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 .
Claims 1-13 are pending in the application.
Claim Objections
Claim 4 is objected to because of the following: claim 4 recites “the battery element that have cleaned and dried”. It is believed applicant intended “the battery element that has been cleaned and dried”. Appropriate correction is required.
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.
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Claim 1-5 and 7-13 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-14 of copending Application No. 18/646,910. Although the claims at issue are not identical, they are not patentably distinct from each other because application '910 claims similar method of recycling lithium - ion secondary battery.
Regarding claim 1 , application ‘910 claims a method of recycling a used lithium- ion secondary battery comprising: providing a used lithium-ion secondary battery that comprises: (i) a battery element including a positive electrode, a separator, and a negative electrode, wherein at least one of the positive electrode and the negative electrode is a ceramic electrode; (ii) an electrolytic solution; and (iii) a battery container accommodating the battery element and the electrolytic solution; taking out the ceramic electrode from the lithium-ion secondary battery; subjecting the ceramic electrode taken out to an electrode restoration treatment including cleaning and/or heat treatment; and putting the ceramic electrode subjected to the electrode restoration treatment back into the battery container to assemble a lithium-ion secondary battery and the method further comprising replacing the electrolytic solution in the lithium-ion secondary battery with a fresh electrolytic solution (claims 1 and 12).
Regarding claim 2, application ‘910 claims the electrode restoration treatment comprises cleaning the ceramic electrode with a polar solvent to remove impurities contained in and/or adhering to the ceramic electrode, followed by drying (claim 2).
Regarding claim 3, application ‘910 claims the ceramic electrode further comprises a positive electrode current collector and/or a negative electrode current collector, wherein the positive electrode current collector and/or the negative electrode current collector is detached before and/or during the cleaning, and wherein the positive electrode current collector and/or the negative electrode current collector is attached to the ceramic electrode after the electrode restoration treatment (claim 3).
Regarding claim 4, application ‘910 claims the electrode restoration treatment comprises heating, at 300 to 1000°C, the ceramic electrode that have cleaned and dried (claim 4).
Regarding claim 5, application ‘910 claims the electrode restoration treatment comprises degreasing the ceramic electrode at 300 to 600°C and/or firing the ceramic electrode at 650 to 1000°C (claim 5).
Regarding claim 7, application ‘910 claims the positive electrode is a ceramic positive electrode, and the ceramic positive electrode is composed of a lithium complex oxide sintered body (claim 6).
Regarding claim 8, application ‘910 claims the positive electrode is a ceramic positive electrode, and the ceramic positive electrode is an oriented positive electrode containing a plurality of primary grains composed of a lithium complex oxide, the plurality of primary grains being oriented at an average orientation angle of over 0° and 30° or less with respect to a principal plane of the positive electrode (claim 7).
Regarding claim 9, application ‘910 claims the lithium complex oxide is lithium cobaltate (claim 8).
Regarding claim 10, application ‘910 claims the negative electrode is a ceramic negative electrode, and the ceramic negative electrode is composed of a titanium-containing sintered body (claim 9).
Regarding claim 11, application ‘910 claims the titanium-containing sintered body contains lithium titanate or niobium titanium complex oxide (claim 10).
Regarding claim 12, application ‘910 claims the separator is a ceramic separator, and the ceramic separator comprises at least one selected from the group consisting of MgO, Al2O3, ZrO2, SiC, Si3N4, AlN, and cordierite (claim 11).
Regarding claim 13, ‘910 claims replacing the battery container with another battery container after the ceramic electrode is taken out and before the ceramic electrode is put back into the battery container (claim 13).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 6 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-14 of copending Application No. 18/646,910 in view of Yura et al. WO 2019221140 A1, (using US PG Pub US 2021/0036305 A1 as the English translation).
Application ‘ 910 is relied upon above.
Application ‘ 910 fails to claim the ceramic positive electrode layer, the ceramic separator, and the ceramic negative electrode layer form one integrated sintered body as a whole.
Yura et al. discloses a lithium-ion secondary battery (lithium secondary battery) which includes a positive electrode layer composed of a lithium complex oxide sintered body (para. 0014), a negative electrode layer composed of a titanium-containing sintered body (para. 0015), a ceramic separator interposed between the positive electrode layer and the negative electrode layer (para. 0016) and electrolyte with which at least the ceramic separator is impregnated (para. 0017) and an exterior body comprising a closed space, the closed space accommodating the positive electrode layer, the negative electrode layer, the ceramic separator, and the electrolyte (para. 0018) wherein the positive electrode layer, the ceramic separator, and the negative electrode layer form one integrated sintered plate as a whole (para. 0019).
It would have been obvious to one of ordinary skill in the art before effective filling date of the claimed invention to apply the recycling method to a lithium-ion secondary battery having the ceramic positive electrode layer, the ceramic separator, and the ceramic negative electrode layer form one integrated sintered body as a whole as taught by Yura et al. One of ordinary skill in the art would have been motivated to apply recycling method to extend the useful life of ceramic battery elements by regenerating the electrodes, replacing the electrolyte thereby reducing the cost and environmental load.
This is a provisional nonstatutory double patenting rejection.
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.
Claim13 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 13 recites “further comprising replacing the battery container”, implying the battery element after electrode restoration treatment is put back into a different battery container. Claim 1 on which claim 13 is dependent on requires the battery element to put into the same container. It is unclear if the battery elements after electrode restoration treatment is put into original or a different battery container rendering the claim vague and indefinite.
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.
Claims 1-3 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over Muramatsu et al. (JP 2012-022969A ) in view of Yura et al. (WO 2019221140 A1, using US PG Pub US 2021/0036305 A1 as the English translation).
Regarding claim 1, Muramatsu et al. discloses a method for recycling a used lithium-ion secondary battery (LIB, para. 0009, ref. #10, figure 1) which has a ceramic positive electrode (ref. # 15, figure 1, para. 0029 - lithium-transition metal composite oxides such as, LiCoO2), a ceramic negative electrode (ref. #13, figure1, para. 0030 - Li4Ti5O12), a separator (ref. #16 figure 1, para. 0042), an electrolytic solution (electrolyte layer, ref. #17, figure 1, para. 0040), and a battery container (laminate sheet, ref. #29 figure 1, para. 0046) accommodating the battery element (power-generating component) and the electrolytic solution.
Muramatsu et al. discloses that the battery elements of the used lithium-ion secondary battery (LIB) is taken out by cutting or thermally melting and peeling the outer periphery of the exterior material without damaging the electrode (para. 0082, 0113). Muramatsu et al. further discloses the electrode restoration treatment cleaning the electrodes with a polar medium (cleaning solvent) for predetermined time thereafter again rinsing the electrodes with fresh polar solvent thereby removing the deposits formed during repeated charging and discharging of the Lithium-ion battery and cleaning the electrodes (para. 0062, 0177-0178). Muramatsu et al. further discloses the electrolytic solution of the used lithium -ion secondary battery is replaced with a fresh electrolytic solution (para. 0096, 0127, 0160, 0183). Muramatsu et al. discloses the battery element subjected to the electrode restoration treatment (regenerated power generating component) inserted back into the battery container (laminate -type exterior material, para. 0097) to assemble a lithium -ion battery.
Muramatsu et al. fails to disclose a battery to be recycled which comprises a ceramic separator between the electrodes.
Yura et al. discloses a lithium-ion secondary battery (lithium secondary battery) which includes a ceramic positive electrode layer composed of a lithium complex oxide sintered body (para. 0014), a ceramic negative electrode layer composed of a titanium-containing sintered body (para. 0015), a ceramic separator interposed between the ceramic positive electrode layer and the ceramic negative electrode layer (para. 0016) and electrolyte with which at least the ceramic separator is impregnated (para. 0017) and an exterior body comprising a closed space, the closed space accommodating the battery elements – ceramic positive electrode layer, ceramic negative electrode layer, the ceramic separator, and the electrolyte (para. 0018).
It would have been obvious to one of ordinary skill in the art before effective filling date of the claimed invention to apply the recycling method of Muramatsu et al. to a lithium-ion battery having ceramic separator as taught by Yura et al. One of ordinary skill in the art would have been motivated to apply recycling method to extend the useful life of ceramic battery elements by regenerating the electrodes, replacing the electrolyte thereby reducing the cost and environmental load.
Regarding claim 2, Muramatsu et al. discloses electrode restoration treatment step includes cleaning the battery element with polar solvents (para. 0062, 090, 0177) to remove the impurities (solid electrolyte interface -SEI) deposits on the battery element followed by a step of drying the solvent treated electrode (para. 0011, 0068-0069).
Regarding claim 3, Muramatsu et al. discloses the battery element further comprises a positive electrode current collector (ref. #12, figure 1) and a negative electrode current collector (ref. #11, figure 1). Muramatsu et al.’s positive electrode includes a positive electrode active material layer, a positive electrode current collector, and positive electrode tab. Muramatsu et al.’s negative electrodes include a negative electrode active material layer, a negative electrode current collector, and negative electrode tab. The positive and negative electrodes, which include the electrode current collectors, are detached from the battery before cleaning (para. 0082, 0113). The positive and negative electrodes, which include the electrode current collectors, are attached to the battery element after the electrode restoration treatment (para. 0096, 0178).
Regarding claim 6, Yura et al. further discloses a lithium-ion secondary battery wherein the ceramic positive electrode layer, the ceramic separator, and the ceramic negative electrode layer form one sintered body as a whole (para. 0019).
Regarding claim 7, Yura et al. discloses a lithium-ion secondary battery including a positive electrode layer composed of a lithium complex oxide sintered body (abstract, para. 0013).
Regarding claim 8, Yura et al. discloses, positive electrode layer, the lithium complex oxide sintered plate is an oriented positive electrode layer including a plurality of primary grains composed of lithium complex oxide, the plurality of primary grains being oriented at an average orientation angle of over 0° and 30° or less to the layer face of the positive electrode layer (para. 0031).
Regarding claim 9, Yura et al. discloses a lithium secondary battery including a positive electrode layer composed of a lithium complex oxide where in it is lithium cobaltate (para. 0030, 0033).
Regarding claim 10, Yura et al. discloses a lithium secondary battery including a negative electrode layer composed of a titanium-containing sintered body (para. 0014, 0043).
Regarding claim 11, Yura et al. discloses a lithium secondary battery including a negative electrode layer composed of the titanium-containing sintered body contains lithium titanate or niobium titanium complex oxide (para. 0043).
Regarding claim 12, Yura et al. discloses a lithium secondary battery where in the ceramic separator contains MgO (ref. #20, figure 1, para. 0015).
Regarding claim 13, Muramatsu et al. discloses the insertion of solvent treated and dried battery element (regenerated power generating component) were inserted into a new container (laminate-type exterior material, para. 0097) thereby meeting the claim limitation replacing the battery container with another battery container to regenerate the lithium-ion battery.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Muramatsu et al. (JP2012-022969 ) in view of Yuri et al. (WO 2019221140 A1, using US PG Pub US 2021/0036305 A1 as the English translation) as applied to claim 1-3 and 6-13 above, and further in view of Sloop et al. (US 9484606 B1).
Muramatsu et al. in view of Yura et al. are relied upon as described above.
Regarding claims 4 and 5, Muramatsu et al. failed to disclose the electrode restoration treatment further comprises heating the cleaned and dried battery element at 300 to 1000 oC and degreasing the battery element at 300 to 600°C and/or firing the battery element at 650 to 1000°C.
Sloop et al. discloses recycling and reconditioning of battery electrode materials of used lithium-ion battery (lithium-ion cell), with a ceramic positive electrode (col. 3, line 34) and a ceramic negative electrode (col. 3, lines 30-35). Sloop et al. discloses the used battery may be deconstructed into their cathode, anode, and packaging parts (col.4, lines 64-66) and rinsing with a solvent to remove dirt, oil, moisture etc. (col. 5, lines 2-4) and drying (col. 6, lines 41-43). Sloop et al. further discloses directly heating, degreasing and/or firing of battery elements (spent electrode material, figure 4) to at least a threshold temperature in the range of 400-900 oC, which overlaps with the claimed range, to promote a change of crystallographic state in the spent electrode material (col. 7, lines 8-13).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to include a heating and degreasing and/or firing step in the electrode restoration treatment of Muramatsu et al. in view of Yura et al as taught by Sloop et al. One of ordinary skill in the art would have been motivated to heat the spent battery element to promote a change of crystallographic state and to restore the electrochemical performance.
Conclusion
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/I.M./
Iswarya MathewExaminer, Art Unit 1788 02/18/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788