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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/23/2025 has been entered.
Claim Status
Claims 1-5 have been withdrawn
Claims 35-37 have been added.
Claims 35-37 are withdrawn by original presentation.
Claims 6-10, 18-34 have been examined on the merits.
Election/Restrictions
Applicant's withdrawal with traverse of claims 1-5 in the reply filed on 09/23/2025 is acknowledged. The traversal is on the ground(s) that the method and product claims are not patentably distinct. This is not found persuasive because method claims 1-5 are directed toward a method for preparing a compound, while claims 6-10, 18-34 are directed towards specific compounds. Restriction is proper because the composition in claims 6-8 could be manufactured by another a materially different process, such as at different times or temperatures .
The requirement is still deemed proper and is therefore made FINAL.
Newly submitted claims 35-37 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Applicant had added claims 35-37 directed toward a method for preparing a compound. Restriction is proper because the composition in claims 6-8 could be manufactured by another a materially different process, such as at different times or temperatures.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 35-37 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant's arguments filed 09/23/2025 have been fully considered but they are not persuasive. Applicant argues:
Barker does not teach or suggest the specific formulas recited in claims 6-8, specifically the co-substitution strategy of Ti4+ at 10wt% or more in combination with Zn at 5 mol% within a Ni/Mn-rich layered oxide and there is no guidance in Barker that would lead the skilled person to identify this particular combination.
Barker provides no reasoned basis or technical motivation that would compel the skilled person to isolate and combine Ni at 0.45, Zn at 5 mol%, and Ti at >10 wt% in conjunction with the specific Mn levels of claims 6 to 8. Such a combination would involve hindsight bias to select from multiple embodiments without a clear rationale.
Applicant elaborates on the declaration under §132 executed by Dr. Sathiya Mariyappan demonstrating that the method steps are required to obtain a homogenous material, the presence of a P2 phase with less sodium content, and the presence of unexpected technical effects of Ti content ≥ 10%.
The claimed compounds exhibit superior electrochemical performance and enhanced resistance to moisture.
Treacher does not suggest full-cell designs using the claimed cathodes and neither Barker nor Treacher provides any explicit or implicit motivation to combine their teaching in a manner that would lead to the claimed subject matter.
In regards to arguments a-b, the formula taught by Barker overlaps with the claimed compound of formula II, III, IV ([0065], [0139], and Example 12 of Table 1). It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by Barker because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05. When x is selected as 0.05, and y is selected as 0.1, the composition taught by Barker is identical to that in claim 6. Therefore the teaching of Barker encompass the claimed compounds. Further, Barker teaches the use of Ti at ≥ 10% (Table 1 example 12) as a preferred compound.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The formula taught by Barker overlaps with the claimed compound of formula II, III, IV ([0065], [0139], and Example 12 of Table 1) and varying the ratio of components within the narrowed range taught by Barker would be obvious to one of ordinary skill in the art.
In regards to arguments c-d, the Declaration is unpersuasive because the affidavit is primarily directed to the method steps of forming the material, however the method of forming the material is not claimed. Further, applicant fails to show alleged criticality and unexpected results of 10% Ti4+ because the discussion is broader than the compositions recited in claims 6-8. Fig. 3 of the previously provided affidavit demonstrates the modification of titanium and Mn content while maintaining Zn and Ni content. Barker teaches the use of Ti4+ at ≥10% (see Table 1 example 12) and further teaches a narrowed range of Zn, Ni and Mn content. One of ordinary skill in the art could modify the contents of the respective additional components within the disclosure of Barker, while maintaining a Ti4+ content ≥ 10% to reach the claimed invention. Further, advantages such as reduced structural instability and moisture sensitivity are not quantified. Thus, an unexpected technical effect is not clearly shown because the arguments presented are broader than the claimed compositions.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., enhanced moisture resistance, elimination of redox peaks, formation of stable O3 phase, and suppression of N) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In regards to argument e, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Barker teaches materials for electrodes in sodium ion battery applications (abstract). Treacher teaches a method of manufacturing a sodium ion battery cell (Abstract). Therefore, Barker and Treacher are analogous art and one of ordinary skill in the art could readily look Treacher to modify the electrochemical cell taught by Barker.
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) 6-10 and 18, 19, 25 and 27-34 are rejected under 35 U.S.C. 103 as being unpatentable over Barker et al., U.S. Publication No. 2015/0194672.
Regarding claim 6, Barker discloses a compound of formula II: NaNi0.5-xMn0.5-yZnxTiyO2 ([0065], [0139], and Example 12 of Table 1) wherein X is in the range 0≤X<0.5 ([0020], [0095]); Y is in the range 0≤Y<0.5 ([0021], [0096]); which overlaps with claimed compound of formula II: NaNi0.45Zn0.05Mn0.4Ti0.1O2 (II).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing to have selected the overlapping portion of the ranges disclosed by Barker because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05. When x is selected as 0.05, and y is selected as 0.1, the composition taught by Barker is identical to that in claim 6.
Regarding claim 7, Barker discloses a compound of formula III: NaNi0.5-xMn0.5-yZnxTiyO2 ([0065], [0139], and Example 12 of Table 1) wherein X is in the range 0≤X<0.5 ([0020], [0095]): Y is in the range 0≤Y<0.5 ([0021], [0096]); which overlaps with claimed compound of formula III: NaNi0.45Zn0.05Mn0.3Ti0.2O2 (III).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing to have selected the overlapping portion of the ranges disclosed by Barker because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.
Regarding claim 8, Barker discloses a compound of formula IV: NaNi0.5-xMn0.5-yZnxTiyO2 ([0065], [0139], and Example 12 of Table 1) wherein X is in the range 0≤X<0.5 ([0020], [0095]): Y is in the range 0≤Y<0.5 ([0021], [0096]); which overlaps with claimed compound of formula IV: NaNi0.45ZN0.05Mn0.35Ti0.15O2 (IV).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing to have selected the overlapping portion of the ranges disclosed by Barker because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.
Regarding claims 9, 27, and 30, Barker further discloses the compound according to claims 6-8, wherein an initial discharge capacity of said compound is 151 mAh/g ([0265]), which falls within claimed range of at least about 120 mAh-g-1.
Barker discloses all of the claim limitations as set forth above, but the reference does not explicitly disclose the initial discharge capacity as measured at a discharge rate which ranges from C/30 to1C. As the electrochemically active material efficiency is a variable that can be modified, among others, by adjusting the charge capacity, discharge rate, specific energy, energy retention, cycling performance, and stability ([0005]-[0007]), with said electrochemically active material efficiency increases as the discharge rate is decreased, the discharge rate would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date.
As such, without showing unexpected results, the claimed discharge rate cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention, would have optimized, by routine experimentation, the discharge rate of Barker to obtain the desired balance between the electrochemically active material efficiency and battery performance, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claims 10, Barker further discloses the compound according to claim 6, but the reference does not explicitly disclose wherein a specific energy of said compound is at least about 200 Wh-kg-1 when cycled at a voltage inferior to 4 V. As the electrochemically active material efficiency is a variable that can be modified, among others, by adjusting the charge capacity, discharge rate, specific energy, energy retention, cycling performance, and stability ([0005]-[0007]), with said electrochemically active material efficiency increases as the specific energy is increased, the specific energy would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date.
As such, without showing unexpected results, the claimed the specific energy cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date was made would have optimized, by routine experimentation, the specific energy of Barker to obtain the desired balance between the electrochemically active material efficiency and battery performance, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Additionally, the examiner notes that the composition recited in Barker overlaps with the claimed composition.
Regarding claims 28, 29, Barker further discloses the compound according to claim 7, but the reference does not explicitly disclose wherein a specific energy of said compound is at least about 200 Wh-kg-1 when cycled at a voltage inferior to 4 V and the specific energy is at least about 250 Wh-kg-1 when cycled at a voltage superior to 4 V. As the electrochemically active material efficiency is a variable that can be modified, among others, by adjusting the charge capacity, discharge rate, specific energy, energy retention, cycling performance, and stability ([0005]-[0007]), with said electrochemically active material efficiency increases as the specific energy is increased, the specific energy would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date.
As such, without showing unexpected results, the claimed the specific energy cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date was made would have optimized, by routine experimentation, the specific energy of Barker to obtain the desired balance between the electrochemically active material efficiency and battery performance, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Additionally, the examiner notes that the composition recited in Barker overlaps with the claimed composition.
Regarding claims 31, and 32, Barker further discloses the compound according to claim 8, but the reference does not explicitly disclose wherein a specific energy of said compound is at least about 200 Wh-kg-1 when cycled at a voltage inferior to 4 V and the specific energy is at least about 250 Wh-kg-1 when cycled at a voltage superior to 4 V. As the electrochemically active material efficiency is a variable that can be modified, among others, by adjusting the charge capacity, discharge rate, specific energy, energy retention, cycling performance, and stability ([0005]-[0007]), with said electrochemically active material efficiency increases as the specific energy is increased, the specific energy would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date.
As such, without showing unexpected results, the claimed the specific energy cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date was made would have optimized, by routine experimentation, the specific energy of Barker to obtain the desired balance between the electrochemically active material efficiency and battery performance, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Additionally, the examiner notes that the composition recited in Barker overlaps with the claimed composition.
Regarding claim 18, Barker further discloses the compound according to claim 6, but the reference does not explicitly disclose wherein the energy retention is superior to 70% over a hundred cycles when cycled at a voltage superior to 4 V. As the electrochemically active material efficiency is a variable that can be modified, among others, by adjusting the charge capacity, discharge rate, specific energy, energy retention, cycling performance, and stability ([0005] - [0007]), with said electrochemically active material efficiency increases as the energy retention is increased, the energy retention would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date.
As such, without showing unexpected results, the claimed the energy retention cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date was made would have optimized, by routine experimentation, the energy retention of Barker to obtain the desired balance between the electrochemically active material efficiency and battery performance, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claim 19, Barker further discloses the compound according to claim 6, but the reference does not explicitly disclose wherein the energy retention percentage of the compound of the invention at a voltage superior to 4 V, ranges from 73% to 99%. As the electrochemically active material efficiency is a variable that can be modified, among others, by adjusting the charge capacity, discharge rate, specific energy, energy retention, cycling performance, and stability ([0005]-[0007]), with said electrochemically active material efficiency increases as the energy retention is increased, the energy retention would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date.
As such, without showing unexpected results, the claimed the energy retention cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date was made would have optimized, by routine experimentation, the energy retention of Barker to obtain the desired balance between the electrochemically active material efficiency and battery performance, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Regarding claims 25, 33, and 34, Barker further discloses use of a compound as described in claim 6-8 as an electroactive compound in a cell or a battery, preferably as a positive electrode material ([0007]-[0008], [0157], [0220], [0223] regarding battery and positive electrode).
Claims 20-24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Jeremy Barker et al. (US 20150194672 A) as applied to claim 1 above, and further in view of Joshua Treacher et al. (US 20180269522 A1 - cited in IDS filed on 12/22/2021).
Regarding claim 20, Barker discloses an electrochemical cell ([0159] and [0225] regarding Na-ion cell) comprising: a negative electrode ([0002] regarding anode) configured to reversibly accept sodium ions from an electrolyte and to reversibly release sodium ions to the electrolyte ([0004], [0158]-[0159], [0225], [0229], [0232], [0234], [0237], [0239], [0243]-[0244], [0248], [0252], [0256], [0261], and [0264] regarding sodium ions), the negative electrode having at least one current collector ([0221] regarding current collector); a positive electrode ([0002] regarding cathode) comprising a compound according to claim 6, configured to reversibly accept sodium ions from the electrolyte and to reversibly release sodium ions to the electrolyte ([0004], [0158]-[0159], [0225], [0229], [0232], [0234], [0237], [0239], [0243]-[0244], [0248], [0252], [0256], [0261], & [0264] regarding sodium ions), the positive electrode having at least one current collector ([0220] regarding current collector).
Barker does not directly disclose a separator soaked with the electrolyte comprising sodium ions, in contact with both the negative and positive electrodes.
However, Treacher teaches a separator soaked with the electrolyte comprising sodium ions, in contact with both the negative and positive electrodes ([0003], [0056]-[0057], and [0074]-[0075] regarding porous separators and electrolyte).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the electrochemical cell of Barker with the electrochemical cell with a separator of Treacher, in order to electrically insulate the cell ([0074]).
Regarding claim 21, Barker further discloses the electrochemical cell according to claim 20, wherein the separator is selected from glass fiber, polyolefin separator and cellulose -based film ([0074] of Treacher regarding polyolefin-based porous separators).
Regarding claim 22, Barker further discloses the electrochemical cell according to claim 20, wherein the negative electrode comprises sodium metal, a carbonaceous compound, hard carbon, antimony, tin, phosphorous or a mixture thereof ([0218] regarding hard carbon anode).
Regarding claim 23, Barker further discloses the electrochemical cell according to claim 20, wherein the cell is a coin cell, a pouch cell, a cylindrical cell, or a prismatic cell ([0025], [0075], & [0079] of Treacher regarding pouch cell).
Regarding claims 24 and 26, Barker further discloses the electrochemical cell according to claim 20, but the reference does not explicitly disclose wherein the specific energy of the cell is at least about 200 Wh-kg-1 when cycled at a voltage inferior to 4 V. As the electrochemically active material efficiency is a variable that can be modified, among others, by adjusting the charge capacity, discharge rate, specific energy, energy retention, cycling performance, and stability ([0005]-[0007]), with said electrochemically active material efficiency increases as the specific energy is increased, the specific energy would have been considered a result effective variable by one having ordinary skill in the art before the effective filing date.
As such, without showing unexpected results, the claimed the specific energy cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date was made would have optimized, by routine experimentation, the specific energy of Barker to obtain the desired balance between the electrochemically active material efficiency and battery performance, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FELICITY B. ALBAN whose telephone number is (703)756-5398. The examiner can normally be reached Monday-Friday 7:30-5:00.
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/F.B.A./Examiner, Art Unit 1728
/MATTHEW T MARTIN/Supervisory Patent Examiner, Art Unit 1728