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 .
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.
Amendments
Applicant’s amendments to the claims and specification filed on 9 June 2026 have been entered and considered for this action.
The prior claim objections and rejections under 35 USC § 112(b) are withdrawn. Objections to the specification remain, as noted below.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [0041] should be amended such that “ 6 v/v” includes the percent symbol, i.e. “6 v/v%”;
“Atomic” is spelled incorrectly in Table 2.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3 has been amended to recite the limitation “wherein the acid leaching solution is prepared from a sulfuric acid solution having an initial concentration of 0.5-3.5 M and hydrogen peroxide having an initial concentration (in volume percent) of less than 8 v/v%” (emphasis added). However, the specification [0041] as originally filed disclosed instead that “the acid leaching solution in step S101 is prepared from sulfuric acid and hydrogen peroxide, where the concentration of sulfuric acid ranges from 0.5M to 3.5M …and the amount of hydrogen peroxide added is less than 8v/v…”. The disclosure in the specification is best understood as one that provides the concentration of the sulfuric acid and hydrogen peroxide in the resulting leaching solution, and not in the solutions used to prepare the leaching solution.
The as filed disclosure makes no mention of any “initial concentrations.” Therefore, the instantly claimed limitations on initial concentrations of sulfuric acid and hydrogen peroxide are not supported by the as filed disclosure and the claim is rejected.
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 1-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (Sep. Purif. Tech. 2015, 144, 197–205) in view of Joulié et al . (J. Power Sources 2014, 247, 551-555), Naik et al. (US 2024/0072320 A1; effective filing date 25 August 2022), Laucournet et al. (US 2014/0227153 A1), Wang et al. (Hydrometallurgy 2009, 99, 194–201), and Johnston et al. (WO 2021/174348 A1).
Regarding claim 1, Chen teaches a method for recycling lithium batteries (a hydrometallurgical process for the separation and recovery of copper, manganese, cobalt, nickel and lithium from leaching liquor of spent lithium-ion batteries; abstract) comprising:
leaching of lithium battery waste with an acid leaching solution (the leachate used was obtained from real sulfuric acid leaching liquor of waste cathode materials (reductive leaching of the mixed powders under conditions as follows: 2 mol L-1 H2SO4 + 2 vol.% H2O2, liquid/solid ratio of 20 ml g-1, reaction temperature 80 °C and reaction time 60 min; Section 2.1);
wherein a first separated liquid (leachate) comprises lithium ion, nickel ion, cobalt ion, manganese ion, and iron ion (Section 2.1);
adding sodium hydroxide to adjust the pH value of the first separated liquid to 3, which lies within the claimed range of 2-4, and stirring the solution to have a precipitation reaction (removal of impurity ions (Fe ions) was conducted using 1 mol L-1 NaOH solution to adjust the equilibrium pH… [stirring at] 300 rpm…Almost 100% Fe ions can be precipitated under equilibrium pH of 3.0 and other metals are rarely co-precipitated; Section 3.1);
filtering the first separated liquid to obtain a second separated liquid and a second separated solid and washing the second separated solid with deionized water, and drying the deionized water off the second separated solid (the pulp was filtered by a vacuum suction filter machine and the residue was washed with deionized water; p. 199, ¶ 1; Fig. 5 shows powdered iron hydroxide, showing that the solid was dried), wherein the second separated liquid comprises lithium ion, nickel ion, cobalt ion, and manganese ion (Fig. 1 and Fig. 9),
removal of other impurity ions to generate a third separated liquid (extraction of Cu2+, Fig. 9);
at room temperature adjusting the pH value of the third separated liquid to 2, which lies in the instantly claimed range of 1.5-3, and slowly adding potassium permanganate and stirring the solution to have a precipitation reaction (separation and precipitation of manganese was conducted by drop-wise adding 0.5 mol L-1 KMnO4 solution to leaching liquor… under conditions of reaction time 60 min, 25 °C and 300 rpm.…equilibrium pH of 2.0 would be treated as the advisable equilibrium pH; Section 3.3);
filtering the third separated liquid to obtain a fourth separated liquid and a fourth separated solid and washing the fourth separated solid with deionized water, and drying the deionized water off the fourth separated solid (the pulp was filtered by a vacuum suction filter machine and the residue was washed with deionized water; p. 199, ¶ 1; Fig. 9 shows powdered manganese oxide, showing that the solid was dried), wherein the fourth separated liquid comprises lithium ion, nickel ion, and cobalt ion (Fig. 1 and Fig. 9);
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Figure 9 from Chen.
While Chen is silent on the acid used to achieve pH 2 in the manganese precipitation reaction, Chen utilizes sulfuric acid at other points in their method, i.e. as the acid in their leaching solution (Section 2.1), as well as to strip Co2+ and Cu+ from resins (p. 200, ¶ 3; p. 202, ¶ 2), and therefore sulfuric acid would have been an obvious choice of acid to achieve the desired pH of 2 in the precipitation step.
Regarding the temperature of the iron precipitation step, while section 3.1 indicates that the precipitation of iron takes place at 60 °C, this same section references Fig. 1, which indicates that iron can be precipitated at room temperature (Fig. 1, caption). Therefore it would have been obvious to use room temperature for the precipitation of iron in the method of Chen. One of ordinary skill in the art would have been motivated to do so because Chen teaches that at this temperature nearly all iron can be removed, as shown in Fig. 1.
Regarding the limitation wherein lithium battery waste and deionized water are placed in a water bath and an acid leaching solution is slowly added with stirring to react, Chen teaches the combination of lithium battery waste and an aqueous acid leaching solution and that the leaching reaction occurs at 80 °C (Section 2.1). Chen further teaches that water baths can be used to control reaction temperature and that these reactions can be stirred (All the precipitation reactions were conducted in a 250 mL three-necked and round-bottomed thermostatic reactor, which was placed in a water bath to control the reaction temperature. An impeller stirrer and a vapor condenser were installed in the reactor to control the stirring speed; p. 199, ¶ 1).
Furthermore, because the sulfuric acid leaching solution taught by Chen will include water (2 mol L-1 H2SO4 + 2 vol.% H2O2; Section 2.1), placing the battery waste and deionized water in a water bath as a separate step to slowly adding the acid leaching solution merely corresponds to a change in order of steps when compared to either placing lithium battery waste in a water bath and then adding an acid leach solution that comprises water, or adding a mixture of lithium battery waste and a leaching solution that comprises water to a water bath. The courts have held that any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, absent evidence showing criticality, the claimed order of steps is an obvious variant of the prior art that teaches water as part of an acid leaching solution, together with lithium battery waste in a water bath.
Chen further teaches the recovery of cobalt ion, nickel ion, and lithium ion (Fig. 9), but does not use the process steps recited in the instant claim. Nor does Chen teach a precipitation reaction occurring before the addition of permanganate at a pH between 4 and 6. Chen is also silent on any filtration steps that may have been used to separate the first separated liquid from the first separated solid as well as on stirring that may have been used during the leaching.
However, Joulié also teaches a method of recovering metals from lithium battery waste by leaching and selective precipitation (abstract and Fig. 5). Joulié additionally teaches stirring during acid leaching (solution is stirred at 350 rpm; Section 2.2) and filtering the solution obtained from acid leaching to generate a first separated solid and a first separated liquid (After leaching, the unleached material is filtered with paper filter … The concentrations of Li, Ni, Co and Al in the leaching liquor are measured; Section 2.2, ¶ 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to generate the leachate used in the method of Chen, which comprises lithium ion, nickel ion, cobalt ion, and manganese ion, by stirring to react and filtering the leaching reaction solution to obtain a first separated solid and first separated liquid (leachate). One of ordinary skill in the art would have been motivated to do so because Joulié teaches that these steps are effective at generating a leachate and separating the unleached material from the desired leachate solution.
Joulié further teaches the removal of cobalt by adding sodium hydroxide to adjust the pH value of the solution to 3, which lies in the instantly claimed range of 2-4, and adding sodium hypochlorite to have a precipitation reaction (Section 3.2 and Fig. 5). Joulié also teaches a solid-liquid separation, washing with distilled water to isolate the cobalt oxide (The low content of nickel in Co2O3.3H2O precipitate is probably due to its entrapment by the solid during solid liquid separation and precipitation during washing with distilled water; Section 3.2), and that filtering is one such method that can be used for a solid-liquid separation (filtered with paper filter… and washed with …distilled water; Section 2.2). Joulié also teaches that the separated liquid comprises lithium ion and nickel ion (Fig. 5). Though Joulié does prefer washing the cobalt oxide precipitate with a pH 3 solution (a washing with a solution at pH=3 is preferable to increase the purity of the cobalt precipitate), they also teach that a more intensive washing could increase purity (p. 555, ¶ 1); it would be obvious to one of ordinary skill in the art to include the deionized water wash used by Chen, and elsewhere by Joulié (Section 2.2), as part of an intensive washing step.
Though Joulié is silent on stirring the precipitation reaction, Chen taught that stirring during their oxidative precipitation is appropriate (Section 3.3), as would be expected by one of ordinary skill in the art.
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Figure 5 from Joulié.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add sodium hydroxide to adjust the pH value of the fourth separated liquid obtained in the method of Chen to 3, which lies in the instantly claimed range of 2-4, to add sodium hypochlorite and stir the solution to have a precipitation reaction, to filter the fourth separated liquid to obtain a fifth separated liquid and a fifth separated solid, wherein the fifth separated liquid comprises lithium ion and nickel ion, and to wash the fifth separated solid with deionized water and drying the solid, as taught by Joulié. One of ordinary skill in the art would have been motivated to do so because Joulié teaches that these conditions provide for selective recovery of cobalt from a solution also containing nickel and lithium.
It would have been further obvious to perform the additions at room temperature and to slowly add the sodium hypochlorite. One of ordinary skill would have been motivated to perform the addition at room temperature because no other temperature requirements are suggested by Joulié and this is the most obvious and simplest temperature at which to perform the reaction. One of ordinary skill in the art would have been motivated to add the sodium hypochlorite slowly in order to control the reaction rate and because Chen teaches that it is appropriate to add the oxidative precipitation reagent slowly in their analogous precipitation reaction using of potassium permanganate.
Joulié further teaches that nickel hydroxide can be precipitated by adding sodium hydroxide to adjust the pH value of the separated liquid to 11 to have a precipitation reaction (Regarding nickel recovery, Table 2 indicates a quasi-complete nickel precipitation from pH=11; Section 3.2 and Fig. 5) and that the solution following such a precipitation reaction comprises lithium (Fig. 5). Joulié also teaches that nickel hydroxide is recovered as a powder (Section 3.2), which suggests that it was filtered, washed, and dried. Joulié again suggests that a more intensive washing could increase purity (p. 555, ¶ 1), and it would be obvious to one of ordinary skill in the art to include a deionized water wash in such an intensive washing step.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add sodium hydroxide to adjust the pH value of the fifth separated liquid in the method of modified Chen to 11, which falls in the instantly claimed range of 9-12, to have a precipitation reaction, to filter the fifth separated liquid to obtain a sixth separated liquid and a sixth separated solid, wherein the sixth separated liquid comprises lithium ion, and to and wash the sixth separated solid with deionized water and drying the solid, as taught by Joulié. One of ordinary skill in the art would have been motivated to do so because Joulié teaches that these conditions afford near complete recovery of the nickel from solution.
While Joulié is silent on the temperature and stirring of the nickel hydroxide precipitation reaction, Chen taught that stirring during their precipitation is appropriate (Section 3.3), as would be expected by one of ordinary skill in the art. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the precipitation reactions taught by Joulié at room temperature with stirring. One of ordinary skill in the art would have been motivated to do so because Chen taches that stirring is appropriate in a related precipitation reaction, and because absent instructions to heat or cool, room temperature is the most obvious and simplest temperature at which to perform the reaction.
Joulié additionally teaches the presence of aluminum impurities in their products (Section 3.2 and Table 3), which would arise from processing NCA type lithium batteries (p. 551, ¶ 3).
Naik also teaches a method of obtaining metal salts from spent lithium batteries by sequential selective precipitation (abstract and [0054]-[0058]). In particular, analogous to Chen, Naik teaches the removal of iron by precipitation at around pH 3 (iron precipitates at the first precipitation unit PU01 when the pH of the filtrate is in a range from 2.5-3.2; [0057]) to generate a second separated liquid (once the insoluble iron salt is removed , the resultant solution is transferred to the second precipitation unit). Naik further teaches adding sodium hydroxide to adjust the pH value of the second separated liquid to 3-4, and stirring the solution to have a precipitation reaction (a second base (which may be same or different from the first base) is contacted with the second filtrate to increase the pH of the second filtrate further until the pH of the second filtrate reaches a second predetermined value at which a second metal-base salt precipitates out… more base is added to increase the pH to be in a range from 3.0-4.0, at which insoluble aluminum salt precipitates out; [0054] and [0057]; [0052] teaches the base may be sodium hydroxide).
Regarding the temperature at which the sodium hydroxide is added and aluminum hydroxide precipitated, Naik teaches that their leaching can be performed with microwave heating at 50 °C to 90 °C ([0044]), and that the reaction can then be cooled to room temperature prior to filtering ([0050]). No other heating or cooling steps are indicated, and so it would have been obvious to one of ordinary skill in the art to carry out the precipitation steps taught by Naik at room temperature, as required by the instant claim. Additionally, as Chen teaches that their pH induced precipitation of impurities can be performed at room temperature (Fig. 1), it would have been obvious to perform the pH induced precipitation taught by Naik at the same temperature.
Naik additionally teaches filtering the reaction solution to obtain a third separated liquid and a third separated solid (first filtrate is filtered to obtain a second filtrate …the process may be continued to sequentially increase the pH of the corresponding filtrate to various predetermined values at which different metal-base salts precipitate out of the filtrate; [0054]-[0055]), wherein the third separated liquid comprises lithium ion, nickel ion, cobalt ion and manganese ion ([0057]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the method of modified Chen the steps comprising at room temperature, adding sodium hydroxide to adjust the pH value of the second separated liquid to 3-4, which overlaps with the instantly claimed range of 4-6, and stirring the solution to have a precipitation reaction; and
filtering the second separated liquid to obtain a third separated liquid and a third separated solid, wherein the third separated liquid comprises one of or a combination of more of lithium ion, nickel ion, cobalt ion and manganese ion, as taught by Naik.
One of ordinary skill in the art would have been motivated to do so in order to be able to remove aluminum associated with NCA batteries prior to the precipitation of manganese, nickel and cobalt, where the aluminum can arise as an impurity, as taught by Joulié and Naik.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed pH range merely represents an obvious variant and/or routine optimization of the values of the cited prior art.
Chen teaches precipitation of a lithium salt (lithium phosphate, Fig. 9), but does not specifically teach the remaining process steps recited in the final two paragraphs of claim 1.
However, Naik teaches adding base to adjust the pH value of a separated liquid to precipitate lithium from solution [0057] and that the base to adjust pH can be sodium hydroxide ([0052]). As above, Naik’s silence on any heating or cooling during the addition would render the choice of room temperature obvious to one of ordinary skill in the art.
Additionally, Joulié teaches that lithium can be recovered by precipitation as Li2CO3 and directs the artisan to Laucournet for the details (p. 555, ¶ 3). Laucournet1 teaches that pH values greater than 12 and a temperature of 100 °C should be used to precipitate lithium carbonate, noting that lithium carbonate is less soluble at this high temperature ([0157]-[0158]).
Wang also teaches a method of recovering metal values from waste lithium ion batteries that includes selective precipitations (abstract and Fig. 3). Wang further teaches that lithium carbonate is precipitated by addition of saturated sodium carbonate around 100 °C, the boiling point of water (the leach liquor is treated with a saturated solution of sodium carbonate to precipitate Li as lithium carbonate. … the precipitating process is performed at a temperature close to 100 °C; Section 3.3.5). Wang additionally teaches filtering the reaction solution to obtain a separated solid and a separated liquid, washing the solid with water, and the recovery of a pure powder, which implies that the solid was dried (p. 200, col. 2, ¶ 1 and Conclusion).
Furthermore, Wang teaches that even at 100 °C the solubility of lithium carbonate is 0.71 g/100 g H2O, which would suggest to one of ordinary skill in the art that lithium carbonate recovery could be increased by using smaller volumes of water. Additionally, such a concentration step is also taught by Johnston in their recovery of lithium carbonate from lithium batteries, where the lithium solution is concentrated by evaporation prior to addition of sodium carbonate (the Li rich solution was evaporated to reduce the volume to a point when the Li concentration reached a concentration of 11 g/L; [00183]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to at room temperature add saturated sodium hydroxide to adjust the pH value of the sixth separated liquid, as taught by Naik, and to adjust this pH to greater than 12, which includes the claimed range of 12-14, as taught by Laucournet. One of ordinary skill in the art would have been motivated to do so in order to achieve a pH at which precipitation of lithium carbonate would occur.
It would have been further obvious to heat the solution to boiling and reduce the amount of solution (concentrate the solution), to add saturated sodium carbonate during the boiling process of the solution, to filter the reaction solution to obtain a seventh separated liquid and a seventh separated solid, and to wash the seventh separated solid with deionized water and drying it, as taught by Wang and Johnston. One of ordinary skill in the art would have been motivated to do so in order to precipitate the lithium carbonate most completely, thereby achieving the highest recovery.
Regarding the limitation wherein the boiling reduces the amount of the solution by half, the amount of reduction in the volume of the solution is a variable which one of ordinary skill in the art would optimize by routine experimentation in order to achieve the desired balance of recovery yield, purity of product, and time and effort expended on the evaporation.
It is noted that the courts have also found that “where 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). See MPEP 2144.05 II.
Therefore, a reduction in volume by half is considered an obvious variation on the concentration procedure taught by the prior art. It is also noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see 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); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed limitation of heating to boiling and adding sodium carbonate during boiling are merely an obvious variants and/or routine optimizations of the heating to near 100 °C in the cited prior art.
Regarding claim 2, modified Chen teaches the method of claim 1, where the acid leaching solution is sulfuric acid (Section 2.1).
Regarding claim 3, modified Chen teaches the method of claim 1, where the acid leaching solution contains 2 M sulfuric acid and 2 v/v% hydrogen peroxide (Section 2.1). Chen is silent on the concentrations of the initial solution used to prepare this leaching solution.
However, it would have been obvious to prepare this solution by mixing a solution of sulfuric acid at a first concentration with a solution of hydrogen peroxide at a second concentration, as is routine in the art. The amounts of acid and peroxide that are used will depend upon their concentrations, but any combination of reagents that generates the desired 2 M sulfuric acid and 2 v/v% hydrogen peroxide can be considered known equivalents for the same purpose of preparing the desired solution, as each delivers the same total amount of reagent. One method to do so would be to use 2 liters of 3 M sulfuric acid for every 1 liter of 6 v/v% hydrogen peroxide, each of which lie in the instantly claimed range.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the solution used in the method of modified Chen from sulfuric acid with an initial concentration of 3 M and hydrogen peroxide with an initial concentration of 6 v/v%. One of ordinary skill in the art would have been motivated to do so because they would be merely applying known dilution practices to known equivalents in order to prepare the solution taught by Chen.
Regarding claim 5, modified Chen teaches the method of claim 1, but Chen teaches the second separated solid being iron hydroxide, not iron phosphate.
However, Naik teaches the related process of selective sequential precipitation described above, and further teaches that the solid precipitated at pH 2.5-3.2 can be iron phosphate ([0058]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the method of modified Chen under conditions to generate iron phosphate, as taught by Naik. These conditions could include using the lithium battery mixture taught by Naik ([0062]) or adding sodium phosphate base ([0058] and [0052]) . One of ordinary skill in the art would have been motivated to do so because Naik teaches that this iron product is an alternative form that iron can be recovered in.
Regarding claim 6, modified Chen teaches the method of claim 1, where Naik teaches the third separated solid is aluminum hydroxide ([0058]).
Regarding claim 7, modified Chen teaches the method of claim 1, where Chen teaches the fourth separated solid is manganese oxide (Fig. 9).
Regarding claim 8, modified Chen teaches the method of claim 1, where Joulié teaches the fifth separated solid is cobalt oxide (Fig. 5).
Regarding claim 9, modified Chen teaches the method of claim 1, where Joulié teaches the sixth separated solid is nickel hydroxide (Fig. 5).
Regarding claim 10, modified Chen teaches the method of claim 1, where Joulié (p. 555, ¶ 3) and Laucournet ([0158]-[0159]) teach the seventh separated solid is lithium carbonate.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (Sep. Purif. Tech. 2015, 144, 197–205) in view of Joulié et al . (J. Power Sources 2014, 247, 551-555), Naik et al. (US 2024/0072320 A1; effective filing date 25 August 2022), Laucournet et al. (US 2014/0227153 A1), Wang et al. (Hydrometallurgy 2009, 99, 194–201), and Johnston et al. (WO 2021/174348 A1), as applied to claim 1 above, and further in view of Oh Dong et al. (KR 20050112487 A). The provided English machine translation of Oh Dong is used in the analysis below.
Regarding claim 4, modified Chen teaches the method of claim 1, but does not teach adding the first separated solid into the next batch of lithium battery waste to react again.
However, Oh Dong also teaches a method for recovering valuable metals such as cobalt and lithium from lithium battery waste (¶ 1), and further teaches that subjecting the first separated solid (leaching residue) to second leaching can increase the recovery of valuable metals (After dissolution, the residue is leached again with a mixture of strong acid and hydrogen peroxide to remove all unreacted cobalt; ¶ 6).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the first separated solid into the next batch of lithium battery waste to react again. One of ordinary skill in the art would have been motivated to do so in order to extract additional valuable metals by subjecting the residue to a second leaching step.
Response to Arguments
Applicant's arguments filed 9 June 2026 have been fully considered but they are not persuasive.
Applicant’s arguments, pages 8-14 of the reply, are primarily directed to the references individually. However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues that Chen describes an oil-phase extraction and that it would be “highly illogical” to replace the oil-phase extraction steps with other precipitation steps from the prior art. This argument is not persuasive. The primary goal of Chen is to recover the different metals from spent lithium batteries (Present study was focused on a hydrometallurgical process for the separation and recovery of copper, manganese, cobalt, nickel and lithium from leaching liquor of spent lithium-ion batteries; abstract). While Chen’s primary contribution may focus on organic extractants, their overall method, as depicted in Fig. 9 (see above), actually includes more precipitation steps that it does extraction steps. There would be nothing illogical about replacing the extraction steps with precipitation steps from the prior art that accomplish the same goals of recovering the metal ions present in battery waste.
It is also acknowledged that Chen does not teach the precipitation and recovery of aluminum ions, however this deficiency is remedied by Naik, who teaches the early removal of iron and aluminum in a sequential precipitation scheme similar to that instantly claimed.
Regarding the fact that Chen’s final product is lithium phosphate and not lithium carbonate, these two sparingly lithium salts are each well known in the art as means to recover lithium (e.g., see Fig. 4 of Liu et al., Journal of Cleaner Production 2019, 228, 801-81, copied below), and the selection of one over the other is not indicative of inventiveness, nor is it inconsistent with Chen’s primary objective.
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Applicant’s arguments that one of ordinary skill in the art would have no incentive to combine Joulié and Chen are also unpersuasive. Joulié teaches a method to selectively precipitate cobalt in the presence of nickel and lithium, and the recovery of cobalt from a solution containing nickel and lithium is the same problem faced by Chen, who already solved the problem of removing manganese and iron, while Naik solves the aluminum problem.
Applicant’s arguments regarding Naik focus on features from Naik that need not be incorporated into the method of modified Chen, and are therefore also unpersuasive.
Likewise, Applicant’s arguments regarding Laucournet, Wang, and Johnston are directed to features that are not relevant to the analysis above. The contributions from these inventors is limited to the methods for effectively recovering lithium carbonate from solution.
Similarly, Applicant’s arguments about Oh Dong focus on post-leaching steps, but Oh Dong is used only to teach that multiple leachings are effective at recovering more metal from spent lithium ion batteries, which is clearly relevant to the method of modified Chen where the goal is the effective recovery of metals from spent lithium ion batteries.
The prior rejections, as amended to account for Applicant’s amendments to the claims, are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (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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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
1 Joulié cites the WIPO publication of Laucournet (WO/201305048), but the English language US filing (US 2014/0227153 A1) is used here.
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