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 Status
Claims 1-4 have been amended. Claims 1-9 are currently pending, however claims 7-9 were previously withdrawn from consideration
Claim Rejections - 35 USC § 103
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(s) 1-2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. (Pretreatment options for the recycling of spent lithium-ion batteries: A comprehensive review) in view of Chen et al. (CN-110482511-A, Espacenet translation provided for reference).
There are several instances of product-by-process limitations within this claim set. Applicant is reminded that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Therefore, specific types of thermal heating, separation, extraction, etc. provide no patentability on product claims. While several of these specific process types have been examined below, they will not aid in the overall patentability of the application. As the claim set appears to be directed more towards a pretreatment and subsequent process of recovering metals within a lithium battery, it is the examiners recommendation that the claims be re-written as process claims in order to place patentability on the distinct process types employed by the applicant’s invention.
Similarly, the claim set includes several instances of intended use. Applicant is reminded that “a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.” (MPEP [7.37.09]). Therefore, so long as the device of the prior art is capable of performing the intended use, such as a furnace capable of removing organic components such as binders, it will read on the claimed “device for organic component removal,” as applicant’s specification details a pyrolysis furnace which acts as such a device. As the claim set appears to be directed more towards a pretreatment and subsequent process of recovering metals within a lithium battery, it is the examiners recommendation that the claims be re-written as process claims in order to place patentability on the distinct intended use of the processes employed by the applicant’s invention.
With respect to claim 1, Yu discloses an apparatus for separating and recycling metal elements in cathode materials of lithium batteries ([abstract]), comprising
a device for pretreating lithium batteries, configured to obtain a mixture of powders containing positive-electrode materials (Section 4. Separation of cathode material and current collector),
wherein the device for pretreating lithium batteries comprises a device of discharging, configured to discharge the lithium batteries (Section 2.2.1-2.2.2: Discharge by solid electrical conductors and Discharge by aqueous solutions), and a device of disassembling, configured to disassemble the lithium batteries (Section 3.1.: Manual disassembly),
wherein the device for pretreating lithium batteries comprises a device for organic component removal, configured to remove binders of the lithium batteries (Section 2.2.4.: Thermal deactivation details organic components (electrolyte, plastics, binders) are removed entirely by pyrolysis); and
a device of acid leaching configured to obtain leachate (acid leaching solution, (Fig. 7).
Additionally, Yu discloses specific examples where acid leaching can be employed specifically with lithium iron phosphate batteries or ternary lithium batteries (Table 7).
Yu does not disclose that if a to-be-recycled lithium battery contain a lithium iron phosphate battery, the apparatus further comprises a heating furnace for heating solid products, obtained after acid leaching and solid-liquid filtration, in an oxygen-containing atmosphere.
Chen discloses lithium iron phosphate positive electrode active material recovered via acid leaching forming solid products (filtered residue A) and liquid products (filtrate A)([0011]) and teaches the recovered material is then subject to roasting (a metallurgical process involving heating in oxygen) ([0011]). Chen further teaches the roasting occurs in order to removed the crystal water in the solid products (residue A) ([0026]).
It would have been obvious to one having ordinary skill in the art at the time the application was effectively filed that if the battery disclosed by Yu was a lithium iron phosphate battery, that after leaching the filtered solids should be subjected to roasting as taught by Chen n order to filter out crystalized water.
With respect to claim 2, Yu discloses the device for pretreating includes a crusher (3.2.3. Particle size classification), a device of (magnetic) separation (3.2.3. Particle size classification) and a device of winnowing (air separation) (3.2.3. Particle size classification).
With respect to claim 6, Yu discloses the device for pretreating includes a device of physical sorting (2.1. Battery sorting).
The limitation “which is able to separate metal sheets of current collectors from powders,” is an example of a product by process limitation. Applicant is reminded that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. in view of Chen at al. as applied to claim 1 above in view of Xue et al. (CN109604024A).
With respect to claim 3, Yu discloses the device for pretreating includes a pyrolysis furnace and a vacuum (vacuum pyrolysis) (Fig. 7), but does not disclose the gas outlet of the furnace is connected to an inlet of a gas-solid filtration device (cyclone) ([0047]).
Xue discloses the use of a pyrolysis furnace to separate the binder material of a battery ([0011]) and teaches that an outlet of the pyrolysis furnace is connected to an inlet of a gas-solid filtration device (bag filter) ([0014]). Xue further teaches that the gas-solid filtration device is used to collect the obtained waste material ([0043]).
It would have been obvious to one having ordinary skill in the art at the time that the application was effectively filed to connect an outlet of the pyrolysis furnace disclosed by Yu to an in let of a gas-solid filtration device as taught by Xue in order to collect the obtained waste material.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. in view of Chen at al. and Xue et al. as applied to claim 3 above in view of Randolph et al. (U.S. 5534657).
With respect to claim 4, modified Yu discloses the furnace and gas-solid filtration device of the pretreatment (see above rejection of claim 3), but does not disclose what material comprises the inner wall of each device or if it prevent against corrosion in the presence of HF or PF5.
Randolph discloses the use of a metal in the presence of HF and teaches that the metal should include a nickel alloy (Col 20, L 3-4). Randolph further teaches that the nickel alloy is desirable as it is a corrosion resistant alloy in the presence of HF (Col 20, L 2-4).
It would have been obvious to one having ordinary skill in the art at the time that the application was effectively filed that the inner wall of the furnace and filtration device disclosed by modified Yu should be composed of a metal, like a nickel alloy, which does not corrode easily in the presence of HF.
Applicant is reminded that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). In this instance, it has already been recorded in the art that nickel alloys are adequate metals that resist corrosion in the presence of acids, as presented above. Therefore, selecting materials for parts of machinery (furnaces and filtration devices) that may encounter HF or PF5 to be constructed of a nickel alloy in order to prevent corrosion is an obvious modification.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. in view of Chen at al. and Xue et al. as applied to claim 3 above in view of Ando et al. (U.S. 5534657).
With respect to claim 5, modified Yu discloses the gas-solid filtration (bag filter) (see rejection of claim 3), but does not disclose that a furnace is connection the gas outlet of the gas-solid filtration.
Ando discloses a gas-solid filtration step (11 - cyclone) for use within a metal recover process for lithium batteries (Fig. 1, [0011]) and teaches the gas outlet for the gas-solid filtration (11) is connected to a heating furnace (13 – combustion chamber) (Fig. 1). Ando further teaches that the resultant gas from the heating furnace can then be sent through a bag filter and discharged or sent back through the pretreatment process, while the solid residue is collected (Fig. 1, [0031]).
It would have been obvious to one having ordinary skill in the art at the time that the application was effectively filed to include a heating furnace as taught by Ando after the gas-solid filtration device disclosed by modified Yu in order to continue the treatment of the gas that leaves the filtration device.
Response to Arguments
Applicant’s arguments, see pages 5-8 of response, filed 07/29/2025, with respect to the claims 1-6 have been fully considered and are persuasive. The claim objections and 35 U.S.C. 112(b) rejections of claims 1-6 have been withdrawn in light of the amendment.
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. New primary art of Yu et al. has been introduced to read on claims 1-6.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JORDAN E BERRESFORD whose telephone number is (571)272-0641. The examiner can normally be reached M-F 8:00 am - 5:00 pm 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, Barbara Gilliam can be reached at (572)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.E.B./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727