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 .
Election/Restrictions
Claims 11-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II and III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/18/2026.
Applicant’s election without traverse of Group I (claims 1-10) in the reply filed on 5/18/2026 is acknowledged.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1, 2 and 8 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Rohida (WO 2021/018778 using the copy sent on 3/30/2026 for citations).
As to claim 1, Rohida discloses a method of recovering valuable materials from a black mass of lithium ion batteries (page 1 lines 3-9; page 2 lines 13-29 and discussed throughout), comprising: decomposing the black mass to produce a reduced black mass (page 2 line 13 – page 3 line 15 and discussed throughout); extracting lithium from the reduced black mass (page 3 line 25 – page 4 line 9; page 4 line 23 -page 5 line 4 and discussed throughout); and separating and recovering magnetic alloy materials and non-magnetic materials from the reduced black mass (page 14 line 20-25; page 23 line 15-17 and discussed throughout).
As to claim 2, Rohida discloses wherein, the decomposing of the black mass includes subjecting the black mass to thermal reduction (page 8 line 20- page 9 line 21 and discussed throughout).
As to claim 8, Rohida discloses wherein, the extracting of the lithium includes: mixing the reduced black mass with water whereby lithium oxide, lithium carbonate or lithium oxide and lithium carbonate in the reduced black mass reacts with the water to produce water soluble lithium salts; separating the water and water soluble lithium salts from a reduced black mass residual; and evaporating the separated water and water soluble lithium salts to recover lithium salts (page 23 line 24-page 24 line 17 and discussed throughout).
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 3-7 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Rohida (WO 2021/018778) as applied to claims 2 and 8 above.
As to claim 3, Rohida discloses wherein, the thermal reduction includes heating the black mass to a temperature of between about 500° C. and about 1,000° C. in the presence of a reducing agent (page 8 line 20- page 9 line 21 and discussed throughout). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
As to claim 4, Rohida discloses wherein, the reducing agent is selected from a group of reducing agents, consisting of a reducing gas, hydrogen gas, carbon monoxide gas, methane gas, carbon-based solids, graphite solids, aluminum solids, plastic separator solids and mixtures thereof (page 8 line 20- page 9 line 21 and discussed throughout).
As to claim 5, Rohida discloses wherein, the thermal reduction of the black mass is performed in a reducing atmosphere including (a) the reducing gas and an inert gas wherein a mixture ratio of the reducing gas to total gas is about 0.001-0.2 in volume basis or (b) reduced carbon-based solids and an inert gas wherein a certain flow rate is required to maintain an appropriate reduced atmosphere (page 8 line 20- page 9 line 21 and discussed throughout). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05 I).
As to claim 6, Rohida discloses further including using argon as the inert gas (page 8 line 20- page 9 line 21 and discussed throughout).
As to claim 7, Rohida discloses further including using nitrogen gas as the inert gas (page 8 line 20- page 9 line 21 and discussed throughout).
As to claim 9, Rohida discloses wherein, the separating and recovering of the magnetic materials and non-magnetic materials includes: drying the reduced black mass residual following separation from the water and water soluble lithium salts (page 23 line 24 – page 24 line 17 and discussed throughout); and using a magnet to separate the magnetic alloy materials from non-magnetic materials including any graphite, copper and aluminum in the reduced black mass residual (page 22 line 10 - page 23 line 12, and discussed throughout). This is a 103 type rejection because Rohida discloses the magnetic separation within step (d) and the water and dry in step (e) which is the reverse of the instant claimed invention. However, it would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to change steps (e) and (d) within Rohida as a mere change in sequence (see MPEP 2144.04 IV C) baring any criticality or unexpected results.
As to claim 10, Rohida discloses wherein, the separating and recovering of the magnetic alloy materials and non-magnetic materials is done by using a magnet-assisted vibration device (page 22 line 10 – page 23 line 12, the spiral will have vibrations, and discussed throughout).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN R OHARA whose telephone number is (571)272-0728. The examiner can normally be reached 7:30 AM-3:30 PM EST M-F.
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, Miriam Stagg can be reached at 571-270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN R OHARA/Examiner, Art Unit 1724
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