DETAILED CORRESPONDENCE
1. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
3. In response to the amendment received on 7/23/2026:
Claims 1-4, 7, and 10-21 are pending in the current application. Claims 1, 13, and 17 have been amended and Claims 5-6, 9, and 22-23 are cancelled.
The previous objection to the claims has been overcome in light of the amendment.
The previous rejections under 35 USC 112 are overcome in light of the amendment.
The cores of the previous prior art-based rejections have been overcome in light of the amendment. All changes made to the rejection are necessitated by the amendment.
Claim Interpretation
4. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Rejections - 35 USC § 103
5. Claims 1-3, 7, 10-13, 15, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Yu CN112048621 in view of Wang CN104466293 and Yang CN108075203.
Regarding Claims 1-3, 7, 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 Claim 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 10 and 19) (see entire disclosure and especially paras listed above, and 0012-0024). Yu does not specifically disclose wherein in step (a) the heating is performed at a temperature in a first range from 500 °C to 650 °C, inclusively, and wherein in step (b) the mixture is heated at a temperature in a second range from 1000 °C to 1450 °C, inclusively. However, in the same field of endeavor of regeneration of lithium ion battery cobalt active material, Wang discloses that in a first step, cathodes from LIBs and comprising first metal foil and a cobalt-containing compound (lithium cobaltate) are heated at 550 °C to provide the first metal foil and a thermal cathode product comprising the cobalt-containing compound (see e.g paras 0011-0012). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design step (a) of Yu such that the heating is performed fat a temperature in a first range from 500 °C to 650 °C because Wang teaches that this temperature is effective for processing the initial cathode structure. Although Wang does not specifically disclose that the anode is processed under the same conditions as the cathode, Yu does use the same processing temperatures and conditions for the cathode and anode active materials (para 0056) and so it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the method of Yu and Wang such that in step (a) the heating is performed at a temperature in a first range from 500 °C to 650 °C, inclusively, for both the anode and the cathode since the use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.). The Office notes that Yu makes it clear in para 0061 that the conditions disclosed in their publication are not limited and can take other forms without departing from the spirit or basic features of the invention.
The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (see MPEP § 2143.02).
The Supreme Court decided that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Therefore, choosing from a finite number of identified, predictable solutions, with a reasonable expectation for success, is likely to be obvious to a person if ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, E.).
Yu modified by Wang does not specifically disclose wherein in step (b) the mixture is heated at a temperature in a second range from 1000 °C to 1450 °C, inclusively. However, in 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 protective atmosphere at a temperature of e.g. 1000 °C (which overlaps the claimed range) for an hour to obtain a heat-treated mixture of positive and negative electrode materials which allows for recovery of valuable metal components from a LIB (paras 0020-0022, 0043). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the method of modified Yu such that in step (b) the mixture is heated at a temperature in a second range from 1000 °C to 1450 °C because Yang teaches that this temperature provides a heat-treated mixture which allows for recovery of valuable metal components from a LIB. 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that 'suitable protection' is provided if the protective layer is 'about' 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant's] claimed range.").
Regarding Claim 11, Yu does not specifically disclose wherein step (b) is performed in an inert atmosphere. However, as explained above, Yang does teach that step (b) is carried out in a protective atmosphere (in inert gas, such as nitrogen, paras 0020, 0022). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to design the process of Yu modified by Wang and Yang such that step (b) is carried out in a protective atmosphere because Yang teaches that this is useful and the use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.).
Regarding Claim 13, Yu modified by Wang and Yang 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 4:1 and 8:1. However, Yang further 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). Although the range of Yang does not reach the value of 4:1, the skilled artisan would expect that the resulting product of the method when the ratio is 3.25 would be close enough to 4:1 to attain substantially the same results. 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 4:1 and 8:1 cathode thermal product to anode thermal product for use in the mixture of Yu modified by Yang and Wang because Yang teaches that this ratio results in good recovery percentages in a similar configuration of battery and process.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium.).
Regarding Claim 15, Yu recites wherein the positive and negative electrode materials fall off the aluminum or copper foil (see e.g. para 0056) but fails to specifically disclose wherein the first and second metal foils are fully separated from the thermal anode product and thermal cathode product. However, Wang teaches that the aluminum foil collector (first metal foil) is separated from the thermal cathode material (paras 0020-0021) and so it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application separate the first metal foil from the thermal cathode material of Yu because Wang teaches that this is an important step in the method for regenerating lithium cobaltate waste material and the use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, C.). Although Yu modified by Wang and Yang does not specifically disclose wherein the second metal foil is separated from the thermal anode product. However, since Yu teaches that the thermal anode product falls off the metal foil and because Wang teaches to truly separate the material from the foil in the case of the cathode, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to separate the second metal foil from the thermal anode product of Yu modified by Wang and Yang because Wang teaches to separate the metal foil from the thermal electrode material. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. __,__, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Regarding Claim 18, Yu recites wherein the positive and negative electrode materials fall off the aluminum or copper foil (see e.g. para 0056) but does not specific which electrode uses the aluminum foil and which uses the copper foil. However, Wang teaches that the positive electrode current collector is an aluminum foil (para 0021) and so it would have been obvious to a person having ordinary skill in the art before the effective filing date of the instant application to use aluminum foil for the cathode’s first metal foil in Yu because Wang teaches that this is an appropriate metal and the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). The skilled artisan would have understood that the anode collector of modified Yu would be formed of copper since the positive collector is aluminum (leaving copper as the other material).
6. Claims 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Yu CN112048621 in view of Wang CN104466293 and Yang CN108075203, as applied to Claim 1, and further in view of Liu US PG Publication 2021/0384562.
Regarding Claims 4, Yu modified by Wang and Yang discloses the claimed process as described in the rejection of Claim 1, which is incorporated herein in its entirety. Modified Yu fails to specifically disclose wherein step (a) is 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 modified by Wang and Yang 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 modified by Wang and Yang 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 modified Yu 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.
7. Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yu CN112048621 in view of Wang CN104466293 and Yang CN108075203, as applied to Claim 1, and further in view of Cheng CN108923096.
Regarding Claims 16, Yu modified by Wang and Yang discloses the claimed process as described in the rejection of Claim 1, which is incorporated herein in its entirety. Modified Yu fails to specifically disclose wherein the first and second metal foils are recovered at a purity of at least about 95%. However, in the same field of endeavor of LIB recycling, Cheng 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 design the process of Yu modified by Wang and Yang such that the purity of recovered materials is as close to 100% as possible, specifically the separated aluminum and copper current collector foils having a purity of at least about 95%, 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 Wang, Yang, and 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.
8. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Yu CN112048621 in view of Wang CN104466293 and Yang CN108075203, as applied to Claim 1, and further in view of Xu CN110311186.
Regarding Claim 20, Yu in view of Wang and Yang 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 in view of Wang and Yang 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.
9. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Yu CN112048621 in view of Wang CN104466293 and Yang CN108075203, as applied to Claim 1, and further in view of Kakuta US PG Publication 2005/0241943.
Regarding Claim 21, Yu in view of Wang and Yang discloses the claimed process as described in the rejection of Claim 1, which is incorporated herein in its entirety. Yu in view of Wang and Yang Yu fails to specifically disclose wherein in the process does not involve subjecting anodes or cathodes to solvents. 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 in view of Wang and Yang such that the process does not involve subjecting anodes or cathodes to solvents 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.
Response to Arguments
10. Applicant's arguments with respect to the claims are based on the claims as amended. The amended claims have been addressed in the new rejection above.
Conclusion
11. 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 extension fee 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 date of this final action.
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/LISA S PARK/Primary Examiner
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