Detailed Office Action
Notice of Pre-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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Restriction/Election
Applicant’s election without traverse of Group II in the reply filed on 05/14/2026 is acknowledged.
Response to Amendments
The amendment filed on 05/14/26 has been entered. Claim 3 has been amended and finds support in at least the original claim set and Fig 1. Claims 3 – 12 remain pending and under examination.
Claim Rejections – U.S.C. §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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN108220607, using espacenet translation) in view of Dong (CN207262946U, using espacenet translation)
Regarding claims 3 and 8, Sun teaches a method of recycling lithium-containing material [title] including battery waste of cathode material (implying that the cathode material is removed from the battery) [0023]. The method includes the steps of:
Roasting the material with a reducing atmosphere [0020] in a tube furnace [0026]
Meeting the claimed limitation of withdrawing the cathode material from a battery and subjecting the cathode material to reduction roasting in a reduction roasting device.
Leaching the reduced material in water [0029] and filtering to separate the liquid and solid [0033]
Meeting the claimed limitation of leaching by soaking in water and filtering to obtain a filtrate
Lithium hydroxide is obtained by crystallization [0039, 0040]
Meeting the claimed limitation of crystallizing to obtain lithium hydroxide
Sun does not expressly teach details of the tube furnace (i.e., the roasting reduction device).
Dong teaches a tubular furnace that provides a more complete reaction along with a simple structure and smaller size [0019 – 0020]. Dong teaches that the tubular furnace has a quartz tube [0036], a perforated plate [0036] (meeting the broadest reasonable interpretation of a microporous slide), and a gas cylinder [0036], in which the perforated plate is perpendicular to the length of the quartz tube [Fig 6]. The furnace is vertical with the quartz tube inside [Fig 1], meeting the claimed limitation.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Sun and performed the reduction gas treatment with the tube furnace disclosed by Dong. Sun teaches that the reduction gas treatment is performed with a tube furnace and Dong provides a tube furnace design for treating powder. As such, an ordinarily skilled artisan would have considered the teachings of Dong to be pertinent to Sun and would have had a reasonable expectation of success of implementing them. Moreover, Dong teaches that the tube furnace design has various benefits including more complete reaction, simple structure, and smaller size. As such, an ordinarily skilled artisan would have been motivated to apply the teachings of Dong to the method of Sun.
Additionally, Sun in view of Dong does not expressly teach both a protective gas cylinder and reducing gas cylinder. However, Dong teaches that the air inlet for the tube is connected to a gas cylinder to introduce the required the gas during the process [0036] and Sun teaches that the process involves the use of both a protective/inert gas as well as a separate reducing gas [0027, 0020]. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have included both a protective gas cylinder and reducing gas cylinder in the combination of Sun in view of Dong to perform the reduction process described by Sun. An ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results and would infer that given Sun uses two separate gases in the process and the furnace of Dong includes a gas connector for connecting to a cylinder containing a gas for preforming a process, that the combination would use two separate gas cylinders.
"A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. (MPEP 2141.03 I)
Regarding claim 8, Sun in view of Dong teaches the invention as applied in claim 3. Sun teaches that the solid-liquid ratio is 0.1 – 10,000 g/L [0030] which converts to a liquid/solid ratio of 0.1 – 10,000 mL of water to grams of solid, which overlaps with the claimed range. The temperature and time of the leaching is 20 – 100°C and 1 – 600 min, which overlaps with the claimed ranges [0031 – 0032].
With regards to the overlapping ranges taught, “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 Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Claims 4 – 5, 7, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN108220607, using espacenet translation) in view of Dong (CN207262946U, using espacenet translation), as applied to claim 3, in further view of Ha (US2024/0154197)
Regarding claim 4, Sun in view of Dong teaches the invention as applied in claim 3. Dong teaches that the quartz tube for the furnace can be pulled out so that the material can be changed/charged and that said material can rest on the perforated plate [0036], implying/reasonably suggesting the step of placing the reaction substance in the tube and then the tube in the furnace. Moreover, Sun in view of Dong reasonably suggests both a protective gas cylinder and reducing gas cylinder.
However, Sun in view of Dong does not suggest the steps claimed.
Ha teaches a method of recovering metal from a battery by preparing a cathode material, reduction treatment, hydration dispersion and leaching, and crystallization [Abstract, Fig 1]. Ha teaches that the reduction treatment is performed by fluidization heating [Fig 3]. Additionally, Ha teaches that prior to the reduction treatment, the cathode material can be heated to 500°C or less in an inert gas atmosphere in the fluidization furnace to remove remaining impurities [0046, 0047]. Then the gas injected is switched to the reduction gas for the reduction treatment [0049].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Sun in view of Dong and modified it such that the cathode material was first heated in an atmosphere of the protective gas to remove remaining impurities and then switching to the reducing gas to perform the reduction treatment, as suggested by Ha. Sun and Ha are directed to the same field of endeavor of recycling lithium battery material with steps including gas reduction treatment and water-based leaching. Moreover, Ha suggests that both the preliminary heat treatment in protective gas and reduction treatment with reducing gas can be performed in the fluidization furnace and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in modifying the process of Sun in view of Dong to perform the steps. Lastly, an ordinarily skilled artisan would have been motivated to make this modification because Ha discloses that the preliminary heat treatment in protective gas helps remove any remaining impurities in the material.
Regarding claim 5, Sun in view of Dong and Ha teaches the invention as applied in claim 4. Sun teaches that the protective atmosphere gas can be nitrogen and/or argon [0027], which meets the claimed limitation. Sun teaches that the reducing gas can be hydrogen and/or ammonia [0020], meeting the claimed limitations.
Regarding claims 7 and 11, Sun in view of Dong and Ha teaches the invention as applied in claims 4 and 5. Sun teaches that the reducing gas flow rate is 100 – 10,000 mL/min, which overlaps with the claimed range, at a temperature of 300 – 1200°C, which overlaps with the claimed range, for 0.1 – 10 hr, which overlaps with the claimed range.
With regards to the overlapping ranges taught, “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 Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Claims 6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN108220607, using espacenet translation) in view of Dong (CN207262946U, using espacenet translation) and Ha (US2024/0154197), as applied to claim 4, in further view of Zhang (CN114032384, using espacenet translation)
Regarding claim 6, Sun in view of Dong and Ha teaches the invention as applied in claim 4. Sun as-modified does not expressly disclose a heating rate.
Zhang teaches a method of recycling positive electrodes of waste lithium battery [title]. Zhang discloses that the method includes water leaching [0001] and reduction roasting [0006, 0007]. Zhang discloses that the heating rate for reduction roasting can be 5 – 10°C/min, which falls within the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Sun in view of Dong and Ha and performed the heating rate at 5 – 10°C/min as taught by Zhang to achieve predictable results. Sun and Zhang are directed to the same field of endeavor of recycling lithium battery material with steps including gas reduction treatment and water-based leaching. Moreover, because Sun also performs a reducing treatment in the same temperature range as Zhang, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the heating rate described by Zhang to the step of Sun to achieve predictable results with no change in their functions.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (MPEP 2143 A). “The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art”. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976)
Regarding claim 12, Sun in view of Dong, Ha, and Zhang teaches the invention as applied in claim 6. Sun teaches that the reducing gas flow rate is 100 – 10,000 mL/min, which overlaps with the claimed range, at a temperature of 300 – 1200°C, which overlaps with the claimed range, for 0.1 – 10 hr, which overlaps with the claimed range.
With regards to the overlapping ranges taught, “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 Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Claims 9 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (CN108220607, using espacenet translation) in view of Dong (CN207262946U, using espacenet translation), as applied to claim 3, in further view of Peng (CN110165324, using espacenet translation)
Regarding claims 9 – 10, Sun in view of Dong teaches the invention as applied in claim 3. Sun as-modified does not expressly disclose how the lithium cathode material is prepared prior to reduction roasting.
Peng teaches a method of recovering valuable metals from lithium-ion batteries [0001]. In particular, Peng teaches a process for recovering cathode powder [0050]. Peng teaches that the preparation process includes the steps of:
Discharging, disassembling and cleaning with solution followed by low temperature heat treatment [0048, 0049]
meeting the claimed limitation of discharging, disassembling, and drying to obtain plates
Subjecting the plates to pyrolysis and then separating and sieving to obtain a cathode powder [0050].
Meeting the claimed limitation of roasting, stripping and sieving
Wherein the pyrolysis is performed at 350 – 650°C for 1 – 360 min, which overlaps with the claimed temperature and time ranges of claim 10.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Sun in view of Dong and performed the process steps for preparing cathode powder, as described by Peng, to achieve predictable results. Sun and Peng are directed to the same field of endeavor of recycling lithium battery material. Moreover, because Peng provides a method for forming cathode powder from lithium batteries and Sun provides a method for recovering lithium from cathode powder, an ordinarily skilled artisan would have had a reasonable expectation of success in combining them to achieve predictable results with no change in the respective functions of the steps.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (MPEP 2143 A). “The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art”. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976)
With regards to the overlapping ranges taught, “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 Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2021/0115532 – Method for recovering active metal via fluidized bed gas reduction, water leaching, filtrating, and crystallizing and lithium hydroxide
US2019/0386354 – Method for breaking down/disassembling Li battery and separating out components to recover metals. Formation of active material compositon
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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