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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 01/22/2024. These drawings are approved.
Status of Claims
Claims 1-7 are as originally filed.
Claim Interpretation
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:
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.
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.”
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 limitations are as follows:
Claim
Means for or Step for
Functional Language
Structure or Material
Disclosure Support
1
n/a
“mixing equipment that mixes”
“a non-lithium alkali metal salt into the cathode active material”
[0039]
1
n/a
“roaster that roasts”
“a mixture”
[0025]
1
n/a
“mixing equipment kneads”
“the alkali metal salt into the cathode active material while grinding”
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 § 112
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.
Claims 1-4, 6, and 7 are 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.
The term “kneads” in at Claim 1 has an English definition which broadly reads on working and pressing into a mass with synonyms that include sculpting and forming (see “Merriam Webster”). The specification does not recite any formation or pressure to the cathode active material and alkali metal salt. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition to put one reasonably skilled in the art on notice that the applicant intended to redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “kneads” in claim 1 is used by the claim to mean mixing into the active material while avoiding agglomeration of the alkali metal salt (based on the specification in at least [0048]) while the accepted meaning is “to form.” The term is indefinite because the specification does not clearly redefine the term.
The term “kneading” in at Claim 5 has an English definition which broadly reads on working and pressing into a mass with synonyms that include sculpting and forming (see “Merriam Webster”). The specification does not recite any formation or pressure to the cathode active material and alkali metal salt. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition to put one reasonably skilled in the art on notice that the applicant intended to redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “kneading” in claim 5 is used by the claim to mean mixing into the active material while avoiding agglomeration of the alkali metal salt (based on the specification in at least [0048]) while the accepted meaning is “to form.” The term is indefinite because the specification does not clearly redefine the term.
Claims dependent on any of the rejected claims are likewise rejected under this statute.
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.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by RU 2 685 290 C1, based on the machine translation.
Claim 1 is drawn to a system or apparatus. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Additionally, the manner of operating the device does not differentiate apparatus claims from the prior art. See MPEP § 2114. In this case, Claim 1 is drawn to the following:
mixing equipment capable of kneading two solids while grinding one of the solids
mixing equipment capable of mixing the two solids to form a mixture
a roaster capable of roasting the mixture
The preamble states that the mixture is immersed in water, but the body of the claim does not recite any structural limitations for immersing. If the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states the intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is no significance to claim construction. See MPEP § 2111.02. The limitations of processing a waste lithium-ion battery whose cathode active materials that contain phosphorus and an alkali metal salt refer to intended use of the system. Language in the claim that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation, for example statements of intended use or field of use. See MPEP § 2106.
RU 2 685 290 C1 (RU ‘290) teaches crushing petroleum coke to particles in the presence of sodium chloride, sodium carbonate, and manganese dioxide and granulating in the presence of ammonium nitrate solution, oxidative firing including calcination, and leaching with water and sulfuric acid (abstract). The crushing and granulating reads on the broadest teaching of being capable of kneading since no kneading apparatus is recited. RU ‘290 teaches mixing equipment capable of kneading while grinding and mixing as claimed and roaster for “oxidative roasting” (page 3). RU ‘290 anticipates the claimed invention.
Regarding Claim 4, RU ‘290 teaches a grinding machine as a granulator (page 4).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 112768753 A, based on the machine translation.
Claim 1 is drawn to a system or apparatus. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Additionally, the manner of operating the device does not differentiate apparatus claims from the prior art. See MPEP § 2114. In this case, Claim 1 is drawn to the following:
mixing equipment capable of kneading two solids while grinding one of the solids
mixing equipment capable of mixing the two solids to form a mixture
a roaster capable of roasting the mixture
The preamble states that the mixture is immersed in water, but the body of the claim does not recite any structural limitations for immersing. If the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states the intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is no significance to claim construction. See MPEP § 2111.02. The limitations of processing a waste lithium-ion battery whose cathode active materials that contain phosphorus and an alkali metal salt refer to intended use of the system. Language in the claim that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation, for example statements of intended use or field of use. See MPEP § 2106.
CN 112768753 A (CN ‘753) teaches obtaining a crystallized mixed material, adding alkali metal halide into the mixed material, uniformly grinding in an atmosphere of a protective gas such as nitrogen, and roasting (page 2). The mixing and grinding reads on the broadest teaching of being capable of kneading since no kneading apparatus is recited and the atmosphere has no moisture because of the protective gas. CN’ 753 teaches mixing equipment capable of kneading while grinding and mixing as claimed and a roaster. CN ‘753 anticipates the claimed invention.
Regarding Claim 4, CN ‘753 teaches a grinder (page 2).
Claim 5 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN ‘753.
CN ‘753 teaches obtaining a crystallized mixed material, adding alkali metal halide into the mixed material, uniformly grinding in an atmosphere of a protective gas such as nitrogen, and roasting (page 2). The mixing and grinding reads on the broadest teaching of being capable of kneading since no kneading apparatus is recited and the atmosphere has no moisture because of the protective gas. CN’ 753 teaches mixing equipment capable of kneading while grinding and mixing as claimed and a roaster. Regarding the limitation of “immersing the roasted product in water …” if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is no significance to claim construction. See MPEP § 2111.02. CN ‘753 anticipates the claimed invention.
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 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over CN ‘753 as applied to claim 1 above, and further in view of SU 1266657 A1, based on the machine translation.
CN ‘753 discloses the invention substantially as claimed. However, CN ‘753 does not teach the mixer has a receiving container that moves in a different direction than the mixer as claimed.
SU 1266657 A1 (SU ‘657) teaches an installation for mechanical grinding powder wherein the drum of the installation rotates in the opposite direction of the paddle stirrer (abstract). The drum of the installation reads on the receiving the container and the paddle stirrer reads on the mixer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the installation of SU ‘657 as the mixer in CN ‘753, since SU ‘657 teaches faster grinding and activation of the materials being processed (abstract).
Regarding Claim 6, CN ‘753 teaches a grinder (page 2).
Claims 3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over CN ‘753 in view of SU ‘657 as applied to claims 1 and 2 above.
CN ‘753 in view of SU ‘657 discloses the invention substantially as claimed. However, CN ‘753 in view of SU ‘657 does not specifically recite a first feeder and a second feeder as in Claim 3. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the source of crystallized mixture and alkali metal halide would come from two different feeders, since the crystallized mixture is formed from a prior step S1 (page 2). The limitation of “configured … are fed into the receiving container concurrently” is an intended use of the claimed system.
Regarding Claim 7, CN ‘753 teaches a grinder (page 2).
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-14 of copending Application No. 18/291,045 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the preamble of the reference application is different than that of the instant invention. However, one carrying out the system in accord with the reference application claims would in fact carry out the system fully within the scope of the instant claims. Thus, no patentable distinction is seen between the system as presently claimed and the system as defined in the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7of copending Application No. 18/291,045 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the preamble of the reference application is different than that of the instant invention. However, one carrying out the method in accord with the reference application claims would in fact carry out the method fully within the scope of the instant claims. Thus, no patentable distinction is seen between the method as presently claimed and the method as defined in the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN 110323509 A (CN ‘509) teaches recovering valuable elements from lithium-ion battery cathode materials by mixing crushed cathode with an alkaline salt and roasting [0012-0016]. The roasted produced is mixed with water [0024]. The alkaline salt includes sodium hydroxide, sodium oxide, sodium peroxide, sodium carbonate, sodium bicarbonate, potassium hydroxide, potassium oxide, potassium peroxide, potassium carbonate, and potassium bicarbonate [0032]. The mixture is uniform [0051]. CN 111392750 A (CN ‘750) teaches removing and recycling lithium from waste lithium-ion batteries. Crushed waste lithium-ion battery cell is mixed with solid sodium hydroxide and solid oxidant, roasted, and leached in water (abstract). CN 110323509 A (CN ‘509) teaches recovering valuable elements from lithium-ion battery cathode materials by mixing crushed cathode with an alkaline salt and roasting [0012-0016]. The roasted produced is mixed with water [0024]. The alkaline salt includes sodium hydroxide, sodium oxide, sodium peroxide, sodium carbonate, sodium bicarbonate, potassium hydroxide, potassium oxide, potassium peroxide, potassium carbonate, and potassium bicarbonate [0032]. The mixture is uniform [0051].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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 D. 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.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/Tima M. McGuthry-Banks/Primary Examiner, Art Unit 1733
Prosecution Insights