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 .
Upon amendment, applicant is cautioned against the introduction of new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention.
Applicant is encouraged to point to the passage in the instant Specification which identifies support for each claim amendment.
Claim Objections
Claims 1-2 are objected to because of the following informalities:
Claims 1 and 2 recite “metal sulfate/s.” For grammatical clarity, is suggested applicant recite “metal sulfate(s).” Appropriate correction is required.
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 1-13 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.
Claim 1 recites “a hydrothermal extraction medium defined by a molar excess of molten elemental sulfur” in claim lines 5-6. It is unclear whether the term “defined by” indicates features of only the hydrothermal extraction medium, or whether this term is connected to the parameters that follow: a predetermined amount of water, a first predetermined temperature, a first predetermined heated pressure, and a predetermined period. The nexus between the “hydrothermal extraction medium” and the parameters that follow is unclear.
Claim 1 recites “predetermined amount of water” in claim lines 6-7, “predetermined temperature” in claim lines 7 and 11, “predetermined heated pressure” in claim lines 7 and 12, and “predetermined period” in claim lines 8 and 12. Claim 4 recites “predetermined amount of water” in claim line 1. Claim 5 recites “predetermined temperatures” in claim lines 1-2. Claim 6 recites “predetermined temperatures” in claim lines 1-2. Claim 7 recites “predetermined periods” in claim lines 1-2. The term “predetermined” is a relative term which renders the claim indefinite. The instant Specification describes predetermined values as embodiments e.g. at [0057-0068], but does not limit the claim language to a specific amount or range of values. Thus, the term “predetermined” in Claims 1 and 4-7, is not defined by the claims, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear which under what conditions and range of conditions the parameters are changed.
Claim 1 recites “predetermined heated pressure” in claim line 7 and Claim 6 recites “predetermined heated pressures” in claim lines 1-2. There is no introduction of heat in the method steps and thus the nexus between the recitation of a temperature in and a heated pressure Claim 1 line 7 is unclear. It is unclear whether heated pressurized gas is applied independently from the application of a temperature or whether this has some other meaning.
Claim 1 recites “sulfur/metal” in claim lines 8-10. Claim 8 recites “sulfur/metal” in claim line 2. It is unclear whether the slash is meant to indicate alternatives, a combined sulfur/metal, or some other meaning entirely. If “sulfur/metal” is meant to convey alternatives, it is unclear how a sulfur roasted material can independently be converted to a metal sulfate. Similarly, Claim 1 recites metal suflate/s in claim lines 9-10 and Claim 2 recites “metal sulfate/s” in claim lines 1-2. There is a literal lack of antecedent basis for “metal sulfate/s” because it has not been clearly established that a metal sulfate is formed for the aforementioned reasons. In sum, it is unclear whether “metal sulfates” are generated in the method of Claim 1 due to the recitation of “sulfur/metal.” The nexus between a metal and sulfate in the method of Claim 1 is unclear. Applicant is encouraged to recite the method steps with positive active claim language.
Claim 1 recites “molar excess” in claim line 6 and “excess of water” in claim line 11. Claim 3 recites “molar excess” in claim line 1 and Claim 8 recites “excess of water in claim line 8.” As used, the term “excess” is a relative term. The term “excess” could be subjective, as the word could represent any value beyond an undesired value. While embodiments of “excess water” are detailed e.g. at [0070-0071] of the instant Specification and “molar excess” is described in embodiments e.g. at [0055-0056] of the instant Specification, the term “excess” itself is not defined by the claims, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear the metes and bounds of what constitutes an “excess.”
Claim 1 recites “molar excess” in claim line 6 and Claim 3 recites “molar excess” in claim line 1. It is unclear what stoichiometric ratios are being represented by range claimed in Claim 3. For instance, it is unclear if the claimed ratio represents a molar ratio of black mass to elemental sulfur, of elemental sulfur to black mass, or some other meaning entirely. It is not clear what the ratios in Claim 3 represent, or what constitutes a “molar excess” of molten elemental sulfur when presented as a ratio and not a percentage or amount. A ratio requires two constituents and the nexus between “molten elemental sulfur” and a second constituent is unclear. Applicant must clearly establish the nexus between the amount of black mass and the amount or excess of molten elemental sulfur.
Claim 4 recites “the predetermined amount of water is between about 0.5:1 and 1:1 by mass with respect to the hydrothermal extraction medium.” As set forth above, it is unclear what the hydrothermal extraction medium comprises. Therefore, it is unclear with respect to what mass the ratio of water by mass represents. In Claim 1 on which Claim 4 depends, predetermined amount may indeed be determined as no amount, or an absence of a specified element. Additionally, time, temperature, and pressure temperature cannot have a mass. Appropriate correction is required to establish clearly the metes and bounds of the amount of water by mass and the mass amount of the hydrothermal extraction medium.
Claim 9 recites “step b) and step c) are performed simultaneously.” It is unclear how step c) can be performed simultaneously with step b) when step c) is the product of step b). Step b) recites in Claim 1 claim lines 5 and 8 “subjecting the black mass to a hydrothermal extraction medium…to provide a sulfur/metal roasted material.” While step c) recites in Claim 1 claim lines 9-10 “converting the sulfur/metal roasted material to its respective metal by subjecting the sulfur/metal roasted material to an extraction medium.” Not only do steps b) and c) require the application of different solvents, in sum, it is unclear how step b) and c) can occur simultaneously because step c) is the reactionary product of step b).
Claim 10 recites in claim line 2 “optionally operatively connected.” It is unclear the following:
the term "optionally" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
It is unclear what is meant by “operatively connected.” It is unclear whether this means the separate vessels are connected only during operation, whether the connection of the vessels is a claimed method step, or some other meaning entirely.
Claim 10 recites in claim lines 2-3 “substantially continuous operation.” The metes and bounds of “substantially” have not been established. As used, “substantially” is a relative term rendering the claim indefinite. The Specification does not provide a standard for ascertaining the requisite degree of continuous operation, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required.
Claim 13 recites in claim line 3 “and combinations thereof.” The use of the word “and” and failure to recite “or” creates an improper Markush grouping of alternatives. See MPEP § 2117. It is unclear whether each of the limitations are required by the claim, whether combinations refers only to one or more ionic liquids, or some other meaning entirely.
Claim 11 recites “the hydrothermal extraction medium is defined by a black mass concentration.” It is unclear whether the term “defined by” is meant to convey features of the black mass concentration, whether the hydrothermal extraction medium is a black mass having the specified concentration, whether a concentration of black mass in relation to “a hydrothermal extraction medium” is intended, or some other meaning entirely. The nexus between the “hydrothermal extraction medium” and the “black mass concentration” is unclear.
Claim 13 recites in claim line 3. “and combinations thereof.” This recitation of “and” does not recite a proper Markush Group. It is unclear of what combinations “and combinations thereof” refers as the use of the word “and” does not grammatically support a list of alternatives.
Claim 12 is rejected for its dependency on a rejected claim.
Appropriate correction is required.
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.
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 1-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. CN 114480854 A in view of NPL Schwich et al.
Regarding Claim 1, Tao et al. ‘854 teaches a method for extracting valuable metals from waste lithium ion battery materials comprising mixing raw materials including waste lithium ion battery materials (meeting the limitation for black mass) with elemental sulfur, roasting in an oxygen-enriched air environment for a period of time (meeting the limitation for a first predetermined temperature), water leaching for a period of time and under heat (meeting the limitation for a second predetermined temperature), and converting lithium to water-soluble lithium sulfate [0026].
Tao et al. ‘854 does not expressly teach the application of heated pressure.
However, NPL Schwich et al. teaches at (Page 16) heat treating black mass from lithium battery waste under pressurized air in order to reduce environmental impact and increase lithium yield.
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to modify the application of an air environment to the method of Tao et al. ‘854 to be pressurized in order to increase the efficiency of lithium metal recovery based on the teachings of NPL Schwich et al. at (Page 16), meeting the limitations of the instant Claim.
Regarding Claim 2, Modified Tao et al. ‘854 teaches the limitations set forth above. Tao et al. ‘854 further teaches selective extraction of metal lithium [0109], meeting the limitations of the instant Claim.
Regarding Claim 3, Modified Tao et al. ‘854 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, Tao et al. ‘854 further teaches elemental sulfur is used in an amount between 0.05-2 times the mass of the waste lithium-ion battery material [0013], overlapping the instantly claimed range of a molar excess between about 2:1 and 25:1 (meeting the limitation for black mass), meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claims 4 and 8, Modified Tao et al. ‘854 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, Tao et al. ‘854 further teaches the liquid-solid ratio of water is 2 ml:1g-15 ml:1g [0018], overlapping the instantly claimed ranges of a molar excess between about 0.5:1 and 1:1 by mass with respect to the hydrothermal extraction medium, and between about 5:1 and 10:1 on a molar ratio of water to sulfur/metal roasted material basis, meeting the limitations of the instant Claims.
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding Claim 5, Modified Tao et al. ‘854 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, Tao et al. ‘854 further teaches the roasting temperature is between 200-1200 °C [0042], overlapping the instantly claimed range of between about 100 and 400 °C. Tao et al. ‘854 teaches the leaching temperature is between 20-90 °C [0046], nearly intersecting the instantly claimed range of between about 100 and 400 °C.
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 6, Modified Tao et al. ‘854 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, NPL Schwich et al. further teaches applying a pressure of 1 bar (Page 16), lying within the instantly claimed range of between about 1 and 40 bar.
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 7, Modified Tao et al. ‘854 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, Tao et al. ‘854 further teaches a roasting time (meeting the limitation of the instant Claim for a first predetermined period) of 30 min – 600 min [0042], and a leaching time (meeting the limitation of the instant Claim for a second predetermined period) of 15 min to 240 minutes [0046], both overlapping the instantly claimed range of between about 60 and 240 minutes, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 9, Modified Tao et al. ‘854 teaches the limitations set forth above. The process of Tao et al. ‘854 encompasses and overlaps the claims as presently drafted. A “predetermined” amount, temperature, pressure, and period, could mean no application of water, temperature, pressure, or time. As set forth above, an excess of water could be comparative and subjective. Therefore, Modified Tao et al. ‘854 meets the limitations of the instant Claim.
Additionally, Tao et al. ‘854 teaches obtaining black mass having a content of one or more valuable metals, subjecting the black mass to a hydrothermal extraction medium defined by a molar excess of molten elemental sulfur [0013], and subjecting sulfur/metal roasted material to an excess of water and a flow of air [0026]. Notwithstanding the 112(b) rejections above, the transposition of method steps is prima facie obvious absent a showing of new or unexpected results. See MPEP 2144.04 IV. C.
Regarding Claim 10, Modified Tao et al. ‘854 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, it would have been obvious to one having ordinary skill in the art at the time of filing the invention to make the process of Tao et al. ‘854 continuous in connected vessels in order to achieve efficient recovery of lithium based on the teachings of Tao et al. ‘854 [0026]. See MPEP 2144.04 V. E.
Regarding Claim 11, Modified Tao et al. ‘854 teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, Tao et al. ‘854 further teaches an amount of elemental sulfur 0.1-0.5 times the mass of the waste lithium ion battery material (meeting the limitation for black mass) [0040], overlapping the instantly claimed range of between about 0.1 and about 60% w/w.
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 13, Modified Tao et al. ‘854 teaches the limitations set forth above. Tao et al. ‘854 further teaches the hydrothermal medium further comprises on or more of sulfuric acid, hydrochloric acid, nitric acid, or phosphoric acid [0020], meeting the limitation of the instant Claim for one or more mineral acid.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tao et al. CN 114480854 A in view of NPL Schwich et al. as applied to Claims 1-11 and 13 above further in view of NPL Ebin.
Regarding Claim 12, Modified Tao et al. ‘854 teaches the limitations set forth above. Tao et al. ‘854 further teaches e.g. at [0060] crushing the mass of the waste lithium ion battery material (meeting the limitation for black mass), but does not expressly teach an average particle size.
However, NPL Ebin teaches at (Page 174) recovering valuable metal from lithium ion battery waste wherein the black mass has an average particle size of 800 nm, falling within the instantly claimed range of between about 500 nm and about 500 µm.
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to utilize black mass having a particle size of 800 nm in order to efficiently recover valuable metals from the powder based on the teachings of NPL Ebin at (Page 174), meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Zhao, Ling, Nan-Wen Zhu, and Xiao-Hui Wang. "Comparison of bio-dissolution of spent Ni–Cd batteries by sewage sludge using ferrous ions and elemental sulfur as substrate." Chemosphere 70.6 (2008): 974-981. Teaches bio leaching of spent batteries with elemental sulfur.
Fuseler, Knut, et al. "A common pathway of sulfide oxidation by sulfate-reducing bacteria." FEMS Microbiology Letters 144.2-3 (1996): 129-134.teaches elemental sulfur disproportioning in the presence of water to form sulfide and sulfate.
Xu, Ping, et al. "Synergic mechanisms on carbon and sulfur during the selective recovery of valuable metals from spent lithium-ion batteries." ACS Sustainable Chemistry & Engineering 9.5 (2021): 2271-2279. Teaches sulfation roasting followed by water leaching.
Gupta, Nishesh Kumar, Jiyeol Bae, and Kwang Soo Kim. "Metal-organic framework-derived NaMnxOy hexagonal microsheets for superior adsorptive-oxidative removal of hydrogen sulfide in ambient conditions." Chemical Engineering Journal 427 (2022): 130909. Teaches elemental sulfur oxidized to sulfate in the presence of water.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
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