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/Restrictions
Applicant’s election without traverse of Group I, encompassing claims 1-13, in the reply filed on July 15, 2026 is acknowledged.
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.
Claim 11 is 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 11 contains the trademark/trade name NAFION, DIAION and TRILITE. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a membrane and, accordingly, the identification/description is indefinite.
Claim Rejections - 35 USC § 102
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, 2 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoon et al. (US Patent Application Publication no. 2015/0129433).
Regarding claim 1, Yoon discloses a method of recovering a lithium precursor (abstract; paragraphs 2, 17), the method comprising:
preparing a first electrode to include an active material (paragraphs 19-21), and a second electrode (paragraphs 15-19);
immersing the first electrode and the second electrode in a first reaction solution in a first reaction vessel and a second reaction solution in a second reaction vessel, respectively (the first and second electrodes are immersed in different solutions – abstract; paragraph 56); and
applying a voltage to the first electrode and the second electrode to recover a lithium precursor from the active material (abstract; paragraphs 75, 79).
Regarding claim 2, Yoon teaches wherein the preparing of the first electrode includes preparing the first electrode to contain the active material by coating the active material on a surface thereof (paragraph 21).
Regarding claim 7, Yoon discloses wherein the first electrode comprises an electrode bar, and the active material is directly coated on a surface of the electrode bar (paragraphs 21, 61-62; figures 2-3).
Regarding claim 8, Yoon teaches wherein the first reaction vessel (comprising the first solution) serves as an oxidation unit, and the second reaction vessel (containing the second solution) serves as a reduction unit (paragraphs 9, 41-44).
Regarding claim 9, Yoon further discloses wherein the first reaction solution comprises a lithium ion-containing aqueous solution, and the second reaction solution includes water (paragraphs 7, 23, 39, 48-52).
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.
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yoon as applied to claim 1 above, and further in view of Georgeaud et al. (US Patent Application Publication no. 2019/0309428).
Regarding claim 3, Yoon teaches all the features discussed above but fails to disclose wherein the first electrode comprises an active material storing portion at one end thereof in which the active material is accommodated.
Georgeaud discloses an electrolytic method for the extraction of metals from an active material of an anode. The active material may be inserted/stored in a metal basket that is stable with regard to oxidation and has the advantage of serving as an electrical conductor and current distributor while physically preserving elements of the electrically conductive mixture (paragraphs 28-30, 61).
One having ordinary skill in the art at the time of filing would have found it obvious to store the active material of Yoon in a basket that is stable with regard to oxidation because as taught by Georgeaud, this provides the advantage of serving as an electrical conductor and current distributor while physically preserving elements of the electrically conductive mixture/active material.
Regarding claim 4, the active material storing portion of Georgeaud has a basket shape (paragraphs 28-30; figure 1).
Regarding claim 5, the active material storing portion of Georgeaud may be formed of a carbon felt (the basket may comprise a porous envelope based on polymer in order to physically preserve the elements of the electrically conductive mixture; paragraphs 44-46).
Regarding claim 6, Georgeaud further teaches wherein the first electrode/anode comprises an electrode bar connected to the active material storing portion/basket (figure 1).
Claims 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yoon as applied to claim 9 above, and further in view of Xu (A green and sustainable strategy toward lithium resources recycling from spent batteries; Science Advances; 2022; pages 1-12).
Regarding claim 10, Yoon teaches all the features discussed above, but fails to disclose wherein the first reaction vessel and the second reaction vessel are connected to each other by a connection portion including an ion exchange membrane therein.
Xu discloses an electrochemical extraction method for the recovery of lithium comprising an ion exchange membrane separating an anode compartment and a cathode compartment. This process drives Li+ to the cathode compartment through the ion exchange membrane to form LiOH (page 2, col. 2 under Waterproof protection of LLZTO to page 3, col. 1, first paragraph). This arrangement provides lithium recovery from spent batteries with higher purity.
It would have been obvious to one having ordinary skill in the art at the time of filing to use an ion exchange membrane in the cell of Yoon because as taught by Xu, this arrangement provides lithium recovery with higher purity.
Regarding claim 11, the ion exchange membrane of Xu is a proton exchange membrane (abstract). Nafion is a well-known proton conductor and thus, one having ordinary skill in the art would have found it obvious to use NAFION as the proton exchange membrane of the modified Yoon.
Regarding claim 12, the active material of Xu comprises lithium iron phosphate (abstract).
Regarding claim 13, Xu teaches that lithium ions separated from the active material move to the second reaction vessel to be collected as lithium hydroxide (page 2, col. 2 under Waterproof protection of LLZTO to page 3, col. 1, first paragraph).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZULMARIAM MENDEZ whose telephone number is (571)272-9805. The examiner can normally be reached M-F 8am-4:30p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at 571-272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ZULMARIAM MENDEZ/Primary Examiner, Art Unit 1794
Prosecution Insights