Prosecution Insights
Last updated: April 19, 2026
Application No. 18/272,833

METHOD FOR RECOVERING VALUABLE METAL

Non-Final OA §103
Filed
Jul 18, 2023
Examiner
SMOOT, MORIAH SIMONE MCMIL
Art Unit
1733
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Sumitomo Metal Mining Co., Ltd.
OA Round
1 (Non-Final)
64%
Grant Probability
Moderate
1-2
OA Rounds
2y 9m
To Grant
66%
With Interview

Examiner Intelligence

Grants 64% of resolved cases
64%
Career Allow Rate
68 granted / 107 resolved
-1.4% vs TC avg
Minimal +2% lift
Without
With
+2.5%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
34 currently pending
Career history
141
Total Applications
across all art units

Statute-Specific Performance

§101
1.5%
-38.5% vs TC avg
§103
48.1%
+8.1% vs TC avg
§102
15.1%
-24.9% vs TC avg
§112
28.9%
-11.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 107 resolved cases

Office Action

§103
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 § 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. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Quix et al. US 20190032171 A1. Regarding Claim 1, Quix et al. ‘171 teaches a method for recovering valuable metals including cobalt or nickel [0007], the method comprising a preparation step of preparing a charge comprising at least lithium (Li) and a valuable metal [0037], an oxidation and reductive melting step of subjecting the charge to an oxidation treatment and a reductive melting treatment to produce a reduced product comprising a molten alloy and a slag, the molten alloy comprising the valuable metal [0007-0008], and a slag separation step of separating the slag from the reduced product to recover the molten alloy [0036], Quix et al. ‘171 teaches further teaches the use of a CaO, Al2O3, and Li2O containing slag with suitable concentrations in weight percent of CaO < 55%; 38% Al2O3 < 65%; and 3% < Li2O < 20%. Though the amount of produced slag is not expressly taught, it would have been obvious to one having ordinary skill in the art at the time of filing the invention to form a slag concentration having the elemental weight percentages taught in Quix et al. ‘171 in its metal recovery method, overlapping and encompassing the ranges of the instant Claim of a lithium (Li) to aluminum (Al) (Li/Al ratio) of 0.15 or more and less than 0.40, and a mole ratio of calcium (Ca) to aluminum (Al) (Ca/Al) of 0.15 or more and less than 1.0. As an example, forming a slag with 13g of CaO, 64g of Al2O3, and 18g of Li2O yields an approximate (Li/Al ratio) of 0.247 and an approximate (Ca/Al) ratio of 0.274 falling within the ranges of the instant Claim. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. In cases where 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). Regarding Claim 2, Quix et al. ‘171 teaches the oxidation and reductive melting step comprise adding flux comprising calcium (Ca) to the charge [0008], meeting the limitations of the instant Claim. Regarding Claims 3 and 9, Quix et al. ‘171 teaches the oxidation treatment comprises oxidatively roasting the charge to produce an oxidatively roasted product, and the reductive melting treatment comprises reductively melting the oxidatively roasted product to produce a reduced product [0037-0038], meeting the limitations of the instant Claim. Regarding Claims 4 and 10-11, Quix et al. ‘171 teaches the reductive melting treatment comprises introducing a reducing agent at [0038], meeting the limitations of the instant Claim. Regarding Claims 5 and 6, Quix et al. ‘171 teaches the reductive melting treatment comprises heating at temperatures between 1400 °C and 1700 °C [0038], overlapping the instantly claimed ranges of 1,300 °C or more and 1,575 °C or less and 1,350 °C or more and 1,450 °C or less. Regarding Claims 7 and 17-18, Quix et al. ‘171 teaches the charge comprises a secondary lithium ion battery [0002], meeting the limitations of the instant Claim for a discarded battery. Regarding Claim 8, Quix et al. ‘171 teaches the slag comprises a manganese oxide (MnO) concentration between 1% and 7% overlapping the instantly claimed range of 15% by mass or less, meeting the limitations of the instant Claim. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. In cases where 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). Regarding Claims 12-16, Quix et al. ‘171 teaches the reductive melting treatment comprises heating at temperatures between 1400 °C and 1700 °C [0038], overlapping the instantly claimed ranges of 1,300 °C or more and 1,575 °C or less and 1,350 °C or more and 1,450 °C or less. Regarding Claim 19, Quix et al. ‘171 teaches the slag comprises greater than 1 weight percent MnO and less than 7 weight percent, lying within the instantly claimed range of 15% by mass or less, meeting the limitations of the instant Claims. Regarding Claim 20, Quix et al. ‘171 teaches the slag comprises greater than 1 weight percent MnO and less than 7 weight percent, lying within the instantly claimed range of 15% by mass or less, meeting the limitations of the instant Claims. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: EP 1589121 A1 teaches recovering nickel or cobalt by generating an iron-containing slag. US 11695169 B2 teaches recovering cobalt, nickel, and manganese from lithium-ion secondary batteries. US 20120073404 A1 teaches recovering valuable metal from slag with a magnetic field and reductant. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORIAH S. SMOOT whose telephone number is (571)272-2634. The examiner can normally be reached M-F 8:30am - 5pm EDT. 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, Keith Hendricks can be reached at (571) 272-1401. 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. /Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733 /M.S.S./Examiner, Art Unit 1733
Read full office action

Prosecution Timeline

Jul 18, 2023
Application Filed
Feb 17, 2026
Non-Final Rejection — §103 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
64%
Grant Probability
66%
With Interview (+2.5%)
2y 9m
Median Time to Grant
Low
PTA Risk
Based on 107 resolved cases by this examiner. Grant probability derived from career allow rate.

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