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 Declaration Under 37 CFR 1.132
Applicant argues that Nimon does not anticipate the claimed invention because Nimon is primarily directed to lithium-sulfur batteries where the anode is lithium metal, such that Nimon generically mentions sodium as a possible alternative anode material is non-enabling, speculative disclosure without any working examples, experimental data, or guidance on implementing a sodium-based cell.
However, it is not required for Nimon to provide any working examples, experimental data, or guidance on implementing a sodium-based cell in order to be enabling as sodium-based cells were well known in the art before the effective filing date of the claimed invention, as seen by previously cited Mogensen et al. and the article by Melissa Fellet. One of ordinary skill in the art would definitely know how to implement a sodium-based cell by the effective filing date of the claimed invention.
Applicant further argues SEI formation in sodium-metal batteries is not identical to that in lithium-metal batteries, such that in sodium systems, the SEI tends to be thicker, more homogeneous, and organic rich. Applicant further provides another citation that sodium SEI interfaces are less stable and undergo different decomposition pathways compared to lithium.
However, whether the SEI formation in sodium-metal batteries is thicker, more homogenous, and organic rich or is less stable is irrelevant to whether or not an SEI is formed in a sodium-based cell. Applicant is reminded that the claimed invention merely requires an electrochemical cell comprising a rechargeable metallic sodium anode and a non-aqueous electrolyte which comprises a solvent, an SO2 additive, and at least one electrolyte salt that participates in anodic SEI formation, which Applicant has not provided any evidence to dispute Nimon from not teaching any of these features. Additionally, Applicant has not provided any evidence that Nimon fails to teach the use of a sodium-based cell, such that Applicant has provided evidence that SEI formation is possible in a sodium-based cell with this declaration. It is noted that Applicant’s prior arguments were that SEI formation is not possible in a sodium-based cell, such that these citations in the declaration have contradicted Applicant’s previous statements.
Applicant argues that the references cited by the Examiner (Ofer, Bekaert, Chen, Takenaka, and Mogensen) predominately discuss lithium-based systems and do not establish that Nimon’s lithium-focused electrolyte would necessarily form an SEI comprising Na2S2O4, Na2O, or Na2S in a sodium system.
However, Applicant is mistaken the purpose of the citation of Ofer, Bekaert, Chen, Tankenaka and Mogensen, which have all been outlined clearly in the prior Office Action.
Ofer was cited to provide evidence that SO2 is a known SEI former and that the electrolyte components form the SEI layer on the surface of the anode.
Bekaert was cited to provide evidence that the main components of SEI are the decomposition products of electrolyte solvents and salts.
Chen was cited to provide evidence that the SEI layer is an organic/inorganic composite thin film composed of LiF, Li2O, Li2CO3, polyolephines, semicarbonates, and maybe other unidentified species. Those inorganic species are mostly generated from the decomposition of lithium salts, and the organic components are mostly from the reduction of solvents.
Tankenaka was cited to provide evidence that the SEI is an ion conductive yet electron-insulating layer that forms on the anode during the first charge of the reduction and decomposition of the electrolyte and the steps in which the SEI layer is formed.
Mogensen was cited to provide evidence that sodium ion batteries and lithium ion batteries are both subject to the same limitations in the anode-electrolyte interfacial reaction.
It is noted that the instant specification states in paragraph [0028] of the published application “[i]n one embodiment, such stable cycling can be achieved when the electrolyte salt contains sodium-trifluoromethanesulfonate (Na-Triflate), and the electrolyte contains an SO2 additive. Without intending to be bound by theory, the stable cycling capability in this case is thought to result from the Solid Electrolyte Interface (SEI) layer being comprised of mainly Na2S2O4, Na2O, or Na2S, and/or NaF, originating from the SO2 additive and Na-Triflate salt, without a significant contribution to the SEI by the solvent decomposition products. Thus, the SEI is believed to form synergistically with the SO2 additive” and in paragraph [0029] that “[i]n an other embodiment, it is surprisingly found that such stable cycling can be achieved with any electrolyte salt that is not reduced by sodium, provided that it dissolves in the electrolyte to at least 1 molar concentration, and more preferably to at least 1.2 molar concentration, and more preferably to at least 1.5 molar concentration, and most preferably to at least 2 molar concentration, and that the electrolyte contains dissolved SO2 in at least a 0.05 mole fraction, and more preferably in at least a 0.1 mole fraction, and most preferably contains dissolved SO2 in at least 0.2 mole fraction. Other ranges are possible according to the invention. Without intending to be bound by theory, the stable cycling capability in this case is thought to result from the SEI layer being comprised of mainly Na2S2O4, Na2O and/or Na2S, originating from the SO2 component and without a significant contribution to the SEI from the solvent decomposition products. Thus, the SEI is again believed to form synergistically with the SO2 additive”, such that Nimon discloses the use of sodium Triflate salt ([0070]) along with SO2 additive ([0029]) and would necessarily form an SEI comprising Na2S2O4, Na2O, or Na2S as asserted, where Applicant has agreed upon that an SEI does form in a sodium based system with the evidence provided in paragraph 5 of the declaration.
Applicant argues that the specific Na-based SEI components are not necessarily formed in Nimon because SEI composition depends on the unique interplay of sodium metal, the SO2 additive (in the claimed mole fraction of 0.001 to 0.3), and the electrolyte salts during operation. However, Applicant has not provided any evidence with regards to these statements. As stated previously, Mogensen et al. “Solubility of the Solid Electrolyte Interphase (SEI) in Sodium Ion Batteries” states on page 1173: “sodium ion batteries and lithium ion batteries are both subject to the same limitations in the anode-electrolyte interfacial reaction; the solid electrolyte interphase on an anode with the electrochemical potential below ~1 V vs Na+/Na is vital to make a sodium ion battery kinetically stable”. Additionally, Ofer, Bekaert, Chen, Takenaka, and Mogensen were all cited as evidence that a Na-based SEI layer would necessarily form, such that Applicant still has not provided any evidence to demonstrate an SEI layer would not be formed in Nimon besides conclusory statements without any facts or evidence. Nowhere does the instant specification state any “unique interplay of sodium metal, the SO2 additive, and the electrolyte salts” in order for the SEI layer comprising Na2S2O4, Na2O, or Na2S to be formed but has only stated in paragraph [0028] of the published application “[i]n one embodiment, such stable cycling can be achieved when the electrolyte salt contains sodium-trifluoromethanesulfonate (Na-Triflate), and the electrolyte contains an SO2 additive. Without intending to be bound by theory, the stable cycling capability in this case is thought to result from the Solid Electrolyte Interface (SEI) layer being comprised of mainly Na2S2O4, Na2O, or Na2S, and/or NaF, originating from the SO2 additive and Na-Triflate salt, without a significant contribution to the SEI by the solvent decomposition products. Thus, the SEI is believed to form synergistically with the SO2 additive”, as stated above. Therefore, it is clear that Nimon would necessarily possess an SEI layer comprising one or more of Na2S2O4, Na2O, or Na2S as claimed. Additionally, it is noted that Nimon does disclose the SO2 additive to have a mole fraction of between 0.001 and 0.3, as set forth in the previous Office Action and the current Office Action.
Applicant argues that Nimon provides no evidence that sodium Triflate form the claimed SEI in sodium. However, Applicant has not provided any evidence to prove the contrary, such that the instant specification explicitly states in paragraph [0028] of the published application “[i]n one embodiment, such stable cycling can be achieved when the electrolyte salt contains sodium-trifluoromethanesulfonate (Na-Triflate), and the electrolyte contains an SO2 additive. Without intending to be bound by theory, the stable cycling capability in this case is thought to result from the Solid Electrolyte Interface (SEI) layer being comprised of mainly Na2S2O4, Na2O, or Na2S, and/or NaF, originating from the SO2 additive and Na-Triflate salt, without a significant contribution to the SEI by the solvent decomposition products. Thus, the SEI is believed to form synergistically with the SO2 additive”. The instant specification further states in paragraph [0004] that “[e]lectrolyte Interface (SEI) layer being comprised of mainly Na2O and NaF, originating from the ether solvent and NaPF6 salt decomposition respectively” and in paragraph [0029] that “[i]n an other embodiment, it is surprisingly found that such stable cycling can be achieved with any electrolyte salt that is not reduced by sodium, provided that it dissolves in the electrolyte to at least 1 molar concentration, and more preferably to at least 1.2 molar concentration, and more preferably to at least 1.5 molar concentration, and most preferably to at least 2 molar concentration, and that the electrolyte contains dissolved SO2 in at least a 0.05 mole fraction, and more preferably in at least a 0.1 mole fraction, and most preferably contains dissolved SO2 in at least 0.2 mole fraction. Other ranges are possible according to the invention. Without intending to be bound by theory, the stable cycling capability in this case is thought to result from the SEI layer being comprised of mainly Na2S2O4, Na2O and/or Na2S, originating from the SO2 component and without a significant contribution to the SEI from the solvent decomposition products. Thus, the SEI is again believed to form synergistically with the SO2 additive”. Additionally, as stated above, Ofer, Bekaert, Chen, Takenaka, and Mogensen were all cited as evidence that a Na-based SEI layer would necessarily form, such that sodium Triflate is a known salt that can be used in sodium based cells, as evidenced by Kimura et al. (US 2010/0248025) that sodium triflate is a suitable electrolyte salt as well as lithium triflate ([0035] and [0036]).
Applicant further argues that sodium electrodeposition during charging and SEI formation define structural and functional aspects of the cell, not mere process steps, the resulting cell, with its specific SEI, is structurally distinct from Nimon’s lithium cells.
However, Nimon clearly teaches sodium cells, such that the argument was not found to be persuasive. Additionally, Applicant has repeatedly failed to produce any evidence to show Nimon’s sodium cell would not have the claimed features, such that SEI formation is an inherent property of rechargeable batteries, as evidenced by the numerous references cited in the Office Action. Further, Applicant has only made selective comments regarding each of the cited references unrelated to the particular citations and teachings that were relied upon in the Office Action, and has made no arguments with respect to the rejection themselves as presented in the Office Action and has only made arguments that are irrelevant to the claimed invention or the teachings.
Therefore, the arguments were not found to be persuasive.
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.
(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.
Claim(s) 1, 3, 4, 6-9, 13 and 24 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Nimon et al. (US 2004/0081894) as evidenced by Ofer et al. (WO 2008/147751), Bekaert et al. (“Emerging Nanotechnologies in Rechargeable Energy Storage Systems”), Chen et al. (“High Performance Lithium-Ion Batteries Using Fluorinated Compounds”), Takenaka et al. (“Frontiers in Theoretical Analysis of Solid Electrolyte Interphase Formation Mechanism”) and Mogensen et al. (“Solubility of the Solid Electrolyte Interphase (SEI) in Sodium Ion Batteries”).
Regarding claim 1, Nimon discloses an electrochemical cell (10), comprising:
a) a cathode (positive electrode 18) and a rechargeable metallic sodium anode (negative electrode 14; it is disclosed negative electrode reactive element can be sodium; [0037], [0070] and [0077]), wherein metallic sodium is electrodeposited on the anode during charging (inherent property with a metallic sodium anode; in the lithium example, lithium is deposited at the negative electrode; [0047]-[0048]; see evidence in Response to Arguments section below); and
b) a non-aqueous electrolyte (16; [0012]) which comprises a solvent (DME solvent; [0012]), an SO2 additive ([0010] and [0029]), and at least one electrolyte salt ([0070]), and that SO2 as an additive in electrolyte provide in situ protection of the lithium electrode without negatively impacting sulfur utilization while improving cell discharge characteristics after storage under open circuit voltage conditions ([0029]),
wherein the non-aqueous electrolyte is positioned between the cathode and the anode (see Figure 2), and the mole fraction of the SO2 additive is between 0.001 and 0.3 with respect to the electrolyte (in an example, 3.2% of the electrolyte by weight, such that based on the calculation in the Response to Arguments section, SO2 has a 0.04 mole fraction; [0104]), and
wherein the solvent is selected from the group consisting of ether-type solvents, amine-type solvents, oxadiazole-type solvents, furazan-type solvents, and any mixture thereof (DME, as set forth above).
While Nimon does not expressly disclose the at least one electrolyte salt participates in anodic Solid Electrolyte Interface (SEI) formation together with the SO2 additive and the anode,
Ofer discloses on page 7 that SO2 is a known SEI former and that the electrolyte components form the SEI layer on the surface of the anode on page 6.
Bekaert discloses in Chapter 1- Electrolytes for Li-and Na-Ion Batteries: Concepts, Candidates, and the Role of Nanotechnology section 2.2.1.1 Additives for SEI forming improver that the main components of SEI are the decomposition products of electrolyte solvents and salts, and Chen discloses on page 5 that “[t]he SEI layer is an organic/inorganic composite thin film composed of LiF, Li2O, Li2CO3, polyolephines, semicarbonates, and maybe other unidentified species. Those inorganic species are mostly generated from the decomposition of lithium salts, and the organic components are mostly from the reduction of solvents”.
Takenaka et al. discloses that the SEI is an ion conductive yet electron-insulating layer that forms on the anode during the first charge of the reduction and decomposition of the electrolyte (1. Introduction and abstract), where the formation of the SEI layer proceeds through three major steps of: 1) reduction of electrolyte solvent/anion, 2) growth of the reduction products into the SEI, and 3) deposition of the SEI layer, where the existence of the SEI layer is crucial to the safety, power, and lifetime of the battery.
Mogensen et al. states on page 1173: “sodium ion batteries and lithium ion batteries are both subject to the same limitations in the anode-electrolyte interfacial reaction; the solid electrolyte interphase on an anode with the electrochemical potential below ~1 V vs Na+/Na is vital to make a sodium ion battery kinetically stable”.
Therefore, it is clear that the electrolyte composition including the electrolyte salt and the SO2 additive along with the anode inherently participates in the SEI formation.
It is also noted that limitations directed to the method of operating the electrochemical cell (e.g. “metallic sodium is electrodeposited on the anode during charging” and “at least one electrolyte salt which participates in anodic Solid Electrolyte Interface formation with the SO2 additive and the anode”) it is noted that said limitations are not given patentable weight in the product claims because they are byproducts of the electrochemical cell during operation of charging and discharging. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
While Nimon does not expressly disclose the SEI comprises one or more of Na2S2O4, Na2O or Na2S, the reference discloses the electrolyte salt can be NaPF6 ([0070]), such that Na2O would be part of the SEI that forms from the decomposition of NaPF6 and the ether solvent.
Regarding limitations directed to specific properties of the SEI, such that it comprises one or more of Na2S2O4, Na2O or Na2S, it is noted that once the reference discloses a sodium anode, SO2 additive, a sodium salt such as NaPF6 and an ether solvent, as set forth above, and therefore is substantially the same as the electrochemical cell of claim 1 as stated in paragraph [0004] of the published application, it will, inherently, display the recited properties. See MPEP 2112.
Regarding claim 3, Nimon discloses all the claim limitations as set forth above and further discloses the at least one electrolyte salt which participates in the anodic SEI formation comprises fluorinated sulfonate and/or fluorinated carboxylate salt and/or fluorinated sulfunylimide and/or acetate salt (it is disclosed corresponding sodium salt can be used in the case of sodium negative electrode, where [0070] discloses lithium triflate as a salt for a lithium electrode).
Regarding claim 4, Nimon discloses all the claim limitations as set forth above and further discloses the at least one electrolyte salt which participates in the anodic SEI formation is selected from sodium trifluoromethanesulfonate (NaTriflate), sodium-pentaluoroethanesulfonate (Na-C2F5SO3), sodium bis (trifluoromethanesulfonyl)imide (NaTFSI), sodium bis(flourosulfonyl)imide (NaFSI), sodium- trifluoroacetate (Na-CF3CO2), and sodium-pentaluoroethanesulfonate (Na-C2F5SO3) or any combination thereof (it is disclosed corresponding sodium salt can be used in the case of sodium negative electrode, where [0070] discloses lithium triflate as a salt for a lithium electrode).
Regarding claim 6, Nimon discloses all the claim limitations as set forth above and further discloses the solvent is selected from 1,3-Dioxolane, 1,4-Dioxane, 1,2-Dimethoxyethane, diglyme, glyme, pyridine, furazan, methyl- furazan, dimethyl-furazan or any mixture thereof (DME, as set forth above).
Regarding claim 7, Nimon discloses all the claim limitations as set forth above and further discloses the at least one electrolyte salt which participates in the anodic SEI formation at least partially comprises NaBF4, NaSCN, NaPF6, NaClO4, NaB(CN)4, NaBF3CN, NaBF2(CN)2, NaBF(CN)3, or NaAl(BH4)4 (as set forth in [0070], LiPF6 is a salt option, where corresponding sodium salts are mentioned for sodium electrodes).
Regarding claim 8, Nimon discloses all the claim limitations as set forth above and further discloses an anodic current collector (12) on which metallic sodium is deposited during charging (in the lithium example, lithium is deposited at the negative electrode; [0047]-[0048]), wherein the anodic current collector is selected from copper or its alloys ([0041]).
Regarding claim 9, Nimon discloses all the claim limitations as set forth above, and further discloses the non-aqueous electrolyte is in direct contact with both the anode and the cathode ([0039] and see Figure 2), and wherein the cathode comprises partially oxidized Na2S (it is disclosed during charging, electrons are extracted from the positive electrode and oxidizes the species present in the electrode ([0047]) and during discharge, the highly oxidized polysulfides are reduced to less oxidized polysulfides and lithium sulfide ([0049]), where Nimon further discloses the positive electrode contains sulfur ([0037]) and can be lithium sulfide and/or lithium polysulfide in the lithium example ([0047]), such that in the sodium electrode example, it would be sodium sulfide or sodium polysulfide.
Regarding claim 13, Nimon discloses all the claim limitations as set forth above and further discloses an anodic current collector (12), wherein the anodic current collector is selected from copper or its alloys ([0041]).
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 25 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nimon et al. (US 2004/0081894) as evidenced by Ofer et al. (WO 2008/147751), Bekaert et al. (“Emerging Nanotechnologies in Rechargeable Energy Storage Systems”), Chen et al. (“High Performance Lithium-Ion Batteries Using Fluorinated Compounds”), Takenaka et al. (“Frontiers in Theoretical Analysis of Solid Electrolyte Interphase Formation Mechanism”) and Mogensen et al. (“Solubility of the Solid Electrolyte Interphase (SEI) in Sodium Ion Batteries”) in view of Nakatsutsumi et al. (US 2015/0155601).
Regarding claims 25 and 26, Nimon discloses all the claim limitations as set forth above, but the reference does not expressly disclose a concentration of the at least one electrolyte salt with respect to the electrolyte is of at least 1 mol, or more specifically, between 1.5 mol and 2.5 mol.
Nakatsutsumi discloses the molar concentration of sodium salt in the non-aqueous electrolytic solution may be 0.5 mol/L to 2.0 mol/L ([0083]).
As Nimon is not limited to any specific examples of the concentration of the at least one electrolyte salt with respect to the electrolyte and as a molar concentration for sodium salt in a non-aqueous electrolytic solution of 0.5 mol/L to 2.0 mol/L was well known in the art before the effective filing date of the claimed invention, as evidenced by Nakatsutsumi above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected any suitable amount of sodium salt, including a molar concentration between 0.5 mol/L to 2.0 mol/L in the device of Nimon. Said combination would amount to nothing more than the use of a known element for its intended use in a known environment to accomplish an entirely expected result.
Additionally, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nimon et al. (US 2004/0081894) as evidenced by Ofer et al. (WO 2008/147751), Bekaert et al. (“Emerging Nanotechnologies in Rechargeable Energy Storage Systems”), Chen et al. (“High Performance Lithium-Ion Batteries Using Fluorinated Compounds”), Takenaka et al. (“Frontiers in Theoretical Analysis of Solid Electrolyte Interphase Formation Mechanism”) and Mogensen et al. (“Solubility of the Solid Electrolyte Interphase (SEI) in Sodium Ion Batteries”).
Regarding claim 27, Nimon discloses all the claim limitations as set forth above.
While the reference does not expressly disclose the mole fraction of the SO2 additive is between 0.05 and 0.1 with respect to the electrolyte, the reference discloses the SO2 additive is in an amount no more than about 49% by weight of the electrolyte solvent mixture ([0029]).
To calculate the SO2 mole fraction, one of ordinary skill in the art would know that DME has a molecular weight of 90.122 g/mol, dioxolane has a molecular weight of 74.08 g/mol, and SO2 has a molecular weight of 64.066 g/mol. Nimon discloses in paragraph [0069] that the electrolyte includes a 1,3 dioxolane cosolvent between about 5 and 15% by weight, where the main solvent can be DME at about 70 to 90% by weight and up to 49% by weight of the additive, where paragraph [0101] states a ratio of DME to dioxolane at 9:1 is suitable. By using these numbers, one can calculate that the total moles of SO2 in the electrolyte is between 0.002 and 0.77 (for 0.1 % to 49% weight) and SO2 is present as 0.0014 to 0.67 mole fraction.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Response to Arguments
Applicant's arguments filed 2/17/26 have been fully considered but they are not persuasive.
It is noted the Response to the Declaration section is at the beginning of the Office Action.
Applicant’s arguments with respect to the inherency for SEI formation and whether or not Nimon enables the use of a sodium-based cell has already been responded to in the Response to Declaration section, such that the arguments were not found to be persuasive. It is noted that Applicant has repeatedly failed to demonstrate Nimon does not teach a sodium-based cell with any factual evidence proving the assertion.
In fact, Applicant has provided evidence in the declaration that SEI formation in a sodium-based cell is possible, as pointed out in the Response to Declaration section above. Applicant has only stated in one that the SEI formed would be thicker than lithium-based cells and in another that the SEI formed would be less stable, none of which is relevant to the claimed invention or is suitable to be used to argue against an anticipatory rejection.
Nimon explicitly states in paragraph [0070] that corresponding sodium salts can be used for situations in which sodium metal is used for the negative electrode, where paragraph [0070] also states the use of lithium triflate for a lithium negative electrode, such that sodium triflate would be the corresponding sodium salt as disclosed by Nimon, and where the instant specification discloses on pages 9-10 that sodium triflate as an electrolyte salt with an SO2 additive in the electrolyte would result in an SEI layer formation, where SEI is believed to form synergistically with the SO2 additive. Therefore, it is unclear why Nimon’s disclosure would not teach the claimed electrolyte salt participating in anodic SEI formation with SO2 and the anode as claimed, where it is noted that 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, I.).
Applicant further argues that SEI formation is highly dependent on the anode material, electrolyte composition, and operating conditions and that sodium based SEIs differ significantly from lithium-based SEIs due to differences in salt decomposition products and solvent interactions. However, Applicant has not provided any evidence that Nimon would not necessarily possess the claimed SEI layer as repeatedly stated in the Office Action. Applicant has only provided conclusory statements without any evidence. It is noted that the Office Action has provided several pieces of evidence, namely Ofer, Bekaert, Chen, and Takenaka, to demonstrate the importance of SEI formation in the functionality of a battery, and that SEI formation is inherently present, but Applicant still has not provided any evidence to show SEI formation is not inherently present or that sodium with SO2 additive as disclosed by Nimon would not necessarily form the claimed SEI layer. As noted previously, Applicant has only provided evidence in the declaration that an SEI layer does form in sodium-metal batteries, such that it is unclear how Applicant is arguing the SEI formation is impossible in Nimon or is not enabled, but at the same time provides evidence to the contrary.
Applicant argues that “metallic sodium is electrodeposited on the anode during charging” and “at least one electrolyte salt which participates in anodic SEI formation with the SO2 additive and the anode” are structural and functional properties of the electrochemical cell, not merely a method of production.
Applicant further argues that “metallic sodium is electrodeposited on the anode during charging” defines the anode as a rechargeable metallic sodium anode capable of reversible sodium plating and stripping, which is a structural and functional property of the cell, distinguishing it from non-rechargeable or alloy based anodes. Applicant further argues the Office’s assertion this is an inherent property is unsupported without evidence. However, Applicant just stated themselves that “metallic sodium is electrodeposited on the anode during charging” defines the anode as a rechargeable metallic sodium anode capable of reversible sodium plating and stripping, which is a structural and functional property of the cell (which means it is an inherent property), distinguishing it from non-rechargeable or alloy based anodes, where Nimon teaches a rechargeable metallic sodium anode battery. It is unclear why Nimon would not necessarily possess the claimed feature when it was stated to be necessarily present by Applicant. Also, it is unclear why if something is a structural and functional property of the cell it is not considered to be an inherent property. Clarification is requested. Additionally, Applicant is arguing the determination the limitations are product-by-process limitations, and it is unclear why inherency is being brought up instead in this argument. No argument was further presented related to the interpretation of the limitation as a product-by-process limitation.
Applicant is invited to provide a scientific explanation as to why sodium is not electrodeposited during charging when the anode is made of sodium, as disclosed by Nimon, when it is an inherent property and as shown by Nimon in the lithium example that lithium is electrodeposited during charging.
As evidenced by “New electrode material could lead to rechargeable sodium batteries” by Melissae Fellet on May 4th, 2012, it is disclosed that “[w]hen a battery with an anode made from sodium metal discharges, electrons flow from that electrode to the other” and “[w]hen the battery is charged, this process is reversed: electrons flow out of the cathode, releasing the sodium ions inside” (see the Figure showing the flow of ions for a lithium battery example). This is well-known knowledge by one of ordinary skill in the art regarding any type of rechargeable battery and is indeed an inherent property based on the functionality of a rechargeable battery. Applicant has not provided any evidence to show the contrary from a rechargeable battery.
Therefore, it is unclear why Nimon lacks enabling disclosure of a rechargeable metallic sodium anode where metallic sodium is electrodeposited during charging when it is well-known knowledge by one of ordinary skill in the art regarding rechargeable batteries.
Applicant still has not provided any evidence to show that metallic sodium would not be electrodeposited during charging given metallic sodium is used for the anode, which is disclosed by Nimon.
Applicant further argues that the electrolyte salt “participates in anodic SEI formation together with the SO2 additive and the anode” specifies a functional interaction between the electrolyte components and the anode and is not a process limitation but a structural feature of the electrolyte and anode system. Applicant has not provided any proof that the electrolyte components and the sodium anode of Nimon would not necessarily possess this feature. Additionally, it is unclear how the formation of anything based on required elements is not considered a process limitation. Applicant is requested to elaborate and explain the logic behind this reasoning. A chemical reaction is still a process just like baking is a chemical reaction and so is adding two chemical components together that will react with each other because it involves the action of combining the elements together.
Applicant argues that the claimed limitations result in a structurally or functionally distinct product such that it is a different and nonobvious product than the product prepared according to Nimon. However, no evidence or factual support was provided. Applicant asserts the way sodium is electrodeposited leads to differences in physical and chemical structure of the SEI compared to what is described or inherently implied by lithium systems. However, the method of operating the electrochemical cell limitations are “metallic sodium is electrodeposited on the anode during charging” and “at least one electrolyte salt which participates in anodic SEI formation with the SO2 additive and the anode” are unrelated to the physical and chemical structure of the SEI. Additionally, it is unclear how the mere fact that metallic sodium is electrodeposited on the anode during charging, which is an inherent property of the operation of a battery, would result in an SEI having different physical and chemical structure. Further, it is unclear how the mere fact that “at least one electrolyte salt which participates in anodic SEI formation with the SO2 additive and the anode”, which once again, as evidenced by the numerous publications, is a crucial element in ensuring a functional battery, would result in an SEI having different physical and chemical structure. The SEI having different physical and chemical structure referred to by Applicant is dependent upon the fact it has sodium salt and not dependent upon the two limitations directed to the method of operating the electrochemical cell.
It is noted that Applicant’s arguments filed on 2/17/26 has not addressed the previous Office Action’s response to arguments, such that none of the requested explanations with scientific evidence or proof from the Examiner in the previous Office Action were addressed and have merely provided conclusory statements that Nimon has not disclosed the formation of SEI using a sodium based battery structure merely based on the fact that Nimon is “lithium-focused”.
The Office has requested Applicant to provide scientific evidence to show that one skilled in the art would not expect the same inherent functional and structural characteristics in a lithium based system to also be present in a sodium based system, such as metallic sodium (or any anode material) to be electrodeposited on the anode during charging of a rechargeable battery, which the Office has provided scientific evidence above disclosed by Melissae Fellet. It is noted that Applicant did not respond to any of these citations from Melissae Fellet or Mogensen. Applicant has repeatedly failed to provide any evidence against the contrary.
Additionally, the other scientific evidence requested by the Office is to show SEI does not form with the SO2 additive, the anode, and the at least one electrolyte salt in a rechargeable battery. As Examiner has noted multiple times, the cited references stated an SEI formation is crucial to the function of a rechargeable battery, where Ofer discloses that SO2 is a known SEI former and the electrolyte components form the SEI layer on the surface of the anode, such that it is unclear why an SEI would not be formed in Nimon’s battery when it contains SO2 and the claimed electrolyte materials. In fact, as noted above, Applicant has provided evidence to support an SEI layer forms in a sodium-based battery and is well known in the art before the effective filing date of the claimed invention (Iermakova and Dugas cited by Applicant).
Further, as previously presented, Mogensen et al. “Solubility of the Solid Electrolyte Interphase (SEI) in Sodium Ion Batteries”, where it states on page 1173: “sodium ion batteries and lithium ion batteries are both subject to the same limitations in the anode-electrolyte interfacial reaction; the solid electrolyte interphase on an anode with the electrochemical potential below ~1 V vs Na+/Na is vital to make a sodium ion battery kinetically stable”.
Applicant is encouraged to file an Appeal because they appear to not understand the entirety of the disclosure of a prior art must be taken into consideration and not merely snippets and select excerpts that do not read upon the claims when there are other portions that do read upon the claims. Additionally, Applicant repeatedly assert Nimon has only disclosed a lithium-based cell when Nimon has in fact disclosed a sodium-based cell and a sodium-based cell was well known before the effective filing date of the claimed invention, as evidenced by the numerous pieces of references provided in the Office Action, such that no guidance is needed from Nimon for one of ordinary skill in the art to make a sodium-based battery cell at all.
Therefore, the arguments were not found to be persuasive.
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 CHRISTINA CHERN whose telephone number is (408)918-7559. The examiner can normally be reached Monday-Friday, 9:30 AM-5:30 PM PT.
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/CHRISTINA CHERN/Primary Examiner, Art Unit 1721
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