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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4-6, 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 (pg. 9 para. 9-10).
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.
Trimethyl phosphate will include an alkoxy R1, R2 and R3 wherein each alkoxy group also contains a straight chained alkyl group of C1.
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 1 nm 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, 4-6, 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.
Response to Arguments
Applicant argues that Kim does not disclose a magnesium electrode plate having a protective layer located on the surface of the electrode plate, much less a protective layer that includes a reaction product of magnesium metal and the specific Chemical Formula 1 phosphoric acid alkyl ester compound recited in amended Claim 1. Applicant additionally argues Yonemaru therefore teaches an electrolyte-additive approach, not a magnesium electrode surface-treatment approach, and provides no teaching or suggestion to directly form the claimed protective layer on a magnesium electrode plate. Wang is relied upon for evidence that an interfacial layer may be formed when a magnesium electrode is exposed to an electrolyte solution containing trimethyl phosphate during electrochemical operation. Wang does not teach or suggest preparing a standalone magnesium electrode by directly immersing a magnesium electrode in a solvent comprising a Chemical Formula 1 compound to pre-modify the electrode surface before battery assembly. Applicant argues the modification of Kim with Yonemaru would not provide the claimed magnesium electrode having a protective layer located on the electrode plate itself, and would not solve the problem of magnesium passivation during electrode handling and battery assembly.
Claim 1 recites with respect to the protective layer formed on the magnesium electrode “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” .
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 (pg. 9-10) and also discloses a magnesium secondary battery comprising a magnesium electrode (pg. 7, para. 3-4). 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]). The modification of Kim and Yonemaru will result in a magnesium electrode being exposed to an electrolyte solution containing TMP. 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). Modified Kim therefore discloses “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” .
Applicant argues that the specification further teaches that the protective layer of the present invention suppresses formation of that passivation layer and permits preparation of a magnesium electrode and magnesium secondary battery without an expensive moisture control device.
In response to applicant's argument above, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant argues that the present invention, as described in the instant specification, directly immerses the magnesium electrode in a solvent comprising a phosphoric acid alkyl ester compound and thereby forms the protective layer on the electrode surface before the electrode is assembled into a battery. In contrast, the cited
electrolyte-additive approach leaves the magnesium electrode unprotected during handling and battery assembly, so that the magnesium electrode remains vulnerable to moisture and oxygen in the atmosphere and can form oxide/hydroxide/carbonate passivation layers that impede magnesium ion conduction.
This argument is incommensurate to the scope of the claim since there are no structural limitations regarding the claimed protective coating which would differ from that of the protective coating disclosed by modified Kim. Wang discloses when a magnesium electrode is exposed to an electrolyte solution which contains TMP there is a formation of a rich interfacial layer which results from a reaction product of a phosphoric acid alkyl ester compound and magnesium metal. This rich interfacial layer has the same structure as instantly claimed for the protective layer recited and therefore will perform the same functions. 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).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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
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