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 .
Response to Amendment
The amendment filed 07/09/2026 has been entered. Claim(s) 9 and 11-26 is/are pending in this application and examined herein. Claim(s) 9 and 11-14 is/are amended. Claim(s) 1-8 and 10 is/are cancelled. Claim(s) 15-26 is/are new.
The rejection(s) under 35 USC 112(b) to claim(s) 1-14 is/are withdrawn in view of the amendments to claim(s) 9 and 11, and the cancellation of claims 1-8.
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.
Claims 23 and 25 are 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 23 recites “wherein the organic compound is added to the PLS in an amount of at least 400 mg/L”. The instant specification discloses wherein organic compound is added to the PLS in an amount of about 400 mg/L (instant specification: [0014, 0036, 0040]), and wherein organic compound is added to the PLS in an amount of 800-1200 mg/L (instant specification: [0038]), however the instant specification does not support the entire broad range of at least 400 mg/L (i.e., 400 mg/L and all higher concentrations of organic compound), and therefore does not describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor invented the claimed invention at the time of filing.
Claim 25 recites “wherein the insoluble organo-complex comprises an insubstantial amount of Li, Ni, Mn, or Co”, however the instant specification does not disclose Li, Ni, Mn, or Co comprised in the insoluble organo-complex, and therefore does not describe the claimed invention in a manner understandable to a person of ordinary skill in the art in a way that shows that the inventor invented the claimed invention at the time of filing.
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 25 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 25 recites the limitation "wherein the insoluble organo-complex comprises an insubstantial amount" in lines 1-2. The limitation is indefinite as it is unclear if an “insubstantial amount” would include when no Li, Ni, Mn, or Co are present (i.e., the most insubstantial amount, none), or if the insoluble organo-complex must still contain at least some amount of Li, Ni, Mn, or Co, but that the amount is relatively small.
The term “insubstantial” in claim 25 is a relative term which renders the claim indefinite. The term “insubstantial” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, making unclear how much Li, Ni, Mn, or Co is contained in the insoluble organo-complex.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 9, 11-12, and 16-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ding (US 20210395859 A1) in view of Zhang (CN 113106257 B, original document and machine translation supplied with IDS filed 03/26/2025) and Rickelton ("The removal of Cadmium impurities from Cobalt-Nickel Solutions by Precipitation with Sodium Diisobutyldithiophosphinate", supplied with IDS filed 03/26/2025).
Regarding claim 9, Ding teaches a method of recovering valuable metals from a black mass (Title, [0042-0043]), where the black mass can comprise lithium, cobalt, nickel, and manganese (i.e., wherein the black mass comprises the valuable metals, wherein the valuable metals comprise Li, Ni, Mn, and Co) [0008]. Ding teaches acid leaching the black mass to form a pregnant leach solution comprising valuable metals [0008, 0044-0054, 0084]. Ding teaches subsequently, precipitating and recovering Li (Fig. 1, [008, 0080-0083]), Ni (Fig. 1, [0008, 0080-0082]), Mn (Fig. 1, [0008, 0061-0070), and Co valuable metals (Fig. 1, [0008, 0080-0083]).
Ding teaches wherein the black mass may comprise metal impurities [0004-0006, 0045, 0054], however Ding does not teach wherein the black mass comprises Cd or removing Cd from the PLS.
Zhang teaches a lithium battery waste recycling method and application thereof (Title), where valuable metals are recovered (Abstract, pg. 3 lines 2-3) from black mass (pg. 3 paragraphs 7-10) by acid leaching (pg. 3 paragraph 7-9) and subsequently, precipitating and recovering the valuable metals from a pregnant leach solution (pg. 3 paragraph 12), thus Ding and Zhang are analogous to the instant application as both are directed to processes for acid leaching black masses of lithium ion batteries to recover metals by precipitation. Zhang teaches wherein the black mass includes cadmium (Cd) (pg. 4 paragraph 9), and acid leaching the black mass to form a pregnant leach solution (PLS) comprising the Cd (pg. 3 paragraph 7-9, pg. 4 paragraph 9), and then removing the Cd from the pregnant leach solution (PLS) using a P204 extractant immediately following leaching (pg. 3 paragraph 11, pg. 4 paragraphs 8-9).
Because Ding is silent with respect to which metals are all present as impurities in the black mass and how to remove them, in order to carry out the invention of Ding one of ordinary skill in the art would necessarily look to the art for a reference teaching impurities found in black mass of lithium ion batteries and methods of removing them suitable for use within the process of Ding, such as the presence and removal of Cd as taught by Zhang. As Ding and Zhang both relate to acid leaching of black masses of lithium ion batteries followed by recovery of valuable metals by precipitation, one of ordinary skill would be motivated to perform steps to ensure removal of Cd from black mass according to Zhang.
Zhang teaches removing cadmium from a PLS, but teaches doing so by extraction with P204 extractant (pg. 3 paragraph 11, pg. 4 paragraphs 8-9). Ding in view of Zheng does not teach wherein the removal of the Cd includes precipitating an insoluble organo-complex by adding an organic compound material to the PLS.
Rickelton teaches removal of cadmium impurities from cobalt-nickel solutions by precipitation with diisobutyldithiophosphinate (Title), where cadmium impurities are present in cobalt-nickel solutions processed by solvent extraction for the recovery of cobalt (Abstract), and cadmium must be removed from the solution prior to solvent extraction (1. Introduction, paragraph 1) and nickel (e.g., pg. 340 paragraph 2), thus Ding in view of Rickelton and Zhang are analogous to the instant application as both are directed to processes for removing cadmium from solutions comprising cobalt, nickel, and cadmium where cobalt and nickel are to be recovered. Rickelton teaches wherein the removal of the Cd from the PLS includes precipitating as a diisobutyldithiophosphinate complex (i.e., an organo-complex) (pg. 342 paragraphs 1-3), which is intrinsically insoluble as it is precipitated from solution. Rickelton teaches the complex is formed by adding diisobutyldithiophosphinate (i.e., an organic compound material) to the solution (pg. 341: 2. Experimental: paragraph 1; pg. 343 paragraph 1). Rickelton teaches the sodium diisobutyldithiophosphinate to selectively remove cadmium from the solution without co-precipitating valuable metals (abstract, pg. 340 paragraph 2, pg. 344: 4. Conclusions).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added sodium diisobutyldithiophosphinate to precipitate cadmium prior to extraction as taught by Rickelton prior to the extraction with P204 of Ding in view of Zhang, as doing so would selectively remove cadmium impurities from the solution, further purifying the solution, and would do so at a point that is described as advantageous by Rickelton (i.e. ,prior to extraction).
Regarding claims 11 and 12, Rickelton teaches wherein the organic compound includes organothiophosphate compounds or derivatives and wherein the organic compound includes dithiophosphinate (pg. 341: 2. Experimental: paragraph 1; pg. 343 paragraph 1).
Regarding claims 16-19, Ding teaches wherein the pH is adjusted to a value ranging from about pH 2 to about pH 8 [0056] by adding LiOH base [0055] (i.e., pH adjusting).
Ding teaches adjusting to a pH of about 2 to about 8. This overlaps the claimed ranges of at least 5 and in the range of 5 to 6.5. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because the prior art indicates substantial utility over the entire range disclosed therein, including that portion of the range which also falls within the claimed range. See MPEP § 2144.05(I).
Regarding claims 20 and 21, Ding teaches wherein pH-adjusting the PLS comprises adding LiOH base solution (i.e., Li basic solution) [0055].
Regarding claim 22, Ding teaches the black mass can comprise lithium, cobalt, nickel, and manganese (i.e., wherein the valuable metals comprise Li, Ni, Mn, and Co) [0008].
Regarding claim 23, Rickelton teaches adding 0-1130 g of organic compound per tonne of solution (Table 3), such as 570 g/tonne or 1130 g/tonne (equivalent to 570 mg/L and 1130 mg/L respectively), which are within the claimed range.
Regarding claim 24, Rickelton teaches adding 0-1130 g of organic compound per tonne of solution (Table 3), such as 570 g/tonne (equivalent to 570 mg/L), which is within the claimed range.
Regarding claim 25, Rickelton teaches co-precipitation of other metals in solution with the organic compound is not observed at pH 3 and only a small co-precipitation of cobalt and nickel are observed at higher pH (i.e., wherein the insoluble organo-complex comprises an insubstantial amount of Li Ni or Co) (pg. 343 paragraph 3).
Regarding claim 26, Rickelton teaches wherein after removing the Cd, the PLS comprises as little as 0.00005 g/L of Cd (Table 3), equivalent to 0.05 mg/L, which is within the claimed range.
Claim(s) 9, 11-22, and 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ding in view of Zhang and Yokota (US 3755161 A, cited in Office Action dated 02/11/2026).
Regarding claim 9, Ding teaches a method of recovering valuable metals from a black mass (Title, [0042-0043]), where the black mass can comprise lithium, cobalt, nickel, and manganese (i.e., wherein the black mass comprises the valuable metals, wherein the valuable metals comprise Li, Ni, Mn, and Co) [0008]. Ding teaches acid leaching the black mass to form a pregnant leach solution comprising valuable metals [0008, 0044-0054, 0084]. Ding teaches subsequently, precipitating and recovering Li (Fig. 1, [008, 0080-0083]), Ni (Fig. 1, [0008, 0080-0082]), Mn (Fig. 1, [0008, 0061-0070), and Co valuable metals (Fig. 1, [0008, 0080-0083]).
Ding teaches wherein the black mass may comprise metal impurities [0004-0006, 0045, 0054], however Ding does not teach wherein the black mass comprises Cd or removing Cd from the PLS.
Zhang teaches a lithium battery waste recycling method and application thereof (Title), where valuable metals are recovered (Abstract, pg. 3 lines 2-3) from black mass (pg. 3 paragraphs 7-10) by acid leaching (pg. 3 paragraph 7-9) and subsequently, precipitating and recovering the valuable metals from a pregnant leach solution (pg. 3 paragraph 12), thus Ding and Zhang are analogous to the instant application as both are directed to processes for acid leaching black masses of lithium ion batteries to recover metals by precipitation. Zhang teaches wherein the black mass includes cadmium (Cd) (pg. 4 paragraph 9), and acid leaching the black mass to form a pregnant leach solution (PLS) comprising the Cd (pg. 3 paragraph 7-9, pg. 4 paragraph 9), and then removing the Cd from the pregnant leach solution (PLS) using a P204 extractant immediately following leaching (pg. 3 paragraph 11, pg. 4 paragraphs 8-9).
Because Ding is silent with respect to which metals are all present as impurities in the black mass and how to remove them, in order to carry out the invention of Ding one of ordinary skill in the art would necessarily look to the art for a reference teaching impurities found in black mass of lithium ion batteries and methods of removing them suitable for use within the process of Ding, such as the presence and removal of Cd as taught by Zhang. As Ding and Zhang both relate to acid leaching of black masses of lithium-ion batteries followed by recovery of valuable metals by precipitation, one of ordinary skill would be motivated to perform steps to ensure removal of Cd from black mass according to Zhang.
Zhang teaches removing cadmium from a PLS, but teaches doing so by extraction with P204 extractant (pg. 3 paragraph 11, pg. 4 paragraphs 8-9). Ding in view of Zheng does not teach wherein the removal of the Cd includes precipitating an insoluble organo-complex by adding an organic compound material to the PLS.
Yokota teaches treatment process for removal of metals and treating agent therefor (Title), where metals are removed from liquid phase metal-containing material (analogous to a PLS) (Abstract), where the metal may be Cd (Col. 9 lines 3-7), thus Yokota and Ding in view of Zhang are analogous to the instant application as both are directed to the removal of Cd from liquid phases. Yokota teaches the treatment comprises using a solid treating agent consisting of a carrier material with a compound deposited thereon (Abstract), where for removing Cd, the compound is preferably 2-mercaptobenzothiazole or its alkali salts (i.e. an organic compound material) (Col. 5 lines 4-10, Col. 9 lines 12-15). Yokota teaches the Cd is removed by depositing onto the organic compound material, and forming a mercaptide compound or coordinate chelate (i.e., an organo-complex) (Col. 3 lines 7-15), where as the Cd is removed from the solution and is deposited onto a solid, the removal of Cd includes precipitating as an insoluble organo-complex. Further, as the removal of Cd occurs by contact of the Cd in the solution with the organic compound material (e.g., Col. 7 lines 44-59), the precipitation occurs by adding the organic compound material to the PLS. Yokota teaches in prior art methods it is difficult to separate supernatant liquid from metal-containing precipitates when removing impurity metals (Col. 2 lines 12-23), while Yokota overcomes these difficulties and drawbacks and has greatly improved results (Col. 3 lines 7-23).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used 2-mercaptobenzothiazole or an alkali salt thereof on a carrier as taught by Yokota to remove cadmium impurities from the PLS of Ding in view of Zhang, as doing so would avoid difficulties in separating supernatant from metal precipitates as taught by Yokota.
Further, it has long been held that it is prima facie obvious to substitute equivalents taught by the prior art to be useful for the same purpose. See MPEP 2144.06 (II). As in the instant case Ding in view of Zhang only differs from claim 1 in that the instant claim uses an organic compound to precipitate Cd as an insoluble organo-complex, while Zhang uses a P204 extraction to remove Cd from liquid solution, and Yokota uses a 2-mercaptobenzothiazole or alkali salt thereof to remove Cd from liquid solution, a prima facie case of obviousness exists as it would have been obvious to have substituted the use of 2-mercaptobenzothiazole or alkali salt thereof to remove Cd from liquid solution of Yokota into the method of Ding in view of Zhang to remove Cd from the liquid solution.
Regarding claims 11-12, Yokota teaches wherein the organic compound material includes a 2-mercaptobenzothiazole or alkali salt thereof (i.e., wherein the organic compound includes benzothiazole compounds or derivatives, wherein the organic compound includes mercaptobenzothiazole (Col. 5 lines 4-10, Col. 9 lines 12-15).
Regarding claim 13, Yokota teaches wherein the organic compound material includes a 2-mercaptobenzothiazole or alkali salt thereof (Col. 5 lines 4-10, Col. 9 lines 12-15), where the alkali salt thereof may be sodium 2-mercaptobenzothiazole (i.e., wherein the adding of the organic compound includes adding sodium 2-mercaptobenzothiazole (NaMBT)) (Tables 3 and 4: Example 22).
Regarding claims 14-15, Yokota teaches wherein the step of adding the organic compound to the PLS causes precipitation of Cu with the insoluble organo-complex (Col. 9 lines 12-15).
Regarding claims 16-19, Ding teaches wherein the pH is adjusted to a value ranging from about pH 2 to about pH 8 [0056] by adding LiOH base [0055] (i.e., pH adjusting).
Ding teaches adjusting to a pH of about 2 to about 8. This overlaps the claimed ranges of at least 5 and in the range of 5 to 6.5. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because the prior art indicates substantial utility over the entire range disclosed therein, including that portion of the range which also falls within the claimed range. See MPEP § 2144.05(I).
Regarding claims 20 and 21, Ding teaches wherein pH-adjusting the PLS comprises adding LiOH base solution (i.e., Li basic solution) [0055].
Regarding claim 22, Ding teaches the black mass can comprise lithium, cobalt, nickel, and manganese (i.e., wherein the valuable metals comprise Li, Ni, Mn, and Co) [0008].
Regarding claim 25, Yokota teaches wherein the metals selected from the group including Co, Ni, and Mn are treated by the process (Col. 9 lines 3-7), therefore Li would not be expected to precipitate with the insoluble organo-complex (i.e., the insoluble organo-complex comprises an insubstantial amount of Li).
Regarding claim 26, Yokota teaches after removing Cd, the PLS comprises 40 ppb (example 15), or 50 ppb (example 22) of Cd, equivalent to 0.04 and 0.05 mg/L of Cd, which is within the claimed range.
Response to Arguments
Applicant's arguments filed 07/09/2026 have been fully considered with the following effect:
Applicant’s argument that Zhang in view of Rickelton does not teach wherein lithium is present in the PLS and precipitated and recovered after Cd removal, see pg. 6-9 of remarks, the Examiner agrees. Therefore, the rejection(s) of claim(s) 9-14 under 35 USC 103 as unpatentable over Zhang in view of Rickelton and/or Zhang in view of Yokota have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hanisch, which teaches precipitating and recovering valuable metals including Li, Ni, Mn, and Co after where it would have been obvious to perform a Cd removal step.
Regarding Applicant’s argument that Zhang and Rickelton do not teach a PLS with a pH of at least 5 or in the range of 5 to 6.5 (see pg. 9-10 of remarks), the Examiner notes that Rickelton teaches a pH of the solution from which Cd is removed (analogous to the PLS) of 5 (Table 3), which is within the claimed ranges. Further, as Rickelton teaches setting the initial pH of the solution (analogous to the PLS), Rickelton also teaches adjusting the PLS to be in the claimed ranges.
Regarding Applicant’s argument that the removal of Cd is highly selective in the instant application, with minimal to no co-precipitation of critical metals (see pg. 10-11 of remarks), in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., removal of Cd is highly selective, or that minimal to no co-precipitation of critical metals occurs) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
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