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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to a method of recycling graphite, classified in H01M 10/54.
II. Claim 11-13, drawn to a method of recycling anode material, classified in H01M 10/62.
III. Claim 14, drawn to a system for recycling, classified in H01M 10/61.
The inventions are independent or distinct, each from the other because:
Inventions (I or II) and III are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed can be used for a different method such as recovering silicon from silicon-based anodes.
Inventions I and II are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed do not overlap in scope and form mutually exclusive products (reduced graphite vs modified graphite). Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The different statutory classes of invention require different interpretations and therefore separate searches. Prior art applicable to one group may not be applicable to another group and therefore a serious burden exists for the groups to be examined together.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Christopher Lutz on 10 July 2026 a provisional election without traverse was made for Group I. Affirmation of this election is 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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ma et al. (“High-Performance Graphite Recovered from Spent Lithium-Ion Batteries” cited in IDS) in view of Chae et al. (KR 20220000706 cited in IDS, a machine translation of which is attached).
In regard to claim 1, Ma et al. teach a method of recycling graphite from a Li-ion battery (LIB), comprising: receiving an initial recycled graphite from recycling stream of dismantled Li-ion batteries including anode material; washing the anode material in an acidic wash solution (leaching) for removing residual charge material metals (see figure 1 below);
sintering the anode material with NaOH for forming a sintered graphite from the anode material, and washing the graphite in a final wash solution to attain a pH between 6 and 8 for forming a modified recycled graphite configured for use as anode material in a recycled battery (page 19733 – Experimental section “The anode material was obtained from spent batteries by a hydrometallurgical process in our previous study. A flowchart designed for the recycling of cathode and anode materials from spent LIBs is shown in Figure 1. First of all, different streams of spent LIBs were cut, shredded, and sieved to obtain the sieved powder, including cathode materials, anode materials, and other metal impurities. Then, the sieved powder was leached by 5 M sulfate acid and 35 w/w % H2O2 at room temperature. After filtration, most cathode materials and metal impurities were dissolved in the leaching solution and graphite remained in the filter cake. Then, the recycled graphite was further processed as Figure 1 shows. After graphite anode materials from the recycling process were obtained, they were releached in the same conditions, then centrifuged, washed, and dried. Then, the graphite after the releaching process was sintered with NaOH powder at 500 °C for 40 min, washed with DI water, and dried again. Recycled anode materials are designated as unpurified graphite, UG. Anode materials after releaching process are designated as releached graphite, RG. Anode materials after sintering with NaOH are designated as purified graphite, PG.”, figure 1 below)
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Claim 1 differs in calling for combining a tetrahydrofuran (THF) solution with the sintered graphite to form a reduced graphite; and washing the reduced graphite in a final wash solution to attain a pH between 6 and 8 for forming a modified recycled graphite configured for use as anode material in a recycled battery. However, Chae et al. teach a similar method of forming graphite for anode materials in LIBs and the desirability to sinter to form graphite oxide and perform a reduction treatment by then combination in a tetrahydrofuran (THF) solution with the sintered graphite to form a reduced graphite; and washing the reduced graphite in a final wash solution to attain a pH between 6 and 8 (i.e. washing with DI water) for forming a modified recycled graphite configured for use as anode material in a battery because such forms reduced graphite with a desirable structure for LIBs (see paragraphs [0044-0058]).
Therefore, it would have been obvious to one of ordinary skill in the art at or before the effective filing date of the claimed invention filed to include a reduction step in a THF solution followed by additional washing in the recycling method of Ma et al. as such forms graphite with a desirable structure for LIBs as taught by Chae et al.
In regard to claim 2, Ma et al. teach the method of claim 1 wherein the acidic wash solution further comprises 5 M sulfate acid solution (H2SO4 solution – page 19733 cited above). While the prior art does not disclose the exact composition of the acidic wash, the Examiner notes that under MPEP § 2144.05, a difference in composition (such as concentration, proportion, or amount) is not a patentable distinction unless it is shown to be critical or to produce unexpected results. Even if the ranges do not overlap, the proportions are “so close that one skilled in the art would have expected them to have the same properties,” and the difference is still generally obvious. Titanium Metals Corp. v. Banner is a classic case where small differences in alloy composition were deemed obvious.
In regard to claim 3 and 8, Ma et al. teach the method of claim 1 wherein the final wash solution further comprises: washing multiple times (re-leaching) the reduced graphite with DI water and 5M sulfate acid solution (Experimental section of page 19733 cited above). While the times and compositions disclosed by the prior art do not necessarily overlap the claimed ranges for the washing conditions, the differences between the conditions for washing are not considered a patentable distinction unless it is shown to be critical or to produce unexpected results (MPEP § 2144.05)
In regard to claim 4, Ma et al. teach the method of claim 1 further comprising leaching charge material metals from a comingled recycling stream of crushed Li-ion batteries to form acid leached recycled graphite (ARG) (shredded LIBs “including cathode materials, anode materials, and other metal impurities” – Experimental section above).
In regard to claim 5, Ma et al. teach the method of claim 4 wherein the recycling stream is sourced from Ni, Mn and Co (such as NMC111 – last line of page 19732) Li-ion batteries leached with H2SO4 (i.e. sulfate acid).
In regard to claim 6 and 7, Ma et al. and Chae et al. teach the method of claim 1 wherein the modified recycled graphite is reasonably presumed to have a purity of at least 99.9%, an initial coulombic efficiency of 91.5% and depict surface defects having an peak intensity ratio of the D-band to that of the G-band (Id/Ig) around 54.8% as MPEP §2112.01 states that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of anticipation or obviousness is established.
In regard to claim 9, Ma et al. teach the method of claim 1 wherein sintering further comprises combining a substantial mass of NaOH with the anode material following washing, and heating to 500o C for 40 minutes (Experimental section above) the difference between the conditions for sintering are not considered a patentable distinction unless it is shown to be critical or to produce unexpected results (MPEP § 2144.05).
In regard to claim 10, Chae et al. teach the method of claim 1 wherein forming the reduced graphite further comprises combining THF with the sintered graphite in a solid/liquid ratio for a period of time to perform reduction of the graphite (paragraph [0049] of attached machine translation) and the difference between the conditions for graphite reduction are not considered a patentable distinction unless it is shown to be critical or to produce unexpected results (MPEP § 2144.05).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gratz et al. (US Pub 2021/0384563 newly cited) teaches a similar method of recycling graphite from LIB anodes (figure 1 below):
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Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS P D'ANIELLO whose telephone number is (571)270-3635. The examiner can normally be reached Monday to Friday 9am to 5pm EST.
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/NICHOLAS P D'ANIELLO/Primary Examiner, Art Unit 1723
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