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.
Priority
Applicant’s submission of translations of the certified copies of the foreign priority documents (JP 2021-197734, JP 2021-197733, and JP 2022-188423) is acknowledged. These documents may be relied upon to overcome the prior art rejections in this application.
Information Disclosure Statements
The Information Disclosure Statement filed on 6 October 2025 has been received and considered by the Examiner.
Claim Amendments
Applicant’s amendment to claim 1 has overcome the claim objection set forth in the prior Office action.
Response to Arguments
Applicant's arguments filed 23 December 2025 have been fully considered but they are not persuasive.
Applicant argues on pages 5-6 of the reply that the applied Takenouchi reference (WO 2021/166755 A1) does not constitute prior art. In particular, Applicant states, p. 5 ¶ 2, that the WO ’755 reference does not name another inventor. This is not the case. The WO ‘755 application lists as an inventor Keiji Kudou, a person who is not named as an inventor on the instant application. As a result, the previously applied Takenouchi reference would constitute prior art under 35 USC 102(a)(1) and 35 USC 102(a)(2).
However, Applicant has now provided a submission in this file, page 5 ¶ 4 of the reply filed 23 December 2025, that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as WO ’755 not later than the effective filing date of the claimed invention. Therefore, the subject matter disclosed in the WO ’755 reference is excepted as prior art under 35 U.S.C. 102(a)(2).
However, the qualification of WO ’755 as prior art under 35 U.S.C. 102(a)(1) is still applicable and cannot be excepted under 35 U.S.C. 102(b)(2)(C).
Applicant may overcome the qualification of WO ’755 as prior art under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore, not prior art as set forth in 35 U.S.C. 102(b)(1)(A). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
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, 4, 7, and 9 are rejected under 35 U.S.C. 103 as being obvious over Takenouchi et al. (WO 2021166755 A1; published 2021-08-26; PCT filed 2021-02-10). The provided English machine translation of WO2021166755 A1 is used in the analysis below.
Regarding claim 1, WO ‘755 teaches an alloy treatment method for obtaining a solution containing nickel and/or cobalt from an alloy containing nickel and/or cobalt and copper ([0031]), the method comprising: a leaching step of adding an acid solution to the alloy and performing a leaching treatment in a state where a sulfurizing agent coexists ([0031]), thereby obtaining a leachate comprising nickel and/or cobalt and a leached residue containing cupper sulfide formed by sulfurization of copper with the sulfurizing agent ([0062]), wherein in the leaching step, a divalent copper ion source is added ([0097]), and sulfurization of the divalent copper ions by the sulfurizing agent is controlled by maintaining an oxidation-reduction potential of the reaction solution ([0104]) in the range of 380 mV or more and 430 mV or less in terms of a value using a silver/silver chloride electrode as a reference electrode ([0108]), which falls in the instantly claimed range of 50 mV or more. WO ‘755 also teaches the copper concentration in a reaction solution (leaching solution) being 5 g/L ([0125]), which falls in the instantly claimed ranges of 0.5 g/L or more and 15 g/L or less.
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to maintain the concentration of copper in the claimed range of 0.5g/L or more and 15 g/L or less. One of ordinary skill would have been motivated to do so because WO’755 teaches copper catalyzes the leaching reaction ([0097]) but that even at 5g/L low concentrations of copper can be achieved in the final solution ([0125]). It would have also been obvious to maintain the oxidation-reduction potential after the divalent copper ions are added because WO ‘755 teaches maintaining the potential in the leaching solution and that divalent copper ions can be included in the leaching solution.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claim 4, WO ‘755 teaches the method of claim 1, where WO ‘755 further teaches a cementation step of adding a reducing agent and a sulfurizing agent to the leachate obtained in the leaching step and performing a decopperization treatment of sulfurizing at least copper contained in the leachate to obtain a post-decopperization solution and a decopperization residue (by subjecting the leachate obtained through the leaching step to a reduction treatment using a reducing agent, copper can be selectively separated while maintaining a high leaching rate of nickel and/or cobalt, [0100]; the reducing agents described in [0102] would also serve as sulfurizing agents).
Regarding claim 7, WO ‘755 teaches the method of claim 1, where the alloy includes an alloy obtained by melting a discarded lithium ion battery ([0050]).
Regarding claim 9, WO ‘755 teaches the method of claim 4, where the alloy includes an alloy obtained by melting a discarded lithium ion battery ([0050]).
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being obvious over Takenouchi et al. (WO 2021166755 A1; published 2021-08-26; PCT filed 2021-02-10), as applied to claim 1, and further in view of Ishida et al. (US 2013/0269484 A1), or alternatively, further in view of Nakon (US 20150368755 A1). The provided English machine translation of WO2021166755 A1 is used in the analysis below.
Regarding claim 3, WO ‘755 teaches the method of claim 1, where the oxidation reduction potential is controlled by addition of reducing agents ([0104]), but does not specifically teach maintaining the oxidation-reduction potential at 50 mV or more by controlling addition of the sulfurizing agent.
However, Ishida teaches a similar process of separating metals in lithium ion battery waste with a sulfurization step and having control of the oxidation-reduction potential ([0104] and [0107]). Ishida further teaches that the sulfurizing agent can cause a change in the reduction potential of the sulfurizing reaction (a sulfurizing agent is more preferably added to the extent that any further addition of the sulfurizing agent does not cause a variation of ORP in a reaction solution; [0107]).
Furthermore, Nakon teaches that sulfide salts and hydrogen sulfide can serve as reducing agents in hydrometallurgical processes ([0033]).
Therefore, it would have been obvious to one of ordinary skill in the art to maintaining the oxidation-reduction potential in the method of WO ‘755 by controlling addition of the sulfurizing agent, as taught by Nakon and Ishida. One of ordinary skill would have been motivated to do so because WO ‘755 teaches that it is preferable to control the oxidation-reduction potential using a reducing agent and Ishida teaches that the sulfurizing agent itself causes changes in reduction potential, the effect that WO ‘755 was after. Alternatively, one of ordinary skill would have been motivated to use sulfide salts, which include sodium hydrosulfide, a sulfurizing agent used in the method of WO ‘755 ([0071]), in the method of WO ‘755 because Nakon teaches that these reagents make suitable reducing agents in hydrometallurgical processes.
Regarding claim 8, modified WO ‘755 teaches the method of claim 3 where WO ‘755 teaches the alloy including an alloy obtained by melting a discarded lithium ion battery ([0050]).
Claims 5 and 10 are rejected under 35 U.S.C. 103 as being obvious over Takenouchi et al. (WO 2021166755 A1; published 2021-08-26; PCT filed 2021-02-10), as applied to claim 1, and further in view of Blanco et al. (US 4,093,526). The provided English machine translation of WO2021166755 A1 is used in the analysis below.
Regarding claim 5, WO ‘755 teaches the method of claim 1, but does not teach a part of the leachate obtained in the leaching step being fed back to the leaching step as the acid solution.
However, Blanco also teaches a hydrometallurgical process for refining and separating nickel-copper mixtures (abstract) and further teaches the recycling of a sulfuric acid solution and it being fed back into a leaching step (a spent copper-sulfuric acid solution which is recycled back into the system, for example, to one or more of the various leaching stages; column 7, lines 29-31 and Figs. 1-2).
Therefore, it would have been obvious to one of ordinary skill in the art to recycle part of the leachate obtained in the leaching step by feeding it back into the leaching step as the acid solution. One of ordinary skill in the art would have been motivated to do so because Blanco teaches that part of the leachate solution can be reused in earlier leaching steps, and because doing so would reduce waste an reduce costs by providing a source of acid for the leaching step that would otherwise be waste material.
Regarding claim 10, modified WO ‘755 teaches the method of claim 5 where WO ‘755 teaches the alloy including an alloy obtained by melting a discarded lithium ion battery ([0050]).
Claims 6 and 11 are rejected under 35 U.S.C. 103 as being obvious over Takenouchi et al. (WO 2021166755 A1; published 2021-08-26; PCT filed 2021-02-10), as applied to claims 1 and 4, and further in view of Kudo et al. (US 2003/0066389 A1). The provided English machine translation of WO2021166755 A1 is used in the analysis below.
Regarding claim 6, WO ‘755 teaches the method of claim 4, but does not teach copper contained in the decopperization residue obtained in the cementation step being added as the divalent copper ion source to be added in the leaching step.
However, Kudo teaches a method of refining nickel ore in which copper and nickel are separated by a method comprising a cementation step and control of oxidation reduction potential (abstract, Fig. 1 and Fig. 2) in which copper ions are included in the leaching step itself (abstract) and these copper ions are recovered from the decopperization residue obtained from a cementation step (leaching solution which contains copper is used cyclically as the cementation solution; [0028] and Fig. 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use in the method of WO ‘755 copper contained in the decopperization residue obtained in the cementation step as the divalent copper ion source to be added in the leaching step, as taught by Kudo. One of ordinary skill in the art would have been motivated to do so because Kudo teaches that this copper can be reused in an analogous process and doing so would represent a recycling process that reduces costs by not requiring an extra source of supplied copper for each leaching performed. It is further noted that in the method of WO ‘755 the copper in the cementation solution is the same as the copper in the leaching solution.
Regarding claim 11, modified WO ‘755 teaches the method of claim 6, where the alloy includes an alloy obtained by melting a discarded lithium ion battery ([0050]).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735