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 Interpretation
Claim 3 recites “Bi as a main component” in line 2. It is noted that the instant specification at paragraph [0056] states: “active material layer 109 contains Bi as a main component” is defined as “the content of Bi in active material layer 109 is more than or equal to 50 mass %”. Therefore, the specification provides a definition for “main component”.
Claim 4 recites “contains substantially only the Bi as the active material” in line 2. It is noted that the instant specification at paragraph [0071] states: “contains substantially only Bi as an active material…means that…an active material other than the Bi is less than or equal to 1 mass%”. Therefore, the specification provides a definition for “substantially”.
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.
Claim 2 is 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 2 recites “Bi simple substance” in line 2. However, it is unclear the meaning of a “simple” in this context. Does simple mean elemental Bi? Or would an alloy of bismuth and another metal satisfy the limitation of simple? Is the presence or formation of LiBi or Li3Bi considered a simple substance?
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Finke, et al., “Electrochemical Method for Direct Deposition of Nanometric Bismuth and Its Electrochemical Properties vs Li”. Electrochemical and Solid-State Letters, Volume 11, No. 3, pages E5-E9.
Regarding claim 1, Finke discloses an electrochemical method for direct deposition of nanometric bismuth on a Cu nanoarchitectured substrate (title, abstract). Finke teaches that the deposited bismuth as part of a Bi/Cu nanoarchitectured electrode is attractive as a negative electrode in a lithium-ion battery (abstract; E5, left column). Measurements were performed with coin cell hardware [battery], using a copper substrate covered with the Bi [active material layer contains Bi] deposited directly as a positive electrode [first electrode], Li-metal as a negative electrode [second electrode], and a separator soaked with an solution of ethylene carbonate and dimethyl carbonate as the electrolyte [electrolytic solution] (E6, left column).
The Bi is electrodeposited onto a nanoarchitectured copper substrate having copper nanorods spaced on top of a copper foil (E7, right column). As the copper nanorods are spaced on the copper foil, there are gaps and interstices between nanorods, and therefore the nanoarchitectured copper substrate is a porous body.
Regarding claims 2-4, Finke discloses all of the claim limitations as set forth above. Finke teaches that Bi is used as the active material (E6, left column; E7, right column).
Regarding claim 5, Finke discloses all of the claim limitations as set forth above. Finke teaches that LiBi and Li3Bi are present in the reaction (E7, right column; Fig 6a).
Regarding claim 6, Finke discloses all of the claim limitations as set forth above. Finke discloses that the substrate is copper (E5, right column).
Regarding claim 7, Finke discloses all of the claim limitations as set forth above. Finke teaches that the active material of Bi is a plating layer (E5, right column, “plating bath”; E6, right column, “Bi plating”).
Regarding claim 8, Finke discloses all of the claim limitations as set forth above. Finke discloses that an electrolyte solution having ethylene carbonate and dimethyl carbonate [aprotic solvents], and lithium triflate [lithium salt dissolved in the aprotic solvent] (E6, right column).
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.
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) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Finke, et al., “Electrochemical Method for Direct Deposition of Nanometric Bismuth and Its Electrochemical Properties vs Li”. Electrochemical and Solid-State Letters, Volume 11, No. 3, pages E5-E9, as applied to claim 1 above, and further in view of Sanada et al. (US 2014/0272589).
Regarding claim 9, Finke discloses all of the claim limitations as set forth above. While Finke discloses ethylene carbonate and dimethyl carbonate [aprotic solvents] as in the electrolyte solution (E6, right column), Finke does not explicitly disclose wherein the aprotic solvents contains at least one selected from the group consisting of vinylene carbonate and fluoroethylene carbonate.
Sanada discloses lithium ion secondary battery comprising a negative electrode active material including a metal (abstract). The negative electrode active material can include a main component of any one of silicon, germanium (Ge), tin (Sn), aluminum (Al), zinc (Zn), lead (Pb), antimony (Sb), magnesium (Mg), indium (In), bismuth (Bi) or cadmium (Cd) ([0028]-[0029]). The liquid electrolyte has a lithium salt dissolved into an organic solvent, and the organic solvent can be ethylene carbonate (EC), propylene carbonate (PC), butylene carbonate (BC), vinylene carbonate (VC), dimethyl carbonate (DMC), diethyl carbonate (DEC), ethyl methyl carbonate (EMC) and methyl propyl carbonate (MPC) ([0057]). Sanada further teaches that multiple carbonates can be used together ([0070]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to either use the vinylene carbonate as taught by Sanada as the carbonate solvent or combine the vinylene carbonate to the carbonate solvents of Finke because Sanada teaches that these solvents can be used as liquid electrolytes in a battery having a bismuth negative active material, and would amount to a simple substitution of one known element for another to obtain predictable results.
Regarding claim 10, Finke discloses all of the claim limitations as set forth above. While Finke teaches that the deposited bismuth as part of a Bi/Cu nanoarchitectured electrode is attractive as a negative electrode in a lithium-ion battery (E5, left column), and teaches that the bismuth is deposited onto a nanoarchitectured copper substrate as an electrode (abstract; E5 right column), Finke does not explicitly disclose wherein the first electrode [comprising the base material, and active material layer contains Bi] is a negative electrode in the battery, and the second electrode is a positive electrode.
However, Sanada discloses a battery element 10 of a lithium ion secondary battery 1 wherein the negative electrode active material includes a main element of any one of silicon, germanium (Ge), tin (Sn), aluminum (Al), zinc (Zn), lead (Pb), antimony (Sb), magnesium (Mg), indium (In), bismuth (Bi) or cadmium (Cd) ([0028]-[0029], [0034]). That is, Sanada teaches a lithium ion secondary battery having a negative electrode containing bismuth ([0028]-[0029]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the Bi/Cu nanoarchitectured electrode of Finke in a lithium ion secondary battery as the negative electrode because Sanada teaches such bismuth electrodes are used in a lithium ion secondary battery.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB BUCHANAN whose telephone number is (571)270-1186. The examiner can normally be reached M-F 8:00-5:00 PM (ET).
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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 fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB BUCHANAN/ Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/ Supervisory Patent Examiner, Art Unit 1725
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