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 .
Response to Arguments
Applicant’s arguments, see Page 1, lines 13-24 of Remarks, filed August 20th, 2026, with respect to the rejection of claims 5 and 9 under 35 U.S.C. 112(b)/2nd Paragraph have been fully considered and are persuasive. Due to the amendment to claim 5 and cancelation of claim 9, the rejection has been withdrawn.
Applicant’s arguments, see Page 2, line 1 – Page 3, line 13 of Remarks, filed August 20th, 2026, with respect to the rejections of claims 1, 10-11, 13, 15-16, and 18 under 35 U.S.C. 102(a)(1) and of claims 1-3, 6, 8-11, 16, and 18 under 35 U.S.C. 103 have been fully considered and are persuasive. Due to amendments to the claims, the rejections have been withdrawn. However, upon further consideration, new grounds of rejection are made in view of the prior art over the amended claims.
Applicant states on Page 3, lines 14-19 of Remarks, filed August 20th, 2026, that a terminal disclaimer over U.S. Patent No. 12,040,463 is forthcoming. As of the time of writing, no terminal disclaimer has been received for the instant application — the nonstatutory double patenting rejection is maintained.
Claim Rejections - 35 USC § 102
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 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.
Claims 1, 3, 7-8, 10-11, 13, 15-16, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bao (CN 112048615 A, 2020) (the translation provided with the attached original document is referenced below).
Regarding claim 1, Bao teaches a method for recycling lithium from Li-ion batteries (Bao, Example 5, [0061]-[0065], Table 1 of original document), comprising:
combining an aqueous leach solution and a granular mass including a charge material from a Li-ion battery recycling stream (Bao, [0062]-[0063], ternary 811 positive electrode powder), wherein the aqueous leach solution comprises a quantity of water and a quantity of sulfuric acid as a leach acid (Bao, [0063]), wherein the granular mass comprises 80 mol% nickel (Bao, [0062], 811 positive electrode);
heating the combined granular mass and aqueous leach solution to form a leach mixture (Bao, [0063], 75°C for 4 hours); and
recovering lithium from the leach mixture (Bao, [0064], lithium sulfate), the recovered lithium comprising 12.9 ppm nickel (Bao, Table 1 of original document, “实施例5”), which is less than 10% nickel.
Regarding claim 3, Bao teaches the method of claim 1, as discussed above, wherein the quantity of the leach acid is based on a molar quantity of lithium in the granular mass (Bao, [0023], “Preferably, in step (2): the mass concentration of the sulfuric acid solution is 150-300 g/L, and the solid-liquid mass ratio is 5:1-15:1.” Because the molar amount of Li in the mass is known (Bao, [0062], “ternary 811 positive electrode powder”, the quantity of the leach acid can be related to a molar quantity of lithium in the granular mass).
Regarding claim 7, Bao teaches the method of claim 1, as discussed above, wherein the leach acid is sulfuric acid (Bao, [0063]).
Regarding claim 8, Bao teaches the method of claim 1, as discussed above, wherein the quantity of the leach acid is based on a weight of the granular mass (Bao, [0023], “Preferably, in step (2): the mass concentration of the sulfuric acid solution is 150-300 g/L, and the solid-liquid mass ratio is 5:1-15:1.”).
Regarding claim 10, Bao teaches the method of claim 1, as discussed above, wherein the combined granular mass and aqueous leach solution is heated to 75°C (Bao, [0063]).
Regarding claim 11, Bao teaches the method of claim 11, as discussed above, further comprising removing undissolved materials from the formed leach mixture by filtration (Bao, [0063], “remove iron and aluminum ions by precipitation” would entail a filtration).
Regarding claim 13, Bao teaches the method of claim 1, as discussed above, wherein the granular mass of charge materials is a black mass formed by crushing end-of-life Li-ion batteries (Bao, [0062]).
Regarding claim 15, Bao teaches the method of claim 1, as discussed above, wherein the granular mass of charge material is sourced from a recycling stream (Bao, [003]) including batteries based on an NMC 811 chemistry (Bao, [0062]).
Regarding claim 16, Bao teaches the method of claim 1, as discussed above, wherein the recovered lithium is a lithium sulfate salt (Bao, [0064]).
Regarding claim 18, Bao teaches the method of claim 1, as discussed above, further comprising substantially removing the nickel from the recovered lithium (Bao, [0064], Table 1 of original document, “实施例5”, 12.9 ppm nickel).
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 17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bao (CN 112048615 A, 2020) (see the translation provided with the attached original document), as applied respectively to claims 1 and 18 above, and further in view of Lien (U.S. 2019/0024212 A1).
Regarding claim 17, Bao teaches the method of claim 16, as discussed above, wherein the recovered lithium is lithium sulfate (Bao, [0064]), but does not explicitly teach that the method comprises recovering the lithium sulfate by crystallization or by converting the lithium sulfate to lithium hydroxide, lithium carbonate, or lithium fluoride. However, Lien teaches that converting a lithium sulfate solution to lithium carbonate is a viable way to recover lithium in a solid form (Lien, Fig. 1, [0038]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have converted Bao’s lithium sulfate in solution to lithium carbonate to recover the lithium. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.). In the instant case, Lien’s teaching of converting lithium sulfate to lithium carbonate would predictably improve Bao’s method by enabling the recovery of lithium in a solid form from Bao’s lithium sulfate solution.
Regarding claim 19, Bao teaches the method of claim 18, as discussed above, but does not explicitly teach that the nickel is removed by nanofiltration to form an impurity-removed solution. However, Lien teaches purifying a lithium sulfate solution using nanofiltration in a process resulting in a lithium hydroxide product (Lien, Fig. 1, [0038]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have undergone nanofiltration of Bao’s lithium sulfate solution to acquire a lithium hydroxide product, as taught by Lien (Lien, [0038]). Applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.). In the instant case, Lien’s teaching of performing nanofiltration would predictably improve Bao’s method by enabling the recovery of lithium in the form of lithium hydroxide from Bao’s lithium sulfate solution. It would also predictably further separate lithium from the 12.9 ppm nickel present in Bao’s lithium sulfate solution (Bao, [0064], Table 1 of original document, “实施例5”, 12.9 ppm nickel).
Regarding claim 20, modified Bao renders the method of claim 19 obvious, as discussed above, further comprising concentrating the impurity-removed solution by reverse osmosis and crystallizing a lithium salt from the concentrated solution (Lien, Claim 1, “delivering the filtered acid and lithium solution to a reverse osmosis membrane to form a retentate and permeate, the reverse osmosis retentate includes the lithium and the reverse osmosis permeate includes the acid solution; and recovering lithium salts from the reverse osmosis retentate to form the recovered lithium and, optionally, recycling the reverse osmosis permeate to the mixing step.”). This step would be equally as obvious as the nanofiltration as discussed in claim 19 because it would predictably yield the ultimate effect of recovering lithium salts.
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, 3-5, 7, 10-12, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,040,463. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-14 of ‘463 together require all of the limitations of instant claims 1-7, 10-11, 15, and 18-20.
Allowable Subject Matter
Claim 14 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Bao (CN 112048615 A, 2020) (see the translation provided with the attached original document), Lien (U.S. 2019/0024212 A1), Sun (CN 108384955A, 2018) (see the machine translation of record), and Sonoc (WO 2021/226719 A1) are considered to be the closest prior art to the instant claims.
Regarding claim 14, Bao teaches the method of claim 1, as discussed above, wherein the black mass is a charge material which has been separated from the battery’s current collectors and casings (Bao, [0062], “Take 200g of the disassembled ternary 811 positive electrode sheet, and fire it at 650°C for 4.5 hours in an air atmosphere, and crush the obtained positive electrode sheet to obtain aluminum foil and positive electrode material by gravity separation”), which differs from the claimed comingles mass of charge materials, current collectors and casings. There is no teaching or suggestion in Bao or the other cited prior art references to instead start from a comingled mass of charge materials, current collectors and casings in Bao’s method. Doing so would likely result in a higher amount of impurities in Bao’s product, and a person having ordinary skill in the art would not have been motivated to modify Bao’s method in this way.
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 ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
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