DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
2. A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
3. The abstract of the disclosure is objected to because of its length (232 words). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The abstract is also objected to for the random word in the second to last line of “des” which should be deleted.
Appropriate correction is required.
4. The disclosure is objected to because of the following informalities:
Throughout the specification as filed:
the numbers and “mbar” should be provided with spacing between them
the numbers and °C should be provided with a space between them
“0,01mbar” should be corrected to 0.01 mbar wherever it occurs
Page 10, Line 16 should correct “tom” to “from”
Page 11, line 8: a verb is missing (correction can be made by adding “is” before “…“triggered” again…”
Page 12, line 2: “is reduces” should be corrected to “is reduced”
Page 12, line 5: “is brough” should be corrected to “is brought”
Page 12, line 24: “np should be corrected to “no:
Page 14, line 13: “an discharge” should be corrected to “a discharge”
Page 17, last line: “of” needs to be added before “an appropriately”
Page 20, line 17: the colon is inappropriate and should be a period.
In view of the above issues found, Applicant should additionally thoroughly review the specification for appropriate grammar, punctuation, subject-verb agreement, etc. and make the necessary corrections needed in addition to those outlined above wherever they occur.
Appropriate correction is required.
Claim Objections
5. Claims 23, 25, 27, 29, 30, 36, 37 are objected to because of the following informalities:
Claim 23 and claim 30: a comma needs to be added in line 2 after “the drying container” for appropriate puncuation
Claims 25 and 27: a space needs to be added between the number presented and “mbar” wherever it occurs
Claims 29 and 36: a space needs added between the number presetned and “°C” wherever it occurs
Claim 30, line 1: “increasing” should be changed to “raising”” to match the nomenclature of the parent claim (i.e., to properly invoke antecedent basis using the same terms for clarity)
Claim 30, line 3: “reduced” should be changed to “lowered” to match the nomenclature of the parent claim (i.e., to properly invoke antecedent basis using the same terms for clarity)
Claim 36, page 2, line 2: “(TZ)” is unnecessary and should be deleted from the claim
Claim 36 utilizes inappropriate punctuation starting in line 14. This can be corrected as shown:
“…wherein the controller device is further configured to:
-[[to]] set [limitations recited], and
-[to]] set [limitations recited].
Claim 37, line 2, “an” should be “a” prior to “discharge port”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
6. 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.
7. Claim 21, and thus dependent claims 22-35; claim 25, and thus dependent claims 27-28; claim 26, and thus dependent claims 27-28; claim 27; claim 29, and thus dependent claims 30-31; claim 30; claim 31; claim 32; claim 33, and thus dependent claim 34; claim 34; claim 36, and thus dependent claims 37-40; claim 37; 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 36 incorporates the subject matter of claim 21 and is thus addressed concurrently therewith.
A) Claim 21, lines 1-2 recites, “A method for preparing batteries to be recylced, in particular, Li-ion batteries, having…” The phrase, “in particular, Li-ion batteries,” does or does not make clear whether Li-ion batteries are required to be the provided type of battery. Accordingly the metes and bounds of the claim are unclear rendering the claim indefinite.
B) Claim 21 is replete with a variety of terms that fail to properly invoke proper antecedent basis to one another rendering the metes and bounds of the claim unclear. Emphasis is added to the term/phrases at issue:
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The claim first requires “A method for preparing batteries (plural) to be recycled (‘ine 1). The claim then recites “providing at least one battery” (allowing for the option of a singular battery only) such that it is not clear if line 3 limitation requires correction to match the preamble (i.e., to be drawn to batteries (plural)), or if the preamble requires correction to “A method for preparing at least one battery to be recycled…”
Line 4 then recites “comminutating the provided battery.” There is insufficient antecedent basis for this limitation. This should be “comminuting the provided at least one battery…” The same is true in line 5.
Claim 36 then creates additional confusion and issues of being indefinite in lines 3-5 by reciting “for processing provided batteries” and “for thermal pre-treatment of the provided batteries…”
C) Claim 21, lines 14-15 recites in part, “…such that both the low-boiling solvents as well as the high-boiling solvents are…” There is insufficient antecedent basis for either of these limitations.
D) Claim 25 recites in part, “in particular, between 30mbar and 100 mbar, preferably 30 mbar…” The entire phrase does or does not make clear whether the range or preferably value is or is not required to meet the claim. Accordingly the metes and bounds of the claim are unclear rendering the claim indefinite (see MPEP 2173.05(d)).
E) Claims 25, 26, 27, 29, 31, 33 each utilize one or both of “for example” or “preferably” with limitations tehreafter. MPEP 2173.05(d):
Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made.
Applicant should remove the indefinite language from the claim and clearly set forth the metes and bounds of the required features necessary to meet the claim.
F) Claim 30 recites, “where up to that point” which is improper claim language that does not properly invoke antecedent basis to the step or limtiation being referenced.
G) Claim 31 recites in part “wherein the pressure gradient is preferably smaller in relation to the temperature gradient.” It is not clear how one quantifies a pressure gradient “in relation to” a temperature gradient such that one is considered smaller or larger than the other given they temperature and pressure are not related components and the claim does not define what units are being utilized to make this type of comparative feature. Furthermore, are the respective gradients being measured relative to the units themselves (i.e., a percentage thereof?) or just as the pure mathematic moving that the pressure and/or temperature is increasing/decreasing by? A comparsion of a pressure gradient (in pascals for example) to a temperature gradient moving in °C versus Kelvin versus °F could have opposite findings depending on how these features are being compared. Accordingly, the metes and bounds of the claim are unclear rendering the claim indefinite.
H) Claim 32 recites in line 2 “where, to that end,” which is unclear, especially given the following steps do not further recite any features of the discontinuity of the thermal treatment recited prior to this quoted language.
I) As noted in section D above, claim 33 utilizes “preferably” in combination with a step of “using a mixing device.” Claim 34 then requires the mixing device which appears to perhaps (?) be optional from claim 33. Accordingly, claim 34 is held indefinite.
J) Claim 36 (page 2), line 11 recites “to control at least one heater…” It is unclear from the claim whether this is a failure to invoke proper antecedent basis to the already recited “at least one heater” in line 5, or if this is a different entity. It appears the issue is the former and this should be “to control the at least one heater..”
K) Claim 37 recites “the underside of the drying container” in line 4. There is insufficient antecedent basis for this limtiation.
L) Claim 37 recites “the vertical direction” in line 5. There is insufficient antecedent basis for this limtiation.
Appropriate correction is required.
8. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 22 adds nothing further to the parent claim. The comminuted material must be thermally pre-treated prior to the mechanical processing given the mechanically processing step recites “mechanically processing the thermally treated comminuted material..” The thermal treatment step occurs and requires “transferring the comminuted material into a drying container and thermally treating the comminuted material…” There is no option in claim 21 for the thermal pre-treatment step to occur after the mechanical processing step. The remainder of the limitations are found in claim 21. Accordingly, the claim 22 recites what is implicit from claim 21 and add nothing further to the claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation
9. The instant application claims utilize the term “low-boiling solvents” and “high-boiling solvents.” Applicant defines the meaning of these terms at P23 (corresponding to the PGPUB of the instant application). Accordingingly, the terms are provided a standard in the specification for delineating the meaning of the terms “low” and “high” in the context of the claims such that the terms are not considered indefinite. MPEP 2173.05(b): the use of terms of degree are not indefinite when the specification provides some standard allowing for one of ordinary skill in the art to understand the scope of the term.
Claim Examination – Compact Prosecution
10. MPEP § 2173.06 notes that when there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. As detailed above, there is considerable confusion and uncertainty as to the scope and proper interpretation of multiple limitations presented within the independent claims.
For compact prosecution, it is noted that the Examiner agrees with some of the findings of the German Patent Office in the examination of the corresponding European application, EP 22843116 (see Global Dossier file), which was allowed following the introduction of the claim amendments filed 12/8/20231.
As best understood by the Examiner with respect to the claims as presently filed, Hanisch (US 2019/0260101) teaches a method and processing plant for carying out the method that includes a method for treatuing used lithium batteries 16.2 (P18, 54, 98), the used lithium batteries 16.2 being comminuted in a communiting unit 18 (Fig. 1; P98), wherein at least 50% of the heat required for vaporisation by means of mechanical energy is introduced into the comminuted material by means of a comminution unit and/or agitator wherein the maximum temperature, wherein 50% of the heat required for vaporisation would be less than 100 °C with the entire process of Hanish limited to be being below 80 °C (i.e., “thermally pre-treated in a comminuting chamber”) (P23, 54) transferring the comminuted material 24 to a drying device 26, wherein the drying occurs under vacuum and at a maximum temperature of 80 °C until an electroltye content in the communited material is so low than an electrochemical reaction is impossible (P44; note the removal of porpylene carbonate which is a “high” boiliing point solvent – P117), the electrolyte discharged out of the drying device 26 via the vacuum installation 29 (P101, 113-121) during the thermal treatment of the comminuted material 24, and mechanical processing of the thermally treated comminuted material (P108-112, 121).
Additionally, Sojka et al. (US 2021/0184283) teaches a method for breaking down electrochemical energy storage devices including a thermal treatment step where the energy storage devices are heated to 160-200 °C under negative pressure until all electrolyte evaporates (entire disclosure). Sojka does not provide a comminuting/thermal pre-treatment step; however, such a step is taught by Hanisch (US 2019/0260101) as detailed above.
The claims were amended in the counter part European application to include the features presented therein including what appears to be claim 29, and the features of claims 30 or 31. Claim 31 is indefinite for the reasons highlighted above and not considered allowable. Claim 30, however, defines under what conditions the actual ambient pressure is lowered/reduced relative to the raising/increasing of the actual ambient temperature occurring during the thermal treatment step. There is no teaching, suggestion, and/or motivation in the prior art to arrive at such a feature. Sojka et al. (US 2021/0184283) would be considered the closest prior art in this regard and as demonstrated in Fig. 2 of Soja, within step one (P1), the pressure is reduced simultaneoulsy with the increase of the pressure starting at time 0.
Accordingly, in the context of a defintive claim 1 combined with defintive claims 29 and 30, the Examiner finds this would provide a novel and inventive step (i.e., allowable subject matter) that optimizes the transfer of energy and heat to the comminuted material given a reduced pressure has a slower effect on the transfer heat. Thus, the comminuted material is brought to the final ambient temperature during the thermal treatment step in a shorter amount of time which is an advantageous result achieved by the limtiation not taught in the prior art. The same would be true in terms of allowability true for similar amendments made to claim 36 in terms of a controller configured to achieve the features of claim 30 (supported at P68 of the specification), with the features of claim 29 also added thereto.
Conclusion
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BILLIET whose telephone number is (571)270-7867. The examiner can normally be reached Monday-Friday 9am - 6pm CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula C Tavares-Crockett can be reached at (571) 272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA J BILLIET/Primary Examiner, Art Unit 1729
1 It is noted that the amendments as filed are in the German language within the Global Dossier file, wherein using translation tools, it appears the limtiations correpond to claim 1 being combined with claims 29, and either the limitation of claim 30 or 31 as presently filed. Claim 31 is considered highly indefinite and not allowable given the indefinite issues outlined in this Office Action. Claims 29 and 30 require correction in view of the indefinite isseus outlined above, but appear to contain allowable subject matter when combined together with the features of claim 1.
