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 amended claim 1 to recite that step b to replace “contacting said electrode “with “pressurizing said electrode.”. Step c further amended to clarify that he pressure I decreased by at least 60 bar and claim 3 is amended similarly. Other claims 1, 2, 6 and 8 further amended to address informalities as noted in the previous office action. New claims 13-16 added to recite limitations on previous examined claims.
Additionally, the applicant amended claim 1 to correct the previous rejection under 35 U.S.C. § 112(b). (Applicant arguments/remarks 06/09/2026 pp. 5-6).
These rejections as well as the previous objections have been withdrawn by the examiner.
Applicant argues that regarding the rejection of claims 1-8, 11 and 12 under 35 U.S.C. § 103 over Ho (JP 6828214 B1) with machine translation in view of Fournel (US 8,172,955 B2) with evidence provided for claim 8 by UDMachine providing applications of polyvinylidene fluoride (PVDF), the examiner’s citation of Ho’s use of an air jet mixing shredded pieces of a battery to meet the limitation of the contacting the electrode with a gas or supercritical liquid at a pressure of 60 bar to 100 bar,
does not apply because the pressure of 0.1 to 10 MPa disclosed in HO refers to the pressure of an air jet mixing battery pieces, not a pressure within a vessel for pressurizing. Also, Ho’s vessel would have an opening to allow a flow of gas to produce the mixing. By this current amendment of claim 1 reciting “pressurizing said electrode” in step b. the applicant asserts that this more clearly differentiates the pressurization in the claimed method from the mixing method of Ho. The combination of Fournel does not remedy this deficiency. (Applicant arguments/remarks 06/09/2026 pp. 7-8).
The examiner counter-argues that under broadest reasonable interpretation, the limitation “pressurizing said electrode” appears to encompass the use of air (a gas) at a pressure of 0.01 MPa or 0.1 bar to about 10 MPa or 100 bar from Ho and overlapping the recited range of 60 to 300 bar.
Applicant argues that modifying the method Ho which uses pressurized gas to mix shredded pieces of a battery with the disclosure of Fournel whereby Fournel is incorporated with the additional element of pressurizing a vessel and subsequently decreasing the pressure, would render Ho’s air jet unusable for the mixing required in Ho. Therefore, this is an additional reason that this combination would not be obvious
Also, the applicant argues that regarding claim 3, Fournel varies the pressure of supercritical CO2 between 10 and 100 bar (i.e. maximum pressure of 90 bar). Fournel cannot teach this limitation wherein the pressure is rapidly decreased by at least 90 bar and, thus it would not have been obvious to arrive at the method of claim 3 in view of Ho and Fournel (Applicant arguments/remarks 06/09/2026 p. 8).
The examiner counter-argues that under broadest reasonable interpretation there is no reason that Fournel could not provide step-c as a separate step from -b and the issue of rendering Ho’s air jet unusable of the mixing required in Ho would be absent.
As to the argument regarding claim 3 that Fournel cannot teach the limitation of claim 3 because the claim recites “at least 90 bar” and Fournel discloses 10 to 100 bar which is a maximum pressure difference of 90 bar, the examiner maintains that prior art which teaches a range within, overlapping or touching the claimed range anticipated if the prior art range discloses the claimed range with “sufficient specificity”. MPEP 2131.03. Moreover, in the cited reference of Fournel (Col. 10 ll. 33-39), the amplitude of the variation in pressure of 10 to 100 bar is prefaced with the qualification “for example” where other larger variations are possible.
Applicant argues that the obviousness rejection of claims 9 and 10 over the combination of Ho and Fournel modified by Abusleme (WO 2008/1129041) is invalid because while the acrylic acid content improves the thermal stability of the copolymer binder that comprises the VDF polymer, the skilled artisan would not use a binder material known to increase adhesion (i.e. make removal more difficult). (Applicant arguments/remarks 06/09/2026 p. 9).
The examiner counter-argues that under broadest reasonable interpretation of claims 9-10 with their limitations, there appears no qualifications to these limitations that would affect the motivations a skilled artisan would possess and it appears to the examiner that the applicant is engaging in conjecture. For example, there could be other possibilities of composition that would offset the thermal stability of the acrylic acid monomers and would facilitate binder removal and/or another motivation(s) for using acrylic acid monomers.
As to new claims 13-18, new grounds of rejection are provided.
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.
Claim 14 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 14 recites that the at least one electrode is not shredded prior to providing at least one electrode, however, it is unclear how the electrode could be shredded when it is not provided. Therefore, it is unclear in what way or how this claim is being further limited.
For the purposes of compact prosecution, the examiner determines that the limitation of “not shredded” is a reaction by the applicant to the teaching of the primary reference, Ho, used in claim 1, which does disclose shredding lithium ion batteries, such that claim 14 is constructed with this prior art reference in mind. The examiner will provide a new ground of reference but maintains the §112(b) rejection
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.
Claim(s) 1-8 and 11-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ho (JP6828214B1) with machine translation in view of Fournel (US 8,172,955 B2). Evidence provided for claim 8: UDMachine Polyvinylidene Fluoride (PVDF): Properties and Applications Of This Versatile Polymer (20250 https://ud-machine.com/blog/polyvinylidene-fluoride/
Regarding Claim 1, Ho discloses a method for separating the electrode materials from the current collector in a battery electrode (abs, paragraph [0053] method for recycling lithium-ion batteries), said method comprising:
a-providing at least one electrode said at least one electrode comprising a current collector and a layer of electrode material adhered onto said current collector (paragraphs [0035] [0053]. [0063] binder material causes electrode material to adhere to the conductive metal part to form the electrode; separating the structural portion, the first conductive metal portion, the second conductive metal portion from finer electrode material; where the conductive metal portions act as current collectors), said layer of electrode material comprising electro active materials (paragraphs [0039] [0040] electrode active material including carbon), in powder form (paragraph [0010] carbon forms powder as suspended particles which forms powder as suspended particles) and a binder (paragraph [0053] dissolve binder material)
b-pressurizing said electrode to a gas or a supercritical fluid at a pressure of 60 to 300 bar (paragraph [0095] gas (air) pressure is applied in an air jet mixer in various ranges from 0.01 MPa (0.1 bar) to about 10 MPa (100 bar)) which overlaps the recited range of 60 to 300 bar where prior art which teaches a range within, overlapping or touching the claimed range anticipated if the prior art range discloses the claimed range with “sufficient specificity”. MPEP 2131.03:
However, while Ho discloses that the recovered electrode is dried in an oven under atmospheric pressure for 5 hours (paragraph [0142]), it does not disclose a rapid decreasing of gas pressure of at least 60 bar within 30 seconds or less.
Fournel discloses, in an analogous art, a process for decontaminating and cleaning a solid organic substrate of solid radioactive inorganic particulates (abs). This process uses a gas, which can be controlled under supercritical conditions (Col. 10, ll. 9-16 CO2 in a dense, pressurized state – liquid or supercritical) with the carrying out of compression/decompression cycles, preferably very rapid cycles (Col. 10 ll. 33-35).
Moreover, Fournel discloses that an amplitude of this variation in pressure can be from 10 – 100 bar and having time intervals as low as 10 seconds (Col. 10, ll. 35-37).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Ho with the teaching of Fournel, whereby a method for separating battery electrode materials from the current collector in at least one electrode with electrode material adhered onto the current collector, and this electrode is contacted with a gas at a pressure of 60 to 300 bar, as in Ho, would also include that this at least one electrode is subjected to rapidly decompressing the pressure of the gas used or a supercritical fluid as an alternative of at least 60 bar within 30 seconds or less causing rapid decompression of the gas or supercritical fluid, as taught by Fournel.
One with ordinary skill in this art would utilize this method of compression coupled with rapid decompression because this treatment allows for increased penetration of solvent fluid into material and the compression/decompression cycles, especially with supercritical fluids, enhance the mechanical actions and provide more effective, even superior separation/cleaning in a much shorter time and has a positive effect on energy and financial costs (Col. 10 ll. 43-62).
Regarding Claim 2, the combination of Ho and Fournel disclose all the limitations of claim 1 and Ho further discloses that in step b said electrodes are subject to a pressure of from 90 to 270 bar (paragraph [0095] where the range includes 10 MPa (100 bar) which overlaps with the range of the recited 90 to 280 bar.
Prior art which teaches a range within, overlapping or touching the claimed range anticipated if the prior art range discloses the claimed range with “sufficient specificity”. MPEP 2131.03:
Regarding Claim 3, the combination of Ho and Fournel disclose all the limitations of claim 1 and Fournel further discloses, in step c the pressure is rapidly decreased of at least 90 bar in 30 seconds or less (Col. 10 ll. 33-37 10- 100 bar with a possible time interval of 10 seconds).
Prior art which teaches a range within, overlapping or touching the claimed range anticipated if the prior art range discloses the claimed range with “sufficient specificity”. MPEP 2131.03:
Regarding Claim 4, the combination of Ho and Fournel disclose all the limitations of claim 1 and while Fournel discloses that the compression/decompression cycles can involve amplitudes of the variation in pressure from 10 to 100 bar and time intervals of 10 seconds, it does not explicitly teach that this is a rapid decrease from maximum treatment pressure to ambient pressure.
However, it would have been obvious to the one with ordinary skill to use this decrease from maximum treatment pressure to ambient pressure because this would overlap with the amplitude of the variation in pressure of 10 to 100 bar within 10 seconds as disclosed by Fournel (Col. 10 ll. 33-37).
Prior art which teaches a range within, overlapping or touching the claimed range anticipated if the prior art range discloses the claimed range with “sufficient specificity”. MPEP 2131.03:
Regarding Claim 5, the combination of Ho and Fournel disclose all the limitations of claim 1 and Ho further discloses that at least one electrode is a cathode (abs).
Regarding Claim 6, the combination of Ho and Fournel disclose all the limitations of claim 1 and Ho further discloses that the electro active material comprise metallic oxides and salts including Li. (paragraphs [0057] [0124] alkali oxide salts and lithium oxide).
Regarding Claim 7, the combination of Ho and Fournel disclose all the limitations of claim 1 and Ho further discloses that the said electrode material comprises 80% to 99% by weight of electro active materials, and 1 to 20%wt of binder, based on the total weight of the electrode material (paragraph [0160] 90 wt.% hard carbon and 3.5 wt.% as binder).
Regarding Claim 8, the combination of Ho and Fournel disclose all the limitations of claim 1 and Ho further discloses said binder comprises one or more VDF based polymer (paragraph [0021] would include polyvinylidene difluoride (PVDF) which is VDF based). See evidence: UDMachine Polyvinylidene Fluoride (PVDF): Properties and Applications Of This Versatile Polymer (2025) https://ud-machine.com/blog/polyvinylidene-fluoride/: The Manufacturing Process Of PVDF Resin: The first step is the VDF or vinylidene fluoride synthesis, which serves as the building block for producing PVDF.
Regarding Claim 11, the combination of Ho and Fournel disclose all the limitations of claim 1 and while Fournel further discloses that a gas or supercritical fluid that is used in separating out particulate matter involve a treatment process corresponding the high densities, Fournel is silent as to the fluid having a critical density in the range 0.470-0.220 g/ml.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the gas or supercritical fluid of Ho/Fournel be in the range of 0.470-0.220 g/ml since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
One would have been motivated to use this range because this would make it possible to very rapidly extract and remove the compounds external to the battery components (Col. 13 ll. 53-59).
Regarding Claim 12, the combination of Ho and Fournel disclose all the limitations of claim 1 and Fournel discloses that the said gas or supercritical fluid is selected from C02, H20, CH30H, CH3CH2OH, and (CH3)2CO (Col. 5 l. 39).
Regarding Claim 13, the combination of Ho and Fournel disclose all the limitations of claim 1 and Fournel discloses that in step b the pressurizing is performed in a pressure resistant equipment which is sealed (Col. 14 ll. 30-31, Col. 17 ll. 39-40 pressurized chamber or autoclave).
Regarding Claim 14, the combination of Ho and Fournel disclose all the limitations of claim 1 and Ho further discloses that the at least one electrode is not shredded prior to providing at least one electrode (paragraph [0062] in some embodiments the lithium ion battery is disassembled to insulate the negative and positive electrodes).
Regarding Claim 15, the combination of Ho and Fournel disclose all the limitations of claim 1 and Fournel further discloses that in step b said electrodes are subject to a pressure of from 100 to 270 bar (Col. 9 ll. 56-65 see Col. 12 Table 4).
Regarding Claim 16, the combination of Ho and Fournel disclose all the limitations of claim 1 and Fournel further discloses that in step c the pressure is rapidly decreased by at least 90 bar in 10 seconds or less (Col. 10 ll. 35-37 variation in pressure of 10 to 100 bar and time intervals of 10 seconds.
MPEP 2131.03: Prior Art which teaches a range within, overlapping or touching the claimed range anticipated if the prior art range discloses the claimed range with “sufficient specificity”.
Regarding Claim 17, the combination of Ho and Fournel disclose all the limitations of claim 1 and Ho further discloses that prior to step b, the at least one electrode is contacted with a cosolvent selected from the group consisting of water, mildly acidic water solutions, alcohol, liquid CO2, linear or cyclic esters, N-Methyl-pyrrolidone, dimethylsulfoxide, y-valerolactone, y-butyrolactone, and diesters (paragraphs [0015], [0037], [0074] water, alcohol, N-Methyl-pyrrolidone and dimethylsulfoxide where in paragraph [0074] dimethylsulfoxide is mentioned in an embodiment as not being present, implying it is present in others).
Regarding Claim 18, the combination of Ho and Fournel disclose all the limitations of claim 1 and Ho further discloses prior to step b, the at least one electrode is contacted with a cosolvent comprising water (paragraph [0012] polar solvent is water, an alcohol, a ketone or a combination (cosolvent)).
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ho (JP6828214B1) with machine translation in view of Fournel (US 8,172,955 B2) as applied to claim 8 above, and further in view of Abusleme (WO 2008/129041 A1) IDS 10/01/2024.
Regarding Claim 9, the combination of Ho and Fournel disclose all the limitations of claim 8 but while Ho discloses that the binder comprises a VDF based polymer it does not explicitly disclose that the said VDF based polymer comprises at least 50%, by moles of recurring units derived from VDF and 0.1-10%; moles, of recurring units derived from (meth)acrylic monomers of formula:
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wherein each of R1, R2, R3, equal or different from each other, is independently a hydrogen atom or a C1-C3 hydrocarbon group, and Ro" is a hydrogen or a C1-C5 hydrocarbon moiety comprising at least one hydroxyl group
Abusleme discloses vinylidene fluoride copolymers comprising recuring units derived from hydrophilic (meth)acrylic monomers that are used as binder in batteries which includes lithium-ion batteries (paragraphs [0001] [0036]). The recurring units derived from the vinylidene fluoride (VDF) monomer and at least one hydrophilic (meth)acrylic monomer (MA) is identical to the above formula and this prior art is from the same applicant (paragraph [0014] see figure accompanying paragraph [0014]).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the combination of Ho and Fournel with the teachings of Abusleme whereby a method for separating electrode materials from a current collector in a battery electrode with the method of providing a binder comprising one or more VDF based polymer, as disclosed by Ho/Fournel, would have also included having 0.1-10% moles of recurring units derived from the (meth)acrylic monomers of the formula above, wherein each of R1, R2, R3, equal or different from each other, is independently a hydrogen atom or a C1-C3 hydrocarbon group, and Ro" is a hydrogen or a C1-C5 hydrocarbon moiety comprising at least one hydroxyl group, as disclosed by Abusleme.
This would be considered advantageous to the skilled artisan because increasing levels of acrylic acid incorporation dramatically impacts the thermal stability of the fluoromaterial (paragraph [0011]).
Regarding Claim 10, the combination of Ho, Fournel and Abusleme disclose all the limitations of claim 9 and Abusleme further discloses that the said (meth)acrylic monomer is selected from acrylic acid, hydroxyethyl acrylate, hydroxypropyl acrylate and mixtures thereof (paragraph [0026]).
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 WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE K. SWIER/ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748
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