DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114.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 Dec. 20, 2024 has been entered.
Status of Claims
Claims 29-32, 34-36 and 38-47 are pending, wherein claims 29-32, 34-36, 38 and 42-46 are amended, and claim 47 is newly added. Claims 29-32, 34-36 and 38-47 are being examined on the merits in this Office action.
Response to Amendments
A reply to the Applicant’s remarks/arguments/affidavit is presented after addressing the claims.
Any rejections and/or objections made in the previous Office Action and not repeated below.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. References cited in the current Office action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 29-32, 34-36 and 38-47 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 29 recites the limitations “implementing, while the spacecraft and the electrochemical cell equipped thereto are in the low earth orbit, a discharging …” and “implementing, while the spacecraft and the electrochemical cell equipped thereto are in the low earth orbit, a charging …”. However, these limitations are not supported by the specification as originally filed. The specification describes charging or discharging of a cell in a low earth orbit spacecraft was performed by simulation. In other words, the invention does not charge or discharge an electrochemical cell in a low earth orbit spacecraft. The specification does not disclose how to implement a charging or discharging while the electrochemical cell is in the low earth orbit. For purposes of examination, the said limitation is interpreted as referring to charging or discharging an electrochemical cell to be used in a low earth orbit spacecraft. Note that a similar 112(a) rejection was already applied in the office action mailed on April 21, 2021.
The issue applies similarly to claims 35-36 and 38. New matters have been introduced. For instance, the invention does not really implement charging and discharging for 4383 days and 65000 cycles. In addition, “4383 consecutive days” (12 years?) is not supported by the specification. In essence, the numbers of cycles of the discharging and discharging and days of cycling as claimed (4383 days, 65000 cycles, 15 cycles/day) are better interpreted as relating to a characteristic, function, or property of the claimed electrochemical cell rather than a charging/discharging process.
Claim Rejections - 35 USC § 103
Claims 29-32, 34-36, 38-39 and 42-46 are rejected under 35 U.S.C. 103 as being unpatentable over Smart et al. (US 20090253046 A1, hereafter Smart) in view of Son et al. (US 20160181604 A1, hereafter Son).
Regarding claims 29, 34, 39 and 42-46, Smart teaches a method of charging and discharging an electrochemical cell in low earth orbit, the method comprising:
equipping the electrochemical cell to a spacecraft configured for low earth orbit (See, e.g., [0008]: “low earth orbit (LEO) … satellites” and “lithium ion rechargeable batteries”); and
charging and discharging the electrochemical cell (See, e.g., [0067], lines 23-27; and upper portion of Fig. 34),
wherein said electrochemical cell comprises a positive electrode (See, e.g., [0067]: “cathode” comprising LiNi0.8Co0.2O2, which is the same as instantly disclosed), a negative electrode (e.g., “mesocarbon microbeads (MCMB)”, [0067]) and an electrolyte (e.g., “electrolytes”, [0067], line 7),
wherein said negative electrode comprises MCMB (above), but Smart also discloses that MCMB and Li4Ti5O12) are functional equivalents as anode active materials (See [0065], lines 12-15) in the charging/discharging experiments of the lithium ion cells ([0067]). One of ordinary skill in the art would readily appreciate that Li4Ti5O12 can be employed as an alternative to replace MCMB for the charging/discharging experiments described in paragraph [0067], since the substitution of known equivalents for the same purpose is prima facie obvious (MPEP § 2144.06). In addition, it is noted that Li4Ti5O12 is a well-known and commonly-used negative electrode material that is able to be lithiated in the battery field,
wherein said solvents include, for example, “EC + DEC + DMC” (See, in “(2)”, [0067], line 11; EC, i.e., ethylene carbonate, is a saturated cyclic carbonate, EMC, i.e., ethyl methyl carbonate, is a non-cyclic carbonate, and DMC, i.e., dimethyl carbonate, is a non-cyclic carbonate). All of EC, DEC and DMC are carbonate-based solvents (“all carbonate-based formulations”, [0067], lines 26-27).
Smart appears silent as to the claimed limitations related to discharging or charging. However, in the same field of endeavor, Son discloses charging or discharging an electrochemical cell, which comprises a similar positive electrode and a lithiated titanate oxide (LTO) negative electrode, is performed at a charge/discharge rate of 10 C (See, e.g., [0039], [0066], and [0069] on page 7, lines 16-28) to demonstrate excellent capacity retention and good electrical performance of the electrochemical cell (See, e.g., [0066], and [0069] on page 7, lines 16-28).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have incorporated the teachings of Son into Smart such that charging or discharging the electrochemical cell of Smart is performed at a charge/discharge rate of 10 C, for the benefit of demonstrating excellent capacity retention and good electrical performance of the electrochemical cell. In addition, in the absence of criticality or unexpected results, selecting a charging/discharging rate to operate (i.e., to charge/discharge) a battery cell is held to be unpatentable since it is matter of design choice and involves merely ordinary capabilities of one skilled in the art. As a result, 10C reads on the charging or discharging rates as claimed.
Regarding claims 30-32, Smart in view of Son teaches the method according to claim 29, and further teaches discharging the electrochemical cell is performed at a depth of discharge of 100% (e.g., [0066], Son).
Regarding claims 35-36 and 38, Smart in view of Son teaches the method according to claim 29, and further, the limitations recited in claims 35-36 and 38 represent properties, functions, or characteristics of the electrochemical cell as claimed. In the instant case, Smart in view of Son teaches the same electrochemical cell as claimed (See at least the rejection of claim 29), the claimed properties, functions, or characteristics are reasonably expected to be present. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (See MPEP § 2112.01). See the 112(a) rejection above.
Regarding claim 47, Smart in view of Son teaches the method according to claim 29, and the instantly claimed limitation is general knowledge because the electrochemical cell to be equipped to a spacecraft means an already constructed body after combining together the positive electrode, the negative electrode and the electrolyte.
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Smart in view of Son, as applied to claim 39 above, and further in view of Hirose et al. (US 20080305391 A1, hereafter Hirose).
Regarding claim 40, Smart in view of Son teaches the method according to claim 39, but is silent about a mixed solvent not including EC. However, the instantly claimed solvents are well-known solvents in the art and are not patentably distinguishable. For instance, in the same field of endeavor, Hirose discloses that EC and propylene carbonate (PC) are functional equivalents as high-viscosity solvents in an electrolyte solution ([0091]). It would have been obvious to one of ordinary in the art to have replaced EC of Smart with PC of Hirose as a component of the mixed solvent of Smart, since the substitution of known equivalents for the same purpose is prima facie obvious (MPEP § 2144.06).
As a result, the mixed solvent of PC, DEC and DMC reads on the solvent(s) as instantly claimed.
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Smart in view of Son, as applied to claim 29 above, and further in view of Endo et al. (US 20090127503 A1, hereafter Endo).
Regarding claim 41, Smart in view of Son teaches the method according to claim 29, but does not expressly teach the lithiated titanate oxide or the titanate oxide able to be lithiated is represented by the formulae of (a) to (h) as claimed.
In the same field of endeavor, Endo discloses that a negative electrode active material represented by a substituted Li4Ti5O12, wherein a portion of Ti element of Li4Ti5O12 is substituted with a transition metal element such as Al (at least Abstract). The substituted Li4Ti5O12 is represented by Li[Li(1-x)/3AlxTi(5-2x)/3]O4, wherein 0<x<1 (Abstract). The lithium ion battery using this negative electrode active material has an excellent high rate charge and discharge performance (at least [0020]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have employed Li[Li(1-x)/3AlxTi(5-2x)/3]O4 as a substitute of Li4Ti5O12 of Smart, in order to achieve an excellent high rate charge and discharge performance of the electrochemical cell employing the substituted Li4Ti5O12 (at least [0020], Endo).
As a result, Li[Li(1-x)/3AlxTi(5-2x)/3]O4, wherein 0<x<1, reads on the claimed Li4+yTi5-dM2dO12 as claimed.
Response to Arguments
Applicant's arguments and affidavit filed Dec. 24, 2024 and Feb. 28, 2025 have been fully considered but they are not persuasive.
1) Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
The “routine experimentation” mentioned many times in the arguments was/is even not relied on for the rejections in the office rejection. The teachings relied on for the rejections are disclosed in Smart or/and Son.
2) As to the arguments associated with “ester”, it is noted that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments, consult Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.1989). In the instant case, Smart does disclose a mixed solvent without ester included. One does not have to use a solvent containing ester.
As to the arguments associated with replacement of carbon (MCMB) by LTO, it is noted that even if carbon is a preferred anode material, this does not vitiate the fact that LTO as an anode material is factually disclosed. As decided by PTAB, the fact that Smart discloses a preference for carbon anode materials does not detract from the disclosure that lithiated titanate oxides are suitable anode materials. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.
Conclusion
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/ZHONGQING WEI/
ZHONGQING WEI, Ph.D.Primary Examiner, Art Unit 1727
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