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 Objections
Claims 4-20 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, the claims 8-20 have not been further treated on the merits.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Srinivasan et al. (hereinafter “Srinivasan”) (WO 2012/118446 A1).
Regarding claim 1, Srinivasan teaches an electrode material including rare earth metal fluoride nanoparticles embedded in a carbon nanostructured matrix (see paragraph 57). The rare earth metal fluoride nanoparticles are of the following formula:
M11-x-yM2xM3yF3-x-2y
wherein M1 is a trivalent metal; M2 is a divalent metal; M3 is a monovalent metal; wherein one or both M1 and M2 comprise a rare earth metal; and 0≤x<0.75; 0≤y≤0.75; 0<x+y<0.75; and x+2y<3 (see paragraphs 65-67).
M1 may comprise aluminum (see paragraph 68).
M2 may comprise europium as a rare earth metal (see paragraph 71).
M3 may comprise lithium (see paragraph 72).
In an exemplary embodiment Srinivasan teaches that a thickness of an electrode layer including the electrode material may be 25 µm (see paragraph 157). Thus, it is understood that nanoscale rare earth metal fluoride particles must be contained in multiple layers within the electrode layer.
Regarding claim 2, Srinivasan does not teach the substitution of fluorine with one or more other halogen atoms. As such, it is presumed no such substitution is made in the rare earth metal fluoride nanoparticles of Srinivasan.
Claim Rejections - 35 USC § 103
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Srinivasan as applied to claims 1 and 2 above.
Regarding claim 3, with respect to the value of y as set forth above, it is noted that the range of 0 to 0.75 as taught by Srinivasan overlap the claimed amount of 0.01 to 10 atomic % as recited in claim 3. In the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See 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) (see MPEP § 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHAN J ESSEX whose telephone number is (571)270-7866. The examiner can normally be reached Monday - Friday, 8:30 am - 6:00 pm.
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/STEPHAN J ESSEX/Primary Examiner, Art Unit 1727