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 3 - a species where the cathode further comprises a second positive electrode active material comprising KxBi1-xF3-2x as claimed in claim 6 in the reply filed on 3-3-2026 is acknowledged.
Claims 3-5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3-3-2026.
Claim Rejections - 35 USC § 112
Claims 1-2 and 6 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 is rejected because it is unclear how the final discharge voltage can be 0.3 V (vs. Pb/PbF2) or less because the battery does not contain a negative electrode comprising PB or PbF2. This makes the claim vague and indefinite. Claim 1 is rejected because the fluoride ion secondary battery does not comprise a negative electrode and an electrolyte solution. Therefore, claims 1-2 and 6 are comprising a cathode comprising an active material comprising the composite fluoride.
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 Rejections - 35 USC § 103
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 is/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 Morita (WO2019/187942, translation). Morita teaches in [0005], that BiF3, CuF2, KBiF4, etc. have been reported is positive electrode active materials for a fluoride ion secondary battery. Morita teaches in the abstract a positive electrode active material for fluoride ion secondary batteries with a positive electrode active material is composed of a composite fluoride that contains a 1st component which is composed of the metal and a 2nd component which is composed of a fluorine compound that has fluoride ion conductivity. Morita teaches in [0066-0068], in Examples 6-11, copper (Cu) was used as the 1st component and barium fluoride (BaF2) was used as the 2nd component to prepare Cu-BaF2 composite fluorides. Morita teaches in [0019], that the fluorine compound may be at least one selected from the group consisting of bismuth fluoride [teaching BiF3], barium fluoride, etc. Morita teaches in [0018], where the metal is at least one selected from the group consisting of Cu [teaching Cu], Co, Ag and Bi. Morita teaches in [0022], a fluoride ion secondary battery comprising the positive electrode, a negative electrode and a solid electrolyte.
Since Morita teaches the same fluoride ion secondary battery comprising the same positive electrode comprising a composite fluoride in which copper and bismuth fluoride are composited then inherently the same final discharging voltage being 0.3 V (vs. Pb/PbF2) or less must also be obtained.
In addition, the presently claimed property of a final discharging voltage being 0.3 V (vs. Pb/PbF2) or less would have obviously been present once the Morita product is provided. See MPEP 2122.01, I.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morita (WO2019/187942, translation). Morita teaches in [0005], that BiF3, CuF2, KBiF4, etc. have been reported is positive electrode active materials for a fluoride ion secondary battery. Morita teaches in the abstract a positive electrode active material for fluoride ion secondary batteries with a positive electrode active material is composed of a composite fluoride that contains a 1st component which is composed of the metal and a 2nd component which is composed of a fluorine compound that has fluoride ion conductivity. Morita teaches in [0066-0068], in Examples 6-11, copper (Cu) was used as the 1st component and barium fluoride (BaF2) was used as the 2nd component to prepare Cu-BaF2 composite fluorides. Morita teaches in [0019], that the fluorine compound may be at least one selected from the group consisting of bismuth fluoride [teaching BiF3], barium fluoride, etc. Morita teaches in [0018], where the metal is at least one selected from the group consisting of Cu [teaching Cu], Co, Ag and Bi. Morita teaches in [0022], a fluoride ion secondary battery comprising the positive electrode, a negative electrode and a solid electrolyte.
Morita discloses the claimed invention in the examples teaching a fluoride ion secondary battery comprising the same positive electrode active material comprising a composite fluoride comprising Cu-BaF2 but does not specifically teach that the composite comprising Cu-BiF3. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Cu-BiF3 instead of Cu-BaF2 as the composite fluoride positive active material because Morita teaches that both these composite fluoride positive active materials can be used in the cathode as explained above and one would expect therefore that these binder materials would function in a similar way and give similar results. When Morita teaches the same fluoride ion secondary battery comprising the same positive electrode comprising a composite fluoride in which copper and bismuth fluoride are composited then inherently the same final discharging voltage being 0.3 V (vs. Pb/PbF2) or less must also be obtained.
In addition, the presently claimed property of a final discharging voltage being 0.3 V (vs. Pb/PbF2) or less would have obviously been present once the Morita product is provided. See MPEP 2122.01, I.
Morita teaches in Table 2, Example 6, a composite fluoride composite material comprising Cu-BaF2 in an amount of 50-50 at% where Cu is present in amount of 16.9 at%, O is present in an amount of 6.5 at%, Ba is present in an amount of 19.1 at% and F in an amount of 57.5 at%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to , since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum value or workable ranges involves only routine skill in the art and since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use 20 at% of bismuth in the composite fluoride, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use 20 at% of bismuth in the composite fluoride, since it has been held that when the claimed range and the prior art range are very similar the range of the prior art establishes prima facie obviousness because one of ordinary skill in the art would have expected the similar ranges to have the same properties. See MPEP 2144.05.
Allowable Subject Matter
Claim 6 is 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.
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/LAURA S. WEINER/
Primary Examiner
Art Unit 1723
/Laura Weiner/Primary Examiner, Art Unit 1723
Prosecution Insights