DETAILED ACTION
Claims 1-8 were rejected in the Office Action mailed 3/24/2026.
Applicants filed a response on 7/24/2026 and amended the claims.
Claims 1-8 are pending.
Claims 1-8 are currently rejected.
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 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 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Quix et al. (WO 2017/121663 A1, hereinafter “Quix”) in view of Maeba et al. (JP 2014-105348, hereinafter “Maeba”).
Applicants filed copies and machine translations of both references with the IDSs and citations within this document refer to those documents.
Regarding claims 1 and 2, Quix teaches a lithium-rich metallurgical slag formed by feeding spent lithium-ion batteries to a smelting furnace to be melted into a slag and alloy (Quix, pg. 5, lines 1-15). Quix further teaches the batteries comprise Cu, Ni, Fe, Co, Mn, Al, and Li (Quix, pg. 6, Table 1). Quix teaches the output alloy after smelting comprises Cu, Ni, Fe, Co, and Mn and the slag comprises 44.4% Al2O3, 8.4% Li2O, and 22% CaO (Quix, pg. 6, Table 1). Quix also teaches in addition to the batteries, limestone CaCO3 and sand SiO2 are simultaneously added to the furnace to react with the metals contained in the batteries (Quix, pg. 5, lines 13-14). Quix teaches the bath temperature is 1400-1700°C in order to maintain both the slag and the alloy sufficiently fluid for easy tapping and handling and the produced alloy and slag are tapped from the furnace either continuously or periodically (Quix, pg. 5, lines 24-27).
Quix further teaches a suitable Li2O bearing metallurgical slag should comprise 3-20% Li2O, 1-7% MnO, 38-65% Al2O3, 0-55% CaO, and 0-45% SiO2, and also that by controlling the amounts of Li2O, CaO, SiO2, and Al2O3 the slag melting point can be decreased (Quix, pg. 2, line 24-pg. 3, line 13).
While Quix teaches the apparatus comprising a bath smelter (Quix, pg. 5, lines 8-11), Quix does not explicitly disclose a melting furnace provided with a means to cool a furnace wall from outside is used and while cooling the furnace wall with the means the reductive melting treatment is performed.
With respect to the difference, Maeba teaches an operation of an electric furnace for smelting in which the sidewall refractory of the furnace is cooled outside the furnace body by a shower cooling system for flowing water around the entire periphery of the furnace sidewall of the furnace body while the smelting is occurring (Maeba, Abstract and [0008]).
As Maeba expressly teaches, the cooling system suppresses the damage of the sidewall refractory by controlling the thickness of the coating layer based on the internal heat load and slag composition and also reduces the amount of heat dissipated from the sidewall portion and the amount of power consumed (Maeba, [0008] and [0013]).
Quix and Maeba are analogous as they are both directed to smelting metal compositions to form a slag and alloy (Quix, pg. 5, lines 1-15; Maeba, Abstract).
In light of the motivation to use the cooling system on the outside of the sidewall as taught in Maeba above, it therefore would have been obvious to one of ordinary skill in the art to use a cooling system around the outside of the apparatus of Quix in order to suppress the damage to the sidewall refractory and reduce the heat dissipated and power consumed (Maeba, [0008] and [0013]), and thereby arrive at the present invention.
The method of Quix in view of Maeba corresponds to a method of producing a valuable metal from a raw material comprising the valuable metal of claim 1. The spent lithium-ion batteries containing lithium, aluminum, and cobalt, nickel, copper, iron, and manganese of Quix corresponds to a preparation step of preparing a raw material comprising at least lithium (Li), aluminum (Al), and the valuable metal of claim 1 and wherein the raw material comprises a discarded lithium ion battery of claim 2.
The smelting of the batteries to form an alloy and slag of Quix corresponds to a reductive melting step of subjecting the raw material to a reductive melting treatment to obtain a reduced product comprising a slag and an alloy comprising the valuable metal of claim 1. Tapping the slag and alloy from the furnace of Quix corresponds to a slag separation step of separating the slag from the reduced product to recover the alloy of claim 1.
Adding limestone simultaneously to the furnace of Quix corresponds to wherein in one or both of the preparation step and the reductive melting step, a flux comprising calcium (Ca) is added to the raw material of claim 1.
The cooling system on the outside of the sidewall of Quix in view of Maeba corresponds to in the reductive melting step, a melting furnace provided with a means to cool a furnace wall from outside is used, and while cooling the furnace wall with the means, the reductive melting treatment is performed of claim 1.
Given the composition of the slag comprising 44.4% Al2O3, 8.4% Li2O, and 22% CaO, the ratio would necessarily be 0.59, i.e., 44.4/(44.4+8.4+22)= 0.59, which falls within a mass ratio of aluminum oxide/(aluminum oxide + calcium oxide + lithium oxide) in the slag to be generated is 0.5 or more and 0.65 or less of claim 1. Moreover, it would be obvious to one of ordinary skill in the art to control the composition of the slag based on the teachings of Quix that by controlling the composition, the melt point of the slag can be decreased and thereby arrive at the step of controlling the mass ratio and temperature as claimed.
The bath temperature being 1400-1700°C of Quix encompasses a slag heating temperature is set to 1,500°C or higher and 1,600°C or lower of claim 1. As set forth in MPEP 2144.05, in the case where the claimed range “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 (Fe. Cir. 1990).
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Quix in view of Maeba as applied to claims 1 and 2 above, and further in view of Ward (US 4870655, hereinafter “Ward”).
Regarding claims 3 and 5, while Quix in view of Maeba teach the use of a smelting furnace (Quix, pg. 5, lines 8-11), Quix and Maeba do not explicitly disclose the melting furnace to be used is a submerged arc furnace.
With respect to the difference, Ward teaches an electric arc furnace for recovering precious metals from spent material in which the furnace is a submerged arc furnace with the electrodes submerged in the slag phase (Ward, Abstract and Column 4, lines 47-49).
As Ward expressly teaches the arc contacting the slag heating the slag well beyond its melting temperature allowing the hot slag to rise and flow outward towards the walls to bring the liquid slag in contact with the solid feed resting on the surface causing the solid feed to melt and cool the slag (Ward, Column 4, lines 49-60). Ward further teaches the movement of the slag, i.e., convention flow, and stirring effect due to the electrodes, improves the melting of the solid feed resting upon the surface of the slag phase (Ward, Column 4, lines 60-63).
Quix, Maeba, and Ward are analogous art as they are all directed to smelting metal compositions to form a slag and alloy (Quix, pg. 5, lines 1-15; Maeba, Abstract; Ward, Abstract).
In light of the motivation to use the submerged arc furnace as taught in Ward above, it therefore would have been obvious to one of ordinary skill in the art to use a submerged arc furnace in Quix in view of Maeba in order to improve the melting of the solid feed resting upon the surface of the slag phase (Ward, Column 4, lines 60-63), and thereby arrive at the present invention.
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Quix et al. (WO 2017/121663 A1, hereinafter “Quix”) in view of Ward (US 4870655, hereinafter “Ward”).
Regarding claims 1 and 2, Quix teaches a lithium-rich metallurgical slag formed by feeding spent lithium-ion batteries to a smelting furnace to be melted into a slag and alloy (Quix, pg. 5, lines 1-15). Quix further teaches the batteries comprise Cu, Ni, Fe, Co, Mn, Al, and Li (Quix, pg. 6, Table 1). Quix teaches the output alloy after smelting comprises Cu, Ni, Fe, Co, and Mn and the slag comprises 44.4% Al2O3, 8.4% Li2O, and 22% CaO (Quix, pg. 6, Table 1). Quix also teaches in addition to the batteries, limestone CaCO3 and sand SiO2 are simultaneously added to the furnace to react with the metals contained in the batteries (Quix, pg. 5, lines 13-14). Quix teaches the bath temperature is 1400-1700°C in order to maintain both the slag and the alloy sufficiently fluid for easy tapping and handling and the produced alloy and slag are tapped from the furnace either continuously or periodically (Quix, pg. 5, lines 24-27).
Quix further teaches a suitable Li2O bearing metallurgical slag should comprise 3-20% Li2O, 1-7% MnO, 38-65% Al2O3, 0-55% CaO, and 0-45% SiO2, and also that by controlling the amounts of Li2O, CaO, SiO2, and Al2O3 the slag melting point can be decreased (Quix, pg. 2, line 24-pg. 3, line 13).
While Quix teaches the apparatus comprising a bath smelter (Quix, pg. 5, lines 8-11), Quix does not explicitly disclose a melting furnace provided with a means to cool a furnace wall from outside is used and while cooling the furnace wall with the means the reductive melting treatment is performed.
With respect to the difference, Ward teaches an electric arc furnace for recovering precious metals from spent material where the electric arc furnace comprises cooling panels circumscribing the upright wall, in which the panels are connected internally such that cold water can be introduced to the bottom through inlets and removed from an upper outlet (Ward, Column 3, lines 28-32).
As Ward expressly teaches, the cooling panels help to maintain the integrity of the furnace at high temperatures and aids in maintaining the temperature of the metal shell so as to provide a firm structure for the refractory material (Ward, Column 3, lines 23-46).
Quix and Ward are analogous as they are both directed to smelting metal compositions to form a slag and alloy (Quix, pg. 5, lines 1-15; Ward, Abstract).
In light of the motivation to use the cooling panels on the upright wall as taught in Ward above, it therefore would have been obvious to one of ordinary skill in the art to use the cooling panels around the apparatus of Quix in order to maintain the integrity of the furnace and refractory material (Ward, Column 3, lines 23-46), and thereby arrive at the present invention.
The method of Quix in view of Ward corresponds to a method of producing a valuable metal from a raw material comprising the valuable metal of claim 1. The spent lithium-ion batteries containing lithium, aluminum, and cobalt, nickel, copper, iron, and manganese of Quix corresponds to a preparation step of preparing a raw material comprising at least lithium (Li), aluminum (Al), and the valuable metal of claim 1 and wherein the raw material comprises a discarded lithium ion battery of claim 2.
The smelting of the batteries to form an alloy and slag of Quix corresponds to a reductive melting step of subjecting the raw material to a reductive melting treatment to obtain a reduced product comprising a slag and an alloy comprising the valuable metal of claim 1. Tapping the slag and alloy from the furnace of Quix corresponds to a slag separation step of separating the slag from the reduced product to recover the alloy of claim 1.
Adding limestone simultaneously to the furnace of Quix corresponds to wherein in one or both of the preparation step and the reductive melting step, a flux comprising calcium (Ca) is added to the raw material of claim 1.
The cooling panels around the upright wall of Quix in view of Ward corresponds to in the reductive melting step, a melting furnace provided with a means to cool a furnace wall from outside is used, and while cooling the furnace wall with the means, the reductive melting treatment is performed of claim 1.
Given the composition of the slag comprising 44.4% Al2O3, 8.4% Li2O, and 22% CaO, the ratio would necessarily be 0.59, i.e., 44.4/(44.4+8.4+22)= 0.59, which falls within a mass ratio of aluminum oxide/(aluminum oxide + calcium oxide + lithium oxide) in the slag to be generated is 0.5 or more and 0.65 or less of claim 1. Moreover, it would be obvious to one of ordinary skill in the art to control the composition of the slag based on the teachings of Quix that by controlling the composition, the melt point of the slag can be decreased and thereby arrive at the step of controlling the mass ratio and temperature as claimed.
The bath temperature being 1400-1700°C of Quix encompasses a slag heating temperature is set to 1,500°C or higher and 1,600°C or lower of claim 1. As set forth in MPEP 2144.05, in the case where the claimed range “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 (Fe. Cir. 1990).
Regarding claims 3 and 5, while Quix teaches the use of a smelting furnace (Quix, pg. 5, lines 8-11), Quix does not explicitly disclose the melting furnace to be used is a submerged arc furnace.
With respect to the difference, Ward teaches an electric arc furnace for recovering precious metals from spent material in which the furnace is a submerged arc furnace with the electrodes submerged in the slag phase (Ward, Abstract and Column 4, lines 47-49).
As Ward expressly teaches the arc contacting the slag heating the slag well beyond its melting temperature allowing the hot slag to rise and flow outward towards the walls to bring the liquid slag in contact with the solid feed resting on the surface causing the solid feed to melt and cool the slag (Ward, Column 4, lines 49-60). Ward further teaches the movement of the slag, i.e., convention flow, and stirring effect due to the electrodes, improves the melting of the solid feed resting upon the surface of the slag phase (Ward, Column 4, lines 60-63).
In light of the motivation to use the submerged arc furnace as taught in Ward above, it therefore would have been obvious to one of ordinary skill in the art to use a submerged arc furnace in Quix in order to improve the melting of the solid feed resting upon the surface of the slag phase (Ward, Column 4, lines 60-63), and thereby arrive at the present invention.
Claims 4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Quix in view of Ward as applied to the preceding claims above, and further in view of Takahashi et al. (US 2014/0174256 A1, hereinafter “Takahashi”).
Regarding claims 4, 6, 7, and 8, Quix and Ward do not explicitly disclose further comprising an oxidative roasting step of oxidatively roasting the raw material into an oxidatively roasted product prior to the reductive melting treatment, and subjecting the obtained oxidatively roasted product to the reductive melting treatment.
With respect to the difference, Takahashi teaches a method for stabilizing the degree of oxidation of molten battery waste and definitively separating slag and alloy (Takahashi, Abstract). Takahashi teaches the method includes a pre-oxidation step including roasting the pre-treated waste batteries at a temperature of 600-1250°C while supplying oxygen (Takahashi, [0023]).
As Takahashi expressly teaches the pre-oxidation step allows the degree of oxidation to be controlled such that the rate of recovery of nickel, cobalt, and copper can be increased (Takahashi, [0027]).
Quix, Ward, and Takahashi are analogous as they are all directed to smelting metal compositions to form a slag and alloy (Quix, pg. 5, lines 1-15; Ward, Abstract; Takahashi, Abstract).
In light of the motivation to perform an oxidation roast prior to melting as taught in Takahashi above, it therefore would have been obvious to one of ordinary skill in the art to perform oxidation roasting prior to smelting in Quix in view of Ward in order to allow the degree of oxidation to be controlled such that the rate of recovery of nickel, cobalt, and copper can be increased (Takahashi, [0027]), and thereby arrive at the present invention.
Double Patenting
The filing of the terminal disclosure for copending application 18/575,894 is acknowledged and approved. Therefore the previous double patenting rejection is withdrawn.
Response to Arguments
Applicant primarily argues:
“As presented, claim 1 explicitly recites the causal relationship between (i) the deliberate control of both the Al₂O₃/(Al₂O₃+CaO+Li₂O) mass ratio to 0.5 or more and 0.65 or less and the slag heating temperature to 1,500 degrees Celsius or higher and 1,600 degrees Celsius or lower, and (ii) the resulting formation of a solidified slag layer on the inner refractory surface. As described in paragraphs [0035] and [0036] of the present application, the amounts of slag components can be readily controlled by adjusting raw material composition and flux addition, and this configuration enables the refractory material to be protected from erosion while recovering valuable metals at a high recovery rate. As described in paragraph [0038] of the application-as-filed, when the furnace wall is cooled from the outside while the Al2O₃ ratio and slag heating temperature are maintained within the claimed ranges, the temperature of the slag in contact with the refractory surface drops below the liquidus temperature, causing the solidified layer to form effectively.”
Moreover, the Examples in Table 1 are brought to the attention of the Examiner to demonstrate the above statements.
Remarks pg. 6-7
The Examiner respectfully traverses as follows:
The Examiner is not persuaded that both the mass ratio and temperature needs to be met in order to obtain a solidified layer of the slag on the surface of the refractory material of the furnace based on the data within Table 1 of the specification. Specifically, Example 1, and Comparative Examples 3 and 4 all include only one of the claimed parameters being met and still have the presence of the slag coating layer, i.e., Example 1, the heating temperature is 1450°C (below the claimed 1500°C) but the mass ratio is 0.55 (within); Comparative Example 3, the temperature is 1600°C (within) but the mass ratio is 0.69 (outside the claimed 0.65); and Comparative Example 4, the temperature is 1300°C (below claimed 1500°C) but the mass ratio is 0.55 (within) and all have a present coating layer. Therefore, the assertion that both are critical to obtaining the slag coating layer is not persuasive.
Applicant further argues that any overlap in the mass ratio of Quix is purely incidental since Quix teaches examples outside the claimed 0.5-0.65 mass ratio and that the preferred amount of CaO is the main feature of the invention and that Quix does not teach controlling the amount of Al2O3. See Remarks, pg. 7-8. The Examiner respectfully disagrees as Quix teaches a suitable Li2O bearing metallurgical slag should comprise 3-20% Li2O, 1-7% MnO, 38-65% Al2O3, 0-55% CaO, and 0-45% SiO2, and also that by controlling the amounts of Li2O, CaO, SiO2, and Al2O3 the slag melting point can be decreased (Quix, pg. 2, line 24-pg. 3, line 13), therefore, Quix does consider controlling the various components within the slag composition.
Additionally, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123 I. While Applicant argues that Quix teaches the preferred amount of CaO is lower than 25%, Quix also teaches the broader range of 0-55% and one of ordinary skill in the art would be able to reasonably rely on the composition of the slag containing any amount of CaO within this range (Quix, pg. 2, lines 24-30).
Applicant also argues the motivation for controlling the components of the slag composition is directly contrary to the design concept of claim 1, namely having a more viscous slag of Quix could not form the solidified layer of the present invention. See Remarks, pg. 8.
First, One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Quix does not expressly teach the claimed solidified slag layer. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103, which admits that Quix does not disclose the entire claimed invention. Rather, Maeba is relied upon to teach claimed elements missing from Quix. See pg. 5-8 of the Office Action mailed 3/24/2026.
Secondly, the combination of Quix in view of Maeba and/or Ward teach using a water cooling furnace to form the solidified slag coating and just because the slag of Quix is more viscous does not indicate that the cooling furnace would not still form the solidified layer on the surface of the refractory material as claimed.
Applicant argues that Maeba explicitly teaches suppressing the slag coating layer formation as the core inventive concept and therefore does not teach the solidified coating layer as claimed. See Remarks, pg. 8. The Examiner respectfully traverses as the full document of Maeba actually states “the molten material 20 in the furnace is solidified by heat transfer in an electric furnace, so that a coating 19 is generated on the inner peripheral part of the furnace side wall 11” and “in this way, the coating 19 is formed on the inner peripheral portion, thereby reducing the thermal load on the furnace side wall 11 and preventing the melting of the furnace sidewall 11” and further by controlling the flow rate of the cooling water 31, excessive formation of the slag coating can be suppressed (Maeba,[[0025-0027]). Maeba does not teach that all formation is suppressed, merely excessive formation is suppressed, therefore Maeba does teach the formation of a slag coating layer on the inner sidewall of the refractory material as claimed.
Applicant also argues that Ward does not teach the concept of intentionally controlling the mass ratio components and the slag heating temperature and also teaches the furnace is operated at 1650°C, which is outside the claimed range. See Remarks, pg. 9. The Examiner respectfully traverses Ward is only used as teaching reference in order to teach cooling the furnace through water cooling. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA). Ward, need not teach the mass ratio or temperature as Quix is relied upon to teach those limitations while Ward is only used to teach the cooling furnace.
Applicant finally argues that Takahashi also doesn’t teach the mass ratio or slag heating temperatures. See Remarks, pg. 9. The Examiner respectfully traverses Takahashi is only used as teaching reference in order to teach cooling the furnace through water cooling. It is noted that the "test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that "combining the teachings of references does not involve an ability to combine their specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Therefore, Applicant's arguments filed 7/24/2026 have been fully considered but they are not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
