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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/21/2026 is being considered by the examiner.
Response to Amendments/ Status of Claims
An amendment, filed 05/21/2026, is acknowledged.
Claims 1-12 and 13-18 are currently pending.
Claim 1-6, 8-11, and 14-15 have been amended.
Claim 13 is cancelled.
Claim 16-18 are added. New claims finds support in the specification.
Therefore, claims 1-12 and 13-18 are currently under consideration for this office action.
Status of Previous Rejections
The previous claim objection and 35 USC § 112(b) rejections of the claims have been withdrawn due to the amendment.
The previous 35 USC § 103 rejections of the claims have been withdrawn due to the amendment.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim recites “mL” in line 9, wherein “L” is a capital letter, it need to be changed to “ml”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 (b)
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.
Claims 1-12 and 14-18 are 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 1 recites the term “(g)” in line 8 and the term “(mL)” in line 9, in parenthesis, render the claim indefinite, because it is not clear whether this limitation is optional or is required by the instant claim.
Appropriate corrections are required.
Claims 2-12 and 14-18-are also rejected due to their dependency on claim 1.
Claim Rejections - 35 USC § 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 (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.
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 1-12 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Rohde, Wolfgang, et.al. [WO2019197192A1] (Wolfgang hereafter) and in view of Wei-Sheng Chen “Recovery of Valuable Metals from Lithium-Ion Batteries NMC Cathode Waste Materials by Hydrometallurgical Methods”, Metals 2018, 8, 321] (Chen hereafter).
Regarding claims 1, Wolfgang discloses a method for dissolving a positive electrode material of a battery comprising a step during which the positive electrode material, including lithium, and manganese (the recovery of transition metal from spent lithium ion batteries) is immersed in an acid solution at a pH value in the range of from 1.5 to 2 (Wolfgang’s step c), and Wolfgang teaches the pH is adjusted to maintain an excess of acid [Page 9, line 1-10, and Claim 1].
Wolfgang’s pH value is within the as recited in the instant claim.
Wolfgang then teaches the acid solution contains hydrogen peroxide, and the lithium is put into solution and the manganese is dissolved, (in a preferred examples of reducing agents in step (c) is hydrogen peroxide, as reducing agents can reduce residual Mn(+IV) or Mn(3+) to Mn(2+) and is advantageous in case when Mn is present [Page 10, line 1-5, 7-14, line 16-18]).
Wolfgang teaches manganese selectively precipitates in the form of a manganese oxyhydroxide (Wolfgang’s step (f) serves to precipitate manganese as (mixed) hydroxide, oxyhydroxide or carbonate) [Page 9, line 1-10, Claim 2], and therefore, selecting a precipitate in the form of a manganese oxyhydroxide from Wolfgang’s teachings would be a prima facie case of obviousness. Wolfgang’s selective precipitation of manganese can be carried out, using different separating parameters and conditions like use of hydroxides, controlling temperature, pH, organic additives, etc. that are suitable for separation of manganese [Page 15, line 25-44, and Page 16, line 1-20].
Wolfgang’s disclosed recycling process allows easy and efficient recovery of transition metals, nickel, cobalt and manganese including lithium, as well as other valuable elements in high purity form that is reusable [page 2, line 4-14].
But Wolfgang is silent about a solid/liquid ratio.
However, Chen teaches an improved process of metal recovery from lithium-ion batteries (LIBs) and lithium nickel manganese cobalt oxide (NMC) cathode waste materials by using hydrometallurgical methods and the essential effects of H2O2 concentration, leaching time, liquid-solid mass ratio, and reaction temperature with the leaching percentage in the acid leaching step [Abstract]. Chen then teaches the effect of the liquid-solid mass ratio is shown in Figure 3c. The leaching percentages of all metals are generally increased, while the liquid-solid mass ratio increased from 3/1 to 30/1. Chen further teaches when the liquid-solid mass ratio is low, there is insufficient acid to react in the process and when the liquid-solid mass ratio is high, there is more acid readily able to react and available to obtain a higher leaching percentage [Page 6, 3.1.2. Effect of Liquid-Solid mass Ratio, Figure 3(c)]. Chen’s solid-liquid ratio (calculated from Chen’s liquid- solid mass ratio) is 3.33% to 33.00%.
Chen’s solid/liquid ratio values are overlapping with as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have concentration of hydrogen peroxide and the solid/liquid ratio selected from Chen, because “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Chen’s teaching is directed to the leaching of positive electrode material and thus, analogous to the instant claim as well as Wolfgang.
Therefore, it would have been further obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Chen’s teaching of solid/liquid ratio for increased leaching percentages of all metals to combine with Wolfgang’s process of recycling of a spent battery for effective dissolution of a positive cathode material of a used lithium battery in an easy and efficient way to recover manganese and in high purity form that can be reused.
Regarding claims 2, all the above discussions regarding claim 1 are applicable, wherein Wolfgang already teaches manganese can be precipitated as manganese as (mixed) hydroxide, oxyhydroxide etc. (Wolfgang’s step (f)) [Claim 2].
Regarding claims 3, all the above discussions regarding claim 1 are applicable, Wolfgang further teaches a duration of the leaching step in the range of from 10 minutes to 10 hours, preferably 1 to 3 hours (Wolfgang’s step (c)) [Page 9, line 38-39]. Wolfgang further teaches after carrying out step (c), the residual lithium and transition metals are in the solution [Page, 10 line 1-5].
Wolfgang’s duration of leaching is incorporated within the as recited in the instant claim.
Regarding claims 4-6, all the above discussions regarding claim 1 are applicable, wherein Wolfgang discloses the acid solution contains hydrogen peroxide, and the lithium and all the transition metal, cobalt, nickel, manganese al are dissolved in the solution and the reducing agents is helpful to reduce residual Mn(+IV) or Mn3+ to Mn2+ and is advantageous when Mn is present [Page 10, line 1-5, 7-14, line 16-18].
But Wolfgang is silent about the concentration of hydrogen peroxide.
However, Chen teaches an improved process of metal recovery from lithium-ion batteries (LIBs) and lithium nickel manganese cobalt oxide (NMC) cathode waste materials by using hydrometallurgical methods and the essential effects of H2O2 concentration, leaching time, liquid-solid mass ratio, and reaction temperature with the leaching percentage in the acid leaching step [Abstract]. Chen’s leaching procedure comprises the cathode material dissolved in sulfuric acid, and the chemical equation (3) demonstrates the cathode waste materials from LIBs are dissolved in the sulfuric acid solution with hydrogen peroxide [Page 3, and 4, 2.2 Leaching]. Chen then teaches the effect of H2O2 concentration in the leaching process as illustrated in the Figure 3(b), wherein the concentration of H2O2 is varied in the range from 0.2% to 21%, and the leaching efficiency significantly increase at around 8.16%, after that H2O2 concentration has no effect on leaching of cathode material. This phenomenon is attributed to the reductions of Mn4+ to Mn2+ helps these metals to dissolve more readily [Page 5, and 6, 3.1.1. Effect of H2O2 Concentration, Figure 3(b)].
Chen’s H2O2 concentration is overlapping with as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have H2O2 concentration selected from Chen, because “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Therefore, it would have been further obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Chen’s teaching of H2O2 concentration to combine Wolfgang’s process of recycling of a spent battery for effective and more readily dissolution in the dissolving process of leaching.
Regarding claims 7, all the above discussions regarding claim 1 are applicable, wherein Wolfgang already teaches a pH value in the range of from 1.5 to 2 is adjusted to maintain an excess of acid [Page 9, line 1-10, Claim 1]. Wolfgang further teaches after carrying out step (c), the residual lithium and transition metals are in the solution [Page, 10 line 1-5].
Wolfgang’s pH value is within the as recited in the instant claim.
Regarding claims 8, all the above discussions regarding claim 1 are applicable, but Wolfgang is silent about the solid/liquid ratio is comprised between 5% and 40%.
However, Chen teaches the leaching percentages of all metals investigated are generally increased, while the liquid-solid mass ratio increased from 3/1 to 30/1. [Page 6, 3.1.2. Effect of Liquid-Solid mass Ratio, Figure 3(b)].
Chen’s solid-liquid ratio (calculated from Chen’s liquid- solid mass ratio) is 1/30 to 1/3, i.e. 0.03 to 0.33, i.e. 3.33% to 33.00%.
Chen’s solid-liquid ratio is overlapping with as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have solid-liquid ratio selected from Chen, because “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Regarding claims 9 and 17, all the above discussions regarding claim 1 are applicable to claim 9, but Wolfgang is silent about the concentration of hydrogen peroxide and the solid/liquid ratio, therefore, Wolfgang is silent about the ratio between the volume concentration of hydrogen peroxide and the solid/liquid ratio.
Chen teaches the effect of H2O2 concentration in the leaching process in the Figure 3, wherein the concentration of H2O2 is varied in the range from 0.2% to 21%, and Figure 3b illustrates that the leaching efficiency significantly increase at around 8.16%, after that H2O2 concentration has no effect on leaching of cathode material. This phenomenon is attributed to the fact that the reductions of Mn4+ to Mn2+ would help these metals to dissolve more readily [Page 5, and 6, 3.1.1. Effect of H2O2 Concentration, Figure 3(b)]. Chen also teaches the effect of the liquid-solid mass ratio is shown in Figure 3c. The leaching percentages of all metals investigated were generally increased, while the liquid-solid mass ratio increased from 3/1 to 30/1 [Page 6, 3.1.2. Effect of Liquid-Solid mass Ratio, Figure 3(b)]. Chen’s solid-liquid ratio (calculated from Chen’s liquid- solid mass ratio) is 1/30 to 1/3, i.e. 0.03 to 0.33, i.e. 3.33% to 33.00%.
Given Chen’s teaching of H2O2 concentration and liquid-solid mass ratio, the calculated ratio between the concentration of hydrogen peroxide and the solid/liquid ratio is 0.06 (0.2/3.33) to 0.24 (8.16/33.33).
Chen’s calculated ratio between the concentration of hydrogen peroxide and the solid/liquid ratio is overlapping with as recited in the both instant claim 9 and 17.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have calculated ratio between the concentration of hydrogen peroxide and the solid/liquid ratio selected from Chen, because “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Regarding claims 10, all the above discussions regarding claim 1 are applicable, Wolfgang teaches the positive electrode is an NMC electrode (spent batteries containing transition metal oxide material is lithium nickel cobalt manganese oxide ("NCM")) and different examples of NCM batteries [Page, 5 and 6].
Chen also teaches the positive electrode is an NMC electrode [Abstract].
Regarding claims 11 and 18, all the above discussions regarding claim 1 are applicable, Wolfgang further teaches the temperature of the solution is comprised between a preferred range of 20°C to 130°C [Page 9, line 16-17]. Wolfgang further teaches after carrying out step (c), the residual lithium and transition metals are in the solution [Page, 10 line 1-5].
Wolfgang’s temperature of the solution during leaching is overlapping the as recited in the instant claim.
Cheng also teaches the leaching temperature in preferred range of from 25 ◦C to 85 ◦C to achieve a better leaching percentage. [Page 3-4, 2.2 Leaching].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected a temperature of the solution during leaching from the teachings of Wolfgang that falls within the instantly-claimed ranges, because “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Regarding claims 12, all the above discussions regarding claim 1 are applicable, in addition, Wolfgang teaches the positive electrode material is in a particulate form as Wolfgang teaches in step (a), the battery cells is comminuted (e.g. by shredders or hammermills) to facilitate the separation of different fractions, for example ferrous and non-ferrous metals and fractions containing particulate matter comprising materials from the electrodes like lithium and transition metal containing particles (positive electrode). Particulate matter is separated by sieving or classifying [Page 3 line 11-17].
Therefore, it would have been further obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Wolfgang’s teaching for having particulate form of material for facilitate the separation the positive electrode material from the rest of other battery material, for recovering the positive electrode material from the used battery.
Regarding claims 14, all the above discussions regarding claim 1 are applicable to claim 14, but Wolfgang is silent about the concentration of hydrogen peroxide and the solid/liquid ratio.
However, Chen teaches the effect of H2O2 concentration in the leaching process as illustrated in the Figure 3(b), wherein the concentration of H2O2 is varied in the range from 0.2% to 21%, and the leaching efficiency significantly increase at around 8.16%, after that H2O2 concentration has no effect on leaching of cathode material. [Page 5, and 6, 3.1.1. Effect of H2O2 Concentration, Figure 3(b)]. Chen also teaches the effect of the liquid-solid mass ratio is shown in Figure 3c. The leaching percentages of all metals are generally increased, while the liquid-solid mass ratio increased from 3/1 to 30/1. [Page 6, 3.1.2. Effect of Liquid-Solid mass Ratio, Figure 3(c)] and Chen’s solid-liquid ratio (calculated from Chen’s liquid- solid mass ratio) is 3.33% to 33.00%.
Chen’s concentration of hydrogen peroxide and the solid/liquid ratio values are overlapping with as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have concentration of hydrogen peroxide and the solid/liquid ratio selected from Chen, because “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Regarding claims 15, all the above discussions regarding claim 1 are applicable, Wolfgang teaches in the leaching step (step (c) with an acid and the said aqueous acid has a pH value in the range of from 1.5 to 2 is adjusted to maintain an excess of acid [Page 9, line 1-10, Claim 1].
Wolfgang’s pH value is within the as recited in the instant claim.
But Wolfgang is silent about the concentration of hydrogen peroxide and the solid/liquid ratio.
However, Chen teaches the effect of H2O2 concentration in the leaching process in the Figure 3, wherein the concentration of H2O2 is varied in the range from 0.2% to 21%, and Figure 3b illustrates that the leaching efficiency significantly increase at around 8.16%, after that H2O2 concentration has no effect on leaching of cathode material [Page 5, and 6, 3.1.1. Effect of H2O2 Concentration, Figure 3(b)]. Chen also teaches the effect of the liquid-solid mass ratio is shown in Figure 3c. The leaching percentages of all metals are generally increased, while the liquid-solid mass ratio increased from 3/1 to 30/1. [Page 6, 3.1.2. Effect of Liquid-Solid mass Ratio, Figure 3(c)]. Chen’s solid-liquid ratio (calculated from Chen’s liquid- solid mass ratio) is 3.33% to 33.00%.
Chen’s concentration of hydrogen peroxide and the solid/liquid ratio values are overlapping with as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have concentration of hydrogen peroxide and the solid/liquid ratio selected from Chen, because “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Li Changqing et.al. [CN105932351A] (machine translation) (Li hereafter) and in view of Rohde, Wolfgang, et.al. [WO2019197192A1] (Wolfgang hereafter) and further in view of Wei-Sheng Chen “Recovery of Valuable Metals from Lithium-Ion Batteries NMC Cathode Waste Materials by Hydrometallurgical Methods”, Metals 2018, 8, 321] (Chen hereafter).
Regarding claims 1 and 2, Li discloses the manganese of the positive electrode material is entirely recovered in the form of manganese oxyhydroxide as Li discloses a method for dissolving a positive electrode material of a battery and a step during which the positive electrode material including lithium, and manganese (the recovery of transition metal from spent lithium ion batteries, and an example of Li-Mn battery) is immersed in an acid solution contains hydrogen peroxide (Li’s dissolving of electrode materials step) (Claim 2, [0020], Example 3), wherein lithium and the transition metal manganese are dissolved in the solution (Li’s Example 3 teaches the filtrate contains Mn², Li and SO²) (Claim 2, [0021], Example 3), and manganese is selectively precipitated from this filtrate in the manganese separation step, in the form of a manganese oxyhydroxide, (MnOOH) precipitate, by controlling pH, addition of sodium hydroxide and temperature while lithium is still in the filtrate (Example 3).
However, Li is silent about the pH of the leaching solution and solid/liquid ratio.
Wolfgang discloses a method for dissolving a positive electrode material of a battery comprising a step during which the positive electrode material, including lithium, and manganese (the recovery of transition metal from spent lithium ion batteries) is immersed in an acid solution at a pH value in the range of from 1.5 to 2 (Wolfgang’s step c), and Wolfgang teaches the pH is adjusted to maintain an excess of acid [Page 9, line 1-10, and Claim 1].
Wolfgang’s pH value is within the as recited in the instant claim.
But Wolfgang is also silent about a solid/liquid ratio.
However, Chen teaches an improved process of metal recovery from lithium-ion batteries (LIBs) and lithium nickel manganese cobalt oxide (NMC) cathode waste materials by using hydrometallurgical methods and the essential effects of H2O2 concentration, leaching time, liquid-solid mass ratio, and reaction temperature with the leaching percentage in the acid leaching step [Abstract]. Chen then teaches the effect of the liquid-solid mass ratio is shown in Figure 3c. The leaching percentages of all metals are generally increased, while the liquid-solid mass ratio increased from 3/1 to 30/1. Chen further teaches when the liquid-solid mass ratio is low, there is insufficient acid to react in the process and when the liquid-solid mass ratio is high, there is more acid readily able to react and available to obtain a higher leaching percentage [Page 6, 3.1.2. Effect of Liquid-Solid mass Ratio, Figure 3(c)]. Chen’s solid-liquid ratio (calculated from Chen’s liquid- solid mass ratio) is 3.33% to 33.00%.
Chen’s solid/liquid ratio values are overlapping with as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have concentration of hydrogen peroxide and the solid/liquid ratio selected from Chen, because “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)” [See MPEP § 2144.05.I].
Both Wolfgang and Chen’s teaching are directed to the leaching of positive electrode material and thus, analogous to the instant claim as well as Li.
Therefore, it would have been further obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Wolfgang’s teaching of pH for controlling acidity and Chen’s teaching of solid/liquid ratio for increased leaching percentages of all metals to combine with Li’s process of recycling of a spent battery for an effective dissolution of a positive cathode material in an easy and efficient way to recover manganese and in high purity form, and avoiding organic solvents, while promoting a "zero discharge", low energy consumption, easy implementation as well as ensuring the healthy and sustainable development of the lithium-ion battery industry.
Claims 16 is also rejected under 35 U.S.C. 103 as being unpatentable over Rohde Wolfgang, et.al. [WO2019197192A1] (Wolfgang hereafter) and in view of Wei-Sheng Chen “Recovery of Valuable Metals from Lithium-Ion Batteries NMC Cathode Waste Materials by Hydrometallurgical Methods”, Metals 2018, 8, 321] (Chen hereafter) and further in view of S.P. Barik et.al. [“Leaching and separation of Co and Mn from electrode materials of spent lithium-ion batteries using hydrochloride acid: laboratory and pilot scale study”, Journal of Cleaner Production (2017) 37-43] (Barik hereafter).
Regarding claims 16, all the above discussions regarding claim 1 are applicable to claim 16, Wolfgang teaches the positive electrode further comprises cobalt and/or nickel and wherein during the leaching step, the cobalt and/or nickel remain in solution (the acid solution contains hydrogen peroxide, and the lithium and the transition metal, cobalt and/or nickel are put into solution) [Page 10, line 1-5, 7-14, line 16-18]. Wolfgang teaches manganese selectively precipitates in the form of a manganese oxyhydroxide (Wolfgang’s step (f) serves to precipitate manganese and residual nickel and cobalt with different condition for each of the metal) [Page 9, line 1-10, Claim 2]. Wolfgang’s step (f) teaches selective precipitation of manganese nickel and cobalt can be carried out, using different separating parameters and conditions like use of hydroxides, controlling temperature, pH, organic additives, etc. that are suitable for separation of manganese cobalt and nickel [Page 15, and Page 16, line 1-20], and therefore, selecting a suitable precipitation condition for precipitating each of the transitional metal from Wolfgang’s teachings would be a prima facie case of obviousness.
But Wolfgang is silent about “the cobalt and/or nickel remain in solution while the manganese selectively precipitates”.
Chen also teaches selective precipitation of the transition metals [Page 8 and 9], but Chen’s selective precipitation step comprises co-extraction of the metals, and therefore, Chen also does not teach “the cobalt and/or nickel remain in solution while the manganese selectively precipitates as the manganese oxyhydroxide precipitate”.
However, Barik teaches leaching and separation of Co and Mn from electrode materials from a spent lithium-ion batteries using acidic solution [Title, Fig. 9]. Barik teaches the cobalt and/or nickel remain in solution while the manganese selectively precipitates as the manganese oxyhydroxide precipitate (in Barik’s process as shown in [Fig. 9], wherein manganese is selectively precipitated out from the leaching solution containing Co(II), Li(II) and Ni(II), by the addition of sodium hypochlorite and the precipitation of Mn(II) is carried out as a function of pH, concentration of sodium hypochlorite and temperature, then cobalt in the Mn(II) free liquor is precipitated [Page, 38, col.2]).
Barik teaches separation of Co from Mn containing liquor is always challenging in a recycling industry due to similar chemical properties, while solvent extraction is familiar and suitable method of separating Co and Mn from the aqueous solution has been widely used in laboratory practices [Page, 38, col.1]. Barik’s process of leaching and separation of cobalt and manganese from electrode material of spent LIB under the optimum leaching conditions, higher than 99% leaching efficiency of Co. Mn and Li is achieved.
Barik’s teaching is directed to the recovery of positive electrode material Li Co Ni and Mn and analogous to the instant claim and Wolfgang as well as Chen.
Therefore, it would have been further obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Barik’s teaching of precipitating manganese out from the leaching solution while Co Li and Ni are in the leaching solution to combine the recovery of positive electrode material of Wolfgang and Chen for overcoming the ongoing challenges as well as achieving higher than 99% leaching efficiency of Co. Mn and Li in the recycling of the spent lithium-ion battery industry.
Response to Arguments
Applicant’s arguments dated 05/21/2026, with respect to claim 1 rejected under 35 U.S.C. § 103, have been considered but does not seem persuasive.
With respect to Applicant’s argument, regarding the primary prior art, Rohde, Wolfgang, et.al. [WO2019197192A1], “First, while optional step (f) of Wolfgang does teach precipitating manganese, it does not teach selective precipitation of manganese as manganese oxyhydroxide during a leaching step of immersing a positive electrode material in an acid solution with a pH between 0 and 4 as claimed. As-filed specification at p. 5, I. 29 - p. 6, I. 2”, does not seem persuasive, because,
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 (with a pH between 0 and 4 as claimed, by precipitating manganese in the same step in which the electrode material is immersed in an acid solution, the claimed method achieves a goal of quickly and efficiently recovering manganese from electrode material containing other elements with similar chemistry to manganese etc.) 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). In this case, claim recites “wherein the lithium is put into solution and, the manganese is dissolved, and selectively precipitated in the form of a manganese oxyhydroxide precipitate”. i.e. Mn is dissolved means Mn is also in the leaching solution, and selective precipitation of manganese as a manganese oxyhydroxide, i.e. before precipitating, Mn is dissolved, Wolfgang teaches same steps, wherein Wolfgang’s step (C) is leaching step, wherein both lithium and Mn are dissolved, and then Mn is selectively precipitated, in Wolfgang’s step (f).
With respect to Applicant’s argument, “Second, Wolfgang does not teach selective precipitation of manganese as manganese oxyhydroxide during the acid leaching step. As stated in the Office action, Wolfgang teaches that adding a reducing agent, such as hydrogen peroxide, to the acid solution of step (c) reduces Mn4+ and Mn3+ to Mn2+ This teaching is inconsistent with the claimed formation of manganese oxyhydroxide during the leaching step because manganese oxyhydroxide, MnO(OH), contains manganese in the +Ill oxidation state”, does not seem persuasive, because,
as already shown above, claim also recites Mn is dissolved in the acid leaching step using acidic solution that comprises hydrogen peroxide, and selective precipitation of manganese as a manganese oxyhydroxide, Wolfgang teaches same steps, wherein Wolfgang’s step (C) is leaching step, wherein both lithium and Mn are dissolved, hydrogen peroxide enhances dissolution of Mn from electrode material into the leaching solution and then Mn is selectively precipitated, in Wolfgang’s step (f).
With respect to Applicant’s argument, “Third, Wolfgang does not teach selective precipitation of manganese. The method of claim 1 selectively precipitates manganese in the form of manganese oxyhydroxide, while lithium, nickel and/or cobalt remain in ionic form, dissolved in solution. As-filed specification at p. 5, I. 1-15. Thus, the claimed method achieves the goal of quickly and efficiently recovering manganese from electrode material containing other elements with similar chemistry to manganese. As-filed specification at p. 5, I. 29 - p. 6, I. 2. Contrarily, in optional step (f) of Wolfgang, the precipitation of manganese also results in the precipitation of other transition metals present in the solution, such as nickel or cobalt. Wolfgang at p. 15, I. 14-17. Therefore, Wolfgang does not teach a method of selectively precipitating manganese”, does not seem persuasive, because,
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 (while nickel and/or cobalt remain in ionic form) 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). In this case, claim as amended and as recited “wherein the lithium is put into solution and, the manganese is dissolved, and selectively precipitated in the form of a manganese oxyhydroxide precipitate” and as shown above, Wolfgang teaches same steps, wherein Wolfgang’s step (C) is leaching step, wherein both lithium and Mn are dissolved, and then Mn is selectively precipitated, in Wolfgang’s step (f).
In response to applicant's argument that about the goal of quickly and efficiently recovering manganese from electrode material, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, claim 1 is directed to a leaching of lithium and manganese is dissolved, and Manganese is precipitating, Wolfgang teaches similar steps.
In response to applicant's argument that Wolfgang is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Wolfgang’s step (f) is not an optional or an additional step, it is an embodiment as claimed in Wolfgang’s claim 2 and the step is applied when the battery electrode material contains manganese. Wolfgang also teaches Wolfgang’s selective precipitation of manganese can be carried out, using different separating parameters and conditions like use of hydroxides, controlling temperature, pH, organic additives, etc. that are suitable for separation of manganese [Page 15, line 25-44, and Page 16, line 1-20]. In addition Wolfgang also teaches the parameter and conditions for other metals too, therefore, using specific condition for selective precipitation for specific transition metal would be prima face case of obviousness. Therefore, Wolfgang’s has sufficient teachings to meet the claimed limitations.
With respect to Applicant’s argument, “Fourth, arguendo, even if Wolfgang does teach a step of selective precipitation, that precipitation occurs only after all lithium has been recovered and thus does not occur during a leaching step whereby lithium is put into solution, as claimed. Manganese has a low economic interest relative to other metals contained in the positive electrode material of batteries, such as cobalt, nickel and lithium, thus one goal of the claimed method is to remove manganese upstream to avoid negatively impacting the purity of the more valuable metals. As-filed specification at p. 4, I. 18-20. Specifically, during step (b) of Wolfgang, the heat-treated material from step (a) is treated with water to recover lithium. Wolfgang at p. 8, I. 1-8. Thus, by the time manganese is precipitated in optional step (f), the lithium has already been recovered. '', does not seem persuasive, because,
Wolfgang’s step (a) and (b) are related to pretreatment of spent battery and separating the negative electrodes and other battery materials, from the positive electrodes, and Wolfgang’s step (c) is for dissolving positive electrode materials of a battery that contains lithium and manganese (that stem from the cathode active material, for example of said NCM or NCA including impurities other than carbon and organic polymers. In most embodiments, a slurry is obtained after carrying out step (c). Residual lithium and transition metals such as, nickel cobalt and manganese, are in solution (Page 10, line 1-5) And the instant claim is directed to a method for dissolving a positive material.
With respect to Applicant’s argument, “Fifth, amended claim 1 recites that a solid/liquid ratio, which corresponds to a ratio between a mass (g) of the positive electrode material and a volume (ml) of the acid solution, is between 5% and 40%. Wolfgang, as the Office action admits, does not teach a solid/liquid ratio between 5% and 40%. Instead, the Office action relies on Chen as teaching this feature in the rejection of claim 8. Chen, however, does not cure the deficiencies of Wolfgang. Chen teaches a process wherein Mn4+ ions are reduced to Mn2+ ions. Chen at p. 6, 3.1.1. As described previously, manganese oxyhydroxide involves manganese in the +Ill oxidation state. Thus, Chen's teaching of reducing manganese to Mn2+ does not support the claimed selective precipitation of manganese as manganese oxyhydroxide during the leaching step. Consistent with that teaching, Chen precipitates manganese as manganese hydroxide, not manganese oxyhydroxide.” does not seem persuasive, because,
In response to applicant's argument that Chen is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). Applicant did not provide any evidence or any reference or any reason why manganese oxyhydroxide that involves manganese in the +Ill oxidation state can’t be precipitated from a solution wherein manganese is in Mn(II) form, however, as it has been already shown above, Wolfgang teaches selective precipitation of Manganese, and Chen is being used to modify for the solid/liquid ratio. Also as shown above, Wolfgang teaches a process wherein Mn4+ ions are reduced to Mn2+ ions for better dissolution, and Chen also teaches the same so that the Mn from the cathode material can be dissolved completely and efficiently in the leaching solution and Wolfgang then teaches selective precipitation of manganese as one of the form of manganese oxyhydroxide in Wolfgang’s step (f). In addition, the previously cited prior art Li Changqing et.al. [CN105932351A] and that is being previously used to reject claim 2, discloses a method for dissolving a positive electrode material of a battery and a step during which the positive electrode material including lithium, and manganese (the recovery of transition metal from spent lithium ion batteries, and an example of Li-Mn battery) is immersed in an acid solution contains hydrogen peroxide (Li’s dissolving of electrode materials step) (Claim 2, [0020], Example 3), wherein lithium and the transition metal manganese are dissolved in the solution (Li’s Example 3 teaches the filtrate contains Mn², Li and SO²) (Claim 2, [0021], Example 3), and manganese is selectively precipitated from this filtrate in the manganese separation step, in the form of a manganese oxyhydroxide, (MnOOH) precipitate, by controlling pH, addition of sodium hydroxide and temperature while lithium is still in the filtrate (Example 3). Li’s process of recycling of positive electrode materials of batteries, is beneficial as the separation avoids using any organic solvents, as well as the process comprises "zero discharge", low energy consumption and is easy to implement and ensures the healthy and sustainable development of the lithium-ion battery industry ([0045]-[0047]).
Therefore, the 35 U.S.C. § 103 rejection of claim 1-12 and 14-18 over Wolfgang in view of Chen have been rewritten due to the amendment (please see the corresponding rejection section for further details).
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 extension fee 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 date of this final action.
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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