DETAILED ACTION
This Office Action is responsive to the December 2nd, 2025 arguments and remarks (“Remarks”). The
text of those sections of Title 35, U.S. Code not included in this action can be found in a prior
Office 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/27/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of Claims
Claims 1-4 stand rejected under 35 U.S.C. 103 as described below:
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Morita (W.O. Pat. No. 2019187942 A1) in view of Ide (U.S. Pat. No. 20180159129 A1).
Response to Arguments
Applicant’s arguments filed December 2nd, 2025 have been fully considered as further described below:
Applicant presents arguments to Claim 1 regarding the combination of prior art reference Morita and reference Ide. Applicant argues that there are obstacles of modifying Morita’s positive electrode active material to include the fluoride compound disclosed in Ide as Ide is rather directed to a fluoride compound for a negative electrode layer. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Applicant does not describe or explain the specific obstacles that exist when performing the described modification.
In response to applicant's arguments against the references individually (Ide as directed to a negative electrode layer rather than a positive electrode layer), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
“Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so. In re Kahn, 441 F.3d 977, 986, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006)” (emphasis in original) (see MPEP 2143.01). “In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103 , the reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004)” (emphasis in original) (see MPEP 2141.01(a)(I)).
Morita and Ide are deemed analogous art based on being in the same field of endeavor of the claimed invention (electrodes, active materials thereof, comprising halogenides) (see MPEP 2141.01(a)(I)); additionally, Morita and Ide are reasonably pertinent to a problem faced by the inventor including providing an electrode active material exhibiting increased fluoride-ion conductivity for use in a secondary battery. As described in the rejection below, Morita teaches a positive electrode active material comprising a fluoride compound in which is not particularly limited as long it exhibits fluoride ion conductivity (para. 32). Ide teaches an electrode active material comprising Ca1-xBaxF2, in which 0<x<1 exhibits high fluoride ion conductivity (para. 53). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the positive electrode active material of Morita by Ide to include a fluoride compound in which exhibits high fluoride ion conductivity and dramatically improves battery capacity (Ide, para. 31, 35).
Therefore, applicant’s arguments are deemed unpersuasive.
Cited Prior Art
Previously Cited Morita (W.O. Pat. No. 2019187942 A1) (“Morita”)
Previously Cited Ide (U.S. Pat. No. 20180159129 A1) (“Ide”)
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Morita (W.O. Pat. No. 2019187942 A1) in view of Ide (U.S. Pat. No. 20180159129 A1).
Regarding Claim 1, Morita teaches a positive electrode active material comprising a composite of metal such as copper and a fluorine compound (para. 1, 12, 30), forming a fluoride composite material. The fluorine compound is not particularly limited as long it exhibits fluoride ion conductivity (para. 32).
Morita does not teach the fluoride compound represented by the formula BaxCa1-xF2 wherein x is 0.2 or more and 0.8 or less.
Ide teaches an electrode layer (active material layer) composition comprising a metal element such as Ca1-xBaxF2, in which 0<x<1, exhibiting high fluoride ion conductivity (para. 53) forming a compound analogous to a fluoride composite material.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the positive electrode active material of Morita by Ide to include a fluoride compound represented by the formula Ca1-xBaxF2 (equivalent to claimed formula BaxCa1-xF2) in which 0<x<1 (x is greater than 0 and less than 1), overlapping the claimed range wherein x is 0.2 or more and 0.8 or less. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the 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) (see MPEP § 2144.05, I). One of ordinary skill in the art would be motivated to perform the described modification to include an alternative suitable fluorine compound in which exhibits high fluoride ion conductivity (Ide, para. 31) and to provide an electrode layer in which dramatically improves battery capacity (Ide, para. 35).
Regarding Claim 2, Morita is modified by Ide teaching all claim limitations as applied to Claim 1 above. Further, Morita teaches the composite fluoride material being produced or formed by an aerosol process (para. 62). Additionally, “the patentability of a product does not depend on its method of production” (see MPEP § 2113 I). Therefore, all claim limitations are met.
Regarding Claim 3, Morita is modified by Ide teaching all claim limitations as applied to Claim 1 above. Further, Morita teaches a positive electrode comprising the positive electrode active material (para. 79). Therefore, all claim limitations are met.
Regarding Claim 4, Morita is modified by Ide teaching all claim limitations as applied to Claim 3 above. Further, Morita teaches a fluoride ion secondary battery comprising the positive electrode (para. 81). Therefore, all claim limitations are met.
Conclusion
THIS ACTION IS MADE FINAL. 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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/C.R.D./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729