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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 29 January 2026 and 16 February 2026 have been entered.
Information Disclosure Statement
The Information Disclosure Statement filed on 24 November 2025 has been considered by the Examiner.
Claim Amendments
Applicant’s amendments to claim 1 and the cancellation of claim 4 have been entered and considered for this Action. The prior objection to claim 1 is withdrawn.
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 5-6 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”) and Takenouchi (WO 2019/124015 A1). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) is 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).
Rohde does not teach controlling an addition amount of the 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).
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 to control the addition amount of the 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, as taught by Takenouchi. 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 keep the reduction potential of the leachate to 0 mV of less in order to increase selectivity for reduction of copper over nickel and cobalt, as taught by Takenouchi.
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).
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) and Takenouchi (WO 2019/124015 A1), 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) is used 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).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,959,151 in view of Rohde et al. (WO 2019/121086 A1) and Takenouchi (WO 2019/124015 A1). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) is used in the analysis below.
Claim 1 of the ‘151 patent teaches an alloy processing method (separation method) comprising a leaching step that comprises 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 and a leached residue (bringing the sulfurization agent and the alloy powder coexisting into contact with hydrochloric acid whereby the nickel metal and the cobalt metal are leached; column 12, lines 46-48).
Claim 1 of the ‘151 patent teaches the alloy being obtained from a lithium ion battery, but not from melting said battery, and the claims of the ‘151 patent do not teach the method having a reduction step.
However, Rohde also teaches an alloy processing method for treatment of waste batteries (title and abstract) and further teaches a reduction step after the leaching step that comprises 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 also teaches that the reduction step (step (c)) is particularly useful for removal of copper traces (p. 12, ¶ 4) and 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).
Rohde does not teach controlling an addition amount of the 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 additionally teaches the alloy being obtained by the melting of lithium ion batteries to obtain the alloy ([0078]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to obtain the alloy to be used in the ‘151 method by melting a lithium ion battery, as taught by Takenouchi, and to include in the processing method of the ‘151 patent a reduction step following the leaching step, as taught by Rohde. It would have been further obvious to control the addition amount of the 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, as taught by Takenouchi. 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 to keep the reduction potential of the leachate to 0 mV of less in order to increase selectivity for reduction of copper over nickel and cobalt, as taught by Takenouchi.
It would have been 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. 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.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,959,151 in view of Rohde et al. (WO 2019/121086 A1) and Takenouchi (WO 2019/124015 A1), as applied to claim 1, 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) is used in the analysis below.
Regarding claim 3, modified claim 1 of the ‘151 patent 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 claim 1 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 in the ‘151 patent. 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 claim 1 in the same way. MPEP 2143(I)(C).
Claims 5 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,959,151 in view of Rohde et al. (WO 2019/121086 A1) and Takenouchi (WO 2019/124015 A1), as applied to claim 1 above, and further in view of Higaki (US 2020/0216929 A1). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) is used in the analysis below.
Regarding claim 5, modified claim 1 of the ‘151 patent teaches the method of instant claim 1, but is silent with respect to the amount of sulfurizing agent in the leaching step. However, Higaki teaches the leaching in the presence of a sulfurizing agent, and further teaches that the leaching treatment is performed in the presence of the sulfurizing agent in an amount of 1 equivalent or more with respect to copper contained in the alloy ([0058]), which contains the instantly claimed range of 1 equivalent or more and 1.25 equivalents or less with respect to copper contained in the alloy.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
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 claim 1 of the ‘151 patent application to perform the leaching treatment in the presence of the sulfurizing agent in an amount of 1 equivalent or more and 1.25 equivalents or less with respect to the copper contained in the alloy. One would have been motivated to do so because they would be combining prior art elements according to known methods to yield predictable results. MPEP 2143(I)(A).
Regarding claim 6, modified claim 1 of the ‘151 patent teaches the method of instant claim 1, but does not specify the pH of the leachate. However, Higaki teaches examples where in 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).
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 claim 1 of the ‘151 patent to perform the leaching treatment so that the pH of the obtained leachate is 0.81 or 1.13, which fall in the instantly claimed range of 0.8 or more and 1.6 or less. One would have been motivated to do so because they would be combining prior art elements according to known methods to yield predictable results. MPEP 2143(I)(A).
Claims 1 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 5 of copending Application No. 18/690,282 in view of Ishida (US 2013/0269484 A1).
Regarding instant claim 1 , claim 3 of the ‘282 application teaches an alloy processing method comprising a leaching step that comprises subjecting an alloy comprising nickel and/or cobalt and copper to a leaching treatment with an acid solution in the presence of a sulfurizing agent to obtain a leachate and a leached residue (leaching step of adding an acid solution to the alloy in a state in which a sulfurizing agent coexists; claim 1, on which claim 3 depends); and a reduction step that comprises subjecting the leachate to a reduction treatment by adding a reducing agent to the leachate to obtain a post-reduction solution and a reduced residue (claim 3).
Claim 5 of the ‘282 application, which may depend on claim 3, teaches the limitation of the alloy being obtained by melting a waste battery of a lithium ion battery.
Claim 3 and claim 5 of the ‘282 application do not explicitly teach the oxidation-reduction potential in the reduction step or the reducing agent being the alloy to subjected to the leaching treatment.
However, Ishida also teaches a method of leaching valuable metals including cobalt and nickel from lithium-ion battery materials (abstract and claim 1), and Ishida further teaches that the reduction treatment is performed by controlling an addition amount of the reducing agent so that oxidation-reduction potential of the leachate in the range of -100 mV to 550 mV as a value determined using a silver/silver chloride electrode as a reference electrode (it is preferable to adjust an oxidation reduction potential (ORP) (reference electrode: silver/silver-chloride electrode) to be in a range of -100 to 550 mV by adding nickel metal; [0088]).
Therefore it would have been obvious to one of ordinary skill in the art to modify the method of claim 3 by controlling an addition amount of the reducing agent so that oxidation-reduction potential of the leachate in the range of -100 mV to 550 mV as a value determined using a silver/silver chloride electrode as a reference electrode, as taught by Ishida.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore the instantly claimed range of potentials less than 0 mV are is obvious variation of that disclosed in the prior art.
Regarding the reducing agent being the allot to be subjected to the leaching treatment, Ishida teaches that the reducing agent can be a metal (metal to be added in leaching treatment), including the nickel from a nickel-metal hydride battery ([0032]), or other metals such as nickel, iron and zinc ([0114]). In particular, Ishida teaches that metals with a reduction potential lower than that of hydrogen ([0020]) are appropriate, a group which contains nickel and cobalt, as evidenced by OpenStax (Table 17.2). Ishida further teaches that used metal which is to be recycled, such as the nickel from a nickel-metal hydride battery, is preferable ([0032] and [0087]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the alloy to be subjected to the leaching treatment as the reducing agent in the method of modified claim 3. One of ordinary skill would have been motivated to do so because this alloy contains metals (cobalt and/or nickel) that meets the requirement of having a reduction potential less than hydrogen and it also has the preferable quality that it is a used metal to be recycled, as taught by Ishida.
Regarding instant claim 6, modified claim 3 of the ‘282 application teaches the method of instant claim 1, and Ishida further teaches the pH during the leaching step is preferably maintained at approximately 0.5 to 1.5 ([0090]), which overlaps with the instantly claimed range. It is again noted that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art a prima facie case of obviousness exists. MPEP 2144.05.01.
This is a provisional nonstatutory double patenting rejection.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 5 of copending Application No. 18/690,282 in view of Ishida (US 2013/0269484 A1), as applied to claim 1, and further in view of Kikuta (US 2013/0112043 A1) and Abe et al. (US 2009/0241736 A1).
Regarding claim 3, modified claim 3 of the ‘282 application teaches the method of instant 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 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 claim 1 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 in the ‘282 application. 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 claim 3 in the same way. MPEP 2143(I)(C).
This is a provisional nonstatutory double patenting rejection.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 5 of copending Application No. 18/690,282 in view of Ishida (US 2013/0269484 A1), as applied to claim 1, and further in view of Higaki (US 2020/0216929 A1).
Regarding claim 5, modified claim 3 of the ‘282 application teaches the method of instant claim 1, but is silent with respect to the amount of sulfurizing agent in the leaching step. However, Higaki teaches a similar leaching in the presence of a sulfurizing agent, and further teach that the leaching treatment is performed in the presence of the sulfurizing agent in an amount of 1 equivalent or more with respect to copper contained in the alloy ([0058]), which contains the instantly claimed range of 1 equivalent or more and 1.25 equivalents or less with respect to copper contained in the alloy.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
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 claim 3 of the ‘282 application to perform the leaching treatment in the presence of the sulfurizing agent in an amount of 1 equivalent or more and 1.25 equivalents or less with respect to the copper contained in the alloy. One would have been motivated to do so because they would be combining prior art elements according to known methods to yield predictable results. MPEP 2143(I)(A).
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/797,212 in view of Takenouchi (WO 2019/124015 A1). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) is used in the analysis below.
Regarding instant claim 1, claim 1 of the ‘212 application teaches an alloy processing method comprising a leaching step that comprises subjecting an alloy comprising nickel and/or cobalt and copper to a leaching treatment with an acid solution in the presence of a sulfurizing agent to obtain a leachate; and a reduction step that comprises subjecting the leachate to a reduction treatment by adding a reducing agent to the leachate to obtain a post-reduction solution.
Claim 2 of the ‘212 application teaches the alloy being obtained by melting a waste battery of a lithium ion battery.
The claims of the ‘212 application do not teach the reduction treatment being performed by controlling an addition amount of the reducing agent so that 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.
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 a reduction step wherein the reduction treatment is performed by controlling an addition amount of the reducing agent so that oxidation-reduction potential of the leachate is 150 mV or less, as a value determined using a silver/silver chloride electrode as a reference electrode (the amount of sulfide…added [is] adjusted so that the oxidation-reduction potential of the resulting leachate is maintained at 150 mV or less; [0032]; copper is left as a residue; [0063]). Takenouchi further teaches that selectivity can be further improved when the reduction potential is controlled to a value of 0 mV or less by adjusting the amount of added reducing agent (sulfide powder) ([0086]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of claim 1 to include a reduction step that comprises subjecting the leachate to a reduction treatment by adding a reducing agent to the leachate to obtain a post-reduction solution and a reduced residue, wherein, in the reduction step, the reduction treatment is performed by controlling an addition amount of the reducing agent so that 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 reduction, as taught by Takenouchi. One of ordinary skill in the art would have been motivated to do so because Takenouchi teaches that such a reduction process improves the selectivity for separating copper from nickel and cobalt ([0086]).
Claim 4 of the ‘212 application teaches the reducing agent being a metallic material comprising nickel and/or cobalt, a description which fits the alloy to be subjected to leaching. Therefore it would have been obvious to one of ordinary skill in the art use the alloy to be subjected to the leaching treatment in the leaching step as the reducing agent to be added in the reduction step.
Regarding instant claim 6, modified claim 1 of the ‘212 application teaches the limitations of instant claim 1, and claim 8 of the ‘212 application teaches the leaching treatment controlled at a pH of 0.8 or more and 2.0 or less, which overlaps with the instantly claimed range of 0.8 or more and 1.6 or less.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
This is a provisional nonstatutory double patenting rejection.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/797,212 in view of Takenouchi (WO 2019/124015 A1), as applied to claim 1, 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) is used in the analysis below.
Regarding claim 3, modified claim 1 of the ‘212 application teaches the method of instant 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 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 claim 1 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 in the ‘212 application. 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 claim 1 in the same way. MPEP 2143(I)(C).
This is a provisional nonstatutory double patenting rejection.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/797,212 in view of Takenouchi (WO 2019/124015 A1), as applied to claim 1, and further in view of Higaki (US 2020/0216929 A1). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) is used in the analysis below.
Regarding claim 5, modified claim 1 of the ‘212 application teaches the method of instant claim 1, but is silent with respect to the amount of sulfurizing agent in the leaching step. However, Higaki teaches a similar leaching in the presence of a sulfurizing agent, and further teach that the leaching treatment is performed in the presence of the sulfurizing agent in an amount of 1 equivalent or more with respect to copper contained in the alloy ([0058]), which contains the instantly claimed range of 1 equivalent or more and 1.25 equivalents or less with respect to copper contained in the alloy.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
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 claim 1 of the ‘212 application to perform the leaching treatment in the presence of the sulfurizing agent in an amount of 1 equivalent or more and 1.25 equivalents or less with respect to the copper contained in the alloy. One would have been motivated to do so because they would be combining prior art elements according to known methods to yield predictable results. MPEP 2143(I)(A).
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/696,560 in view of Takenouchi (WO 2019/124015 A1). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) is used in the analysis below.
Regarding instant claim 1, claim 1 of the ‘560 application teaches an alloy processing method comprising a leaching step that comprises subjecting an alloy comprising nickel and/or cobalt and copper to a leaching treatment with an acid solution in the presence of a sulfurizing agent to obtain a leachate and a leached residue; and a reduction step that comprises subjecting the leachate to a reduction treatment by adding a reducing agent to the leachate to obtain a post-reduction solution and a reduced residue (adding a reducing agent … to the leachate obtained in the leaching step … to obtain a post-copper-removal solution and a copper-removed residue). Claim 5 teaches using the alloy to be subjected to leaching as the reducing agent, and claim 9 teaches the alloy being obtained by melting a waste battery of a lithium ion battery.
The claims of the ‘560 application do not teach the reduction treatment being performed by controlling an addition amount of the reducing agent so that 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.
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 a reduction step wherein the reduction treatment is performed by controlling an addition amount of the reducing agent so that oxidation-reduction potential of the leachate is 150 mV or less, as a value determined using a silver/silver chloride electrode as a reference electrode (the amount of sulfide…added [is] adjusted so that the oxidation-reduction potential of the resulting leachate is maintained at 150 mV or less; [0032]; copper is left as a residue; [0063]). Takenouchi further teaches that selectivity can be further improved when the reduction potential is controlled to a value of 0 mV or less by adjusting the amount of added reducing agent (sulfide powder) ([0086]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of claim 1 to include a reduction step that comprises subjecting the leachate to a reduction treatment by adding a reducing agent to the leachate to obtain a post-reduction solution and a reduced residue, wherein, in the reduction step, the reduction treatment is performed by controlling an addition amount of the reducing agent so that 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 reduction, as taught by Takenouchi. One of ordinary skill in the art would have been motivated to do so because Takenouchi teaches that such a reduction process improves the selectivity for separating copper from nickel and cobalt ([0086]).
Regarding instant claims 3, modified claim 1 of the ‘560 teaches method of instant claim 1, and claims 6 of the ‘560 application teach the remaining limitations of the instant claim.
This is a provisional nonstatutory double patenting rejection.
Claims 5 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/696,560 in view of Takenouchi (WO 2019/124015 A1), as applied to claim 1, and further in view of Higaki (US 2020/0216929 A1). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) is used in the analysis below.
Regarding claim 5, modified claim 1 of the ‘560 application teaches the method of instant claim 1, but is silent with respect to the amount of sulfurizing agent in the leaching step. However, Higaki teaches a similar leaching in the presence of a sulfurizing agent, and further teach that the leaching treatment is performed in the presence of the sulfurizing agent in an amount of 1 equivalent or more with respect to copper contained in the alloy ([0058]), which contains the instantly claimed range of 1 equivalent or more and 1.25 equivalents or less with respect to copper contained in the alloy.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
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 claim 1 of the ‘560 application to perform the leaching treatment in the presence of the sulfurizing agent in an amount of 1 equivalent or more and 1.25 equivalents or less with respect to the copper contained in the alloy. One would have been motivated to do so because they would be combining prior art elements according to known methods to yield predictable results. MPEP 2143(I)(A).
Regarding claim 6, modified claim 1 of the ‘560 application teaches the method of instant claim 1, but does not specify the pH of the leachate. However, Higaki teaches examples where in 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).
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 claim 1 of the ‘560 application to perform the leaching treatment so that the pH of the obtained leachate is 0.81 or 1.13, which fall in the instantly claimed range of 0.8 or more and 1.6 or less. One would have been motivated to do so because they would be combining prior art elements according to known methods to yield predictable results. MPEP 2143(I)(A).
Claims 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 17/912,998 in view of in view of Takenouchi (WO 2019/124015 A1) and Ishida (US 2013/0269484 A1), as evidenced by OpenStax (Table 17.1, Chemistry 2e, OpenStax, Rice University, 2019. pp 826-828). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) is used in the analysis below.
Regarding instant claim 1, claim 1 of the ‘998 application teaches an alloy processing method comprising a leaching step that comprises subjecting an alloy comprising nickel and/or cobalt and copper to a leaching treatment with an acid solution in the presence of a sulfurizing agent (sulfating agent) to obtain a leachate; and a reduction step that comprises subjecting the leachate to a reduction treatment by adding a reducing agent to the leachate to obtain a post-reduction solution. Claims 5 and 8-12 of the ‘998 application teach the alloy being obtained by melting a waste battery of a lithium ion battery
The claims of the ‘998 application do not teach the reduction treatment being performed by controlling an addition amount of the reducing agent so that 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 or using the alloy to subjected to leaching as the reducing agent.
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 a reduction step wherein the reduction treatment is performed by controlling an addition amount of the reducing agent so that oxidation-reduction potential of the leachate is 150 mV or less, as a value determined using a silver/silver chloride electrode as a reference electrode (the amount of sulfide…added [is] adjusted so that the oxidation-reduction potential of the resulting leachate is maintained at 150 mV or less; [0032]; copper is left as a residue; [0063]). Takenouchi further teaches that selectivity can be further improved when the reduction potential is controlled to a value of 0 mV or less by adjusting the amount of added reducing agent (sulfide powder) ([0086]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of claim 1 to include a reduction step that comprises subjecting the leachate to a reduction treatment by adding a reducing agent to the leachate to obtain a post-reduction solution and a reduced residue, wherein, in the reduction step, the reduction treatment is performed by controlling an addition amount of the reducing agent so that 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 reduction, as taught by Takenouchi. One of ordinary skill in the art would have been motivated to do so because Takenouchi teaches that such a reduction process improves the selectivity for separating copper from nickel and cobalt ([0086]).
Furthermore, Ishida also teaches a leaching method of valuable metals from lithium ion batteries with reduction step (abstract and claim 1), and further teaches that the reducing agent can be a metal (a metal having a high reduction effect is added; [0030]), including the nickel from a nickel-metal hydride battery ([0032]), or other metals such as nickel, iron and zinc ([0114]). In particular, Ishida teaches that metals with a reduction potential lower than that of hydrogen ([0020]) are appropriate, a group which contains nickel and cobalt, as evidenced by OpenStax (Table 17.2). Ishida further teaches that used metal which is to be recycled, such as the nickel from a nickel-metal hydride battery, is preferable ([0032] and [0087]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the alloy to be subjected to the leaching treatment as the reducing agent in the method of modified claim 1, thereby arriving at the invention of instant claim 1. One of ordinary skill would have been motivated to do so because this alloy contains metals (cobalt and/or nickel) that meets the requirement of having a reduction potential less than hydrogen and it also has the preferable quality that it is a used metal to be recycled, as taught by Ishida.
This is a provisional nonstatutory double patenting rejection.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 17/912,998 in view of Takenouchi (WO 2019/124015 A1) and Ishida (US 2013/0269484 A1), as evidenced by OpenStax (Table 17.1, Chemistry 2e, OpenStax, Rice University, 2019. pp 826-828), as applied to claim 1, 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) is used in the analysis below.
Regarding claim 3, modified claim 1 of the ‘998 application teaches the method of instant 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 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 claim 1 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 in the ‘998 application. 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 claim 1 in the same way. MPEP 2143(I)(C).
This is a provisional nonstatutory double patenting rejection.
Claims 5 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 17/912,998 in view of Takenouchi (WO 2019/124015 A1) and Ishida (US 2013/0269484 A1), as evidenced by OpenStax (Table 17.1, Chemistry 2e, OpenStax, Rice University, 2019. pp 826-828), as applied to claim 1, and further in view of Higaki (US 2020/0216929 A1). The previously provided English machine translation of Takenouchi (WO 2019/124015 A1) is used in the analysis below.
Regarding claim 5, modified claim 1 of the ‘998 application teaches the method of instant claim 1, but is silent with respect to the amount of sulfurizing agent in the leaching step. However, Higaki teaches a similar leaching in the presence of a sulfurizing agent, and further teach that the leaching treatment is performed in the presence of the sulfurizing agent in an amount of 1 equivalent or more with respect to copper contained in the alloy ([0058]), which contains the instantly claimed range of 1 equivalent or more and 1.25 equivalents or less with respect to copper contained in the alloy.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
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 claim 1 of the ‘998 application to perform the leaching treatment in the presence of the sulfurizing agent in an amount of 1 equivalent or more and 1.25 equivalents or less with respect to the copper contained in the alloy. One would have been motivated to do so because they would be combining prior art elements according to known methods to yield predictable results. MPEP 2143(I)(A).
Regarding claim 6, modified claim 1 of the ‘998 application teaches the method of instant claim 1, but does not specify the pH of the leachate. However, Higaki teaches examples where in 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).
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 claim 1 of the ‘998 application to perform the leaching treatment so that the pH of the obtained leachate is 0.81 or 1.13, which fall in the instantly claimed range of 0.8 or more and 1.6 or less. One would have been motivated to do so because they would be combining prior art elements according to known methods to yield predictable results. MPEP 2143(I)(A).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 16 February 2026 have been fully considered but they are not persuasive.
Applicant argues, page 3 ¶ 1, that Rohde’s removal of non-dissolved solids after their leaching step indicates that Rohde intended the leaching residue to be discarded rather than reused, and that this would lead one of ordinary skill to the conclusion that Rohde does not teach or suggest using the same alloy that has been subjected to leaching as the reducing agent. However, the rejection of claim 1 does not require or suggest that one use the materials that Rohde leaches in the method of Higaki; as Applicant notes, Rohde leaches oxide materials (p. 2, line 26) and not metallic alloys. Instead, the rejection of claim 1 holds that in view of Rohde’s teachings it would have been obvious to use the materials being leached in the method of Higaki, which are metallic alloys, as the reducing agent. One of ordinary skill would have found such a modification obvious because Rohde teaches using metallic alloys of the same metals as the alloys being treated by Higaki, including alloys obtained from electrode scraps, as reducing agents, and such alloys would already be on hand to one performing the method of Higaki.
Applicant further argues, page 3 ¶ 2, that there is no reason in Higaki to add a reduction step to the process. However, as analyzed above, Higaki does in fact identify the problem that there may be residual copper in the leachate that requires extra steps to remove (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]) and Rohde provides a solution to this identified problem.
Applicant’s argument in ¶ 3 of page 3 is also not persuasive for the same reasons as set forth above: while it is clear that Rohde distinguishes between oxidized electrode scrap and metallic alloy reducing agents, the rejection set forth above does not suggest that one of ordinary would have attempted to use oxidized electrode scrap as a reducing agent. Instead, the teaching of Rohde, when combined with Higaki, would have led one of ordinary skill in the art to the modification wherein the alloys of Higaki are used as reducing agents.
Applicant’s final argument, page 3-4, regarding unexpected results, is also not persuasive because the obtained results are not unexpected. In particular, the instant invention obtains only the same levels of copper (<1 ppm) as those achieved by Rohde (e.g., p. 18, line 40). Additionally, there is no evidence in the cited paragraphs of the specification that compares reduction with the alloy being treated to reduction with other metallic alloys to support the conclusion that using the same alloy as being treated provides any unexpectedly beneficial result.
Conclusion
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735