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 .
Election/Restrictions
Applicant's election with traverse of Species B in the reply filed on 9/10/2026 is acknowledged. The traversal is on the ground(s) that “the species set forth by the Examiner do not constitute patentably distinct inventions under 35 U.S.C. § 121 and MPEP § 803” (see pg. 1 of Arguments). Applicant also states “The claimed process steps and species share common core inventive concepts, chemical pathways, and operational parameters, such that search and examination of the non-elected species would not place an undue burden on the Office” (see pg. 1 of Arguments).
This is not found persuasive because Species A-D each produce a lithium product not shared by the other species (see Restriction Requirement for definition of each species). Each lithium product is isolated by chemical pathways and operational parameters that are unique to one of the four species. Species A-D are not linked as to form a single general inventive concept under PCT Rule 13.1. The requirement is still deemed proper and is therefore made FINAL.
Applicant’s reply filed on 9/10/2026 elected Species B (A method using 0.5H2SO4 to separate Li from Al, isolated Li is in the form of 0.5Li2SO4, see Fig. 4 and pg. 31). However, Applicant’s reply did not identify which claim(s) correspond to Species B. Examiner has reviewed Fig. 4 and pg. 31, and determined Claims 1-3, 5-8, 11, 12, 14, 21-23, 26, 27, 29, 32, and 34 are drawn to Species B. If Applicant disagrees with the Examiner’s identification of claims drawn to Species B, please submit arguments for which claims Applicant believes should correspond to Species B.
Claims 4, 9, 10, 13, 15-20, 24, 25, 28, 30, 31, 33, 35, and 36 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species (Species A, C, and/or D), there being no allowable generic or linking claim.
Claims 1-3, 5-8, 11, 12, 14, 21-23, 26, 27, 29, 32, and 34 (Species B) are under examination.
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 2, 32, and 34 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 sets forth step b), which treats the suspension “with a reducing agent to simultaneously obtain a solid reduced material and a lithium(I)-containing solution.”
However, Claim 2 includes the limitation “step b) includes the in-situ production of a soluble Li(I) species and a solid reduced material comprising Ni, Co and Mn by treating the suspension with a reducing agent.” The claim currently reads as if the soluble Li species is present in addition to the lithium containing solution. Claim 2 should be amended to more clearly communicate the “soluble Li(I) species” of Claim 2 is the lithium component of the “lithium(I)-containing solution” in Claim 1.
Claim 2 also recites “a solid reduced material” and “a reducing agent.” The claim currently reads as if a second solid reduced material and a second reducing agent are present in addition to a first solid reduced material and a first reducing agent recited in Claim 1. Please change “a solid reduced material” and “a reducing agent” in Claim 2 to “the solid reduced material” and “the reducing agent” to ensure proper antecedent basis.
Appropriate correction is required.
Claim 32 recites “the residue is converted into a aqueous suspension by treatment with mineral acid, and the elements nickel and cobalt are separated off in the form of their metals.”
“The elements nickel and cobalt” are not previously claimed and lack proper antecedent basis. Additionally, please correct “a aqueous” to “an aqueous.”
Appropriate correction is required.
Claim 34 recites “A lithium obtained by a method according to Claim 1” on line 1 of the claim. The limitation “a lithium” is unclear. Does “a lithium” refer to the lithium of the lithium composition or lithium solution in Claim 1? Is “a lithium” supposed to mean elemental lithium or another form of lithium that is not in Claim 1? Examiner notes [0128] of the instant published spec, US 20240283044 A1:
[0128]: “The method according to the invention gives lithium in the form of its salt or hydroxide, which can be present in highly concentrated solutions. Correspondingly, the lithium obtained with the help of the method according to the invention can be fed into the material cycle for further use. Therefore, the present invention also provides the use of the lithium obtained according to the invention in the production of lithium batteries…”
It appears “a lithium” recited in Claim 34 corresponds to an isolated form of lithium in the “lithium containing solution” of Claim 1. Please amend the claim to clarify this relationship.
Appropriate correction is required.
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.
(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.
Claims 1-3, 5-7, 11, 12, 22, 23, 26, 27, 29, 32, and 34 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Kojima et al., US 20130206607 A1.
Regarding Claim 1, Kojima discloses a method of recycling LIB materials ([0012-0014], Fig. 2), comprising the following steps:
a) suspending a lithium(I)-containing composition in an aqueous or organic suspension medium (active material in a sulfuric acid leaching solution [0032-0045]),
b) treating the suspension with a reducing agent (addition of a hydrogen peroxide control agent to leaching treatment [0037-0046]; “treating” including precise temperature control [0036-0046]) to simultaneously obtain a solid reduced material and a lithium(I)-containing solution (leaching treatment yields Supernatant Solution A, a Li-concentrated solution and Residue B is a solid comprising transition metal components from the active material [0020, 0044-0048], Step 103 in Fig. 2).
c) separating the solid reduced material from the lithium(I)-containing solution (centrifugal separation of the leachate [0044-0047], Step 104 in Fig. 2).
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Kojima – Fig. 2
Regarding Claim 2, Kojima discloses all limitations as set forth above. Kojima discloses step b) includes the in-situ production of a soluble Li(I) species and a solid reduced material comprising Ni, Co and Mn by treating the suspension with a reducing agent (In the acid leaching treatment, it is understood that H2SO4, LiCoO2 and H2O2 are allowed to react with each other to produce Li2SO4, CoO and CoSO4 [0034]; Ni, Mn, and Fe can also be present in the leached transition metal component B [0051]).
Regarding Claim 3, Kojima discloses all limitations as set forth above. Kojima discloses the temperature of the suspension is adjusted to 20 to 300°C (the acid leaching treatment is performed at a temperature of 50°C or lower [0036], Example 1: 20°C [0046]).
Regarding Claim 5, Kojima discloses all limitations as set forth above. Kojima discloses the composition is in the form of a powder (electrode/cathode active materials are shredded into small “fragmented matter” and then sieved [0029-0031]).
Regarding Claim 6, Kojima discloses all limitations as set forth above. Kojima discloses the composition is obtained from or consists of used LIBs, production waste, and-secondary yields, or a combination thereof that arise in the production of LIBs (waste lithium batteries, spent batteries, fully discharged lithium ion batteries [0020-0027]).
Regarding Claim 7, Kojima discloses all limitations as set forth above. Kojima discloses the composition is black mass (electrode active material [0026-0032]).
Examiner notes Kojima’s positive electrode material as “black mass” is consistent with the instant spec at [0009] and [0025] of the published application: “the active electrode materials, the so-called black mass” and “a fraction known as black mass, which are essentially made of the active materials of the batteries.”
Regarding Claims 11 and 12, Kojima discloses all limitations as set forth above. Kojima discloses the composition is subjected to a pretreatment (pretreatment steps include discharging the battery, soaking, shredding, sieving, and separating the materials [0022-0030], Steps 101 and 102 in Fig. 2).
Regarding Claim 22, Kojima discloses all limitations as set forth above. Kojima discloses the solid reduced material contains one or more of the claimed compounds (CoSO4, CoO [0032], hydroxides of Co, Ni, and Mn when treating the cathode active material Li(Ni1/3Co1/3Mn1/3)O2 [0051]).
Regarding Claim 23, Kojima discloses all limitations as set forth above. Kojima discloses the separation step c) is a filtration, centrifugation or a method based on sedimentation (The Li-leaching solution and the non-leached fraction are subjected to solid-liquid separation [0020, 0047]) in which a liquid phase containing lithium dissolved therein (Supernatant Solution A, a Li-concentrated solution) and a solid residue are obtained (Residue B, transition metals).
The limitation “the separation step c) is a filtration, centrifugation or a method based on sedimentation” does not impart any additional structure to the claimed product and as such does not distinguish the claimed product from the prior art. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [MPEP 2113].
Regarding Claim 26, Kojima discloses all limitations as set forth above. Kojima discloses the solid residue contains one or more of nickel, cobalt, and manganese (CoO, CoSO4 [0034], hydroxides of Co, Ni, and Mn can be precipitated when treating the cathode active material Li(Ni1/3Co1/3Mn1/3)O2 [0020, 0051]).
Regarding Claim 27, Kojima discloses all limitations as set forth above. Kojima discloses the solid residue comprises the following:
nickel in the oxidation state + II (nickel is separated by precipitating nickel hydroxide [0051]),
cobalt in the oxidation state + II (CoO and CoSO4 are obtained from leaching [0034]), and
manganese in oxidation state + II (manganese is separated by precipitating manganese hydroxide [0051]).
Regarding Claim 29, Kojima discloses all limitations as set forth above. Kojima discloses the residue is further processed by treatment with mineral acids, filtration, solvent extraction or pH-controlled precipitation (a precipitation recovery method using pH control can separate and recover each of the metals in the transition metal component B [0020, 0051], Steps 107/108 in Fig. 2).
Regarding Claim 32, Kojima discloses all limitations as set forth above. Kojima discloses the residue is converted into an aqueous suspension by treatment with mineral acid (the cathode material is soaked in an acidic solution [0020, 51]), and the elements nickel and cobalt are separated off in the form of their metals (Co, Ni, Mn and Fe can be separated as hydroxides and recovered by precipitation by the pH control of the solution, each of the transition metal elements can be separated and recovered [0020, 0051]).
Regarding Claim 34, Kojima discloses all limitations as set forth above. Kojima discloses a lithium obtained by a method according to Claim 1 (high purity lithium can be recovered [0049-0050]).
The limitation “wherein the lithium is utilized in the production of…” is considered intended use and is given weight to the extent that the prior art is capable of performing the intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Since Kojima discloses “a lithium” required by the claim, the high purity lithium of Kojima is considered capable of performing the intended use.
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.
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kojima as applied to Claim 1 above, and further in view of Lee et al., “Preparation of LiCoO2 from spent lithium-ion batteries,” Journal of Power Sources 109 (2002) pg. 17–21.
Regarding Claim 8, Kojima discloses all limitations as set forth above. Kojima does not disclose
“the composition contains lithium in an amount of 1 to 20% by weight, based on the total weight of the composition.” However, this limitation is taught by Lee.
Lee teaches a recycling process for spent lithium-ion battery material, wherein Co and Li are leached from a cathode active material LiCoO2 (Abstract). Lee teaches the battery material is 27.5 wt% LiCoO2 (Table 1). Since LiCoO2 is 7.09 wt% Li, the battery material prior to leaching is approx. 1.95 wt% Li. Kojima uses LiCoO2 as the cathode active material (Kojima, [0023, 0026-0034]). Since some of the battery constituents shown in Lee’s Table 1 (electrolyte, polymer binder, etc.) have been removed from Kojima’s composition, the weight percentage of Li in Kojima’s composition is expected to be an amount of 1.95 wt% or more.
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to have the composition contain lithium in an amount of 1.95 wt% or more, in the composition of Kojima, as Lee teaches this weight percentage for a battery comprising a LiCoO2 cathode active material.
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Lee – Table 1
Claims 14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Kojima as applied to Claim 1 above, and further in view of Yang et al., “Reductive acid leaching of valuable metals from spent lithium-ion batteries using hydrazine sulfate as reductant,” Trans. Nonferrous Met. Soc. China 30 (2020), pg. 2256−2264.
Regarding Claims 14 and 21, Kojima discloses all limitations as set forth above. Kojima does not disclose the reducing agent is hydrazine. However, this limitation is taught by Yang et al.
Yang teaches “hydrazine sulfate is used as an alternative reducing agent to hydrogen peroxide for the recovery of Li, Ni, Co and Mn from spent LIBs” (pg. 2262). Yang teaches hydrazine sulfate has high reduction capabilities, and when combined with H2SO4, the leaching rates of Li, Ni, Co, and Mn from spent cathode materials are improved (pg. 2257-2258). Examiner notes Kojima teaches the acid solution used in the lithium recovery process is a combination of sulfuric acid and hydrogen peroxide (Kojima, [0033-0035]).
Before the effective filing date of the present invention, it would have been obvious to a person of ordinary skill in the art to substitute the hydrogen peroxide reducing agent of Kojima with the hydrazine sulfate reducing agent of Yang, in order to obtain high leaching rates of Li, Ni, Co, and Mn from the spent cathode material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY C GARCIA whose telephone number is (571)272-2475. The examiner can normally be reached Mon-Fri, 0800 - 1730 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Allison Bourke can be reached at 303-297-4684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BETHANY C GARCIA/Examiner, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721
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