DETAILED ACTION
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 Group I and Species I-A-1 and I-B-1 (i.e., clams 1-3, 5, 7 and 10-13) in the reply filed on 12/09/25 and 09/04/25 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/19/23, 09/04/23, 11/07/24 and 10/09/25 was considered by the examiner.
Drawings
The drawings were received on 01/19/23.
Specification
The abstract of the disclosure is objected to because it does not appear to capture the essence of the disclosed/claimed invention. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-3, 5, 7 and 10-13 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.
The language “comprises or consists of” in claim 1 is problematic as it is immediately unclear whether applicant intends to recite an open-ended transitional term or a close-ended transitional term, thereby rendering the scope of the claim indefinite. Thus, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
Claims 1-3, 5, 7 and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over the publication DE 10-2019-219007 (hereinafter DE’007) in view of the publication EP 3591743 (herein EP’743).
As to claims 1-3:
DE’007 discloses that it is known in the art to make a composite anode electrode (Abstract; 0001; 0004-0009; 0010-0011; 0024-0026; 0029; 0031; 0039; Claims 14-15) including a core/main body comprising magnesium metal/alloy including magnesium foils (0024) which is an electrically conductive material, and wherein the electrode thickness is 0.01-1 mm (10-1000 µm) (0031). DE’007 discloses the including of an ion conducting additive including a solvent such as a Mg-based salt (0030; 0035; 0012, 0014-0016; 0022; Figure 1).
As to claims 5, 7:
DE’007 discloses the including of an ion conducting additive including a solvent such as a Mg-based salt (0030; 0035; 0012, 0014-0016; 0022; Figure 1). DE’007 discloses the amount of activating Mg-salts ranging from 1-10 % by weight based on the weight of the magnesium powder. Thus, DE’007 readily envisions the use of certain amount of the conductive additive Mg-salt.
DE’007 teaches a composite anode electrode according to the foregoing aspects. However, the preceding reference does not expressly disclose the protective layer comprising the specific silylated cellulose material/components, the protective layer thickness, and the specific mass ratio between the ion conductive additive and silylated cellulose.
As to claims 1, 10:
In this respect, in the same field of applicant’s endeavor, EP’743 discloses that it is known in the art to coat a main body of an anode electrode with silylated cellulose to form a protective layer (Abstract; 0001; 0008-0010) having a thickness of not more than 500 µm, more preferably 100-500 nm (0010-0011).
As to claims 5, 11-13:
EP’743 discloses that the silylated cellulose comprises 0.5-3 silyl groups per glucose unit in the cellulose (0012) and the silyl groups can be the same or different groups such as -SiR3 wherein R can be selected from alkyl, cycloalkyl, alkenyl, alkoxy, aryl, and alkylaryl (0012); and the silylated cellulose is derived from micro/nano-fibrillated cellulose micro/nano-crystalline celluloses or bacterial celluloses (0013). EP’743 readily envisions the use of certain amount of silylated cellulose.
By compounding the above teachings, it would have been within the purview of a skilled artisan prior to the effective filing date of the claimed invention to coat the anode electrode of DE’007 with the specifically disclosed silylated cellulose material/components of EP’743 to make the protective layer having the specifically disclosed thickness as EP’743 teaches that the specifically disclose silylated cellulose material possesses high ionic conductivity while being impermeable for other battery cell components, thereby providing an electrochemical cell with improved cycling properties and enhanced cell life. Further, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
With respect to the specific mass ratio between the ion conductive additive and silylated cellulose, it would have been obvious to a skilled artisan prior to the effective filing date of the claimed invention to make the anode of DE’007 and EP’743 by having the mass ratio between the ion conductive additive and silylated cellulose as instantly clamed because both DE’007 and EP’743 recognizes the amount or content of both the ion conductive additive and silylated cellulose as a variable which achieves a recognized result, therefore, the claimed range of the such specific mass ratio results from the characterization as routine experimentation of an optimum or workable range. Accordingly, the specific mass ratio between the ion conductive additive and silylated cellulose is being construed as a result-effective variable. In re Aller 105 USPQ 233, 235; In re Hoeschele 160 USPQ 809, In re Antonie 195 USPQ 6 (MPEP 2144.05 IL Optimization of Ranges). Further, generally speaking, differences in amount of material, content, concentration, weight/mass percent/ratio will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such specific mass ratio is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. " In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it is prima-facie obvious to choose or select the specific mass ratio between the ion conductive additive and silylated cellulose. See MPEP 2144.05 Obviousness of Ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1752
Prosecution Insights