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
Claims 7-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention II, drawn to a method of preparing a magnesium electrode, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/30/2025.
Applicant’s election without traverse of Invention I, drawn to claims 1-6 and 14-18, drawn to a magnesium electrode/secondary battery in the reply filed on 01/30/2025 is acknowledged.
Claim Objections
Claim 1 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if “magnesium electrode” after the period should be included or not. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if anything included after the phrase “derivative compound thereof.” should be considered. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if anything included after the phrase “aryl group of C1 to C4.” should be considered. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if anything included after the phrase “magnesium alloy.” should be considered. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if anything included after the phrase “the electrode plate.” should be considered. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if anything included after the phrase “1 nm to 100 μm.” should be considered. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if anything included after the phrase “an electrolyte.” should be considered. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if anything included after the phrase “7000 ppm or less.” should be considered. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if anything included after the phrase “derivative thereof.” should be considered. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if anything included after the phrase “mass of the electrolyte.” should be considered. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: a claim should consist of a single sentence starting with a capital letter and ending with a period. It is unclear if anything included after the phrase “device is not required.” should be considered. Appropriate correction is required.
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 1-6 and 14-18 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 the limitations after the limitation “magnesium metal.” It is unclear if these limitations should be considered and if so how it should be considered since it doesn’t appear to be connected to any other part of the claim. The metes and bounds of the claim are unclear. Appropriate correction and/or further clarification is required.
Claim 2 recites limitations after the limitation “derivative compound thereof.” It is unclear if these limitations should be considered or not considered. The metes and bounds of the claim are unclear. Appropriate correction and/or further clarification is required.
Claim 3 recites the limitation that R1, R2, R3 can include a straight-chain or branched alkyl group. It is unclear if an alkoxy will satisfy this requirement since an alkoxy also includes a straight-chained alkyl group. Appropriate correction and/or further clarification is required.
Claim 3 recites limitations after the limitation “aryl group of C1 to C4.” It is unclear if these limitations should be considered. The metes and bounds of the claim are unclear. Appropriate correction and/or further clarification is required.
Claim 4 recites limitations after the limitation “magnesium alloy.” It is unclear if these limitations should be considered. The metes and bounds of the claim are unclear. Appropriate correction and/or further clarification is required.
Claim 5 recites “the protective layer is located within a range of 5% to 100% of a total area of the surface of the electrode plate”. The term “located within a range” appears to describe a distance rather than a surface area coverage percentage. Appropriate correction and/or further clarification is required.
Claim 5 recites limitations after the limitation “the electrode plate.” It is unclear if these limitations should be considered. The metes and bounds of the claim are unclear. Appropriate correction and/or further clarification is required.
Claim 6 recites limitations after the limitation “1 nm to 100 μm.” It is unclear if these limitations should be considered. The metes and bounds of the claim are unclear. Appropriate correction is required.
Claim 14 recites limitations after the limitation “an electrolyte.” It is unclear if these limitations should be considered. The metes and bounds of the claim are unclear. Appropriate correction is required.
Claim 15 recites limitations after the limitation “7000 ppm or less.” It is unclear if these limitations should be considered. The metes and bounds of the claim are unclear. Appropriate correction is required.
Claim 16 recites limitations after the limitation “derivative thereof.” It is unclear if these limitations should be considered. The metes and bounds of the claim are unclear. Appropriate correction is required.
Claim 17 recites limitations after the limitation “mass of the electrolyte.” It is unclear if these limitations should be considered. The metes and bounds of the claim are unclear. Appropriate correction is required.
Claim 18 recites limitations after the limitation “device is not required.” It is unclear if these limitations should be considered. The metes and bounds of the claim are unclear. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 3 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 3 is dependent on claim 2. Claim 2 requires R1 is an alkoxy functional group (-OR). Claim 3 recites R1 includes a straight-chain or branched alkyl group or aryl group of C1 to C4. Claim 3 fails to further limit, since in claim 2 R1 is required to be an alkoxy.
In addition, claim 2 requires “R2 and R3 are one selected from an alkoxy functional group (-OR), an alkyl group (-R), a carboxyl group (-COOH), or an imide group (-NR) including N” and claim 3 recites R2 and R3 can be an aryl group of C1 to C4. Claim 3 fails to further limit, since in claim 2, the possibility of R2 and R3 does not include an aryl group of C1 to C4.
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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-6, 14, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR 20150052369 A, Machine Translation) in view of Yonemaru (US 20230109546 A1) with further evidence provided by Wang (High-entropy Electrolyte Enables High Reversibility and Long Lifespan for Magnesium Metal Anodes).
Regarding claims 1-4, 14, and 16, Kim discloses a magnesium secondary battery comprising (See Fig. 3):
a negative electrode (3) comprising a magnesium electrode (pg. 7, description of negative electrode paragraphs 3-4) comprising:
an electrode plate including magnesium (the negative electrode may be, for example, magnesium metal, see pg. 7 paragraph 4); a positive electrode (2) and an electrolyte (1).
In addition, Kim discloses that the electrolyte can comprise an electrolyte with both a phosphoric acid organic solvent, including triethylphosphate, and in addition a phosphorous acid ester flame retardant can be added into the electrolyte.
Yonemaru discloses a flame retardant which includes phosphorous acid esters includes trimethyl phosphate (TMP) ([0030]) and furthermore discloses that this electrolytic solution can be used in a secondary magnesium battery ([0112]) and one of the advantageous effects includes a decrease in combustibility ([0007]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the flame retardant of Kim by using the phosphorous acid ester flame retardant disclosed by Yonemaru including trimethyl phosphate because Kim discloses a phosphorous acid ester flame retardant can be added into the electrolyte and Yonemaru discloses that the trimethyl phosphate flame retardant results in a decrease in combustibility.
Wang provides evidence that when a magnesium electrode is exposed to an electrolyte solution which contains TMP there is a formation of a rich interfacial layer (Abstract and Morphology and surface chemistry of Mg deposits, pgs. 3-6).
Therefore with regards to “a protective layer located on at least a part of a surface of the electrode plate, wherein the protective layer includes a reaction product of a phosphoric acid alkyl ester compound and magnesium metal” the interaction of TMP and the magnesium metal will result in said layer in modified Kim as evidenced by Wang.
Regarding claim 5, modified Kim discloses all of the claim limitations as set forth above.
Kim discloses that all of the anode is exposed to the electrolyte (see pgs. 9-10 description of Fig. 3) and as evidenced above by Wang this results in an interfacial layer which will coat surface and therefore the protective layer (interfacial layer) will coat a range of 5% to 100% of a total area of the surface of the electrode plate.
Regarding claim 6, modified Kim discloses all of the claim limitations as set forth above.
As noted above Kim discloses that all of the anode is exposed to the electrolyte (see pgs. 9-10 description of Fig. 3) and as evidenced above by Wang this results in an interfacial layer which has a thickness within the range of 1nm to 100 μm (see Wang, see Fig. 2 and Morphology and surface chemistry of Mg deposits see pg. 3 ).
Regarding claim 17, modified Kim discloses all of the claim limitations as set forth above.
In addition, Yonemaru discloses that the amount of TMP that can be added to the electrolyte solution includes 5-20% by weight to the entire electrolyte solution ([0077]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the amount of flame retardant in the electrolyte of modified Kim to be within the claimed range as disclosed by Yonemaru because doing so will allow for optimization in a decrease in combustibility and cost.
Regarding claim 18, modified Kim discloses all of the claim limitations as set forth above.
With regards to “the magnesium secondary battery is prepared under conditions where a separate moisture control device is not required” is considered a product-by-process limitation. 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(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim (KR 20150052369 A, Machine Translation) in view of Yonemaru (US 20230109546 A1) with further evidence provided by Wang (High-entropy Electrolyte Enables High Reversibility and Long Lifespan for Magnesium Metal Anodes) as applied to claims 1-6, 14, and 16-18 and in further view of Jilek (US 20140220450 A1).
Regarding claim 15, modified Kim discloses all of the claim limitations as set forth above.
Kim discloses that non-aqueous organic solvents can be used in the electrolyte for the magnesium secondary battery (See pg. 9, third paragraph, The electrolyte can be constituted by an organic electrolytic solution using an organic solvent or an aqueous electrolytic solution).
However, modified Kim does not disclose that the electrolyte has a moisture concentration of 7000 ppm or less.
Jilek discloses an electrolyte for use in a magnesium battery that includes a non-aqueous electrolyte and discloses that limiting the amount of water in the electrolyte because even a small amount of water significantly increases the Mg anode overpotential ([0014]) and that the non-aqueous electrolyte solution is preferably formed with a water content less than 200 ppm ([0069]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the method of forming the non-aqueous electrolyte of modified Kim to reduce the amount of water to be within the claimed range as disclosed by Jilek because doing so improves Mg secondary battery performance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVINA PILLAY whose telephone number is (571)270-1180. The examiner can normally be reached Monday-Friday 9:30-6:00.
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DEVINA PILLAY
Primary Examiner
Art Unit 1726
/DEVINA PILLAY/ Primary Examiner, Art Unit 1726