DETAILED CORRESPONDENCE
1. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
3. A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 2/11/2026 has been entered.
Response to Amendment
4. In response to the amendment received on 2/11/2026:
Claims 1-5, 7-8, 10-13, 15, 17, and 20-24 are pending in the current application. Claims 1, 12, 13, 15, and 17 have been amended; Claims 6, 9, 14, 16, and 18-19 are cancelled; Claim 20 stands withdrawn; and Claims 21-24 are newly added.
The previous objection to the claims has been overcome in light of the amendment.
The previous prior art-based rejections have been overcome in light of the amendment.
Claim Interpretation
5. All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Claim Objections
6. Claim 1 is objected to because of the following informalities: the claim recites “copper and bismuth metal oxide oxide” but the limitation should read: “copper and bismuth metal oxide. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
7. Claims 1-5, 7-8, 10-11, and 21-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “at least one of the positive electrode active material or the negative electrode active material consisting essentially of Co, Cu2O, Ag2Cu2O3, a mixed copper and bismuth metal oxide oxide…” but this invention is not described in the instant disclosure. There is no support for an active material having all of these elements. Similarly, Claim 12 recites “wherein the cathode material is selected” but there is no previous recitation of the term “cathode material” and so this limitation lacks antecedent basis.
In the interest of compact prosecution, Claim 1 is interpreted as claiming the listed species as alternatives, e.g. “at least one of the positive electrode active material or the negative electrode active material is selected from the group consisting essentially of Co, Cu2O, Ag2Cu2O3, a mixed copper and bismuth metal oxide…” and the limitation from Claim 12 is interpreted as “wherein the cathode active material is selected…”. Claims 2-5, 7-8, 10-11, and 21-24 are rejected as being dependent upon a rejected base claim.
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.
8. Claims 1 and 12 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. Claims 1 and 12 recite a Markush-type list of species from which the positive or negative active material is selected, but “a bismuth-based additive that is an independent species from the positive electrode active material or the negative electrode active material” is included in this list of active materials. It is entirely unclear how the invention takes place in light of this claim construction. CClaims 2-5, 7-8, 10-11, and 21-24 are rejected as being dependent upon a rejected base claim.
9. Claim 8 is 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 8 recites “wherein the positive electrode comprises AgCuO2” but this material is disclosed by Applicant to be an active material (para 0051 of the submitted disclosure), rendering the limitation indefinite because AgCuO2 is not in the list of active materials in Claim 1 considered “closed” by Applicant (re: the use of “consisting essentially of…”). Therefore, it is unclear how this claim takes place in the claimed invention.
Allowable Subject Matter
10. Claims 1-5, 7-8, 10-13, 15, 17, and 21-24 are allowable over the prior art. As Applicant correctly points out, the cited prior art does not disclose the claimed positive electrode active materials. There are other references that teach the use of e.g. Ag2Cu2O3 and AgCuO2 as a positive electrode active material in a battery (see Nanjundaswamy US Patent 6,878,489, col 5, lines 51-64), but this reference does not teach the Bi additive and the previously cited prior art that does encourage the use of such an additive uses it with MnO2 materials, specifically, and so the skilled artisan would not find it obvious to use the additives in the battery of Nanjundaswamy.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA S PARK whose telephone number is (571)270-3597. The examiner can normally be reached M-Th 5:30a to 3p Eastern Time.
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/LISA S PARK/Primary Examiner, Art Unit 1729