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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 12 April 2024. These drawings are accepted.
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 1-20 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 that an addition amount of the reductant is 1.3 equivalent or less. This limitation renders the claim indefinite. “Equivalent” is recognized by the skilled artisan as an arbitrary unit when referring to chemical reactions (such as an oxidation-reduction reaction). The use of such an arbitrary unit by itself would not render the claim indefinite. However in this case there is no basis to determine what measure of the reductant is an “equivalent.” Is the claim limiting 1.3x the “equivalent” mole amount for a stoichiometric reaction of the entire composition (i.e., iron with iron oxide as reductants, nickel and cobalt oxides and also any other material present)? Is this a molar equivalent of just the recovered values of at least one of Ni and Co? Is the limit instead 1.3x of a weight equivalent? Is the limit instead 1.3x an equivalent of a redox reaction taking into account the specific temperature chosen (which would again be different from a room temperature equivalent)? What assumptions are made about a purity of the oxides that are supplied (i.e., is the 1.3x equivalent determined by a rule of thumb, as a necessary excess due to poor reaction conditions)?
No basis is given to determine what this arbitrary equivalent is, and the metes and bounds of claim 1 cannot be determined from the specification. Each of claims 2-20 depends from claim 1 and is also indefinite for the same reasons.
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.
Claim(s) 1, 3, 5, 6, 10, 15, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2004-285473 A (hereinafter “Sugimori”).
Regarding claim 1, Sugimori teaches to use Fe as a reducing agent in recovering heavy metals such as V, Mo, and Ni from wastes (see Overview). Sugimori teaches recovering wastes such as boiler ash, desulfurization catalyst, boiler sludge, nickel-based sludge, and ammonium metavanadate ([0002]). Sugimori teaches that Ni containing wastes are provided (see [0034]-[0041]). Sugimori teaches that the material is roasted and the resulting oxide are reduced by addition of Fe (see [0041]).
Sugimori teaches that the amount of Fe that is used is substantially equal to the equivalent amount needed to reduce the oxides (see [0041]). Thus Sugimori teaches an amount of 1.3 equivalent or less.
Regarding claim 3, Sugimori teaches adding Fe to the material ([0041]), meeting the limitation. Sugimori teaches that the Fe Oxide may be generated by the process (see [0042]).
Regarding claims 5, and 10 Sugimori teaches a reaction temperature of 1700 C (see EXAMPLES).
Regarding claim 6 and 15 and 17, Sugimori teaches that a Fe-Mo-Ni alloy is generated (see [0043]-[0045] and EXAMPLES).
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) 2, 4, 7-14, 16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sugimori as applied to claim 1 above, and further in view of EP 3,269,832 A1 (hereinafter “Xiao”).
Regarding claim 2 Sugimori does not teach wherein the recovered values are from scrap of Li-ion batteries. Sugimori teaches recovering wastes such as boiler ash, desulfurization catalyst, boiler sludge, nickel-based sludge, and ammonium metavanadate ([0002]).
Xiao teaches a method of recycling and processing battery wastes (see title). Xiao teaches that the waste is lI-ion batterie (see BACKGROUND). Xiao teaches that the waste includes heavy metal values (see [0002]). Xiao teaches that the battery includes Fe and Ni values (see SUMMARY).
It would have been an obvious matter to one of ordinary skill in the art to have substituted the heavy-metal containing waste streams from the p[process of Sugimori with the Li ion battery wastes of Xiao because Xiao teaches that these contain heavy metal values such as Ni (SUMMARY).
Regarding claim 4 and 8, Sugimori does not teach wherein the reducing agent is scrap, dust, etc. Sugimori teaches a lime flux is added (EXAMPLES).
Xiao teaches that in order to reduce the waste material to metal values, a slagging agent is provided including smelting slag which includes iron values (see EXAMPLE 4). The smelting slag meets the limitation of a waste. It would have been an obvious matter to one of ordinary skill in the art to have practiced the method of Sugimori, and to have further added a smelting slag as taught by Xiao, because Xiao teaches that this is effective for the smelting. The combination of known elements to yield predictable results would have been obvious to the skilled artisan.
Regarding claim 7, Sugimori teaches adding Fe to the material ([0041]), meeting the limitation. Sugimori teaches that the Fe Oxide may be generated by the process (see [0042]).
Regarding claim 9-13, Sugimori teaches a reaction temperature of 1700 C (see EXAMPLES).
Regarding claims 14, 16, and 18-20, Sugimori teaches that a Fe-Mo-Ni alloy is generated (see [0043]-[0045] and EXAMPLES).
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.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of copending Application No. 18/874826 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application includes a method of recovering Ni, Co, or Li, and uses an unnamed reductant in claim 1, but claim 5-6 recite that the reductant is iron or iron oxide as claimed. While applicant’s copending claims do not specify an amount of reductant is 1.3 equivalent or less, this is considered indefinite (see discussion above). Further the mere concentration of reducing agent, by itself, is not considered to patentably distinguish. MPEP 2144.05. The skilled artisan would not have merely wasted reducing agent, but would have sought an effective amount to be added by a routine investigation of the reducing of the oxides in the copending claim. Applicant’s instant dependent claims correspond to the copending claims. For example instant claim 2 corresponds to copending claim 8, instant claim 3 corresponds to copending claim 6, instant claim 4 corresponds to copending claim 7, and so on.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/875422 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application includes a method of recovering an element that is Ni, Co, or Mn, and uses an reductant of Fe or oxide, with overlapping equivalent amount in claim 1, but copending claim 9 recites that the metal recovered includes Ni or Co as instantly claimed. Applicant’s instant dependent claims correspond to the copending claims. For example instant claim 2 corresponds to copending claim 10, instant claim 3 corresponds to copending claim 7, instant claim 4 corresponds to copending claim 8, and so on.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20100107817 A1 teaches a method of recovering metal value including reducing oxides along with an iron melt.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759
Prosecution Insights