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 .
Claim 17 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 29, 2026.
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.
Claims 4, 10 and 12 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. The recitation of “preferably” renders the scope of the claims vague and indefinite, since it is unclear whether the limitation following this term is a positive limitation, or whether it is merely an example of the roader terms preceding it.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1 and 7 are rejected under 35 U.S.C. 102(a) (2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mengel et al ‘813 (US 2021/0107813). No distinction is seen between the process disclosed by Mengel et al ‘813, and that recited in claim 1. Mengel et al ‘813 discloses a process for producing potassium sulfate fron a waste stream by adding potassium chloride to the waste stream. (See Paragraphs [0016] through [0019].) Mengel et al ‘813 in Paragraph [0016] that the waste stream can be one which is generated by recycling of alkaline batteries. Accordingly Mengel et a ‘813l anticipates claim 1. In any event, it would have been obvious to treat a residue process stream of a battery recycling facility as the waste stream in the process of Mengel et al ‘813, since the recycling of batteries disclosed by Mengel et al ‘813 would suggest such a facility.
Regarding clam 7, Mengel et al ‘813 discloses in Eq. 2 in Paragraph [0019] that glaserite reacts with potassium chloride to form potassium sulfate.
Claim Rejections - 35 USC § 103
Claims 2-5, 8 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Mengel et al ‘813. Mengel et al ‘813 is relied upon as discussed hereinbefore.
Regarding claim 2, it would have been obvious to mix the residue process stream and potassium chloride in the process of Mengel et al ‘813, to provide more intimate contact between the reactants.
Regarding claim 3, it would have been obvious to add the reactants in any suitable order.
Regarding claim 4, it would have been obvious to add sulfuric acid as a spent electrolyte to the mixture, since Mengel et al ‘813 teaches in Paragraph [0016] that spent electrolyte (sulfuric acid) can be treated as a waste stream.
Regarding claim 5, Mengel et al ‘813 disclose evaporative absorber tower 12 in Paragraph [0021].
Regarding claim 8, Mengel et al ‘813 discloses in claim 1 that a chloride-containing brine if formed and in claim 10 that sodium chloride is processed to form solid sodium chloride. It would have been obvious to include crystallization as the processing step to form solid sodium chloride.
Regarding claims 13-15, these claims do not require that the sodium sulfate containing residue process stream be one which is from a steel production plant originating from the processing of a slag for vanadium recovery, since claim 1 recites a steel recovery plant as an alternative source of the residue process stream.
Regarding claim 16, it would have been obvious to wash the potassium chloride with water in the process of Mengel et al ‘813 to remove impurities, since Mengel et al ‘813 suggests in Paragraph [0016] that the potassium sulfate is a high-value useable product, suggesting a low level of impurities.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mengel et al ‘813 as applied to claim 1 above, and further in view of Mengel et al ‘090 (US 2020/0109090). It would have been further obvious from Mengel et al ‘090 to add sodium hydroxide to the process of Mengel et al ‘813. One of ordinary skill in the art would have been motivated to do so, since Mengel et al ‘090 discloses a process analogous to that of Mengel et al ‘813, and teaches in Paragraph [0014] that a sodium compound should be used as a neutralizing agent, disclosing sodium carbonate and sodium soda ash as examples. Such disclosure would suggest sodium hydroxide as a useful neutralizing agent.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Mengel et al ‘813 as applied to claim 8 above, and further in view of WO 2013/023249 A1. It would have been further obvious from WO 2013/023249 A1 to forward the removed sodium chloride in the process of Mengel et al ‘813 to a cell membrane process converting it to sodium hydroxide, hydrogen and chlorine. One of ordinary skill in the art would have been motivated to do so, since WO 2013/023249 A1 establishes the conventionality of such process on page 1, lines 11-17, and one would have appreciated that the removed sodium chloride could be processed in any known or suitable manner to form useful products.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mengel et al ‘813 l as applied to claim 1 above, and further in view of PAULSEN et al (US 2020/0031682). It would have been further obvious from PAULSEN et al to provide a residue process stream originating from a battery recycling facility for lithium containing batteries. One of ordinary skill in the art would have been motivated to do so, since PAULSEN et al establish the conventionality of lithium containing batteries in Paragraphs [0003] and [0004], and the process of Mengel et al ‘813 is directed broadly to waste streams from various industries, with recycling of alkaline batteries being of particular interest.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/998706 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are broader than the claims of SN 18/998706.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Brna et al (US 5,100,643) is made of record for establishing the equivalence between fly ash and steel manufacturing wastes in claims 24 and 25.
JP 2000-044303 A is made of record for disclosing fly ash and steel-making slag in Paragraphs [0010] and [0018] of the English translation.
KR20060001886A is made of record for disclosing steel making dust a a waste material.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE A LANGEL whose telephone number is (571) 272-1353. The examiner can normally be reached Monday through Friday from 8:15 am to 4:15 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE A LANGEL/Primary Examiner, Art Unit 1736
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