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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/8/26 has been entered.
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.
Claims 1-11 and 14-15 are rejected under 35 U.S.C. 112(a) 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.
With respect to claim 1, support cannot be found for the added limitation “powdered lithium ion battery scrap which has been subjected to a calcination step” in the preamble. Examiner notes that Applicant has not pointed out support for this added limitation. Applicant’s original specification states that the lithium ion battery scrap has a housing containing aluminum and further, it generally contains electrolytic solutions in the housing [0021-0022]. The calcination step is carried out for the purpose of removing the internal electrolytic solutions and decomposing the binder that binds the aluminum [0023]. However, there is no disclosure of powdered lithium ion scrap being subject to a calcination step as claimed. It appears that powdered lithium ion scrap actually results after the crushing step and is mentioned in the sieving step [0029]. Applicant should specifically point out the support for any amendment(s) made to the disclosure. See MPEP §714.02 and 2163.06. Without any suggestion in original specification, claimed powdered lithium ion scrap being subject to calcination step is not reasonably conveyed to one of ordinary skill in the art. Therefore, the claimed subject matter fails to comply with the written description requirement and constitutes new matter. Applicant is requested to cancel this new matter.
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.
Claims 1-11 and 14-15 are rejected under 35 U.S.C. 112(b) 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.
Regarding claim 1, amended limitation “powdered lithium ion battery scrap which has been subjected to a calcination step” is ambiguous because it is unclear what is implied by powdered lithium ion battery scrap? According to the specification, the battery scrap has a housing containing aluminum and further, it generally contains electrolytic solutions in the housing [0021-0022]. There is no mention of any lithium ion powder scrap. Examiner notes that this feature is not supported and constitutes new mater as explained above. It is confusing what lithium material is actually being subjected to a calcination step. The recited vague language fails to clearly set forth the scope, rendering the claims indefinite. For purpose of examination and in accordance with broadest reasonable interpretation consistent with the specification, the claims are taken to mean: recovering lithium from lithium ion battery scrap which is subject to a calcination step in a temperature range from 550-650 °C.
Claim 7 should also be corrected concerning calcination step accordingly.
Appropriate corrections are requested.
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.
Claims 1-4 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda et al. (JP-4581553-B2, translation of record, hereafter “Takeda”) in view of background specification & Lin et al. (US 6514311, hereafter “Lin”).
Regarding claim 1, Takeda discloses a method for recovering lithium from lithium ion battery waste recycling (technical field), the method comprising: wet processing treatment including a lithium dissolution step of bringing lithium from battery recycle material into contact with water and dissolving lithium in the water to obtain a lithium-dissolved solution (pg. 2), wherein the pH of lithium-dissolved solution is adjusted: adjusting the pH of an aqueous solution containing lithium ions to a range of pH 4 to 10 depending on the acidic solvent extractant used for extracting lithium ions. By adjusting the pH to a range suitable for the solvent extractant to be used, lithium ions can be extracted into the solvent extractant (pg. 2; claim 2). The pH range of 4-10 taught by Takeda overlaps with claimed pH range of 7-10. For instance, for phosphonic acid solvent extractant, the pH is adjusted to 4-8 (claim 2). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), MPEP 2144.05. It would have been obvious to one of ordinary skill in the art to bring lithium ion battery scrap into contact with an aqueous & acidic solution in order to adjust the pH to a range of 7-10 for the purpose of extracting and recovering lithium.
Concerning calcination step, Applicant’s background teaches that lithium ion battery scrap is typically calcined to remove harmful electrolytes and the subjected to crushing and sieving in this order (see specification- [0003]); specific temperature is not mentioned. However, such calcination step is well-known in the art. Lin is also directed to recovering metals from waste lithium ion battery (col. 1, lines 6-10). The process of recovering metals from waste batteries includes calcinating, crushing/smashing and sieving steps (fig. 1), wherein the battery waste is put into high temperature furnace to be calcined at 500 °C to 800 °C for 3-30 minutes (col. 3, lines 55-60). This falls within claimed temperature of 550 °C to 650 °C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform calcination within recited temperature in the recovery method of Takeda since such treatment is conventional as evidenced by both Applicant’s background & Lin patent and because doing so would remove harmful electrolytes.
As to claims 2-3, Takeda discloses that the method further comprises a lithium concentration step including a carbonation step of carbonating the lithium in the lithium concentrate to obtain lithium carbonate (pg. 2).
As to claim 4, Takeda does not disclose any aluminum concentration of the lithium-dissolved solution and thus, no aluminum meets 0 mg/L.
As to claim 7, both Applicant’s background and Lin patent teaches the method comprising subjecting the lithium ion battery scrap/waste to a calcination step to a crushing step, and a sieving step (Lin- fig. 1).
As to claims 8-9, in the combination of Takeda & Lin above, the method discloses performing the crushing step and the sieving step are in this order, and wherein the lithium dissolution step is carried out after the sieving step.
As to claim 10, Lin discloses that the lithium ion battery scrap/waste which has been subjected to a calcination step contains lithium oxide from secondary battery (Background- pg. 1, lines 26-27).
As to claim 11, Takeda discloses that in the lithium dissolution step, an acid solvent is added to the water so that the pH of the lithium-dissolved solution is from 7 to 10 (claim 2).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Takeda in view of Lin as applied to claim 2 above, and further in view of Asano et al. (JP-2012121780-A, “Asano”, see of record document).
As to claim 5, Takeda or Lin is silent with regard to nickel ions in the lithium concentration solution or recovering nickel during the recovery process. However, such technique is known in the art. Asano (directed to method for producing lithium oxide for battery material) teaches recovering valuable metals from lithium-ion batteries, the recovery process comprising crushing/disintegrating step, cleaning step, leaching step and nickel/cobalt recovery and lithium recovery (fig. 1). The solution obtained through the leaching process is subject to neutralization step by sulfurization in a reaction vessel, wherein the nickel ions contained in the solution are converted to nickel sulfide to recover nickel [0054-0057]. Subsequently, Asano also teaches lithium recovery step using phosphonic/phosphoric acid solvent extraction [0058-0060], similar to Takeda. Therefore, it would have been obvious to one of ordinary skill in the art to perform a sulfurization step of neutralizing the lithium solution in the recovery method of Takeda for the purpose of obtaining valuable nickel/cobalt metals, thereby resulting in cost savings.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Takeda in view of Lin as applied to claim 3 above, and further in view of Hara et al. (JP-2013095951-A, “Hara”, of record).
As to claim 6, Applicant’s background teaches that the carbonation step is carried out by adding a carbonate salt or blowing a carbon dioxide gas into the lithium concentrate to recover the lithium from the solution as lithium carbonate [0004]. Additionally, Hara (also directed to method for recovering lithium) teaches blowing a carbon dioxide gas into a lithium concentrate solution to precipitate lithium carbonate from the solution, wherein a temperature of the solution is heated to about 50 °C to provide sufficient conditions for the equilibrium reactions and efficient precipitation of the filtrate [0054-0055]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform carbonation step similar to Hara in the recovery method of Takeda & Lin because it would result in sufficient conditions for the precipitation reaction and produce the desired lithium carbonate concentrate.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Takeda in view of Lin as applied to claim 1 above, and further in view of Narisako et al. (CN-102031374-A, “Narisako”, of record).
As to claims 14-15, Takeda or Lin does not mention lithium concentration of 1.5 g/L to 2.5 g/L. Analogous to Takeda, Narisako is drawn to separating and recovering nickel and lithium using solvent extraction process at pH of about 8-8.5 (abstract, [0015]). In the processing step, dissolved solution comprising cobalt, nickel, lithium and manganese is obtained [0030], wherein the solution contains about 3.0-6.0 g/L lithium [0034]. Similar to Takeda, Narisako also teaches phosphonic acid solvent extraction with a balanced pH in range of 8.0 to 8.5 [0035-0038]. The lithium concentration of 3.0 g/L in the lithium-dissolved solution is very close to claimed 2.5 g/L. The claim would have been obvious since it has been held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), MPEP 2144.05. Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to provide lithium concentration in sufficient range, including 2.5 g/L, during the dissolution step in Takeda for the purpose of enabling effective recovery of lithium ions/component.
Double Patenting Rejection - Terminal Disclaimer
The terminal disclaimer filed on 1/8/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent no. 11,702719 has been reviewed and is accepted. The terminal disclaimer has been recorded and overcomes the nonstatutory double patenting rejection set forth in previous office action.
Response to Amendment and Arguments
Applicant’s arguments, filed 1/8/26, with respect to amended claim(s) 1 have been considered but are moot in light of new grounds of rejection(s) set forth above. Examiner points out that new feature of powdered lithium ion battery scrap subjected to a calcination step is subject to 112 rejection(s) explained above. Applicant’s argument against prior art based on this new feature is not persuasive.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVANG R PATEL whose telephone number is (571) 270-3636. The examiner can normally be reached on Monday-Friday 8am-5pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached on 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVANG R PATEL/
Primary Examiner, AU 1735
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