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 § 102
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 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 1 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Tokuda et al. (US 6,190,801).
Regarding claim 1, Tokuda et al. discloses in Fig 1, a cathode-active material (C6/L7) for a proton-conducting secondary battery (Fig 1, Abstract), the cathode-active material (C6/L7) being for use in a proton-conducting secondary battery (Fig 1, Abstract), the cathode-active material (C6/L7) comprising a compound (C6/L19-21) that is a solid solution (C6/L19-21) that has a composition containing Mn (C6/L19-21, Ni(OH)2 + Mn solid solution explicitly disclosed).
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 non-obviousness.
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.
Claims 2-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tokuda et al. (US 6,190,801) as applied to claim 1 above, and further in view of Matsumoto et al. (US 5,455,125).
Regarding claims 2-7, Tokuda et al. discloses all of the claim limitations as set forth above and also discloses the cathode-active material is a compound having a composition represented by Ni(OH)2 + Mn (C6/L19-21). The reference does not explicitly disclose the amount of Mn, 0 < Mn ≤ 1, as stated in the claims (claims 2, 4-7, various amounts up to 0.95).
Matsumoto et al. discloses in Figs 1-7, a secondary battery (Abstract) including a positive electrode comprising a Ni(OH)2 material with a Mn additive (C9/L52-63, C10/L54-59). The Mn additive suppresses electrode oxygen gas evolution and temperature increase, thereby enhancing overall battery capacity and performance (C9/L53-63). As the electrode gas suppression and capacity are variables that can be modified, among others, by adjusting said amount of Mn additive (see Matsumoto et al, C9/L53-63), with said electrode gas suppression and capacity both varying as the amount of Mn additive is varied, the precise amount of Mn additive would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was filed. As such, without showing unexpected results, the claimed amount of Mn additive cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was filed would have optimized, by routine experimentation, the amount of Mn additive in the active material of Tokuda et al. as taught by Matsumoto et al. to obtain the desired balance between the electrode gas suppression and capacity (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tokuda et al. (US 6,190,801) as applied to claim 1 above, and further in view of Nanamoto et al. (US 2003/0044684).
Regarding claim 8, Tokuda et al. discloses in Fig 1, a proton-conducting secondary battery (Fig 1, Abstract) comprising: a cathode (C6/L25-26) with a cathode-active material (C6/L7) as set forth above; an anode (C6/L32-42) with an anode active material (C6/L21) capable of storing and releasing hydrogen (C6/L32-42); and an aqueous electrolyte (C6/L51-53) interposing between the cathode (C6/L25-26) and the anode (C6/L32-42).
Tokuda et al. does not explicitly disclose a non-aqueous electrolyte.
Nanamoto et al. discloses a secondary battery (Abstract) including a nonaqueous electrolyte ([0003]). Nonaqueous electrolytes afford batteries higher energy densities than aqueous electrolytes ([0003]).
Nanamoto et al. and Tokuda et al. are analogous since both deal in the same field of endeavor, namely, batteries.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the nonaqueous electrolyte disclosed by Nanamoto et al. as the electrolyte of Tokuda et al. to enhance battery energy density.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Christian et al. (US 2011/0223493) discloses a battery (Abstract) including a positive active material comprising a metal additive in a solid solution ([0014]).
Akagawa et al. (US 2016/0099481) discloses in Figs 1-2, a battery (ref 1) including a positive electrode (ref 2) comprising manganese dioxide with a metal therein forming a solid solution ([0032]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH J DOUYETTE whose telephone number is (571)270-1212. The examiner can normally be reached Monday - Friday 8A - 4P EST.
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/KENNETH J DOUYETTE/Primary Examiner, Art Unit 1725