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 .
Election/Restrictions
Applicant’s election of claims 1-17, 61-64, 85, 87-88 and 98 in the reply filed on July 15, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 18-60, 65-84, 89-97 and 99-102 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Claims 1-17, 61-64, 85-88 and 98 are being examined on the merits in this office action.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on Jan. 21, Feb. 17 and May 30, 2025 and May 6, 2026 have been considered by the examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “630”.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “a second current collector” (claims 85 and 87) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 63-64 and 98 are rejected under 35 U.S.C. 101 because the claim is directed to neither a “manufacture” nor a “process”, but rather embraces or overlaps two different statutory classes of invention set forth in 35 USC §101 which is drafted so as to set forth the statutory classes of invention in the alternative only.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 85 and 87 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The “a second current collector” recited in claims 85 and 87 is not shown in the drawings. It is unclear where the second current collector is. The specification does not insufficiently disclose where a second current collector is and how the air electrode is in contact with the second current collector.
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.
Claims 1-17, 61-64, 85-88 and 98 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 1 recites “a discharge product of the metal on the air electrode”. However, “a discharge product of the metal” is not defined, rendering the claim indefinite. For purposes of examination, this recitation is interpreted as referring a product formed from discharging the metal-air battery.
Claims 6 and 7 are indefinite because the claimed subject matter “the air electrode is disposed on an outside of the tube” recited in claim 7 is conflict with the subject matter “the metal is disposed on an outside of the tube” recited in claim 6. It does not make sense that both the air electrode and the metal are on the outside of the tube. The configuration as claimed in claims 6 and 7 is inconsistent with the specification as originally filed, and the scope of the claim(s) is unascertainable. A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). See the art rejection below for how the said subject matters are addressed.
Claim 10 recites the limitation "the protective layer". There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the oil". There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the discharge product". There is insufficient antecedent basis for this limitation in the claim.
Claims 16-17 and 88 claim “a/the system for collecting …”, but do not define what structural features constitute the system. The claims are indefinite. For purposes of examination, the system is interpreted as the metal-air battery itself.
Claims 63-64 both involve an electric vehicle and a process step of using. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 USC §112(b).
Claim 98 involves both an electric vehicle and a process step of using. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 USC §112(b).
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.
(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 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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained through the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim Rejections - 35 USC § 102
Claims 1-8, 16-17, 85 and 87-88 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2), as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lee et al. (US 20150333384 A1, hereafter Lee).
Regarding claims 1-3, Lee teaches a metal-air battery comprising:
a current collector (700, Fig. 8);
a metal electrode (See 210 in Fig. 2A, and Fig. 8) comprising a metal (such as an alkali metal sodium, [0059]) and contacting the current collector (Fig. 8);
an air electrode (See 220 in Fig. 2A) on the metal electrode and opposite the current collector (See Figs. 2A and 8); and
a solid electrolyte (See 230, Fig. 2A) between the metal electrode and the air electrode (See Figs. 2A and 8).
Note that the invention is related to a product or an apparatus rather than a process. Lee teaches all the claimed structural and compositional features of the metal-air battery as claimed, and therefore the “discharged product of the metal” resulting from a discharging process of the metal-air battery is necessarily present. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). See MPEP § 2112.01.
Lee further discloses discharging and charging ([0058]) the metal-air battery. This discharging process would necessarily produce and release a discharge product of the metal on the air electrode, as instantly claimed and disclosed. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages.
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Regarding claim 4, Lee teaches the metal-air battery of claim 1, wherein the solid electrolyte is in a form of a vessel, and the metal (220) is disposed on an inside of the vessel (the annotated figs above).
Regarding claim 5, Lee teaches the metal-air battery of claim 4, whe
Regarding claim 6, Lee teaches the metal-air battery of claim 1, where the solid electrolyte is in a form of a tube (230), and the metal (210) is disposed on an outside of the tube (Figs. 2A and 8).
Regarding claim 7, Lee teaches the metal-air battery of claim 6, wherein the air electrode (220) is disposed on an outside of the tube (either side of the tube is interpreted as an outside). The “the discharge product is disposed on the air electrode” is necessarily present since Lee teaches the same metal-air battery with the same structural and compositional limitations as claimed.
Regarding claim 8, Lee teaches the metal-air battery of claim 7, wherein the tube is configured to receive a fluid (See “Air” in Fig. 2A). The “… release the discharge product when contacted by the fluid” is necessarily present since Lee teaches the same metal-air battery with the same structural and compositional limitations as claimed.
Regarding claims 16-17 and 88, Lee teaches a system (the metal-air battery itself) for collecting a discharge product of the metal-air battery of claim 1, and the limitations “wherein the air electrode is configured to receive a fluid and release the discharge product when contacted by the fluid”, “wherein the fluid comprises a gas, an aqueous fluid, a non-aqueous fluid, or a combination thereof” and “wherein the gas is air, nitrogen, CO2, or a combination thereof” relate to a manner of operating the system (specifically the air electrode). However, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP § 2114. In this case, Lee teaches all the structural limitation of the system as claimed, and therefore the above-mentioned limitations do not differentiate the claimed system from Lee.
Regarding claims 85 and 87, Lee teaches the metal-air battery of claim 1 and claim 15, respectively, and further teaches the metal-air battery includes a conductive material ([0062]) in the air electrode, which may be considered a second current collector.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Lee, as applied to claims 1, 6 and 7, respectively, and further in view of Lu et al. (CN 112542596 A, whose English machine translation is being employed for citation purposes, hereafter referred to as Lu).
Regarding claims 9-11, Lee teaches the metal-air battery of claim 1, and one of ordinary skill in the art would readily appreciate that the metal (e.g., sodium, mentioned above) is a solid unless other states of sodium are specifically disclosed.
Lee is silent on a protective layer comprising an oil, for example. In the same field of endeavor, Lu discloses that, for example, a methyl silicone oil is used as an insulator (equivalent to a protective layer) to inhibit corrosion of metal electrode because of its low surface tension and hydrophilic and oleophobic properties of the methyl silicone oil ([n0032]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to have used a methyl silicone oil on the metal electrode of Lee, as taught by Lu, in order to inhibit corrosion of the metal electrode. The density of a silicone oil typically ranges from 0.930 to 0.975 g/cm3 (e.g., google search the density). The claimed range of 0.8 to 1.06 g/cm3 overlaps the above range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Claims 12-15, 61-64, 86 and 98 are rejected under 35 U.S.C. 103 as being unpatentable over Lee, as applied to claim 1 above, and further in view of Clark (US 20200307390 A1, hereafter Clark).
Regarding claims 12-14 and 86, Clark teaches a system (100, such as “an electric aircraft or drone”, [0020]) comprising a metal-air battery ([0020]). One of ordinary skill in the art would readily appreciate that the metal-air battery of Lee can be used as a metal-air battery of the system of Clark. Needless to say, an electric aircraft or drone is an electric vehicle and an air vehicle. Furthermore, because the system can contain a metal-air battery of Lee which can emit the discharge product, as addressed in the rejection of claim 1.
Regarding claim 15, Clark teaches an electric air vehicle system (100, [0020]) comprising an electric air vehicle (such as “an electric aircraft or drone”, [0020]) comprising a metal-air battery ([0020]).
Moreover, Lee teaches a metal-air battery comprising:
a current collector (700, Fig. 8);
a metal electrode (See 210 in Fig. 2A, and Fig. 8) comprising a metal (such as an alkali metal sodium, [0059]) and contacting the current collector (Fig. 8);
an air electrode (See 220 in Fig. 2A) on the metal electrode and opposite the current collector (See Figs. 2A and 8); and
a solid electrolyte (See 230, Fig. 2A) between the metal electrode and the air electrode (See Figs. 2A and 8).
Note that the invention is related to a product or an apparatus rather than a process. Lee teaches all the claimed structural and compositional features of the metal-air battery as claimed, and therefore the “discharged product of the metal” resulting from a discharging process of the metal-air battery is necessarily present. Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997). See MPEP § 2112.01.
Lee further discloses discharging and charging ([0058]) the metal-air battery. This discharging process would necessarily produce and release a discharge product of the metal on the air electrode, as instantly claimed and disclosed. It is axiomatic that one who performs the steps of the known process must necessarily produce all of its advantages.
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One of ordinary skill in the art would readily appreciate that the metal-air battery of Lee can be used as a metal-air battery of the electric air vehicle system of Clark. Because the electric air vehicle system can contain a metal-air battery of Lee which can emit the discharge product, as addressed above.
Regarding claims 61-63, Clark teaches an electric vehicle (100, [0020]) comprising a metal-air battery ([0020]). Lee teaches the metal-air battery of claim 1 (See the rejection of claim 1). One of ordinary skill in the art would readily appreciate that the metal-air battery of Lee can be used as the metal-air battery of the electric vehicle of Clark. Clark in view of Lee teaches the electric vehicle is an air vehicle (such as “an electric aircraft or drone”, [0020], Clark). The “the discharge product is released from the vehicles as the vehicle is propelled” is necessarily present since Lee teaches the same electric vehicle comprising the same metal-air battery with the same structural and compositional limitations as claimed.
Regarding claims 63-64, Clark in view of Lee teaches the electric vehicle of claim 61, and the limitations “wherein the discharge product is released from the vehicle as the vehicle is propelled” and “wherein the discharge product is flushed from the air electrode by a gas stream comprising air” represent a manner of operating the electric vehicle and the air electrode. However, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP § 2114. In this case, Clark in view of Lee teaches all the structural limitation of the electric vehicle as claimed, and therefore the above-mentioned limitations do not differentiate the claimed vehicle from Clark in view of Lee.
Regarding claim 98, Clark in view of Lee teaches the electric vehicle of claim 61, and the limitation “the discharge product is removed from the air electrode, and optionally is stored in a vessel as a solid or a liquid” relates to a manner of operating the electric vehicle (specifically the air electrode of thereof). However, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP § 2114. In this case, Clark in view of Lee teaches all the structural limitation of the electric vehicle comprising the metal-air battery of claim 1 as claimed, and therefore the above-mentioned limitation does not differentiate the claimed electric vehicle from Clark in view of Lee.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZHONGQING WEI whose telephone number is (571)272-4809. The examiner can normally be reached Mon - Fri 9:30 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZHONGQING WEI/Primary Examiner, Art Unit 1727
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