to because of the following informalities: The claims refer to LIBs, which are acronyms for lithium-ion batteries. It is preferable to first define the acronym in the claim as “lithium-ion batteries (LIBs)”. Appropriate correction is required.
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.
6. Claims 21-22 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. Claim 21 recites “the process does not involve subjecting the cathodes or anodes to solvents” and then Claim 22, which depends on Claim 21, recites “the solvents are aqueous solutions, acidic solutions or basic solutions”. The scope of Claim 21 is unclear because while, on its own, all solvents are precluded from use in the claimed process, but in light of Claim 22, only aqueous or acidic or basic solutions are precluded from use in the claimed process. It is entirety unclear as to how to interpret Claim 21 in light of Claim 22’s limitations. In the interest of compact prosecution, Claims 21-22 will be interpreted together as encompassing the scope of “the process does not involve subjecting the cathodes or anodes to aqueous, basic, or acidic solvents”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
7. Claim 22 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 21 recites, “the process does not involve subjecting the cathodes or anodes to solvents” and then Claim 22, which depends on Claim 21, recites “the solvents are aqueous solutions, acidic solutions or basic solutions”. On one hand, Claim 22 does further define solvents to be specific examples, but since Claim 21 has effectively precluded ANY or ALL solvents from use in the claimed method, the effect of further precluding specific examples doesn’t appear to actually limit the list of “any solvent” or “all solvents”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claims 1-3, 5-10, 12, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yu CN112048621.
Regarding Claims 1-3, 5-10, 12, and 19, Yu discloses a process for recovering cobalt from waste LIBs (para 0056, meeting Claim 2), the process comprising (a) discharging remaining charge of the battery and heating (i) cathodes obtained from the LIBs, the cathodes comprising a first metal foil (Al or Cu, para 0056) and a cobalt-containing compound (lithium cobalt oxide) and (ii) anodes obtained from the LIBs, the anodes comprising a metal foil (Al or Cu, para 0056) and carbon (e.g. graphite, para 0056, meeting Claim 3), so as to provide first and second metal foils (electrode materials fall off metal foils during pretreatment which includes heating the anode and cathode at 450 °C for 1 hour, para 0056, meeting Claims 5-7), a thermal cathode product comprising the cobalt-containing compound (lithium cobalt oxide, para 0056, meeting Claim 12) and a thermal anode product comprising the carbon (thermal anode and cathode products are mixed and in the form of black powder 1, para 0056), and (b) heating a mixture of the thermal cathode and anode products, i.e. heating black powder 1 for a period of time sufficient to produce the cobalt at a purity of 98.7%, i.e. heating at 900 °C for 10 minutes (paras 0057-0060, meeting Claims 8-10 and 19) (see entire disclosure and especially paras listed above, and 0012-0024).
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
9. Claims 4, 11, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Yu CN112048621, as applied to Claim 1, and further in view of Liu US PG Publication 2021/0384562.
Regarding Claims 4 and 11, Yu discloses the claimed process as described in the rejection of Claim 1, which is incorporated herein in its entirety. Yu fails to specifically disclose wherein steps (a) and (b) are performed in an inert atmosphere. However, in the same field of endeavor of spent LIB processing for element recovery, Liu discloses that carrying out processing steps such as LIB discharging (as in step a of Yu) and further processing steps (as in step b of Yu) beneficially occur under inert gas to avoid fires and facilitate heat treatments and vacuum extraction (see e.g. pars 0007-0008). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to carry out steps (a) and (b) of Yu in an inert atmosphere because Liu teaches that this can help avoid fires and can facilitate heat treatments and vacuum extractions of elements.
Regarding Claim 14, Yu fails to specifically disclose wherein the process comprises capturing gas produced from the heating in step (a). However, Liu teaches that it is beneficial to capture all volatile hazardous material using vacuum extraction to avoid pollution of cross contamination produced e.g. in the discharging process and in other steps, such as heating under vacuum to remove residual electrolyte (see e.g. paras 0006-0008, 0033). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to capture gas produced in step (a) of Yu in because Liu teaches that it is beneficial to capture all volatile hazardous material using vacuum extraction to avoid pollution of cross contamination produced e.g. in the discharging process and in other steps, such as heating under vacuum to remove residual electrolyte.
10. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Yu CN112048621, as applied to Claim 1, and further in view of Yang CN108075203.
Regarding Claim 13, Yu discloses the claimed process as described in the rejection of Claim 1, which is incorporated herein in its entirety. Yu recites wherein the thermal anode and cathode products are present in the mixture but fails to specifically disclose the w/w ratio between the two components such as between 1:1 and 8:1 or about 5.1. However, the same field of endeavor of LIB recycling, Yang discloses wherein cathode and anode waste active materials (LiCoO2+LiNiO2 and graphite, respectively) from a LIB are heated together in a mole ratio of 1:2 (which is about equivalent to about 3.25:1 w/w cathode to anode waste) and are roasted together to result in formation of metallic elements and graphite, resulting in high recovery rates of the components (see e.g. paras 0034-0035, 0041-0045). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to select a w/w ratio of between 1:1 and 8:1 cathode thermal product to anode thermal product for use in the mixture of Yu because Yang teaches that this ratio results in good recovery percentages in a similar configuration of battery and process.
11. Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yu CN112048621, as applied to Claim 1, and further in view of Cheng CN108923096.
Regarding Claims 15-16 and 18, Yu discloses the claimed process as described in the rejection of Claim 1, which is incorporated herein in its entirety. Yu recites wherein the positive and negative electrode materials fall off the aluminum or copper foil (see e.g. para 0056) and so discloses that the thermal cathode and anode products are separated from the first and second metal foils, but Yu fails to specifically disclose wherein the first and second metal foils are recovered at a purity of at least about 95% and does not specifically say which electrode uses the copper foil and which uses the aluminum foil. However, in the same field of endeavor of LIB recycling, Cheng teaches that LIB cathodes use aluminum foil current collectors and LIB anodes use copper foil current collectors (para 0005, being the first and second metal foils, respectively, meeting Claim 18) and teaches that LIB recycling should optimally result in recycling of copper foil having purity of 100%, and recycling of the other elements resulting in recovered metal elements having very high purity is also desirable (see entire disclosure, especially abstract, paras 0050, 0079). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use copper foil as the current collector of the negative electrode of Yu and aluminum foil as the cathode current collector of Yu because Chen teaches this design for a very similar LIB. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, A.).
Although Cheng does not specifically discuss the purity of recovered aluminum, it would have been obvious to a person having ordinary skill in the art before the effective filing date to recover all elements of Yu in a purity of as close to 100% as possible, specifically the separated aluminum and copper current collector foils having a purity of at least about 95% (meeting Claim 16), because Cheng teaches that high purity is most desirable in recovered metals including a Cu collector foil.
Regarding Claim 17, the skilled artisan would understand that if the desired purity of the copper and aluminum foils of Yu modified by Cheng is 100%, the first and second metal foils would be free or substantially free of all other materials, including cathode active materials and/or metal oxides.
12. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Yu CN112048621, as applied to Claim 1, and further in view of Xu CN110311186.
Regarding Claim 20, Yu discloses the claimed process as described in the rejection of Claim 1, which is incorporated herein in its entirety. Yu fails to specifically disclose wherein in step (a), the anodes and cathodes are heated separately from one another. However, in the same field of endeavor of spent LIB processing, Xu discloses that steps to process LIB cathodes includes separately processing cathodes and anodes and teaches that e.g. processing cathodes separately allows for treatment to address issues like fluoride ion present in the cathode (see e.g. paras 0017-0033, especially para 0031). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to design the process of Yu such that in step (a), the anodes and cathodes are heated separately from one another because Xu teaches that processing cathodes separately allows for treatment to address issues like fluoride ion present in the cathode.
13. Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Yu CN112048621, as applied to Claim 1, and further in view of Kakuta US PG Publication 2005/0241943.
Regarding Claim 21-22, Yu discloses the claimed process as described in the rejection of Claim 1, which is incorporated herein in its entirety. Yu fails to specifically disclose wherein in the process does not involve subjecting anodes or cathodes to solvents, be it aqueous or acidic or basic solutions. However, in the same field of endeavor of spent LIB processing, Kakuta discloses wherein dry processes used in recovering metals from LIBs are beneficial because they are simple, can be completed in a short time, with compact construction of apparatuses operated at a low operating cost, and quantities of waste and wastewater can be reduced (see para 0048). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to design the process of Yu such that the process does not involve subjecting anodes or cathodes to solvents, be it aqueous or acidic or basic solutions, because Kakuta discloses wherein dry processes used in recovering metals from LIBs are beneficial because they are simple, can be completed in s short time, with compact construction of apparatuses operated at a low operating cost, and quantities of waste and wastewater can be reduced.
Conclusion
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wan CN107706477 discloses a method of recycling LIBs where electrodes are processed separately, with high recovery rate and environmental friendliness (see at least e.g. abstract and paras 0011-0012).
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/LISA S PARK/Primary Examiner, Art Unit 1729