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 .
Claim Status
This Office action is in response to the amendment and remarks filed on 8/11/2025.
Claims 1, and 3-20 have been amended, 21 has been added.
Claim 2 has been cancelled.
Claims 1, and 2-21 are currently pending.
Response to Amendment
In light of the amendment the objection to drawings is withdrawn.
In light of the amendments the objections to specification are withdrawn.
In light of the amendment the objection to claim 1 is withdrawn.
In light of the amendment the objections to claims 3 and 18 are withdrawn.
In light of the amendment the rejection to claim 9 under § 112(b) is withdrawn.
In light of the amendment the rejections to claim 10 under both § 112(b) and 112(d) are withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 6-11, 13, 16-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 20120183880 A1, TOUSSAINT et al.
Regarding claims 1, 17 and 20. TOUSSAINT discloses an aqueous metal-air battery comprising [0001]:
an anode formed from a metal or metal alloy [0003], wherein the metal or metal alloy comprise one or more of lithium, or sodium [0020] as applied to claim 20;
a solid electrolyte attached to the anode [0020]; and
an aqueous electrolyte; and wherein
an oxygen evolution electrode; an oxygen reduction electrode; ([0054] referred to as an oxygen liberation electrode) and an oxygen reduction electrode ([0054] referred to as an air electrode), each comprising a catalyst [0005] in the form of “a family of ceramic materials” and [0017] “These types of ceramic membranes are also known in the literature by the name LISICON (Li Super Ionic Conductor).” (also applied to claim 17)
a protective thin film coating a surface of the solid electrolyte; [0011] and [0020] (also applied to claim 17) and wherein
TOUSSAINT does not explicitly disclose the oxygen evolution electrode and the oxygen reduction electrode are dual oxygen reduction and evolution electrodes, and wherein the oxygen evolution electrode and the oxygen reduction electrode each comprise a different catalyst.
Making a feature separable or integral is obvious over the prior art.
Merely making the oxygen evolution electrode and the oxygen reduction electrode separated from each other is an obvious enhancement of feature over the prior art.
In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one-piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.") and conversely,
In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is "press fitted" and therefore not manually removable. The court held that "if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose."). See MPEP 2144.04 V. C.
It would have been obvious before the effective filing date to have separated the oxygen reduction and evolution electrodes with their own catalyst disclosed by TOUSSAINT in the instant application.
Regarding claim 3. The aqueous metal-air battery of claim 1, wherein the protective thin film comprises a cation exchange membrane [0011](b).
Regarding claim 6. TOUSSAINT [0019] discloses the aqueous metal-air battery of claim 1, wherein the solid electrolyte has a thickness of 30 - 500 micrometers.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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).
It would have been obvious for one of ordinary skill in the art before the effective filing date to have used about 50 µm or less as the claimed range.
Regarding claim 7. TOUSSAINT [0011] (b) discloses the aqueous metal-air battery of claim 6, wherein the solid electrolyte has a multi-layer structure with “at least one solid membrane”.
TOUSSAINT [0008] discloses that “a rigid structure forming a frame enclosing and stabilizing the solid electrolyte membrane which, by virtue of this, can be provided with much smaller thicknesses.”
It would have been obvious before the effective filing date to have used a multi-layer structure for the solid electrolyte in order to stabilize the membrane or film.
Regarding claim 8. The aqueous metal-air battery of claim 1, wherein the solid electrolyte has an ionic resistance of about 0.25 Ω/cm2 to about 5 Ω/cm2.
Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.).
Regarding claim 9. The aqueous metal-air battery of claim 1, wherein the solid electrolyte comprises a Nasicon-type ceramic [0018].
Regarding claim 10. The aqueous metal-air battery of claim 1, wherein the solid electrolyte comprises a ceramic material; and wherein the ceramic material comprises a Nasicon-type ceramic [0018], a Lisicon-type ceramic [0017].
Regarding claim 11. The aqueous metal-air battery of claim 10, wherein the solid electrolyte comprises a Nasicon-type ceramic [0018].
Regarding claim 13. The aqueous metal-air battery of claim 1 comprises the oxygen evolution electrode and the oxygen reduction electrode; and wherein the catalyst of the oxygen reduction electrode comprises a metal nitride [0021] in the form of NaPON or LiPON.
Regarding claim 16. The aqueous metal-air battery of claim 1, comprises the oxygen evolution electrode and the oxygen reduction electrode; and wherein
each of the oxygen evolution electrode and the oxygen reduction electrode each comprise a gas-diffusion layer.
TOUSSAINT discloses an oxygen evolution electrode ([0054] referred to as an oxygen liberation electrode) and an oxygen reduction electrode ([0054] referred to as an air electrode), each comprising a catalyst [0005] in the form of “a family of ceramic materials”
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.).
Both electrodes diffuse O2 as a matter of function in the instant application and in the applied reference.
Regarding claim 18. TOUSSAINT teaches in the annotated figure below the aqueous metal-air battery of claim 17, wherein the oxygen reduction electrode forms an outer shell of the aqueous metal-air battery. The electrode forms an outer shell that is exposed to the outside atmosphere containing the aqueous electrolyte inside.
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Claims 3-5, 12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 20120183880 A1, TOUSSAINT et al. in view of US 20180316051 A1, LEE et al. disclosed in the European search report dated 6/30/2025.
Regarding claims 3 and 4. TOUSSAINT discloses the aqueous metal-air battery of claim 1, wherein the protective thin film comprises a cation exchange membrane [0011](b), but does not disclose the protective thin film comprises a plurality of ligands or a cation exchange membrane.
LEE [title] discloses a Negative Electrode for Lithium Metal Battery, Method of Preparing Negative Electrode, And Lithium Metal Battery Including the Same.
LEE [0194-0196] discloses “The MOF (a metal-organic framework [0186]) may be a porous crystalline compound in which a Group 2 to Group 15 metal ion or a Group 2 to Group 15 element ionic cluster is chemically bonded with an organic ligand. The organic ligand refers to an organic group that may form an organic bond such as a coordinate bond, ionic bond, or covalent bond. For example, an organic group having at least two binding sites for such metal ions as described above may form a stable structure through binding with the metal ions. The organic ligand may be a group derived from an aromatic dicarboxylic acid” (also meeting the limitations of claim 4.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used the film of ligands disclosed by LEE on the electrolyte taught by TOUSSAINT in order to form a stable structure through binding with metal ions.
Regarding claim 5. TOUSSAINT modified by LEE [0196] discloses the aqueous metal-air battery of claim 4, wherein the plurality of ligands comprise an imidazole-based compound that has a steric hindering group at the distal end.
Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.).
[0050] of the instant application specifies the use of acid-doped polybenzimidazole backbone as a suitable ligand.
Regarding claim 12. TOUSSAINT discloses the aqueous metal-air battery of claim 1.
TOUSSAINT does not disclose the solid electrolyte comprises one or more of a lithium salt and/or a sodium salt blended into one or more of polyethylene oxide ("PEO"), polyethylene oxide ("PEO"), polyacrylonitrile ("PAN"), polyvinylidene fluoride ("PVDF"), polyacrylate ("PA"), polymethyl methacrylate ("PMMA"), polycyanoacrylate ("PCA"), poly(ethylene carbonate), poly(propylene carbonate), poly(trimethylene carbonate), and poly(vinylene carbonate).
LEE [0066] discloses a lithium salt solid in a nonaqueous electrolyte layer, called a protective layer [0235] polyethylene oxide.
LEE [0021] discloses “a protective layer on a negative electrode for suppressing and guiding dendritic growth in a lithium metal battery”
It would have been obvious to one of ordinary skill before the effective filing date to have used the polyethylene oxide disclosed by LEE as the solid electrolyte taught by TOUSSAINT in create a protective layer on a negative electrode for suppressing and guiding dendritic growth in a lithium metal battery.
Regarding claim 21. TOUSSAINT modified by LEE discloses the aqueous metal-air battery of claim 4.
TOUSSAINT modified by LEE does not explicitly disclose wherein the ligands are impermeable to hydroxides and permeable to ionic species.
When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
TOUSSAINT modified by LEE does not explicitly disclose the properties as claimed in the instant application, however because the protective layer are ligands on the surface of the same metal as disclosed in the rejection of claim 4 above it would be reasonable to conclude that the ligands disclosed by LEE are impermeable to hydroxides and permeable to ionic species as in the instant application.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over TOUSSAINT in view of US 20040241537A1, OKUYAMA et al.
Regarding claim 14. TOUSSAINT teaches the aqueous metal-air battery of claim 1 comprises the oxygen evolution electrode ([0054] referred to as an oxygen liberation electrode) and the oxygen reduction electrode ([0054] referred to as an air electrode); but
TOUSSAINT does not teach the catalyst of the oxygen evolution electrode comprises an oxide, hydroxide or oxyhydroxides of one or more of nickel, iron, manganese, and copper.
OKUYAMA [0096] teaches the catalyst of the oxygen evolution electrode comprises polyethylene oxide.
OKUYAMA discloses [0094-0095] “As the separator, various materials can be used, such as a porous film containing polyethylene,” and further teaches “the porosity of the separator is preferred to be in a range of 30 to 90%. The reason is as follows. If the porosity is less than 30%, it may be difficult to obtain a high electrolytic solution holding property in the separator. On the other hand, if the porosity is over 90%, sufficient separator strength may not be obtained. A more preferred range of the porosity is 35 to 60%.”
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used the polyethylene film taught by OKUYAMA on the electrode taught by TOUSSAINT in order to achieve the proper porosity for the electrolyte solution used with the solid catalyst.
Regarding claim 15. Modified TOUSSAINT discloses the aqueous metal-air battery of claim 14 wherein the aqueous electrolyte comprises hydroxides [0036] of the anode and further comprises one or more nickel ions, iron ions (in the form of steel).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over US 20120183880 A1, TOUSSAINT et al in view of US 6500575 B1, SHIUE et al.
Regarding claim 19. TOUSSAINT discloses the aqueous metal-air battery of claim 17.
TOUSSAINT does not disclose the metal-air battery further comprises a switch to select between a charge or discharge cycle.
SHIUE discloses a method for in-cell air management [title] where SHIUE [col 6 lines 24-26] discloses “The on-board control network includes a sensor circuit, which monitors the demand of load, and an electronic on/off switch.”
SHIUE further discloses [col 6 lines 26-33] “When a load is in demand (discharging), the sensor circuit will issue a signal to turn on the switch, which then orders the charge of supercapacitor (charge can be completed in less than a second) and the delivery of power to activate the micro pumps (fans). As soon as a load is ceased(charging), the sensor will terminate the current flow from the supercapacitor to the micro pumps (fans), and the battery is closed from atmosphere.”
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used the switch taught by SHUIE on the battery taught by TOUSSAINT in order to put the battery into a charge and discharge mode which SHIUE refers to as “demand” and “a load is ceased”.
Response to Arguments
Applicant’s arguments with respect to claim 1 has been considered but is 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20160344076 A1, PARK et al. PARK discloses a Li or Na metal air battery that has multiple electrolytes in several states that utilize a ligand and a switch.
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.
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/L.L./Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727