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 .
Applicant’s election without traverse of claims 1-17 in the reply filed on 9 April 2026 is acknowledged.
Claims 18-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 1-17 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.
Claims not explicitly referenced below are indefinite by dependency.
Claim 1 is indefinite regarding “contacting…with an optional liquid”. The specification provides conflicting guidance as to whether “optional liquid” refers to a particular liquid1 or if “optional liquid” means optionally2 adding liquid. It is unclear what is contacted if the liquid is optional.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, and 17 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US5734988 Alexander which described a method of producing an injection slurry including contacting at least one battery recycling waste stream3 with an optional liquid (abstract4), thereby forming a slurry; screening the slurry (fig 3--84) thereby forming a screened slurry; conditioning (“add viscosifier and weighting material” fig 3 –86; also “the pH can be adjusted” col. 12 line 28) the screened slurry thereby forming a conditioned slurry; and determining whether a threshold injection criterion (col. 12 line 25-28; the threshold condition is pH) of the conditioned slurry has been met, wherein when the threshold injection criterion has been met, an injection slurry is thereby formed.
Regarding claim 2: Alexander (col. 9 line 61-63) described delivery/receiving of waste which meets a reasonably broad interpretation of “collecting5” and –as stated above—the drilling waste of Alexander amounts to battery production waste.
Regarding claim 5: the waste “slurry” (Alexander col. 9 line 61) is inherently solid and liquid.
Regarding claim 6: “sludge”: col. 3 line 44. Also drilling mud (col. 3 line 30) meets a reasonable interpretation of sludge.
Regarding claim 7: col. 3 line 14 “water”, also col. 4 line 16 “salts”
Regarding claim 8: col. 3 line 14 “water”.
Regarding claim 9: col. 14 line 3 also col. 6 line 36
Regarding claim 10: col. 6 lines35-39.
Regarding claim 11: col. 11 lines 62-64
Regarding claim 12: col. 6 lines35-39.
Regarding claims 13 and 14: corrosion inhibitor and/or pH adjuster are met by col. 12 lines 26-29; also viscosifier fig 3.
Regarding claim 15: fig 3 conditioning is at 86 which leads to 76 and fig 2 shows vessel 70 at outlet of 76.
Regarding claim 16: pH at col. 12 lines 23-29; also viscosity, solids content, and solid particle size col. 11 lines 60-65.
Regarding claim 17: col. 6 line 35-37 meets the repeating contacting (i.e. return to slurry), screening (i.e. “pass through the screen” ), conditioning (i.e. grinding), and determining (”so that they pass”)
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.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US5734988 Alexander in view of US6096227 Conaway.
Alexander is silent as to whether the process is continuous (as in claim 3) or batch ( as in claim 4).
Conaway—in the field of treating waste—taught (col. 3 line 15-16; line 64; and col. 4 line 39) that batch or continuous processing is effective.
One of ordinary skill in could have applied the Conaway teaching of continuous processing to the Alexander process using known methods and the results would have been predictable, therefore claim 3 is unpatentable.
One of ordinary skill in could have applied the Conaway teaching of batch processing to the Alexander process using known methods and the results would have been predictable, therefore claim 4 is unpatentable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Janine M KRECK whose telephone number is (571)272-7042. The examiner can normally be reached telework: M-F 0600-1530 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicole Coy can be reached at 5712725405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Janine M Kreck/Primary Examiner, Art Unit 3672
1 optional liquid is selected from the group consisting of water, a battery recycling process stream, and combinations thereof.
2 0014: the battery recycling waste stream may optionally be mixed with liquid to form a slurry
3 Examiner interprets battery recycling waste stream broadly to include drilling waste because a battery precursor production process—disclosed as including plastics [0013]-- would be understood to include drilling waste, and one of ordinary skill in the art would have understood that production of plastics requires drilling for oil or gas.
4 mixing the solid waste in particulate form with liquid
5 The only disclosure of collect[ing] waste is at [0011] “battery recycling waste streams 101 and 103 are collected in a vessel 105”
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