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.
Claim 9 is 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 9 is unclear because it refers to the at least partially modified metal hydroxide particles comprising alumina. It is contradictory for the metal hydroxide to comprise alumina which is aluminum oxide and not aluminum hydroxide. The Office notes that in the Specification as filed Example 2 teaches activated alumina and not metal hydroxide particles containing alumina only in part. In view of this contradiction, an artisan would not be reasonably apprised of whether or not they are infringing on the patent when using alumina as the “metal hydroxide”.
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.
Claim(s) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura et al (US 2017/0358818).
Nakamura teaches a surface-modified aluminum hydroxide where the surface
is modified with silane coupling agent, titanate-based coupling agents, aluminate coupling agents, or fatty acid coupling agents (see Examples 1-7 and [0080]). Nakamura further teaches the specific surface area of the surface modified aluminum hydroxide is 0.5 m2/g to 50 m2/g measured by BET method (see [0088]). Nakamura teaches an aluminum hydroxide that is surface modified inside the battery to improve charging and discharging efficiency, cycle retention and suppress gas retention (see [0104]).
Nakamura does not teach the amount of desorbed CH4 (MS1) and CH3OH (MS2) from about 80°C to about 1400°C by thermal desorption gas mass spectrometry (TDS-MS) of the at least partially modified metal hydroxide. Nakamura does not teach the amount of desorbed H2O (MS3) from about 80°C to about 200°C by thermal desorption gas mass spectrometry (TDS-MS) of the at least partially modified metal hydroxide. Nakamura also does not teach the specific surface area (BET1) calculated by an adsorption isotherm measured by adsorbing water vapor and surface area (BET2) calculated by an adsorption isotherm measured by adsorbing nitrogen gas in the claimed ranges.
Regarding the desorption properties of the endothermic particles, "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Furthermore, where claimed and prior art products are identical or substantially identical in structure or composition or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. Furthermore, if a composition is physically the same, it must have the same properties. See MPEP 2112.01.
The following is a comparison of the partially modified aluminum hydroxide according to Nakamura and the partially modified metal oxide:
Nakamura
Applicant’s Invention
Aluminum hydroxide particles
Aluminum hydroxide particles
At least partially-modified aluminum hydroxide
At least partially-modified metal hydroxide including aluminum hydroxide, pseudo-boehmite, boehmite, alumina, kaolinite or combinations thereof.
Surface modification with silane coupling agent, a titanate-based coupling agent, an aluminate-based coupling agent, a fatty acid surface treatment agent (Examples 1-7)
Surface modification with silane coupling agent, a titanate-based coupling agent, an aluminate-based coupling agent, a fatty acid surface treatment agent.
The loading of surface modification agent in the examples is 1 g per 1 g of aluminum hydroxide (see Examples 1-7).
The loading of surface modification agent in the examples is 0.3, 3, or 5 g per 1 g of aluminum hydroxide (see Examples 1-10)
The specific surface area of the surface modified aluminum hydroxide is 0.5 m2/g to 50 m2/g measured by BET method (see [0088]).
The specific surface area of the at least partially modified metal hydroxide is in a range of 8 m2/g to 600 m2/g for both water vapor adsorption technique and nitrogen gas technique where examples have BET surface area from 110-407 m2/g (see Claim 1 and Examples).
The partially modified aluminum hydroxide used in electrolyte, positive electrode, or negative electrode of a non-aqueous electrolyte rechargeable battery (see [0127]).
The partially modified metal hydroxide used as an additive to the positive electrode, negative electrode, separator or electrolyte of a non-aqueous electrolyte rechargeable battery (see Claims 10-13).
Synthesis of the surface modified aluminum hydroxide comprises mixing a surface modification agent comprising triethoxyvinylsilane with the aluminum hydroxide, heating and vacuum drying (see Example 1).
Synthesis of the partially modified metal oxide mixing triethoxyvinylsilane with aluminum hydroxide particles then performing a heat treatment and vacuum drying (see Example 1).
Here, Nakamura teaches a product that appears to be substantially identical in both structure and composition where it teaches an aluminum hydroxide surface modified by identical surface modification agents and which are produced by a substantially identical process where it teaches combining with the surface modification agent, heating, and vacuum drying to form a mixed surface. An artisan would therefore reasonably expect that Nakamura’s product comprises the same desorption from thermal desorption gas mass spectrometry properties based on the rationale that the composition taught by Nakamura and the claimed product are substantially identical and the methods for producing the products in Nakamura and the claimed product are also substantially identical.
Regarding the BET surface area of the surface-modified metal hydroxide, first as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, 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). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the aluminum hydroxide that is surface modified as taught by Nakamura where the specific surface area as measured by BET method. Second, regarding BET1 and BET2, since water vapor adsorption and nitrogen gas adsorption depend on hydrophobicity of the aluminum hydroxide surface and the aluminum hydroxide surface, an artisan would reasonably expect that Nakamura’s product comprises BET1 and BET2 in comparable ranges for water vapor and nitrogen adsorption based on the rationale that the composition taught by Nakamura and the claimed product are substantially identical as comprising hydrophobic surface modification (triethoxyvinylsilane coupling) and the methods for producing the products in Nakamura and the claimed product are also substantially identical.
Regarding claim 2, since the ratio between water vapor adsorption vs nitrogen gas adsorption depends on hydrophobicity of the aluminum hydroxide surface, an artisan would reasonably expect that Nakamura’s product comprises comparable ratio between water vapor/nitrogen based on the rationale that the composition taught by Nakamura and the claimed product are substantially identical as comprising hydrophobic surface modification (triethoxyvinylsilane coupling) and the methods for producing the products in Nakamura and the claimed product are also substantially identical.
Regarding claims 3-5, an artisan would therefore reasonably expect that Nakamura’s product comprises the same desorption properties based on the rationale that the composition taught by Nakamura and the claimed product are substantially identical and the methods for producing the products in Nakamura and the claimed product are also substantially identical.
Regarding claim 6, Nakamura teaches the at least partially modified metal hydroxide particles are modified with a surface treatment agent (see [0080]).
Regarding claim 7, Nakamura teaches the surface treatment agent comprising a silane coupling agent, a titanate-based coupling agent, an aluminate-based coupling agent, a fatty acid surface treatment agent (see [0080]).
Regarding claim 8, Nakamura teaches surface-modified aluminum hydroxide comprising an endothermic peak of 255°C, 257°C. 258°C, 271°C and 292°C (see Table 1).
Regarding claim 9, as applied above Nakamura teaches aluminum hydroxide.
Regarding claim 10, Nakamura teaches a non-aqueous electrolyte rechargeable battery comprising a positive electrode, negative electrode, a separator and a non-aqueous electrolyte, wherein the positive electrode contains the surface-modified aluminum hydroxide (see [0127]). Nakamura further teaches wherein the additive amount of the surface modified aluminum hydroxide as an additive in an amount of not less than 1% by mass of the electrolyte (see [0086]). One of ordinary skill in the art would easily recognize that the range taught by Nakamura (i.e., not less than 1% by mass of the electrolyte) to overlap with a range of 0.01 wt% to 10.0 wt% based on the total weight 100% of the non-aqueous electrolyte battery. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the battery as taught by Nakamura where the amount of surface-modified aluminum hydroxide is in any range overlapping not less than 1% by mass of the electrolyte including the claimed range to provide sufficient surface-modified aluminum hydroxide inside the battery to improve charging and discharge efficiency, and cycle retention as suggested by Nakamura.
Regarding claim 11, Nakamura teaches a non-aqueous electrolyte rechargeable battery comprising a positive electrode, negative electrode, a separator and a non-aqueous electrolyte, wherein the negative electrode contains the surface-modified aluminum hydroxide (see [0127]). Nakamura further teaches wherein the additive amount of the surface modified aluminum hydroxide as an additive in an amount of not less than 1% by mass of the electrolyte (see [0086]). One of ordinary skill in the art would easily recognize that the range taught by Nakamura (i.e., not less than 1% by mass of the electrolyte) to overlap with a range of 0.01 wt% to 10.0 wt% based on the total weight 100% of the non-aqueous electrolyte battery. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the battery as taught by Nakamura where the amount of surface-modified aluminum hydroxide is in any range overlapping not less than 1% by mass of the electrolyte including the claimed range to provide sufficient surface-modified aluminum hydroxide inside the battery to improve charging and discharge efficiency, and cycle retention as suggested by Nakamura.
Regarding claim 13, Nakamura teaches a non-aqueous electrolyte rechargeable battery comprising a positive electrode, negative electrode, a separator and a non-aqueous electrolyte (see [0197-0198]). Nakamura further teaches the electrolyte containing the surface-modified aluminum hydroxide (see [0127]). Nakamura further teaches wherein the additive amount of the surface modified aluminum hydroxide as an additive in an amount of not less than 1% by mass of the electrolyte (see [0086]). One of ordinary skill in the art would easily recognize that the range taught by Nakamura (i.e., not less than 1% by mass of the electrolyte) to overlap with a range of 0.01 wt% to 10.0 wt% based on the total weight 100% of the non-aqueous electrolyte battery. It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the battery as taught by Nakamura where the amount of surface-modified aluminum hydroxide is in any range overlapping not less than 1% by mass of the electrolyte including the claimed range to provide sufficient surface-modified aluminum hydroxide inside the battery to improve charging and discharge efficiency, and cycle retention as suggested by Nakamura.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishikawa et al (US 2010/0173187) and in further view of Nakamura as applied to claim 1.
Nishikawa teaches a separator for a nonaqueous secondary battery where the separator is characterized as containing an inorganic filler containing a metallic hydroxide that undergoes dehydration reaction at a temperature of 200 to 400°C (See [0011]). Nishikawa teaches the metal hydroxide comprising to improve heat resistance, shutdown function, and flame retardancy by a dehydration reaction at a temperature of 200 to 400°C associated with a large endotherm (See [0009] and [0044]). Nishikawa further teaches that aluminum hydroxide is most preferred in consideration of effective use of endotherm associated with the dehydration reaction (See [0046]). Nishikawa does not disclose the separator of a nonaqueous secondary battery comprising a surface modified aluminum hydroxide according to claim 1
As applied to claim 1, Nakamura teaches the endothermic particles comprising a surface-modified aluminum hydroxide comprising the claimed desorption properties and surface area. Nakamura teaches a non-aqueous electrolyte rechargeable battery comprising a positive electrode, negative electrode, a separator and a non-aqueous electrolyte (see [0197-0198]). Nakamura teaches an aluminum hydroxide that is surface modified inside the battery to improve charging and discharging efficiency, cycle retention and suppress gas retention (see [0104]).
It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare the battery as taught by Nishikawa where the aluminum hydroxide comprises a surface-modified aluminum hydroxide as taught by Nakamura to improve charging and discharge efficiency, cycle retention, and suppress gas generation from being inside the battery as suggested by Nakamura.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A Merkling can be reached at (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL FORREST/Primary Examiner, Art Unit 1738