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 .
Claim Status
The claims filed on 05/12/2025 is entered and acknowledged by the Examiner. Claims 1-8 are currently pending in the instant application.
Drawings
The drawings filed on 05/12/2025 have been considered.
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 and 7-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-7, and 10-11 of U.S. Patent No. 12,322,769 B2 (hereinafter Wang). Although the claims at issue are not identical, they are not patentably distinct from each other because Wang discloses a method for obtaining a cathode material using recycled battery electrode material (a lithium-ion battery recycling stream) comprises leaching a cathode material in an acidic solution of sulfuric acid having a pH within a pH range (See claims 1 and 3). Impurities are removed from the acidic solution (See claim 7). Wang discloses a step of adjusting the concentration of cathode metal salts with additional metal salts to obtain a selected ratio (See claim 1). Wang further discloses a step of precipitating cathode material precursor by raising the pH of the aqueous solution with a base (See claim 6). The method of Wang anticipates the claimed invention.
Claims 1-6 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-14 of copending Application No. 2023/0198040 A1 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application discloses a method comprising all the claimed steps. Specifically, the reference application discloses that the method comprises the steps of leaching in a solution containing sulfuric acid; adjusting concentration of metallic elements to a selected ratio; and adjusting pH to acidic levels to remove impurities and to basic levels to precipitate metallic elements for the cathode material (See claim 10).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by KR 20110117024 A (hereinafter Soo).
Regarding claims 1-2, Soo discloses a method for recycling valuable metals of waste battery (See Abstract) comprises a step (S20) of leaching with sulfuric acid and a reducing agent in which valuable metals are dissolved (See middle of unlabeled page 2). Soo discloses (S30) that the leaching solution remove impurities at pH of about 5 to 10, preferred pH of 5.5 to 6.5 (See bottom of unlabeled page 2). It should be noted that pH of 5.5 to 6.5 is an acidic level pH; thus, the removal of impurities are performed at an acidic level pH as claimed. Soo discloses a step of adjusting the concentration of each metal component may be added after reduction leaching, after removing impurities and after obtaining a hydroxide to obtain a desired component ratio (See middle of unlabeled page 3). Soo further discloses a step (S40) of increasing pH to 10-13 to precipitate nickel, manganese and cobalt (a cathode material precursor) (See top of unlabeled page 3).
Regarding claim 3, Soo discloses that the adjusted concentration can be different (unequal) for each metal component (See middle of unlabeled page 3).
Regarding claims 4-5, Soo discloses that the valuable metal components are obtained from a waste battery pack (exhausted battery material) of EV or HEV including positive electrode structure (cathode material), a separator, an electrolyte, and a negative electrode structure (anode) (See middle of unlabeled page 2).
Regarding claim 6, the usage of recovered valuable metal components (refined additional quantities) to adjust the concentration of the metal components in the electrode material in order to avoid greenhouse effect and global environmental problem caused by waste battery would have been inherent because it is the objective of Soo (See top of unlabeled page 2).
Regarding claims 7-8, Soo discloses a step (S60) of mixing a cathode active material and a lithium carbonate (sintered compound) and heat treated at 900-1,000 degrees (See middle of unlabeled page 2).
The reference specifically or inherently meets each of the claimed limitations in their broadest interpretations. The reference is anticipatory.
In view of the foregoing, the above claims have failed to patentably distinguish over the applied art.
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 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHANH TUAN NGUYEN whose telephone number is (571)272-8082. The examiner can normally be reached M-F 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew can be reached at (571) 272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHANH T NGUYEN/Primary Examiner, Art Unit 1761
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