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 .
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.
Terminal Disclaimer
The terminal disclaimer filed on 31 July 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US. Pat. No. 11,959,151, as well as any patent issued from application numbers 18/690,982, 17/797,212, 18/696,560, or 17/912,998, has been reviewed and is accepted. The terminal disclaimer has been recorded.
The prior non-statutory double patenting rejections are withdrawn.
Information Disclosure Statement
The Information Disclosure Statements filed on 7 April 2026 and 25 August 2026 have been considered by the Examiner.
Claim Status
Applicant’s amendments to claim 1 and the addition of claim 7 have been entered and considered for this action. Claims 1, 3, and 5-7 are pending.
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 1, 3, and 5-7 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 in line 2 that the alloy being subjected to leaching comprises “nickel and/or cobalt and copper”. As set forth in the office action mailed 10 July 2025, this is interpreted as requiring an alloy that necessarily contains copper, as well as at least one of nickel and cobalt. This choice between nickel and/or cobalt is repeated in line 13 of the claim, as amended on 31 July 2026. However, line 16 of the amended claim requires that this same alloy now contain nickel and cobalt. It is therefore unclear as to whether an alloy comprising only nickel or cobalt is encompassed by claim 1, and the claim is rejected.
Claims 3 and 5-7 depend upon claim 1 without resolving the indefiniteness and are likewise rejected.
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.
Claims 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Higaki (US 2020/0216929 A1) in view of Rohde et al. (WO 2019/121086 A1, hereinafter “Rohde”), Takenouchi (WO 2019/124015 A1), and Yokota (JP 2018040025 A; foreign patent document 4 on the IDS filed 7 April 2026). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) and newly provided English machine translation of Yokota (JP 2018040035 A) are referenced in the analysis below.
Regarding claim 1, Higaki teaches an alloy processing method (abstract) comprising a leaching step that includes subjecting an alloy comprising nickel and cobalt and copper to a leaching treatment with an acid solution in the presence of a sulfurizing agent to obtain a leachate (an alloy containing copper, nickel and cobalt is brought into contact with an acid in the coexistence of a sulfurization agent…leached nickel and cobalt remain in the leachate; abstract, [0053]) and a leached residue (copper is precipitated as a sulfide to form a residue; [0053] and [0065]).
Higaki also teaches the alloy including an alloy obtained by melting a waste battery of a lithium ion battery (the alloy containing copper, nickel and cobalt is an alloy obtained by heat-melting and reducing scraps of a lithium ion battery; [0038]). Additionally, Higaki teaches that it may be desirable to include a method of removing residual copper from the leachate (a copper removing facility, which removes copper remaining in the leachate, may be provided at an outlet of a reaction tank in which the separating method of this embodiment is performed; [0064]).
Higaki does not teach the method having a reduction step as claimed.
However, Rohde also teaches an alloy processing method for treatment of waste batteries (title and abstract) and also teaches a reduction step after the leaching step that comprises, after a leaching step, adding a reducing agent to the leachate obtained by separating the leached residue to perform a reduction treatment (treating the solution obtained …with metallic nickel, cobalt or manganese; p. 11, ¶ 1) to obtain a post-reduction solution (a Ni, Co, Mn and Li containing solution; p. 18, lines 39-40)) and a reduced residue (solids removed by filtration; p. 18, line 38). Rohde further teaches that the reduction step (step (c)) is particularly useful for removal of copper traces (p. 12, ¶ 4), as suggested may be desired by Higaki, that the reductant can comprise electrode fragments (p. 11, ¶ 14) and that an advantage of their method is that it does not introduce any new impurities (p. 12, lines 24-25). One of ordinary skill in the art would recognize that the reduction process of Rohde’s step (c) is one in which copper and other noble metals are reduced and therefore precipitate with the reduced residue, while the nickel and cobalt remain oxidized and dissolved in the post reduction solution (p. 12, ¶ 4-7).
Rohde does not teach adding a reducing agent while measuring an oxidation-reduction potential and controlling the addition amount of reducing agent so that the oxidation reduction potential (ORP) of the leachate is 0 mV or less, as a value determined using a silver/silver chloride reference electrode.
However, Takenouchi also teaches a method of leaching and separating valuable metals such as cobalt, nickel and copper from lithium-ion battery derived materials via sulfurization ([0028]-[0029]). Takenouchi further teaches that selectivity of dissolving cobalt and nickel but not copper is improved when the reduction potential of the leachate is controlled to a value of 0 mV or less by adjusting the amount of added reducing agent (adjusting the amount of sulfide powder (reducing agent)…. so that the ORP is 0 mV or less, it is possible to leach nickel and cobalt while at the same time sufficiently suppressing the leaching of copper, thereby further improving selectivity; [0086]) as a value determined using silver/silver chloride reference electrode ([0083] shows that Takenouchi uses the silver/silver chloride electrode as reference electrode). Takenouchi does not specifically teach adding the reducing agent while measuring the ORP of the leachate, though it may have been obvious to one of ordinary skill in the art to do so in order to ensure that the ORP stays within the desired range during the addition of the reducing agent.
In any case, Yokota also teaches the recovery of nickel and cobalt from lithium ion battery scrap ([0002]) and the desire to keep cobalt and nickel in solution while having copper remain or return to a solid by the addition of metallic reducing agents including nickel and cobalt ([0026]).Yokota further teaches that the metallic reducing agent can be added whenever the ORP begins to rise sharply (at the moment when the oxidation-reduction potential (ORP vs Ag/AgCl) of the acidic solution begins to rise sharply, a metal piece containing at least one element from iron, nickel, and cobalt is added to the acidic solution.; [0010] and [0019]), or when the ORP rises to a specific range ([0028]), which would necessarily involve adding the reducing while monitoring the ORP.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in the alloy processing method of Higaki a reduction step following the leaching step, as taught by Rohde, and add the reducing agent while measuring an oxidation- reduction potential of the leachate, where an addition amount of the reducing agent is controlled so that the oxidation-reduction potential of the leachate is 0 mV or less, as a value determined using a silver/silver chloride electrode as a reference electrode, whereby dissolved copper in the leachate is reduced and precipitates as the reduced residue and nickel and cobalt in the alloy is oxidized and dissolves into the post-reduction solution, as taught by Takenouchi and Yokota.
One of ordinary skill in the art would have been motivated to include the reduction step in order to remove traces of copper in the leachate, as taught by Rohde and suggested by Higaki, and to add the reducing agent while monitoring the ORP and using an addition amount so that the reduction potential of the leachate is controlled to 0 mV of less in order to increase selectivity for reduction of copper over nickel and cobalt, as taught by Takenouchi and Yokota.
It would have also been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use at least part of the alloy subjected to leaching treatment in the leaching step as the reducing agent, thereby arriving at the instantly claimed invention. One of ordinary skill in the art would have been motivated to do so because Rohde teaches that electrode scraps (which the alloys being treated are in the methods of both Higaki and Rohde) are appropriate reducing agents and because using the same material would guarantee that no new impurities are introduced, an advantage taught by Rohde.
Regarding claim 5, modified Higaki teaches the method of claim 1, where in the leaching step the leaching treatment is performed in the presence of the sulfurizing agent in an amount of 1 equivalent with respect to copper contained in the alloy ([0058] and Table 2), which lies in the instantly claimed range of 1 equivalent or more and 1.25 equivalents or less with respect to copper contained in the alloy.
Regarding claim 6, modified Higaki teaches the method of claim 1, where in at least some examples the leaching step the leaching treatment is performed so that the pH of the obtained leachate is in a range of 0.8 or more and 1.6 or less (Table 2, Examples 3 and 10 show pHs of 0.81 and 1.13, respectively).
Regarding claim 7, modified Higaki teaches the method of claim 1, where Higaki also teaches the leaching treatment being performed so that an oxidation-reduction potential (ORP) of the leachate is in the range of 240 mV or more and 280 mV or less (Examples 1-3, 6, 9-10, and 14), as a value determined using a silver/silver chloride reference electrode ([0072]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Higaki (US 2020/0216929 A1) in view of Rohde et al. (WO 2019/121086 A1), Takenouchi (WO 2019/124015 A1), and Yokota (JP 2018040025 A; foreign patent document 4 on the IDS filed 7 April 2026), as applied to claim 1 above, and further in view of Kikuta (US 2013/0112043 A1) and Abe et al. (US 2009/0241736 A1). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) and newly provided English machine translation of Yokota (JP 2018040035 A) are referenced in the analysis below.
Regarding claim 3, modified Higaki teaches the method of claim 1 but does not teach the reduced residue obtained by the treatment in the reduction step being subjected to the leaching treatment in the leaching step.
However, Kikuta also teaches a method of treating battery scraps comprising a leaching step to generate a leachate and leaching residue followed by a second treatment step, in this case neutralization instead of reduction (abstract and Fig. 1). Kikuta also teaches that the residue of the post-leaching step (neutralization residue) can be resubjected to the leaching step ([0023] and Fig. 1).
Additionally, Abe teaches a method of recovering valuable metals (gold) from copper sulfide ores (abstract). Abe further teaches that by resubjecting recovered residues from a redox treatment (air oxidation; [0070]) to a new leaching treatment every 3 hours (the residue, which was recovered at every 3 hours was charged into fresh leach liquor; [0101]), the amount of valuable metals in the residue can be decreased and the recovery of the metals increased (the leaching ratio of gold is low when the liquor is not replenished, while the leaching ratio is high when the liquor is replenished; [102] and Table 6).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Higaki by subjecting the post-leaching residue (reduced residue) to the leaching treatment in the leaching step, as taught by Kikuta. One of ordinary skill would have been motivated to do so because Kikuta teaches that such a method is appropriate for metal recovery schemes analogous to those used by Higaki. Furthermore, one of ordinary skill would additionally recognize that such cycles that resubject isolated fractions (recovered residue) to new leaching conditions increase the yield of recovered products, as taught by Abe. In this way, one would be applying the known techniques of Kikuta and Abe to improve the similar method of Higaki in the same way. MPEP 2143(I)(C).
Response to Arguments
Applicant's arguments filed 31 July 2026 with respect to the rejections under 35 USC § 103, pages 5-9 of the reply, have been fully considered and they are persuasive in part. Therefore, the prior rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in further view of Yokota (JP 2018040025 A; foreign patent document 4 on the IDS filed 7 April 2026), as set forth above.
In particular, Applicant argues, page 7 ¶ 2, that Takenouchi teaches only a passive, after the fact measurement of ORP. While it is not clear that one of ordinary skill in the art would not have been motivated to monitor the ORP continuously during addition of the reductant in order to achieve control of the ORP, this argument is accepted.
However, Yokota also teaches a method of recovering and separating valuable metals from lithium battery waste, and further teaches active monitoring of ORP as a method of deciding when a reductant should be added to control the solubility of copper. It therefore would have been obvious to add this feature to the method of modified Higaki, as analyzed above.
It is additionally noted that while Yokota’s process can be described as monitoring ORP during the leaching step, it still would have been obvious to apply such monitoring in the post-leaching reduction step that is suggested by Rohde because the goals are the same: the control the potential so that copper remains undissolved and/or reprecipitates while cobalt and nickel remain oxidized and dissolved.
Applicant’s arguments regarding Rohde, pages 6-7, have been fully considered but are not persuasive. In particular, Applicant argues that Rohde cannot be considered as rendering the choice of an alloy containing significant copper as an obvious reductant because Rohde wishes to remove copper from the solution. However, Rohde already teaches that any copper contained in the alloy would not dissolve, and this would remain true even if the alloy were copper-rich.
Therefore, Rohde’s goal of removing dissolved copper cannot be considered an obstacle to the choice of using a solid Ni/Co/Cu alloy, wherein the copper is known to not dissolve, when that alloy is already recognized as a desired object of recycling and readily at hand.
Applicant’s arguments on pages 8-9 regarding claim 3 are also not persuasive. Applicant argues that Kikuta and Abe do not disclose the self-reduction mechanism in which the alloy to be treated is used as the reducing agent while the ORP is measured and controlled. However, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, these features identified as missing from Abe and Kikuta are taught by Rohde, Takenouchi and Yokota, as analyzed above.
Applicant’s arguments with respect to new claim 7, pages 9-10 of the reply, have also been fully considered but are unpersuasive.
Applicant’s argument regarding the reduction potential of the leachate in the leaching step focus on the contribution of Takenouchi. However, the primary reference of Higaki teaches ORPs of the leachate that fall within the claimed range. Because Rohde teaches a separate post-leaching reduction step in which leached copper can be removed, one of ordinary skill would not be compelled to modify the ORP of the leachate during the leaching step of Higaki to those suggested by Takenouchi.
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 Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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