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 .
DETAILED ACTION
Claim 6 is added as new claim; Claim 5 has been withdrawn as non-elected claims; Claims 1-4 and 6 remain for Examination, wherein claim 1 is an independent claim.
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.
Claim(s) 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adachi et al (US-PG-pub 2018/0087127 A1, thereafter PG’127) in view of Ariyoshi et al (US-PG-pub 2021/0316998 A1, thereafter PG’998).
PG’127 in view of PG’998 is applied to the instant claims 1-3 for the same reason as stated in the previous office action dated 4/16/2026.
Regarding the newly added claim 6, PG’998 indicates that the total amount of the crude lithium carbonate is dissolved in the pure water at 25° C (par.[0077] and claim 12 of PG’998), which reads on the claimed maintaining temperature for the proceed residue as claimed in the instant claim.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over PG’127 in view of PG’998 and further in view of Fan et al (CN 106252778 A, with on-line translation, thereafter CN’778).
PG’127 in view of PG’998 and CN’778 is applied to the instant claim 4 for the same reason as stated in the previous office action dated 4/16/2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-4 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-10 of copending application No. 18/023050 (US 12,577,636 B2).
Claims 1-10 of copending application No. 18/023050 (US 12,577,636 B2) is applied to the instant claims 1-4 for the same reason as stated in the previous office action dated 4/16/2026.
Notes: Morin et al (US-PG-pub 2021/0376399 A1) is cited as a reference only.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-4 and 6 have been considered but they moot in view of the new ground rejection as stated above. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has been stated as above.
The Applicant’s arguments have been summarized as following:
Adachi et al (PG’127) does not address the Na accumulation problem,
Adachi et al (PG’127) and Ariyoshi et al (PG’998) does not teach adding sulfur compound with Na content to produce sulfide precipitates.
Ariyoshi et al (PG’998) does not specify adding of sulfur compound containing Na to produce sulfide precipitates (Na as impurity only) and Adachi et al (PG’127) and Ariyoshi et al (PG’998) cannot lead to the claimed claims.
Ariyoshi et al (PG’998) teaches away present invention since it aims to eliminate the need for sulfurization to produce the Cu sulfide and the sulfide of Ni and Co.
The object of adding sodium carbonate in the present invention (forming precipitates Ca content without precipitating a Li content) is sharp contrast to that in Ariyoshi et al (PG’998) (forming precipitates Li ions as Li-carbonate).
it is clear that the rejection has failed to establish that all features of claim 1 are met by Adachi and Ariyoshi, whether considered alone or in combination. Thus, no prima facie case of obviousness has been established. Therefore, it is respectfully submitted that the valuable metal recovery method of claim 1 is not disclosed by any reference cited herein, and further that the claimed method provides significant technical advantages over the prior art.
In response,
Regarding the arguments 1-3 and 5-6, Firstly, refer to the rejection for the instant claim 1-3 in the previous office action dated 4/16/2026, Adachi et al (PG’127) in view of Ariyoshi et al (PG’998) teaches all of the essential process steps as claimed in the instant claims with sulfur compound with Na, the Applicant's arguments are against the references individually, one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, Adachi et al (PG’127) in view of Ariyoshi et al (PG’998) is applied to the instant claims 1-3 and 6, and Fan et al (CN’778) is further cited for claim 4. Detail reason and motivation for the combination can further refer to the rejection for the claims in the previous office action dated 4/16/2026. Secondly, it is noted that there is no specific amount of sulfur compound with Na being included in the instant claim, and there is no limitations for “to produce sulfide precipitates”, and/or “forming precipitates Ca content without precipitating a Li content” as argued.
Regarding the argument 4, the argued “eliminate the need for sulfurization to produce the Cu sulfide and the sulfide of Ni and Co” is not included in the instant claims. Ariyoshi et al (PG’998) specify PG’998 specify including Na content in the acidic solution (Fig.1 of PG’998); including hydroxides by the addition of the alkali including CaOH2 (par.[0054] of PG’998); and including sodium carbonate as neutralized solution (par.[0058] of PG’998) for valuable metal recovering from Li ion battery waste and there is no limitation in Ariyoshi et al (PG’998) to eliminate the need for sulfurization to produce the Cu sulfide and the sulfide of Ni and Co as argued.
Conclusion
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 JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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