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 .
Drawings
The drawings are objected to because Figure 6 does not appear to meet the requirements of 37 CFR 1.84(l), “All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction”. In this case, Figures 6 contains a legend in which the numbers are illegible as they are small and blurry. The respective lines, numbers and letters are not uniformly thick and well-defined (i.e. are illegible) and thus, the Figures do not meet the requirements of 37 CFR 1.84(l).
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 § 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.
Claims 12-15, 20-26, 28-30 and 33-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hotta et al. (US 2022/0085457).
Regarding Claim 12, Hotta et al. teaches a secondary battery (Para. [0019]) comprising a negative electrode and a positive electrode (i.e. an anode and a cathode) (Para. [0023]), an aqueous electrolyte (Para. [0019]), and a separator electrically insulating the electrode included in the electrode construct from a counter electrode (Para. [0063]) (i.e. a separator disposed to prevent direct physical contact of the anode and the cathode), the electrolyte containing lithium ions (Para. [0024]) which are inserted into the negative electrode active material at the time of initial charge (Para. [0038]) (i.e. wherein the electrolyte transfers ions between one or both of the electrodes during electrochemical cycling of the battery).
Regarding Claim 13, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches solid electrolyte particles having an ionic conductivity with respect to lithium ions and sodium ions (Para. [0068]) and a negative and positive electrode active material have lithium ion insertion-extraction potential (Para. [0040], [0177]) (i.e. the two electrode exchange at least one same type of ions).
Regarding Claim 14, Hotta et al. teaches all of the elements of the current invention in claim 13 as explained above.
Hotta et al. further teaches the pH of the electrolyte on the negative electrode side and that on the positive electrode side are different after the initial charge, wherein the negative electrode side pH is preferably 7 or more and the positive electrode side pH is preferably 0 to 6 (Para. [0196]) (i.e. the one of the two electrodes is in a relatively less acidic environment at a stage of charge and the other one of the two electrodes is in a relatively more acidic environment at the stage of charge).
Regarding Claim 15, Hotta et al. teaches all of the elements of the current invention in claim 14 as explained above.
Hotta et al. further teaches the negative electrode side pH is preferably 7 or more and the positive electrode side pH is preferably 0 to 6 (Para. [0196]) (i.e. the relatively less acidic environment is a neutral or an alkaline environment and the relatively more acidic environment is a neutral environment or an acidic environment).
Regarding Claim 20, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches the electrolyte comprises zinc salts for forming a zinc coating layer or zinc-containing region formed in the electrode (i.e. wherein the electrolyte comprises one or more ions that promote diffusion of at least one other ion into at least one the two electrodes, wherein the at least one other ion is an electroactive species).
Regarding Claim 21, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches zinc chloride and zinc sulfate may be added to the electrolytic solution having the effect of suppressing hydrogen generation (Para. [0115]) (i.e. wherein the electrolyte comprises an additive that impedes hydrogen evolution reaction).
Regarding Claim 22, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches the first active material of the electrode includes one or more oxides of titanium (Para. [0041]) (i.e. wherein at least one of the two electrodes comprises oxides of a metal).
Regarding Claim 23, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches the first active material of the electrode includes one or more oxides of titanium (Para. [0041]) (i.e. wherein the metal is selected from titanium).
Regarding Claim 24, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches the current-collecting layer of the electrode is zinc foil or aluminum foil including one or more of magnesium, titanium, zinc, manganese, iron, copper and silicon (Para. [0062]). (i.e. wherein at least one of the two electrodes comprises a metal selected from the group consisting of zinc, aluminum, magnesium, titanium, zinc, manganese, iron, copper and silicon).
Regarding Claim 25, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches the first active material of the electrode includes one or more oxides of titanium (Para. [0041]) (i.e. wherein at least one of the two electrodes comprises a metal oxide of titanium oxides)
Regarding Claim 26, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches the titanium oxide may be a lithium-titanium composite oxide having a dopant introduced therein (Para. [0043]) (i.e. at least one of the two electrode comprises a material comprising one or more dopants comprising one or more elements).
Regarding Claim 28, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches the active material-containing layer has a porosity (Para. [0054]) (i.e. wherein at least one of the two electrode comprises holes).
Regarding Claim 29, Hotta et al. teaches all of the elements of the current invention in claim 28 as explained above.
Hotta et al. further teaches the active material-containing layer has a porosity (Para. [0054]) (i.e. wherein at least one of the two electrode comprises holes).
Regarding the limitation of the at least one of the two electrodes has been treated to introduce the defects, vacancies, moieties or holes, the limitation of the instant claim is a product by process limitation. The manner in which the product is formed (via treatment) is a product by process limitation which does not further limit the claimed product.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)(citations omitted).
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). See MPEP section 2113. As the structure claimed is taught (i.e. holes), the claim has been met.
Regarding Claim 30, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches water contained in the solvent of the aqueous electrolyte may undergo electrolysis in the negative electrode (Para. [0038]) (i.e. wherein at least one of the two electrodes comprises a material comprising water molecules).
Regarding Claim 33, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches the first active material of the electrode includes lithium titanium composite oxide (Para. [0041]) (i.e. wherein at least one of the two electrode exists in the form of a mixed metal oxide, with one or more members selected from lithium, titanium oxide).
Regarding Claim 34, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches a secondary battery (Para. [0019]) (i.e. wherein the battery is a secondary battery).
Regarding Claim 35, Hotta et al. teaches all of the elements of the current invention in claim 12 as explained above.
Hotta et al. further teaches an aqueous electrolyte (Para. [0019]) (i.e. wherein the electrolyte is an aqueous electrolyte such that the battery is an aqueous battery).
Regarding Claim 36, Hotta et al. teaches charging and discharging of the secondary battery (Para. [0226]) wherein the electrode of the battery comprises an active material-containing layer on a current collecting layer (i.e. conductive substrate) in contact with each other (Para. [0017]) wherein lithium ions are inserted into the negative electrode active material at the time of initial charge (Para. [0038]) (i.e. a method of operating a battery comprising an electrode comprising a conductive substrate, the method comprising changing a redox state of a material on the substrate during electrochemical cycling of the battery).
Regarding Claim 37, Hotta et al. teaches all of the elements of the current invention in claim 36 as explained above.
Hotta et al. further teaches lithium ions are inserted into the negative electrode active material at the time of initial charge (Para. [0038]) (i.e. comprising depositing the material on the substrate during the electrochemical cycling).
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.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Hotta et al. (US 2022/0085457) in view of Hu et al. (CN106602053A). The English machine translation of Hotta et al. is attached and is referenced below.
Regarding Claim 27, Hotta et al. teaches all of the elements of the current invention in claim 26 as explained above.
Hotta et al. teaches the titanium oxide may be a lithium-titanium composite oxide having a dopant introduced therein (Para. [0043])
Hotta et al. does not explicitly teach the one or more dopants comprising one or more elements comprises an element selected from the group consisting of hydrogen, boron, carbon, nitrogen, sodium, potassium, lithium, calcium, sulfur, phosphorus, manganese, magnesium, iron, cobalt, nickel, copper, zinc, aluminum, gallium, zirconium, niobium, molybdenum, ruthenium, cadmium, indium, tin, antimony, lanthanum, cerium, neodymium, tantalum, tungsten, rhenium, platinum, lead, strontium, bismuth, and halides.
However, Hu et al. teaches a lithium titanate composite anode material (i.e. lithium-titanium composite oxide) that is alumina-doped (Para. [0031]) (i.e. the one or more elements comprises aluminum).
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 dopant of the lithium-titanium composite oxide of Hotta et al. to incorporate the teaching of alumina as a dopant as taught by Hu et al., as such a dopant would suppress gas generation production in lithium titanate batteries (Para. [0010]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 12, 22-27, 30 and 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 4, 7 and 19 of U.S. Patent No. 10,559,855. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1, 4, 7 and 19 of U.S. Patent No 10, 559,855 teaches all of the elements of the current invention in claims 12, 22-27, 30, and 33-35.
Claim 12, 22-25, 30 and 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 17 of U.S. Patent No. 10,916,963. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 and 17 of U.S. Patent No 10,916,963 teaches all of the elements of the current invention in claims 12, 22-25, 30, and 33-35.
Claim 12, 22-25, 28-30 and 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,336,110. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No 11,336,110 teaches all of the elements of the current invention in claims 12, 22-25, 28-30 and 33-35.
Claim 12-13, 22-25, 28-30 and 33-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 30 of U.S. Patent No. 11,603,321 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 and 30 of U.S. Patent No 11,603,321 teaches all of the elements of the current invention in claims 12-13, 22-25, 28-30 and 33-34.
Claim 12-13, 22-25, 30 and 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 3 of U.S. Patent No. 12,418,192 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 and 3 of U.S. Patent No 12,418,192 teaches all of the elements of the current invention in claims 12-13, 22-25, 30 and 33-35.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARMINDO CARVALHO JR. whose telephone number is (571)272-5292. The examiner can normally be reached Monday-Thursday 7:30a.m.-5p.m..
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/ARMINDO CARVALHO JR./Primary Examiner, Art Unit 1729
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