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 .
Examiner’s Comments
Applicants’ response filed on 8/1/2025 has been fully considered. Claims 1-9 are pending.
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.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Unoki et al (JP 2019-179592 A) as evidenced by the article titled Precise calculation of crystallite size of nanomaterials: A review S.A. Hassanzadeh-Tabrizi..
Unoki et al (US 2021/0043945 A1) is being used as the English translation for Unoki et al (JP 2019-179592 A).
Regarding claim 1, Unoki discloses a catalyst for an air secondary battery (paragraph [0054]), wherein the catalyst comprises pyrochlore bismuth ruthenium oxide (paragraph [0055]), wherein the pyrochlore bismuth ruthenium oxide has a formula of Bi2Ru2O7 where A is Bi, B is Ru, x is 0 and z is 0 (paragraph [0015]). The dried product of the pyrochlore bismuth ruthenium oxide is pulverized in a mortar (pyrochlore bismuth-ruthenium composite oxide composed of particles that have been crushed; paragraph [0056]) and wherein the dried product is heated under an air atmosphere to 500 °C or more and 700 °C or less and calcined for 0.5 hours or more and 2 hours or less to obtain a calcined product (paragraph [0056])
Unoki does not appear to explicitly disclose a catalyst comprising the pyrochlore bismuth ruthenium oxide having a full width at half maximum of a diffraction peak corresponding to a 222 face obtained by a powder X-ray diffraction method using CuKα rays as X-rays of 0.400 degrees or larger and 0.713 degrees or smaller.
However, it would have been obvious to one of ordinary skill in the art to adjust the adjust the crystalline structure of the dried product of the pyrochlore bismuth ruthenium oxide in order to provide a crystallinity of the pyrochlore bismuth ruthenium oxide resulting in a full width at half maximum of a diffraction peak corresponding to a 222 face obtained by a powder X-ray diffraction method using CuKα rays as X-rays of 0.400 degrees or larger and 0.713 degrees or smaller.
The crystallite size is inversely proportional to FWHM according to the Scherrer formula as evidenced by the article titled Precise calculation of crystallite size of nanomaterials: A review S.A. Hassanzadeh-Tabrizi. A higher crystallite size results in a lower FWHM and a lower crystallite size results in a higher FWHM. Also, disclosed in the article is that controlling crystallite size has a significant impact on the quality of materials.
The structure of the particles of pyrochlore bismuth ruthenium composite oxide pulverized with a mortar in Unoki and the structure of the claimed particles of pyrochlore bismuth ruthenium composite oxide crushed in a plurality of bead milling passes is the same as both processes would result in crushed particles of pyrochlore bismuth ruthenium composite oxide.
The particles of pyrochlore bismuth ruthenium composite oxide crushed in a plurality of bead milling passes is a product-by-process limitation.
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
There is no obvious structural difference between particles of pyrochlore bismuth ruthenium oxide pulverized with a mortar and crushed in a plurality of bead milling passes as both processes would result in crushed particles of pyrochlore bismuth ruthenium oxide.
Regarding claim 2, Unoki discloses an air electrode comprising an air electrode substrate (paragraph [0050]) having an air electrode mixture supported on the air electrode substrate (paragraph [0050]). The air electrode mixture includes a catalyst and a conductive agent (paragraph [0052]). The catalyst is the catalyst of claim 1 as disclosed by Unoki above. The conductive agent comprises nickel powder (catalyst-supporting material supporting the catalyst; paragraph [0062]). The conductive agent comprising nickel powder would inherently function as a catalyst-supporting material supporting the catalyst as it comprises nickel which is the same as Applicant’s preferred material for the catalyst-supporting material.
Regarding claim 3, Unoki discloses the air electrode comprising the conductive agent comprising nickel powder (catalyst-supporting material supporting the catalyst; paragraph [0062]).
Regarding claim 4, Unoki discloses the air electrode mixture comprising a binder imparting water repellency (paragraphs [0052] and [0063]) and wherein the binder comprises polytetrafluoroethylene (water-repellent agent; paragraph [0063]).
Regarding claim 5-6, Unoki discloses an air electrode mixture comprising a binder imparting water repellency (paragraphs [0052] and [0063]) and wherein the binder comprises polytetrafluoroethylene (fluororesin; paragraph [0063]).
Regarding claim 7, Unoki discloses an air secondary battery comprising a container (Fig. 1 #4; paragraph [0038]), an electrode group accommodated in the container (Fig. 1 #4; paragraph [0038]), and an alkali electrolyte solution accommodated with the electrode group in the container (alkaline electrolyte liquid; paragraph [0069]). The electrode group includes an air electrode stacked on a negative electrode with a separator therebetween (paragraph [0039]). wherein the air electrode is the positive electrode (paragraph [0039]) and wherein the air electrode of Unoki is the air electrode according to claim 1 as disclosed above.
The structure of the alkali electrolyte solution accommodated into the container and injecting alkaline electrolyte liquid into the container would result in electrolyte container in the container.
The injecting alkaline electrolyte liquid into the container is a product-by-process limitation.
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
There is no obvious structural difference between accommodating the alkali electrolyte solution into the container and injecting alkaline electrolyte liquid into the container as the result would be alkaline electrolyte liquid in the container.
Regarding claim 8, Unoki discloses the air secondary battery comprising the negative electrode including a hydrogen-storage alloy (paragraph [0042]).
Regarding claim 9, Unoki discloses the catalyst comprising pyrochlore bismuth ruthenium oxide (paragraph [0055]) and wherein the pyrochlore bismuth ruthenium oxide has a formula of Bi2Ru2O7 where A is Bi, B is Ru, x is 0 and z is 0 (pyrochlore bismuth ruthenium composite oxide having chemical formula Bi2-xRu2O7 where the x = 0 and z = 0; paragraph [0015]).
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Morimitsu (JP 2016-152068 A).
A machine translation is being used as the English translation for Morimitsu (JP 2016-152068 A).
Regarding claim 1, Morimitsu discloses a catalyst for an air secondary battery (paragraphs [0001] and [0028]), wherein the catalyst comprises pyrochlore bismuth ruthenium oxide and/or bismuth iridium oxide (paragraph [0028]), wherein the pyrochlore bismuth ruthenium oxide has a formula of Bi2Ru2O7 (paragraph [0028]) and wherein paste is dried, pulverized in a mortar followed by firing in an air atmosphere for 2 hours to form pyrochlore bismuth iridium oxide (paragraph [0039]).
Morimitsu does not appear to explicitly disclose an embodiment comprising the pyrochlore bismuth ruthenium oxide formed by being dried, pulverized in a mortar followed by firing in an air atmosphere for 2 hours.
However it would have been obvious to one of ordinary skill in the art to substitute the pyrochlore bismuth iridium oxide for pyrochlore bismuth ruthenium oxide in order to provide a pyrochlore bismuth ruthenium oxide formed by being dried, pulverized in a mortar followed by firing in an air atmosphere for 2 hours.
Morimitsu does not appear to explicitly disclose the catalyst comprising the pyrochlore bismuth ruthenium oxide having a full width at half maximum of a diffraction peak corresponding to a 222 face obtained by a powder X-ray diffraction method using CuKα rays as X-rays of 0.400 degrees or larger and 0.713 degrees or smaller.
However, it would have been obvious to one of ordinary skill in the art to adjust the adjust the crystalline structure of the dried product of the pyrochlore bismuth ruthenium oxide in order to provide a crystallinity of the pyrochlore bismuth ruthenium oxide resulting in a full width at half maximum of a diffraction peak corresponding to a 222 face obtained by a powder X-ray diffraction method using CuKα rays as X-rays of 0.400 degrees or larger and 0.713 degrees or smaller.
The crystallite size is inversely proportional to FWHM according to the Scherrer formula as evidenced by the article titled Precise calculation of crystallite size of nanomaterials: A review S.A. Hassanzadeh-Tabrizi. A higher crystallite size results in a lower FWHM and a lower crystallite size results in a higher FWHM. Also, disclosed in the article is that controlling crystallite size has a significant impact on the quality of materials.
The structure of the particles of pyrochlore bismuth ruthenium composite oxide pulverized with a mortar in Morimitsu and the structure of the claimed particles of pyrochlore bismuth ruthenium composite oxide crushed in a plurality of bead milling passes is the same as both processes would result in crushed particles of pyrochlore bismuth ruthenium composite oxide.
The particles of pyrochlore bismuth ruthenium composite oxide crushed in a plurality of bead milling passes is a product-by-process limitation.
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
There is no obvious structural difference between particles of pyrochlore bismuth ruthenium oxide pulverized with a mortar and crushed in a plurality of bead milling passes as both processes would result in crushed particles of pyrochlore bismuth ruthenium oxide.
Regarding claim 2, Morimitsu discloses a positive electrode (air electrode) molded from a mixture comprising a conductive material, catalyst and water repellent (air electrode mixture; paragraph [0025]); wherein the catalyst is the catalyst of claim as disclosed by Morimitsu as disclosed above, wherein the catalyst is supported on the conductive material (paragraph [0022]), wherein the conductive material comprises a core material coated with a coating layer made of nickel and/or nickel alloy (paragraph [0021]) and wherein the positive electrode is integrated with the current collector (paragraph [0025]) and wherein the current collector comprises nickel (substrate; paragraph [0024]).
Regarding claim 3, Morimitsu discloses the positive electrode comprising the conductive material comprises a core material coated with a coating layer made of nickel and/or nickel alloy (paragraph [0021]).
Regarding claim 4, Morimitsu discloses the positive electrode comprising a water repellent (paragraph [0025]).
Regarding claim 5, Morimitsu discloses the positive electrode comprising the water-repellent comprising polytetrafluoroethylene (fluororesin; paragraph [0031]).
Regarding claim 6, Morimitsu discloses the positive electrode comprising the water-repellent comprising polytetrafluoroethylene (paragraph [0031]).
Regarding claim 7, Morimitsu discloses an air secondary battery comprising a PTFE container (paragraph [0047]), an electrode group of a positive electrode, a negative electrode and a nonwoven fabric therebetween (paragraph [0047]); the negative electrode, nonwoven fabric (separator) and positive electrode stacked in order from a bottom of the PTFE container (paragraph [0047]), wherein the nonwoven fabric is an electrolyte holder and is impregnated with a 6 mol/L aqueous solution (paragraph [0047]), wherein the 6 mol/L aqueous solution is an alkaline aqueous solution (alkaline electrolyte liquid; paragraph [0042]) and wherein the positive electrode is the air electrode (paragraph [0032]).
The structure of the alkali electrolyte solution accommodated into the container and injecting alkaline electrolyte liquid into the container would result in electrolyte container in the container.
The injecting alkaline electrolyte liquid into the container is a product-by-process limitation.
“Even though the product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale ending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
There is no obvious structural difference between accommodating the alkali electrolyte solution into the container and injecting alkaline electrolyte liquid into the container as the result would be alkaline electrolyte liquid in the container.
Regarding claim 8, Morimitsu discloses the air secondary battery comprising the negative electrode including a hydrogen storage alloy (paragraph [0033]).
Regarding claim 9, Morimitsu discloses the catalyst comprising the pyrochlore bismuth ruthenium oxide having a formula of Bi2Ru2O7 (pyrochlore bismuth ruthenium composite oxide having chemical formula Bi2-xRu2O7 where the x = 0 and z = 0; paragraph [0028]).
Response to Arguments
Applicant’s arguments, see page 5, filed 8/1/2025, with respect to the 112 rejections have been fully considered and are persuasive.
The 112(b) rejections have been withdrawn.
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicants argue that Unoki does not disclose the FWHM characteristics of the bismuth-ruthenium oxide.
This argument is moot as Unoki does not anticipate FWHM characteristics of the bismuth-ruthenium oxide of amended claim 1. Therefore, the 102 rejection of Unoki has been withdrawn. However, new grounds of rejection have been above.
Applicants argue that Morimitsu does not disclose the FWHM characteristics of the bismuth-ruthenium oxide.
This argument is moot as Morimitsu does not anticipate FWHM characteristics of the bismuth-ruthenium oxide of amended claim 1. Therefore, the 102 rejection of Morimitsu has been withdrawn. However, new grounds of rejection have been above.
Applicant's arguments filed 8/1/2025 have been fully considered but they are not persuasive.
Applicants argue that Unoki does not suggest the FWHM characteristics of the bismuth-ruthenium oxide.
This argument is not persuasive as Unoki discloses the dried product heated under an air atmosphere to 500 °C or more and 700 °C or less and calcined for 0.5 hours or more and 2 hours or less to obtain a calcined product (see paragraph [0056] of Unoki).
Unoki does not appear to explicitly disclose the catalyst comprising the pyrochlore bismuth ruthenium oxide having a full width at half maximum of a diffraction peak corresponding to a 222 face obtained by a powder X-ray diffraction method using CuKα rays as X-rays of 0.400 degrees or larger and 0.713 degrees or smaller.
However, it would have been obvious to one of ordinary skill in the art to adjust the adjust the crystalline structure of the dried product of the pyrochlore bismuth ruthenium oxide in order to provide a crystallinity of the pyrochlore bismuth ruthenium oxide resulting in a full width at half maximum of a diffraction peak corresponding to a 222 face obtained by a powder X-ray diffraction method using CuKα rays as X-rays of 0.400 degrees or larger and 0.713 degrees or smaller.
The crystallite size is inversely proportional to FWHM according to the Scherrer formula as evidenced by the article titled Precise calculation of crystallite size of nanomaterials: A review S.A. Hassanzadeh-Tabrizi. A higher crystallite size results in a lower FWHM and a lower crystallite size results in a higher FWHM. Also, disclosed in the article is that controlling crystallite size has a significant impact on the quality of materials.
Applicants argue that Unoki does not disclose or suggest pyrochlore bismuth-ruthenium composite oxide composed of particles that have been crushed in a plurality of bead milling passes.
This argument is not persuasive as Unoki discloses pyrochlore bismuth-ruthenium composite oxide pulverized with a mortar.
The structure of the particles of pyrochlore bismuth ruthenium composite oxide pulverized with a mortar in Unoki and the structure of the claimed particles of pyrochlore bismuth ruthenium composite oxide crushed in a plurality of bead milling passes is the same as both processes would result in crushed particles of pyrochlore bismuth ruthenium composite oxide.
The particles of pyrochlore bismuth ruthenium composite oxide crushed in a plurality of bead milling passes is a product-by-process limitation.
There is no obvious structural difference between particles of pyrochlore bismuth ruthenium oxide pulverized with a mortar and crushed in a plurality of bead milling passes as both processes would result in crushed particles of pyrochlore bismuth ruthenium oxide.
Applicants argue that Morimitsu does not suggest the FWHM characteristics of the bismuth-ruthenium oxide.
This argument is not persuasive as Morimitsu discloses the paste is dried, pulverized in a mortar followed by firing in an air atmosphere for 2 hours to form the catalyst (see paragraph [0039] of Morimitsu)
Morimitsu does not appear to explicitly disclose the catalyst comprising the pyrochlore bismuth ruthenium oxide having a full width at half maximum of a diffraction peak corresponding to a 222 face obtained by a powder X-ray diffraction method using CuKα rays as X-rays of 0.400 degrees or larger and 0.713 degrees or smaller.
However, it would have been obvious to one of ordinary skill in the art to adjust the adjust the crystalline structure of the dried product of the pyrochlore bismuth ruthenium oxide in order to provide a crystallinity of the pyrochlore bismuth ruthenium oxide resulting in a full width at half maximum of a diffraction peak corresponding to a 222 face obtained by a powder X-ray diffraction method using CuKα rays as X-rays of 0.400 degrees or larger and 0.713 degrees or smaller.
The crystallite size is inversely proportional to FWHM according to the Scherrer formula as evidenced by the article titled Precise calculation of crystallite size of nanomaterials: A review S.A. Hassanzadeh-Tabrizi. A higher crystallite size results in a lower FWHM and a lower crystallite size results in a higher FWHM. Also, disclosed in the article is that controlling crystallite size has a significant impact on the quality of materials.
Applicants argue that Morimitsu does not disclose or suggest pyrochlore bismuth-ruthenium composite oxide composed of particles that have been crushed in a plurality of bead milling passes.
This argument is not persuasive as Morimitsu suggests pyrochlore bismuth-ruthenium composite oxide pulverized with a mortar.
The structure of the particles of pyrochlore bismuth ruthenium composite oxide pulverized with a mortar in Morimitsu and the structure of the claimed particles of pyrochlore bismuth ruthenium composite oxide crushed in a plurality of bead milling passes is the same as both processes would result in crushed particles of pyrochlore bismuth ruthenium composite oxide.
The particles of pyrochlore bismuth ruthenium composite oxide crushed in a plurality of bead milling passes is a product-by-process limitation.
There is no obvious structural difference between particles of pyrochlore bismuth ruthenium oxide pulverized with a mortar and crushed in a plurality of bead milling passes as both processes would result in crushed particles of pyrochlore bismuth ruthenium oxide.
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 SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785