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 .
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 5 is 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.
In claim 5, ‘derived’ is unclear as to what is meant and when the implied derivation step was performed and what that step was.
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.
Claim Rejections - 35 USC § 103
Claims 1-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over CN 111276767B.
The machine translation provided is used.
CN ‘67 teaches, especially on pg. 2, pulverizing battery materials, adding a calcium-containing powder, mixing and pressing and then reducing the mass and recovering Li.
This differs in not requiring the reduction, rather teaching it as an option- thus rendering it obvious.
For claim 2, treating a ‘dead’ battery is obvious to recover valuable material from an otherwise useless object.
For claim 3, the roasting of step 2 removes liquids so the pulverization is on a dried material.
For claim 4, removing the casing is taught, leaving only the remaining active chemicals; see pg. 2, and in any event is obvious to remove harmful and valuable materials.
For claim 5, (as understood) a Ca compound is added and reactions occur.
For claim 6, using a battery having the listed components is obvious to recover valuable materials therefrom.
For claim 7, CaO is taught on pg. 2.
For claim 8, pg. 8 teaches that the Ca material removes F-containing off-gases, thus rendering the claimed ratio obvious to achieve this goal.
For claim 9, the overlapping temperatures of pg. 3 (600-900) render the claims obvious.
For claim 11, the overlapping temperatures of pg. 3 (600-900) render the claims obvious.
Claims 4-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over CN ‘67 as applied to claim 1 above, and further in view of Dolotko et al. 20200318219.
CN ’67 does not explicitly teach the extraneous battery parts (claims 4-6), however Dolotko does in paras 35, 48, 90 and 110 in a LI recovery scheme. Using batteries having these parts is obvious to recover valuable materials. It is noted that graphite is taught as a material, thus it is present during processing (claim 10).
Claims 12, 13 are rejected under 35 U.S.C. 103 as being unpatentable over CN ‘67 as applied to claim 1 above, and further in view of Boryta et al. 20040005267.
CN ’67 does not teach the claimed LI recovery, however Boryta does in fig. 1. Using in the process of CN ’67 is obvious to recover a valuable product, the efficiency (claim 13) is obvious for economic optimization.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over CN ‘67 as applied to claim 1 above, and further in view of Cochran et al. 4735654.
CN ’67 does not explicitly teach carbon as a reducing material, but (in so far as not inherent in view of the teachings of Dolotko, above), Cochran does in fig 2 and col. 5 lines 25-30 as reducing agent with Al for Li recovery (col. 10 lines 30-35). Using it in the process of CN’67 with the Al used by CN ’67 is obvious to provide the reducing environment option of CN ’67.
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.
Double Patenting
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/549348 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common, substantially the same, subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736
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