DETAILED ACTION
Claims 1-20 are pending and under consideration in this 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 .
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, 3-5, 7, and 10-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 108232351 (“Chen”, machine translation used for citations).
Regarding claim 1, Chen teaches a method of recovering material from lithium-ion batteries (see e.g. paragraph [0003]). Chen teaches dissolving a cathode material containing metal with a leaching solution that includes an acid and a reducing agent (see e.g. paragraph [0010]). Oxalic acid is added to form a precipitate (see e.g. paragraph [0013]). The metal precipitate is then calcined to form a metal oxide (Id.).
Regarding claim 3, Chen teaches that the leaching solution can include sulfuric acid (see e.g. paragraph [0011]), and the reducing agent is hydrogen peroxide (see e.g. paragraph [0010]).
Regarding claim 4, Chen teaches that the dissolving, or leaching step, is performed at 50-100 °C, which includes the entirety of the claimed range (see e.g. paragraph [0010]).
Regarding claim 5, Chen teaches that the calcining is performed at 300-800 °C, which overlaps significantly with the claimed range (see e.g. paragraph [0013]).
Regarding claim 7, Chen teaches that the metal oxide comprises cobalt oxide (see e.g. paragraph [0013]).
Regarding claim 10, Chen teaches that, prior to oxalate addition, the pH is adjusted to between 3-5, which is within the claimed range (see e.g. paragraph [0013]).
Regarding claim 11, Chen teaches that the cathode material is isolated from other battery components by contacting with solvent (see e.g. paragraph [0009]).
Regarding claim 12, Chen teaches that the contacting step is performed at 30-100 °C, which includes the entirety of the claimed range (see e.g. paragraph [0009]).
Regarding claim 13, Chen teaches that prior to isolating the cathode material, a lithium-ion battery is dismantled (see e.g. paragraph [0009]).
Regarding claim 14, Chen teaches discharging the lithium-ion battery by immersion in an alkali solution (see e.g. paragraph [0008]).
Regarding claim 15, Chen teaches that the alkali solution is 1-7 M NaCl and 1-7 M KCl, which overlaps with the claimed range (see e.g. paragraph [0008]).
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 2, 6, and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Chen as applied to claim 1 above, and further in view of KR20030004657 (“Song”, machine translation used for citations).
Regarding claim 2, Chen teaches the limitations of claim as set out above. Chen further teaches that the total acid concentration in the leaching solution is between 0.4-6 M, which overlaps with and contains the entire claimed range (see e.g. paragraph [0010]). However, although Chen teaches adding hydrogen peroxide as a reducing agent, Chen is silent as to the concentration of the hydrogen peroxide.
Song teaches a similar method for recovering metals from battery waste (see e.g. paragraphs [0011]-[0012]). Song further teaches that adding 0.5 M hydrogen peroxide is sufficient for dissolution of the metals (see e.g. paragraph [0054]). A 0.5 M hydrogen peroxide solution is about 2.4 vol%, which is within the claimed range. Accordingly, prior to the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to use a 2.4 vol% solution of hydrogen peroxide in the method of Chen because Song teaches that this concentration can effectively leach the same metals from a mixture.
Regarding claim 6, Chen teaches calcining the cobalt oxalate to obtain cobalt oxide, but is silent as to the length of time necessary for calcination. However, Song teaches a similar method for oxalate precipitation of cobalt followed by calcination to get cobalt oxide (see e.g. paragraphs [0041]-[0042]). Song teaches that the calcination step can be performed for about 1 hour to convert the cobalt oxalate, which is within the claimed range (see e.g. paragraph [0041]).
Regarding claim 8, Chen is silent as to the purity of the resulting cobalt oxide. However, Song describes that this method of leaching, oxalic acid precipitation, and calcination can reach up to 99% purity, which is within the claimed range (see e.g. paragraph [0040]).
Regarding claim 9, Chen does not provide the diameter of the resulting particles. However, Chen describes that a substantially similar process, including leaching, oxalic acid precipitation, and calcination results in a powder, which is understood to have particles with a diameter less than 10 mm, and thus within the claimed range (see e.g. paragraph [0041]).
Claims 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Chen as applied to claim 1 above, and further in view of CN105199688 (“Wu”, machine translation used for citations).
Regarding claim 16, Chen teaches the limitations of claim 1 as set out above. Chen teaches that the method produces cobalt oxide particles, but does not teach the step of forming a drilling fluid comprising the metal oxide nanoparticles.
However, Wu teaches a drilling fluid composition (see e.g. paragraph [0002]). The drilling fluid of Wu includes metal oxide nanoparticles that can be cobalt oxide (see e.g. paragraph [0011]). Accordingly, prior to the effective filing date of the invention, it would have been obvious to a person of ordinary skill in the art to form a drilling fluid as taught by Wu using the metal oxide particles obtained by the method of Chen in order to effectively use the recovered metal oxide particles.
Regarding claim 17, Wu teaches that the drilling fluid is a water based drilling fluid (see e.g. paragraph [0009]).
Regarding claim 18, Wu teaches that the method involves the reaction of 5.2 g of the metal nanoparticles with 2.3 g of N-isopropylacrylamide, which results in a particle having about 70% metal nanoparticle content (see e.g. paragraph [0025]). 4.1 g of this particle is then reacted with 1.8 g of polyethylene glycol and 0.7g of polytetrahydrofuran, resulting in a particle having 53% metal nanoparticle content (Id.). 3.5 g of this is then added to 150 mL of water with 4 wt% bentonite, resulting in a drilling fluid having a total metal nanoparticle content of about 1.4%, which is within the claimed range (Id.).
Regarding claim 19, Wu teaches that the drilling fluid is for use in a drilling operation (see e.g. paragraph [0007]).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Wu as applied to claim 19 above, and further in view of US11008821 (“Steger”).
Regarding claim 20, Chen in view of Wu teaches the composition as recited in claim 19. However, Wu does not teach recovering at least a portion of the drilling fluid and the metal oxide nanoparticles. However, Steger teaches using a drilling fluid in a drilling operation (see e.g. col. 1, lines 15-18). Steger teaches that the drilling fluid used can be recovered, which beneficially allows for reuse of the drilling fluid and additives added to the drilling fluid (see e.g. col. 1, lines 41-45). Accordingly, prior to the effective filing date of the invention, it would have been obvious to one of skill in the art to recover the drilling fluid and metal nanoparticles in the drilling fluid of Wu in order to beneficially allow reuse of the material as taught by Steger.
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.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-20 of copending Application No. 18/407,947 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, claim 1 of the reference application recites the steps of dissolving a cathode material comprising a metal using a leaching solution comprising an acidic agent and a reducing agent; adding a second solution comprising oxalic acid and an oxalate salt to the first solution to precipitate a metal oxalate; and calcining the metal oxalate to form metal oxide nanoparticles. There do not appear to be any limitations recited in instant claim 1 that are not recited in claim 1 of the reference application.
Claims 2-16 of the instant application appear to be substantially identical to claims 6-20 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/E.S.S./Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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