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 .
Status of the claims
This is the second non-final office action for application 18/129,971. Upon further search, new art has been identified which is applied under 35 U.S.C. 102, 102/103,and 103, as described below. Claims 1-5 are pending.
Claim Rejections - 35 USC § 102
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.
(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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (US 2015/0333326 A1).
In reference to claims 1 and 2, Lee discloses a positive electrode active material of FeS and FeS2 [113]. It is the examiner’s position that the limitation “for a fluoride ion battery” is intended use. As long as the material is capable of being used in a fluoride ion battery, it meets the limitations of the claim. Lee teaches the claimed material, and therefore the material of Lee is capable of being used as a positive active material in a fluoride ion battery.
Claim Rejections - 35 USC § 102/103
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.
Claim(s) 1-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nakamoto (US 2020/0099102 A2).
In reference to claims 1-2 and 5, Nakamoto discloses a particulate cathode active material (10) in a fluoride ion battery, wherein the outer coating (2) of the particles can be FeS [35-36, 42, 45] (Figure 1A) (corresponds to a positive electrode active material for a fluoride ion battery, wherein the positive electrode active material is iron (II) sulfide). It is the examiner’s position that Nakamoto anticipates the active material of the claim. However, if the active material of Nakamoto is not taught with sufficient specificity, it would have been obvious to form the cathode active material with the FeS coated particle, as this is explicitly taught by Nakamoto.
In reference to claims 3 and 4, Nakamoto disclose that the fluoride ion battery (20, Figure 2) [45] has:
A cathode active material layer (11) formed of the particles with the FeS coating, as described above in claim 1 (corresponds to a positive electrode layer comprising the positive electrode active material layer)
An electrolyte layer (13)
Anode active material layer (12) (corresponds to a negative electrode layer)
It is the examiner’s position that Nakamoto anticipates the fluoride ion battery with the active material of the claim. However, if the battery of Nakamoto is not taught with sufficient specificity, it would have been obvious to one of ordinary skill in the art to form the battery with the cathode active material having the FeS coated particle, as Nakamoto explicitly teaches that the fluoride ion battery can have a cathode active material with the materials described in the specification [46].
Claim Rejections - 35 USC § 103
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Miki (US 2018/0309127 A1) in view of Hiroyuki (JP-2017084506A, previously cited) and Lee (US 2015/0333326 A1).
In reference to claims 1-5, Miki discloses a fluoride ion battery (10, Figure 1) [24] having:
A cathode active material layer (1) formed of CuS or Cu2S particles ([20, 24]) (corresponds to a positive electrode layer comprising the positive electrode active material layer)
An electrolyte layer (3)
Anode active material layer (2) (corresponds to a negative electrode layer)
Miki does not specifically disclose that the positive electrode active material is an iron sulfide material, including FeS or FeS2.
However, Hiroyuki discloses a positive active material for a fluoride ion battery, in which the active material can include one or more elements of Cu, Fe, and S, among other element choices [11]. Additionally, for use in a non-lithium ion battery, Lee discloses that CuS, Cu2S, FeS, and FeS2 are all suitable for use as cathode active materials [113]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the active material of Miki by substituting the Cu in the sulfide compound with Fe to form an iron sulfide (FeS or FeS2) compound in place of the copper sulfide, as Hiroyuki discloses that one or more of Cu, Fe, and S can be used as a positive active material in a fluoride ion battery. This in a simple substitution of Cu with Fe to form the iron sulfide with the known result of providing an Fe and S containing positive active material for a fluoride anion battery. Additionally, it would have been obvious to modify the battery of Miki by substituting the copper sulfide material with FeS or FeS2 as the positive active material of Lee, as Lee discloses that CuS, Cu2S, FeS, and FeS2 are all suitable for use as cathode active materials, particularly in view of Hiroyuki’s disclosure that one or more of Cu, Fe, and S can be used as a positive active material in a fluoride ion battery.
Response to Arguments
Applicant’s arguments, see page 3 of the arguments, filed 04/14/2026, with respect to the 112b rejection have been fully considered and are persuasive. The rejection of the claims has been withdrawn.
Applicant’s arguments with respect to claim(s) 1-5 have been considered but are moot because the new grounds of rejections do not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARLA D MCCONNELL whose telephone number is (571)270-7692. The examiner can normally be reached M-F 9 AM - 5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sri Kumar can be reached at (571) 272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
Prosecution Insights