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 .
Applicant amended Claims 1-3. Applicant added Claims 4-5. Support for the new claims are found in the original filing, however, a new matter rejection is presented below.
Information Disclosure Statements
The information disclosure statements (IDS) submitted on 008/07/2023, 05/20/2025, 06/24/2025, 03/24/2026 have been considered by the examiner.
Response to Amendment
Responsive to communications filed on 06/15/2026, amendments to the claims have been acknowledged.
The rejections over Cao et al. WO 2017181766 A1 are maintained under new grounds and new rejections in view of Liu et al. CN 107959076 B have been made necessitated by amendment.
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 1-5 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.
Claim 1 recites in Lines 19-20 “wherein in the first addition step, the addition of the first additive is carried out until a pH of the first processed product is 10.0 or higher.” This recitation does not appear to find support in the original disclosure. Regarding a pH value, the instant Specification states at [0026] “The washing solution C preferably has a pH of 10 or more in order not to dissolve a Mn content and other metal contents contained in the first processing residue R1.” The washing solution used to yield the first processing residue having a preferably pH of 10 does not support carrying out the reaction at a pH of 10 or higher.
Claims 2 and 4-5 are rejected for their dependency on a rejected claim.
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.
Claim 3 is 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 3 recites at Line 18, “a post-carbonation filtration device of filtering the third processed product.” While support appears in the instant Specification at [0013, 0019] for “a post-carbonation filtration device,” the nexus between the claimed post carbonation filtration device and a filtering step is rendered unclear. Special attention is drawn to the phrase “of filtering” which provides insufficient nexus between the “post-carbonation filtration device” and any configuration this claimed device may possess. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: acid leaching device, first addition device, post-first-addition filtration device, second addition device, post-second filtration device, heating device, and post-carbonation filtration device in Claim 3. The instant Specification provides no details or drawings to bring the aforementioned terms out of the scope of a means for leaching, a means for adding, a means for filtering, and a means for heating.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. WO 2017181766 A1 in view of Galli et al. WO 2010006366 A1.
Regarding Claim 1, Cao et al. ‘766 discloses a lithium recovery method comprising an acid leaching step of adding an acid to a battery slag containing a lithium content to produce a leachate, adding calcium carbonate, an additive containing a Ca content, to the leachate and neutralizing to produce a first processed product (Page 2, Translation).
Cao et al. ‘766. discloses subsequent solid-liquid separation, meeting the limitation for filtering the first processed product into a filtrate and residue (Page 4, Translation).
Cao et al. ‘766 discloses adding a sodium carbonate to the solution obtained in the filtering step which produces a second processed product. The resulting product is then filtered into a second processing filtrate containing a lithium content and a sodium content and a residue containing a calcium content (Page 4, Translation).
The second processing filtrate is heated to 95 degrees Celsius and carbonated by adding carbonate to the heated product to carry out the lithium deposition reaction, producing a third processed product (Page 6, Translation).
Cao et al. ‘766 discloses a post-carbonation filtration step of filtering the third processed product into a third processing filtrate containing a sodium content and a third processing residue containing a lithium content (Page 6, Translation).
Regarding the newly amended limitation of Claim 1 that the first addition step of the first additive is carried out until a pH of the first processed product is 10.0 or higher, Cao et al. ‘766 teaches adjusting the pH of the acid leaching material to 4.0 to 6.5 to obtain a neutralizing slurry and does not expressly teach a pH of the first processed product is 10.0 or higher.
Notwithstanding the 112(a) rejections above, Galli et al. ‘041 teaches adjusting the pH of a feed brine containing lithium to a value of no less than 11.3 by first neutralizing with calcium hydroxide to a pH from about 10.5 to about 10.8 and subsequently adding sodium carbonate to precipitate a second processed product and maintain pH at no less than 11.3.
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to tune the pH of the neutralizing slurry of Cao et al. ‘766 above the range of 4.0 to 6.5 in order to increase the yield of target metals within the slurry based on the teachings of Cao et al. ‘766
Claims 3 and 5 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Kochhar et al. WO 2018218358 A1.
Regarding Claim 3, Kochhar et al. ‘358 discloses a system and method for carrying out the recovery of lithium from an acid battery slag including a tank system meeting the limitation for an acid leaching device configured to add an acid to a battery slag containing a lithium content to produce a leachate (Figure 2),[00194].
Regarding the newly amended limitation that the first addition device is configured to add the first additive until a pH of the first processed product is 10.0 or higher, the system of Kochhar et al. ‘358 is capable of adding the first additive until a specific pH is reached, meeting the limitations of the instant Claim.
Kochhar et al. ‘358 discloses its device is configured to add a first additive containing a calcium content to the leachate and neutralize the leachate to produce a first processed product [0063], its device is configured to filter the first processed product to be separated into a first processing filtrate and a second first processing residue [0064], and that its device is configured to add a second additive containing sodium carbonate to the first processing filtrate to produce a second processed product [0077].
Kochhar et al. ‘358 discloses its device is configured to filter the second processed product to be separated into a second processing filtrate containing a lithium content and a sodium content and a second processing residue containing a calcium content [00101].
Kochhar et al. ‘358 Discloses electric heating devices configured to heat the second processing filtrate and streams for supplying carbonate [00114], meeting the limitation for a carbonator configured to add a carbonate to produce a third processed product.
Notwithstanding the 112(b) rejections above, Kochhar et al. ‘358 discloses filters configured to separate the third processed product into a third processing filtrate containing a sodium content and a third processing residue containing a lithium content [0071, 00130], meeting the limitations of the instant Claim.
Regarding Claim 5, Kochhar et al. ‘358 discloses the first additive is calcium hydroxide [0063], meeting the limitations of the instant Claim.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Cao et al. WO 2017181766 A1 in view of Kochhar et al. WO 2018218358 A1.
Regarding Claim 2, Cao et al. ‘766 discloses the limitations set forth above including a washing step of washing the first processing residue with a washing solution containing a calcium content and a post-washing filtration step of filtering a mixture of the washing solution and the first processing residue into a washing filtrate and a washing residue (Page 4, Translation), but does not expressly teach the second additive is added to a mixed solution of the first processing filtrate and the washing filtrate.
However, Kochhar et al. ‘358 teaches a method for recovering lithium battery slag wherein multi-stage washing is conducted in order to remove impurities and soluble metals. See MPEP 2141.01(a) I. “[A] reference need not be from the same field of endeavor as the claimed invention in order to be analogous art.” Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to add the second additive to a mixed solution of the first processing filtrate and the washing filtrate to remove impurities based on the teachings of Kochhar et al. ‘358 at [00194], meeting the limitations of the instant Claim. Further, a simple change in sequence would have been obvious to persons of ordinary skill in the art at the time of filing the invention. See MPEP 2141.04 IV. C.
Claims 3 and 5 are additionally and alternatively rejected under 35 U.S.C. 103 as being unpatentable Kochhar et al. WO 2018218358 A1 in view of Liu et al. CN 107959076 B.
Regarding Claim 3, Kochhar et al. ‘358 teaches a system and method for carrying out the recovery of lithium from an acid battery slag including a tank system. Insofar as Kochar et al. ‘358 teaches means for achieving acid leaching, addition of additives, filtration, and heating, Kohar et al. ‘358 meets the limitations of the instant Claims. Nonetheless, Kochar et al. ‘358 does not expressly teach an acid leaching device, first addition device, post-first-addition filtration device, second addition device, post-second-addition filtration device, heating device, or post-carbonation filtration device.
However, Liu et al. ‘076 teaches recovering lithium from lithium ion battery slag in an acid leaching device, and first and second precipitation devices (meeting the limitation of the instant claims for first and second addition devices), an activated carbon injection device (meeting the limitation for a carbonator), a melting furnace (meeting the limitation for a heating device), and a filter (meeting the limitation for post first and post second addition filtration devices) [0026-0040].
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to utilize the devices of Liu et al. ‘076 to execute the method of Kochhar et al. ‘358 in order to efficiently and economically recover lithium based on the teachings of Liu et al. ‘076 at [0020].
The acid leaching device of modified Kochar et al. ‘358 is configured to add an acid to a battery slag containing a lithium content to produce a leachate (Figure 2),[00194].
The first and second addition device of modified Kochar et al. ‘358 are configured to add a first additive containing a calcium content to the leachate and neutralize the leachate to produce a first processed product [0063], the device is configured to filter the first processed product to be separated into a first processing filtrate and a second first processing residue [0064], and the device is configured to add a second additive containing sodium carbonate to the first processing filtrate to produce a second processed product [0077].
Kochhar et al. ‘358 teaches electric heating devices configured to heat the second processing filtrate and streams for supplying carbonate [00114], meeting the limitation for a carbonator configured to add a carbonate to produce a third processed product. Liu et al. ‘076 further teaches a melting furnace (meeting the limitation for a heating device) and activated carbon injection device (meeting the limitation for a carbonator).
Kochhar et al. ‘358 teaches filters configured to separate the third processed product into a third processing filtrate containing a sodium content and a third processing residue containing a lithium content [0071, 00130]. The filter (meeting the limitation for post first and post second addition filtration devices) of modified Kochar et al. ‘358 is configured to filter the second processed product to be separated into a second processing filtrate containing a lithium content and a sodium content and a second processing residue containing a calcium content [00101], meeting the limitations of the instant Claim.
Regarding the newly amended limitation that the first addition device is configured to add the first additive until a pH of the first processed product is 10.0 or higher, the system of Kochhar et al. ‘358 is capable of adding the first additive until a specific pH is reached, meeting the limitations of the instant Claim.
Regarding Claim 5, modified Kochhar et al. ‘358 teaches the limitations set forth above. Kochhar et al. ‘358 further teaches the first additive is calcium hydroxide [0063], meeting the limitations of the instant Claim.
Response to Arguments
Applicant's arguments filed 06/15/2026 have been fully considered but they are not persuasive.
Applicant argues Kochar et al. ‘358 does not teach a device. However, there are no specifics provided in the original disclosure tying the mention of a “device” to any tangible apparatus. The words associated with the “device” are therefore interpreted as a means for executing acid leaching, additive addition, filtration, and heating. Nonetheless, the claims are additionally rejected in view of Liu et al. ‘076 as it would have been obvious to one having ordinary skill in the art at the time of filing the invention to utilize the physical devices of Liu et al. ‘076, well known for the execution of recovering lithium from battery slag, to execute the method of Kochhar et al. ‘358 in order to efficiently and economically recover lithium based on the teachings of Liu et al. ‘076 at [0020].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
KR 20210016762 A teaches a continuous recovery apparatus for the extraction of lithium from battery waste.
CN 111519031 A teaches filtering lithium from waste battery slag using calcium-containing additive.
WO 2020203888 A1 teaches blowing carbon dioxide gas into a heated filtrate to produce a carbonated product and precipitate lithium.
US 4588566 A teaches separating lithium by heating acidified slurry and carbonating to precipitate lithium and remove impurities.
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.
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
Prosecution Insights