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 .
Election/Restrictions
Applicant’s election without traverse of Species I, subspecies B (fig. 2; claims 2-5) and Species II, subspecies B (figs. 7A, 7B; claims 15-18) in the reply filed on October 28, 2025 is acknowledged.
Claims 6-7 and 19-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 28, 2025.
Examiner’s Note: After further consideration, Species I (and the subspecies therewith) set forth in the original restriction is directed towards a subcombination regarding a cell (claims 1-14), while Species II (and the subspecies therewith) is directed towards a combination of a module (claims 15-20). A telephonic election regarding the Group election among the subcombination and combination was made for compact prosecution. See below for the restriction.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-14, drawn to an electrochemical cell, classified in H01M 10/658.
II. Claims 15-20, drawn to an electrochemical cell module, classified in H01M 10/653.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the combination does not require the semi-solid electrode required by the electrochemical cell. The subcombination has separate utility such as a stand-alone cell, or within a cell module that does not require the specified heat transfer configuration.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(A) Separate classification thereof (as set forth above): This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search.
(C) A different field of search (in light of the differences set forth above): Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries, a different field of search is shown, even though the two are classified together).
See MPEP §808.02.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these 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.
During a telephone conversation with Aeraj Haque on November 6 a provisional election was made to prosecute the invention of Group I, claims 1-14. Affirmation of this election must be made by applicant in replying to this Office action. Claims 15-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Note, for clarity’s sake: Examiner emphasizes that the election above, set forth in the groups, is used in conjunction with species election mailed September 22, 2025. Upon the election of Group I, the electrochemical cell (claims 1-14). Group II, and elected species II, subspecies B is completely withdrawn. However, the election of Species I, Subspecies B (the insulating structure of fig. 2; claims 2-5) (see the election dated October 28, 2025) is maintained. Accordingly, claims 1-5 and 8-14 are elected and examined below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 and 8-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the anode" in line 5. There is insufficient antecedent basis for this limitation in the claim. (Note: Antecedent basis is given for “an anode material”; line 2.) Since claims 2-5 and 8-14 are dependent upon claim 1, they are rejected for the same reason.
Claim 1 recites the limitation "the cathode" in line 6. There is insufficient antecedent basis for this limitation in the claim. (Note: Antecedent basis is given for “a cathode material”; line 3.) Since claims 2-5 and 8-14 are dependent upon claim 1, they are rejected for the same reason.
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) 1-2, 4, 8, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by US 2019/0348705 (Chen et al.).
As to claim 1, Chen et al. teach an electrochemical cell, comprising:
an anode material (anode [120]; para 0092-0095) disposed on an anode current collector [125];
a cathode material (cathode [110]; para 0089) disposed on a cathode current collector [115];
a separator (selectively permeable membrane [130]) disposed between the anode material [120] and the cathode material [110]) (fig. 1B); and
an insulating structure disposed around and configured to contain the anode [120], the anode current collector [125], the cathode [110], the cathode current collector [113], and the separator [130] (frames [135a, 135b, as well as pouch, which is interpreted to insulate, as it isolates the materials, thus considered insulative in at least this sense, barring specification) (fig. 1b; para 0045, 0059) (Office personnel are to give claims their broadest reasonable interpretation in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Also, limitations appearing in the specification but not recited in the claim are not read into the claim. See In re Zletz, 893F.2d 319, 321-22,13 USPQ2d, 1320, 1322 (Fed. Cir. 1989).),
wherein at least one of the anode and the cathode includes a semi-solid electrode material (semi-solid anode and cathodes; para 0009, 0089, 0092), the semi-solid electrode material including an active material in a liquid electrolyte, the liquid electrolyte having an electrolyte salt concentration of at least about 2.0 M (anolyte has a liquid electrolyte with a 4 M salt concentration; para 00164, 0166, 0168).
As to claim 2, Chen et al.’s insulating structure includes a frame with a first wall (frame member [135a]) and a second wall (frame member [135b]) disposed therein.
As to claim 4, Chen et al. teaches a region between the first wall [135a] and the second wall [135b] is evacuated (as the method of making includes a vacuum environment) (para 0035, 0146, 0156-0157).
As to claim 8, Chen et al.’s structure includes a frame, and thus the structure is the same as the product that is claimed. The limitation of sputtering is a process of making the product which does not further limit the structure of the claim.
“[E]ven though 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, 777 F.2d, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted).
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). 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). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113.
As to claim 14, Chen et al. teach the semi-solid electrode material further includes a conductive material (para 0089-0093).
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.
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) 3 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al., as applied to claims 1-2 and 8 above, further in view of US 2015/0140371 (Slocum).
As to claim 3, Chen et al. do not teach the first wall and the second wall are at least partially composed of glass.
However, in the same field of endeavor (related to cells with semi-solid electrodes (para 0063), Slocum teaches housings made of glass fiber filled plastic (para 0059). The motivation for using glass fiber filled plastic as the housing (first wall and the second wall) is to have a housing that is strong and heat resistant (para 0059). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have the housing (first and second wall) made of made of glass fiber filled plastic (as taught by Slocum and applied to Chen et al.) in order to have a housing that is strong and heat resistant.
As to claim 9, Chen et al. do not teach that the insulating frame (being sputtered is a product-by-process limitation that does not affect the product; see the rejection to claim 8 for full details of the interpretation, incorporated herein but not reiterated herein for brevity’s sake) includes at least one of silver or aluminum.
However, in the same field of endeavor (related to cells with semi-solid electrodes (para 0063), Slocum teaches housings made of aluminum (para 0059). The motivation for using aluminum as the housing (insulating frame) is to have a housing that is strong and heat resistant (para 0059). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to have the housing (insulating frame) made of made of aluminum (as taught by Slocum and applied to Chen et al.) in order to have a housing that is strong and heat resistant.
As to claim 10, Chen et al. do not teach a vent, the vent integrated into the insulating frame.
However, in the same field of endeavor (related to cells with semi-solid electrodes (para 0063), Slocum teaches housings with a vent (frangible portion) (para 0051). The motivation for having a vent (frangible portion) in the housing (insulating frame) is to allow gas to escape and prevent the cell from exploding (para 0051). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) for having a vent (frangible portion) in the housing (insulating frame) to allow gas to escape and prevent the cell from exploding.
As to claim 11, Slocum, relied upon to render obvious a first valve (frangible portion), includes one of the claimed first or second valves (as the valves are configured to allow air out of and into the system via breaking). (See the rejection to claim 10 for full details of the combination incorporated herein but not reiterated herein for brevity’s sake.)
The combination does not teach the presence of including a first valve (configured to allow air into the electrochemical cell from outside the electrochemical cell) and a second valve (configured to allow air out of the electrochemical cell from inside the electrochemical cell).
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the multiple frangible portions (constituting the first and second valve claimed), since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Also see MPEP §2144.04(VI)(B). (Note: The manner in which the claimed configuration is met is set forth above.)
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al., as applied to claims 1-2 above, further in view of US 2018/0090726 (Thompson et al.).
As to claim 5, Chen et al. shows a region between the first wall and second wall (first frame [135a] and second frame [135b]) and that teach that these members form a portion of the seal (fig. 1B; para 0059).
Chen et al. do not teach a region between the first wall and the second wall is filled with an inert gas.
However, in the same field of endeavor (related to cells with semi-solid electrodes (para 0104), Thompson et al. teach of having a pocket filled with inert gas between the seal to create a sealing pocket (para 0006-0007). The combination of using an inert gas pocket around a seal (as taught by Thompson et al.) with the structure of Chen et al. (seal created by the frames) would yield the predictable result of providing a sealing structure, as each element would function as it does separately (a seal and an inert pocket around a seal). Therefore it would have been obvious to one having ordinary skill in the art at the time the claimed invention was made (as applicable to pre-AIA applications) or effectively filed (as applicable to AIA applications) to combine using an inert gas pocket around a seal (as taught by Thompson et al.) with the structure of Chen et al. (seal created by the frames), as the combiantion would yield the predictable result of providing a sealing structure, as each element would function as it does separately (a seal and an inert pocket around a seal). “When considering obviousness of a combination of known elements, the operative question is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id . at ___, 82 USPQ2d at 1396.” See MPEP §2141(I).
Allowable Subject Matter
Claims 12 and 13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an Examiner’s statement of reasons for allowance: none of the prior art of record, alone or in combination, appears to teach, suggest, or render obvious the invention of at least claims 12 and 13.
Claim 12 teaches the electrochemical cell comprising the elements therein. Notably, the claim requires an air blower configured to push air through the first valve. Slocum, relied upon to render obvious the first valve, teaches that the valve is a frangible portion (para 0051). No motivation exists to combine such a structure with a blower. Thus none of the prior art alone or in combination teaches, suggests or renders obvious the claimed invention.
Claim 13 teaches the electrochemical cell comprising the elements therein. Notably, the claim requires further comprising a temperature sensor, the temperature sensor in communication with the first valve and the second valve and configured to open at least one of the first valve or the second valve when a temperature inside the electrochemical cell exceeds a threshold value. Slocum, relied upon to render obvious the first valve, teaches that the valve is a frangible portion (para 0051). No motivation exists to combine such a structure with a temperature sensor and configuration to operate the valves with respect to a threshold value. Thus none of the prior art alone or in combination teaches, suggests or renders obvious the claimed invention.
Conclusion
Note: WO 2020/131617 A1 (Bradwell et al.) is cited but is not relied upon. Bradwell et al. teach electrochemical cells with a positive electrodes in a semi-solid state (para 0048). The teachings include a system with a plurality of cells having an insulation zone [103] (fig. 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUGENIA WANG whose telephone number is (571)272-4942. The examiner can normally be reached a flex schedule, generally Monday-Thursday 5:30 -7:30(AM) and 9:00-4:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at 571-272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EUGENIA WANG/Primary Examiner, Art Unit 1759