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 .
Specification
The disclosure is objected to because of the following informalities:
on page 9, line 3, "KaSO4" should read "KSO4",
on page 11, line 21, “it has excellent” should read “have excellent”,
and on page 15, line 9, “bock a reaction” should read “block a reaction”.
Appropriate correction is required.
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)(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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by Adamson et al. (US 20190131662 A1).
Regarding claim 1, Adamson et al. teach an electrolyte for a zinc-bromine aqueous battery, comprising: zinc bromide (ZnBr2) salt [0008], a bromine complexing agent such as ammonium bromide [0019], and a metal ion additive SnCl2 [0023].
As to claim 2, Adamson et al. teach the electrolyte of claim 1, and specifically teach wherein the bromine complexing agent is one or more selected from the group consisting of 1-ethyl-1-methylpyrrolidin-1-ium bromide ([MEP]Br), 1-n-hexyl-1-methylpyrrolidin-1-iumbromide ([C6MP]Br), 1-n-butyl-1-methylpyrrolidin-1-iumbromide ([C4MP]Br), 1-ethyl-1-methylmorpholin-1-ium bromide ([MEM]Br), 1-n-butyl-1-methylmorpholin-1-iumbromide ([C4MM]Br), 1,1,1-trimethyl-1-n-hexadecylammoniumbromide ([CTA]Br), and tetraethylammonium bromide ([TEA]Br) (page 2, [0019]), as well as 1-ethyl-3-methylimidazol-1-iumbromide ([C2MIm]Br), and 1-n-butyl-3-methylimidazol-1-iumbromide ([C4MIm]Br) (page 10, [0178]).
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 rejected under 35 U.S.C. 103 as being unpatentable over Adamson et al. (US 20190131662 A1) in view of Eidler et al. (US 5591538 A).
Regarding claim 3, Adamson teaches a range for the concentration of bromine complexing agent in wt%. The instant application does not disclose the volume of their product; the calculation of wt% by dimensional analysis is inhibited by the absence of data. However, Eidler et al. teach an electrolyte with a bromine complexing agent analogous to Adamson et al.’s, wherein MEP is contained in electrolyte solution, having a composition of about 0.8M (col. 5, line 65).
Eidler et al. (1995) teach that including a complexing agent such as a quaternary amine allows the battery to be discharged at a fairly high rate without a simultaneous amount of self-discharge (col. 5, lines 35-38). In comparison, Adamson et al. (2017) teach that their quaternary ammonium agents (bromine complexing agents) provide the beneficial effect of enhancing electrochemistry by creating a buoyancy effect with the bromine complexes which thereby increases kinetics in the electrochemical cell ([0287]), which is expected to enhance cycle lifetime and inhibit self-discharge.
Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date to use one of the bromine complexing agents of Adamson et al. in a composition of 0.8M as taught by Eidler et al. by experimentally adjusting the electrolyte’s composition with the reasonable expectation of obtaining improved battery performance. Applicant is also reminded of case law:
It has been held that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is critical evidence indicating such concentration or temperature is critical. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, it has been held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Thus, the molarity of the bromine complexing agents as claimed does not support the patentability of subject matter encompassed by the prior art, especially since the molarity can be manipulated by experimental processes such as diluting with DI water or thermal evaporation.
Claims rejected under 35 U.S.C. 103 as being unpatentable over Adamson et al. (US 20190131662 A1) in view of Oh et al. (US 6187475 B1) .
As to claim 4, it is deemed that the standard reduction potential and standard oxidation potential are inherent characteristics and/or properties of the specifically disclosed manganese salts (i.e., metal ion additive). In this respect, MPEP 2112 sets forth the following:
Where the 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In this case, Oh et al. teaches a rechargeable cell were Mn(II) salts are utilized. The Mn(II) salts taught by Oh et al. are the same as those disclosed by Applicant which inherently have the characteristic property of having a lower standard reduction potential than the standard reduction potential of zinc, and a higher standard oxidation potential than the standard oxidation potential of bromine. Once dissociated, the Mn(II) salts produce Mn2+ ions in solution. Thus, the prior art and instant application describe metal ion additives with the same structure and chemical properties.
Oh et al. teach that when even small quantities of manganese sulfate is utilized as a manganese salt, the pH of the electrolyte decreases significantly (Table 1). They recognize that this decrease of pH of the aqueous electrolyte reduces the formation of zinc sulfate hydrates that may destruct the surface structure of the electrode (col. 9, lines 63-66). The formation of zinc bromide hydrides would promote deterioration of the surface structure of the electrode, and reduced pH would prevent these events in the same manner.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date to add an Mn(II) salt of Oh et al., such as MnSO4, in the electrolyte of Adamson because it would have been expected to preserve the electrode surface structure and increase battery cycle life and performance.
As to claims 5 and 6, Adamson et al. do not teach the metal ion additive being a salt containing Mn, and they do not teach the metal ion additive being one selected from the group consisting of MnSO4, MnCl2, Mn(NO3)2, Mn3(PO4)2, and Mn(CH3CO2)2.
However, Oh et al. teach examples of manganese (II) salts added to an electrolyte, including MnSO4, Mn(NO3)2, Mn(CO2CH3)2, MnCl2 (col. 9, lines 10-12). Oh et al. teach that their additives produce favorable effects outlined in col. 2, lines 6-24. According to Le Chatelier’s Principle, when manganese oxide is used in the cathode, the addition of manganese salt to the electrolyte may reduce the depletion of Mn content in the cathode due to other side reactions.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolyte for a zinc-bromine aqueous battery comprising zinc bromide and a bromine complexing agent disclosed by Adamson et al. by including a metal ion additive—specifically a salt containing Mn such as MnSO4—as suggested by Oh et al. in order to reduce the effects of side reactions.
As to claims 7 and 8, Adamson et al. do not teach the metal ion additive having a molarity of 0.05 M to 0.1 M, and they do not teach the ZnBr2 having a molarity of 2.0 M to 3.0 M. However, Oh et al. teach that the concentration of zinc sulfate (substitute of zinc bromide) is in the range of about 0.5M to 3M (col. 8, lines 26-28) and that the concentration of manganese (II) salt is less than 0.5M (col. 9, lines 32-33).
It follows that the claimed molarity ranges in the instant application are not novel and therefore would not produce unexpected results compared to prior art. Therefore it would have been obvious to incorporate ZnBr2 in a molarity between 2.0 M and 3.0 M and to incorporate the manganese metal ion additive in a concentration of 0.05 M to 0.1 M before the effective filing date of the application with reasonable expectation of reducing deterioration of the electrode surface (col. 9, lines 63-66) and producing a stable and conductive electrolyte, improving charge/discharge cycling characteristics of the cell (col. 8, lines 30-34). Applicant is reminded of In re Aller and In re Antonie.
Claims 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Eidler et al. (US 5591538 A) in view of Oh et al. (US 6187475 B1).
Regarding claim 9, Eidler et al. teach an aqueous zinc-bromine non-flow battery (FIG. 4, 139; col. 4, line 32) comprising:
a negative electrode (110—anodic half-cell) in which a zinc metal layer is formed on a negative electrode conductive plate and
a positive electrode (130—cathodic half-cell) in which carbon felt (145, col. 4, lines 38-42) is formed on a positive electrode conductive plate; and
an electrolyte charged in a space between the negative electrode and the positive electrode (col. 5, lines 20-28), wherein the electrolyte comprises ZnBr2 (col. 5, lines 63-64), and bromine complexing agent 1-ethyl-1-methyl pyrrolidinium bromide (col. 2, lines 63-65; col. 5, lines 29-34).
With respect to "zinc reduction occurs during a charging operation;" and "bromine oxidation occurs during a charging operation," the courts have held, "while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.”
MPEP 2114 states: APPARATUS CLAIMS MUST BE STRUCTURALLY DISTINGUISHABLE FROM THE PRIOR ART. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.
Eidler et al. do not teach a metal ion additive in the electrolyte.
However, Oh et al. teach an electrolyte for an aqueous zinc sulfate (II) rechargeable battery with a metal ion additive manganese (II) salt (col. 9, lines 10-12). Oh et al. teach that their additives produce favorable effects, improving reversibility and stability of the battery (col. 2, lines 6-24).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the aqueous zinc-bromine non-flow battery disclosed by Eidler et al. by including a metal ion additive—such as MnSO4—as suggested by Oh et al. with reasonable expectation of reducing deterioration of electrode surface structure (col. 9, lines 63-66) and reducing the effects of side reactions.
As to claim 10, Eidler et al. teach a positive electrode comprising a carbon material such as carbon felt (col. 2, lines 57-59; col. 4, lines 38-42) soaked in electrolyte containing a salt such as [MEP]Br, which forms a liquid bromine complex (col 2, lines 63-65). Complexation is expected to occur during charging operation, when bromine is oxidized and Br2(g) is released at the cathode (col. 6, lines 50-53).
As to claim 11, Eidler et al. teach the bromine complexing agent 1-ethyl-1-methylpyrrolidin-1-iumbromide ([C2MP]Br)(=[MEP]Br) (col. 2, lines 63-64; col 5, lines 33-35).
As to claim 12, Eidler et al. teach that the electrolyte fills the anodic half-cell (col. 5, lines 20-21). As pointed out earlier, it would have been obvious to include a metal ion additive in the electrolyte. Therefore, the structure of the negative electrode would be the same, And the function of the negative electrode is expected to be the same as the same components are in the composition. See MPEP 2112.01 II.
As to claim 13, it is deemed that the standard reduction potential and standard oxidation potential are inherent characteristics and/or properties of the specifically disclosed manganese salts (i.e., metal ion additive). In this respect, MPEP 2112 sets forth the following:
Where the 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
“Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In this case, the metal ion additive disclosed by Oh et al. were Mn(II) salts, which inherently have the characteristic property of having a lower standard reduction potential than the standard reduction potential of zinc, and a higher standard oxidation potential than the standard oxidation potential of bromine. Once dissociated, the Mn(II) salts produce Mn2+ ions in solution. Thus, the prior art and instant application describe metal ion additives with the same structure and chemical properties.
As to claim 14 and 15, Eidler et al. do not teach the metal ion additive being a salt containing Mn, and they do not teach the metal ion additive being one selected from the group consisting of MnSO4, MnCl2, Mn(NO3)2, Mn3(PO4)2, and Mn(CH3CO2)2.
However, Oh et al. teach examples of manganese (II) salts added to an electrolyte, including MnSO4, Mn(NO3)2, Mn(CO2CH3)2, MnCl2 (col. 9, lines 10-12). Oh et al. teach that their additives produce favorable effects outlined in col. 2, lines 6-24. According to Le Chatelier’s Principle, when manganese oxide is used in the cathode, the addition of manganese salt to the electrolyte may reduce the depletion of Mn content in the cathode due to other side reactions.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrolyte for a zinc-bromine aqueous battery comprising zinc bromide and a bromine complexing agent disclosed by Adamson et al. by including a metal ion additive—specifically a salt containing Mn such as MnSO4—as suggested by Oh et al. with reasonable expectation of reducing deterioration of electrode surface structure (col. 9, lines 63-66) and reducing the effects of side reactions on cycle life.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW N KIM whose telephone number is (571)272-9169. The examiner can normally be reached Mon-Fri. 8:00am-5pm.
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/ANDREW KIM/Examiner, Art Unit 1727
/BARBARA L GILLIAM/Supervisory Patent Examiner, Art Unit 1727