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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on March 30, 2026 is acknowledged. Claims 6-9 are withdrawn from consideration.
Claim Rejections - 35 USC § 102
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.
Claims 1, 4, 5, 10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2015118782. Regarding claims 1, 10 and 12, the reference teaches a tubular aluminum silicate that is an additive in a secondary battery electrolyte (abstract, [0019] of machine translation). Regarding claim 4, the surface area of the aluminum silicate can be 784 m2/g, which anticipates the claimed range ([0107]). Regarding claim 5, the aluminum silicate has a pore size of 0.3-2.2 nm, which also anticipates the claimed range ([0016]). Thus, the instant claims are anticipated.
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.
Claims 2, 3, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2015118782.
The reference is applied to claims 1, 4, 5, 10 and 12 for the reasons stated above. Further regarding claim 2, the reference teaches that the tubes have a length of “about 10 nm to several microns long” ([0014]). Regarding claim 11, the reference teaches that the aluminum silicate is contained in the electrolyte in an amount of 0.1 g per 10 mL of electrolyte ([0111]).
However, the reference is not anticipatory of the claimed ranges of particle size (claim 2) of the weight percent of aluminum silicate in the electrolyte (claim 11). The reference further does not teach the composition as recited in claim 3.
However, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the initially, the claimed particle size and the size disclosed by the reference overlap. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (In re Wertheim, 191USPQ 90; In re Woodruff, 16 USPQ2d 1934). Accordingly, claim 2 is rendered obvious.
With respect to claim 11, the reference discloses the amount of aluminum silicate in terms of a concentration (0.1 g per 10 mL). It can be seen that this is a small amount of aluminum silicate, which may overlap with the claimed range (0.1-2.0 % by weight). Paragraph [0019] of the reference provides guidance on the maximum and minimum limits of the additive in the electrolyte, for example when it is less than 5 mg per 1 mL, it does not perform the effect of the invention (metal ion trapping). Thus, the amount of aluminum silicate is identified as a result effective variable by the reference. It has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
Regarding claim 3, the claim recites specific compositional ranges of Si, Al, and O within the aluminum silicate. The reference does not appear to provide guidance as to the composition of the aluminum silicate therein, other than that an X-ray diffraction pattern of the product contains confirmed peaks specific to the tubular aluminum silicate ([0106]). The position is taken that a skilled artisan could have routinely optimized the composition of the aluminum silicate of JP ‘782, in order to affect the morphology, porosity, or conductivity of the resultant product. As such, the ranges recited in claim 3 would be obvious one skilled in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272-1299. The examiner can normally be reached Monday-Friday from 9:30 AM - 6:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Nicole Buie-Hatcher, can be reached at (571) 270-3879. The phone number for the organization where this application or proceeding is assigned is (571) 272-1700. Documents may be faxed to the central fax server at (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/Jonathan Crepeau/
Primary Examiner, Art Unit 1725
April 16, 2026
Prosecution Insights