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 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 1-13 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.
Claim 1 recites “wherein the Y-type zeolite adsorbent adsorbs hydrogen fluoride and carbon dioxide gases.” The limitation is unclear because it appear to require a process in a product claim. The metes and bounds of claim are indefinite because it is unclear if a state in which the hydrogen fluoride and carbon dioxide gas is absorbed in the zeolite is claimed or if the zeolite needs to be configured to be capable to adsorb hydrogen fluoride and carbon dioxide gases. For the purposes of examination, the claim is interpreted to require the zeolite to be configured to be capable to adsorb hydrogen fluoride and carbon dioxide gases.
Claim 2 recites “the Y-type zeolite further includes a material selected from the group consisting of Al, Na, C, Ca, S, Cl, and Li.” It is unclear what is required by Claim 2 because Claim 1 recites “the Y-type zeolite adsorbent comprises Na-Y, Li-Y, or a mixture thereof.”
Claims 2-13 are rejected due to their dependence on Claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 recites “the Y-type zeolite further includes a material selected from the group consisting of Al, Na, C, Ca, S, Cl, and Li”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 10, and 12-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nemoto (US-20020061439-A1) with evidence from Godillot et al. (US20240396079A1).
Regarding Claim 1, Nemoto discloses:
A secondary cell comprising (a lithium secondary battery, see Abstract):
an electrode assembly in which a positive electrode plate and a negative electrode plate are disposed with a separator interposed therebetween (“an internal electrode body contained in a battery case and including a positive electrode, a negative electrode and a separator,” see Abstract);
and a cell case storing the electrode assembly and an electrolyte solution (a battery case contains the internal electrode body and an organic electrolyte solution, see Abstract),
wherein a Y-type zeolite adsorbent is disposed between the cell case and the electrode assembly (a zeolite is incorporated in the battery case which can suitably be a FAU Y(Na-Y) type zeolite, see Abstract and [0033]),
wherein the Y-type zeolite adsorbent adsorbs hydrogen fluoride and carbon dioxide gases (The instant specification recognizes FAU Y(Na-Y) type zeolite as a suitable structure for the disclosed invention, see [0042]-[0044] and [0046]. The instant specification specifically points out that Na-Y-type zeolites are capable of adsorbing hydrogen fluoride and carbon dioxide gases, see [0044] and [0046]. Therefore, it is reasonable to conclude that the FAU Y(Na-Y) type zeolite is structurally capable of the intended use/functional limitation of adsorbing hydrogen fluoride and carbon dioxide gases.),
and wherein the Y-type zeolite adsorbent comprises Na-Y, Li-Y, or a mixture thereof (the zeolite can suitably be a FAU Y(Na-Y) type zeolite (i.e., containing Na), see [0033]).
The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
Regarding Claim 2, Nemoto discloses:
wherein the Y-type zeolite further includes a material selected from the group consisting of Al, Na, C, Ca, S, Cl, and Li (the zeolite can suitably be a FAU Y(Na-Y) type zeolite (i.e., containing Na), see [0033]).
Regarding Claim 3, as evidenced by Godillot, “Y type faujasites are characterized by an Si/Al mole ratio of greater than 1.50,” see [0045]. Therefore, because Nemoto discloses using a FAU (i.e., faujasite) Y(Na-Y) type zeolite, see Nemoto-[0033], the following limitation is met.
wherein the Y-type zeolite has a Si/Al ratio of 1.5 or more.
Regarding Claim 10, Nemoto discloses:
wherein the adsorbent is prepared in a form selected from the group consisting of powder, pellet, and ball forms (“zeolite is preferably used in a powder state in order to make the contact area with the electrolyte solution larger,” see [0027]).
Regarding Claim 12, Nemoto teach zeolite disposed in a bag is set at a local position such as the circumference of the internal electrode body, [0028]
wherein the adsorbent is disposed in an upper portion or a terrace portion of the cell.
Nemoto does not indicate an absolute orientation of the battery. One of ordinary skill in the art can readily envisage an orientation in which some point along the circumference of the internal electrode body is in an upper portion.
Claim 13 is considered product-by-process claim because the claim recites “wherein the Y-type zeolite adsorbent is prepared by a N2 masking treatment”. Note, the instant specification does not further detail a structural distinction that is imparted to the Y-type zeolite absorbent form the preparation process of a N2 masking treatment, see instant spec.[0018]. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
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(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nemoto (US-20020061439-A1) as applied to Claim 1 above and in further view of Kaneko et al. (US-20190198926-A1).
Regarding Claim 4, Nemoto is silent toward the pore diameter of the FAU Y(Na-Y) type zeolite and, therefore, does not teach:
wherein a pore diameter inside the Y-type zeolite adsorbent is 1 to 10Å.
To solve the same problem of providing an y-type zeolite as a moisture adsorbent in a battery, Kaneko teaches having the adsorbent zeolite have a pore size of 3-10 Å which is within the claimed range. Kaneko additionally teaches that a pore size within this range balances the considerations of having pore size large enough to accommodate moisture and mechanical strength.
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have selected a pore size of 3-10 Å taught by Kaneko for the zeolites of Nemoto to balance having pore size large enough to accommodate moisture and mechanical strength. Overlapping ranges are prima facie obvious (see MPEP 2144.05, I).
Regarding Claim 5, Nemoto is silent toward:
wherein the Y-type zeolite adsorbent has a specific surface area by BET measurement of 100 to 1000 m2/g.
To solve the same problem of providing an y-type zeolite as a moisture adsorbent in a battery, Kaneko teaches having the adsorbent zeolite have a specific surface area of 100 to 3000 m2/g which overlaps the claimed range. Kaneko additionally teaches that a specific surface area within this range balances the considerations of maintaining enough surface contact for sufficient adsorption performance and mechanical strength.
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have selected a specific surface area in the range of 100 to 3000 m2/g taught by Kaneko for the zeolites of Nemoto to balance maintaining enough surface contact for sufficient adsorption performance and mechanical strength. Overlapping ranges are prima facie obvious (see MPEP 2144.05, I).
Claim(s) 6-9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nemoto (US-20020061439-A1) as applied to Claim 1 above and in further view of Fritz et al. (US-20060105158-A1) with evidence from Oxford English dictionary.
Regarding Claim 6, Nemoto describes disposing the zeolite within a bag, see [0028]. The instant specification does not define the term composite, therefore, the plain meaning, under broadest reasonable interpretation within the art is used for claim interpretation. As evidenced by Oxford English dictionary, the plain meaning in the material arts is “a material made from two or more physically different constituents each of which largely retains its original structure and identity,” see Pg3/Section 2.b. The description of Nemoto’s zeolite within a bag is interpreted to not meet the plain meaning within the art of composite and does not teach the limitation of:
wherein the adsorbent is a composite of the Y-type zeolite and a resin.
To solve the same problem of providing a water absorbent with a zeolite material (see Abstract), Fritz teaches disposing a zeolite (including y-type, see [0018]) within a polymer matrix, see Abstract. Fritz further teaches that the zeolite in a polymer matrix allows for the preparation of a shaped article, see Abstract. Additionally, Fritz teaches the structure of the polymer matrix is porous to facilitate transportation of the of the water absorbate and the pore volume of the polymer matrix can also be adjusted easily for applications where slow or fast adsorption kinetics are desired, see [0017].]
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to disposed the zeolites of Nemoto into a polymer matrix of Fritz in order to provide a shaped article which has tunable adsorption kinetics.
Regarding Claim 7, Fritz teaches the polymer matrix can suitably be a polyolefin or a polyester (see [0021]), thereby, teaching the limitation:
wherein the resin is selected from the group consisting of polyolefin and polyester.
Regarding Claim 8, Nemoto teaches
wherein in the composite, the Y-type zeolite forms a percolation network (the zeolite particles features excellent absorption of moisture, see [0027]).
Regarding Claim 9, Fritz teaches:
wherein the composite is a porous composite (the structure of the polymer matrix is porous to facilitate transportation of the of the water absorbate and the pore volume of the polymer matrix can also be adjusted easily for applications where slow or fast adsorption kinetics are desired, see [0017]).
Regarding Claim 11, Nemoto does not teach:
wherein the adsorbent is added in a form selected from the group consisting of a film, a sheet, and a non-woven fabric.
To solve the same problem of providing a water absorbent with a zeolite material (see Abstract), Fritz teaches disposing a zeolite (including y-type, see [0018]) within a polymer matrix, see Abstract. Fritz further teaches that the zeolite in a polymer matrix allows for the preparation of a shaped article, see Abstract. Additionally, Fritz teaches the shaped article can suitably be a sheet, see [0030]. The disclosure of Fritz teaches that the providing an adsorbent zeolite based material in a sheet form is successful and convention.
Absent a showing of persuasive secondary considerations, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to disposed the zeolites of Nemoto into a polymer matrix of Fritz and shape into a sheet with the reasonable expectation of success.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Naoki et al. (WO-2019188626-A1)
Response to Arguments
Claim Rejections Under 35 USC § 102
Applicant’s arguments, see pgs. 7-8, with respect to claim rejections under 35 USC § 102 have been fully considered and are found unpersuasive.
Applicant argues on pages 8-10 that the Nemoto does only teaches the zeolite is used for moisture adsorbing in the battery case. The amendment to Claim 1 to is interpreted to not positively recite adsorbed hydrogen fluoride and carbon dioxide present in the zeolite. The claim is interpreted to require that the zeolite is capable of adsorbing hydrogen fluoride and carbon dioxide. The instant specification recognizes FAU Y(Na-Y) type zeolite as a suitable structure for the disclosed invention, see [0042]-[0044] and [0046]. The instant specification specifically points out that Na-Y-type zeolites are capable of adsorbing hydrogen fluoride and carbon dioxide gases, see [0044] and [0046]. Therefore, it is reasonable to conclude that the FAU Y(Na-Y) type zeolite is structurally capable of the intended use/functional limitation of adsorbing hydrogen fluoride and carbon dioxide gases.
The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (see MPEP § 2114).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kayla E Clary whose telephone number is (571)272-2854. The examiner can normally be reached Monday - Friday 8:00-5:00 (PT).
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/K.E.C./
Kayla E. ClaryExaminer, Art Unit 1721
/ALLISON BOURKE/Supervisory Patent Examiner, Art Unit 1721