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 July 29th, 2026 has been entered. Claims 1-5 have been amended. Claims 1-5 remain pending. Applicant’s amendments to the claims overcome the 112(b) rejections previously set forth in the Non-Final Office Action mailed May 21st, 2026.
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 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishikawa et al. (JP 2020061297). English translations of Nishikawa et al. (JP 2020061297) have been provided herein.
Regarding claim 1, Nishikawa et al. (JP 2020061297) teaches a method of separating recoverable materials (Paragraph 0001 lines 1-5), the method comprising:
performing a heat treatment on a lithium-ion secondary battery that includes recoverable materials (Paragraph 0026 lines 1-7) comprising cobalt and/or nickel (Paragraph 0025 lines 1-5);
crushing a heat-treated product obtained in the heat treatment (Paragraph 0032 lines 1-4); and
classifying including a first classification of classifying a crushed product obtained in the crushing into a coarse-particle product and an intermediate product (Paragraph 0036 lines 1-3) at a classification cut-point of 0.6 mm or greater and 2.4 mm or less (Paragraph 0037 lines 1-2), and a second classification of classifying the intermediate product into a medium-particle product and a fine-particle product (Paragraph 0038 lines 1-5) at a classification cut-point of 40 µm or greater and 300 µm or less (Paragraph 0038 lines 6-7), and
recovering the cobalt and/or nickel from the fine-particle product (Table 2 see percentage of cobalt and nickel in the fine-particle product).
Regarding claim 2, Nishikawa et al. (JP 2020061297) teaches the method according to claim 1,
wherein the crushed product obtained in the crushing is classified into the coarse-particle product and the intermediate product (Paragraph 0036 lines 1-3) at the classification cut-point of 1.2 mm in the first classification (Paragraph 0046 lines 1-2).
Regarding claim 3, Nishikawa et al. (JP 2020061297) teaches the method according to claim 1,
wherein the heat treatment is performed on the lithium-ion secondary battery at 660°C or higher and 1,085°C or lower (Paragraph 0026 lines 1-7).
Regarding claim 5, Nishikawa et al. (JP 2020061297) teaches the method according to claim 1,
wherein the lithium-ion secondary battery is a lithium-ion secondary battery pack (Paragraph 0013 lines 1-6) selected from a lithium-ion secondary battery pack for cars (Paragraph 0002 lines 1-4), a lithium-ion secondary battery pack for energy storage systems, and a lithium-ion secondary battery pack for uninterruptible power supplies.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al. (JP 2020061297) in view of Kuzuhara et al. (JP 2012248323). English translations of Kuzuhara et al. (JP 2012248323) have been provided herein.
Regarding claim 4, Nishikawa et al. (JP 2020061297) lacks teaching the method according to claim 1,
wherein the intermediate product is classified by wet classification at the classification cut-point of 40 µm or greater and 75 µm or less in the second classification.
Kuzuhara et al. (JP 2012248323) teaches a method of separating recoverable materials (Paragraph 0001 lines 1-5),
wherein the intermediate product is classified by wet classification (Paragraph 0026 lines 10-16) at the classification cut-point of 40 µm or greater and 75 µm or less in the second classification (Paragraph 0033 lines 1-3).
Kuzuhara et al. (JP 2012248323) states that this method allows for the easy and efficient recovery of reusable raw materials, including valuable materials such as cobalt and nickel (Paragraph 0008 lines 1-5). Kuzuhara et al. (JP 2012248323) states that material recovered below a sieve with a mesh size of 0.075 mm was analyzed and the recovered material contained cobalt and nickel, which are valuable materials (Paragraph 0038 lines 1-9). Kuzuhara et al. (JP 2012248323) additionally explains that the sieving method can be appropriately selected according to the purpose, and the sieving method may be dry or wet (Paragraph 0026 lines 1-16).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Nishikawa et al. (JP 2020061297) to include wherein the intermediate product is classified by wet classification at the classification cut-point of 40 µm or greater and 75 µm or less in the second classification as taught by Kuzuhara et al. (JP 2012248323) in order to provide an easy and efficient recovery of reusable raw which are valuable and recover the materials with an appropriate sieving method.
Response to Arguments
Applicant's arguments filed July 29th, 2026 have been fully considered but they are not persuasive.
Regarding the Applicant’s argument that Nishikawa does not disclose recoverable materials comprising cobalt and/or nickel being recovered from the fine-particle product, the Examiner would like to clarify that Table 2 in Nishikawa shows the mass percentages of nickel and cobalt recovered from each sieved product. Specifically, Nishikawa shows a weight % of 6.6 and 7.0 of nickel and cobalt respectively within the fine material separated by the .3mm sieve, and therefore teaches recoverable materials comprising cobalt and/or nickel being recovered from the fine-particle product.
Regarding the Applicant’s argument that Nishikawa teaches against a narrower range of not more than 75 micrometers as encompassed by claim 4, the Examiner would like to clarify that Nishikawa explains that the second sieving step may be performed with a classification point of 0.3mm or less (Paragraph 0038 lines 6-7).
Regarding the Applicant’s argument that a person having ordinary skill in the art would have no reason to apply Kuzuhara, the Examiner would like to clarify that as Nishikawa shows the weight percentage of nickel and cobalt collected in the fine product, it would have been obvious to a person having ordinary skill in the art to apply the teachings of Kuzuhara for further separation.
Conclusion
THIS ACTION IS MADE FINAL. 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 Molly K Devine whose telephone number is (571)270-7205. The examiner can normally be reached Mon-Fri 7:00-4:00.
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/MOLLY K DEVINE/ Examiner, Art Unit 3653
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