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: [0016], “Lia(M)b(PO4)cFd” should read --Lia(M)b(PO4)cFd--; [0069], “The reagent powers” should read --The reagent powders--; [0069], “The as prepared KVOPO4 powers” should read --The as prepared KVOPO4 powders-- .
Appropriate correction is required.
Claim Objections
Claims 14, 17, and 19 are objected to because of the following informalities: in claim 14, “has space group Pna21” should read --with space group Pna21--; in claim 17, “VOPO4 lattice a volume greater than” should read --VOPO4 lattice with a volume greater than--; in claim 19, “poly (vinylidene fluoride)” should read --poly(vinylidene fluoride)-- to remain consistent with claim 8. Appropriate correction is required.
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.
Claims 2-4, 10-20 are 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 the limitation "the electrolyte". There is insufficient antecedent basis for this limitation in the claim. Claim 1 recites “a sodium ion transport electrolyte”; therefore, it is unclear whether claim 2 is referring to the sodium ion transport electrolyte recited by claim 1 or a different electrolyte. For the purposes of prosecution, the examiner interprets the electrolyte recited in claim 2 to be the sodium ion transport electrolyte of claim 1.
Claims 3-4 recite the limitation “the insoluble conductive additive” but do not provide what the conductive additive is insoluble in. Therefore, one skilled in the art would not be reasonably apprised to the scope of the limitation and the claims are rendered unclear. For the purposes of prosecution, the examiner interprets the term insoluble to refer to insolubility in water, organic solvents, and ionic liquids. Claim 4 is rendered unclear as described above and also by virtue of its dependency on claim 3.
Claims 10-11 recite the limitation “two major plateau regions”, wherein the relative term “major” renders the claims indefinite. The claims do not define the bounds of a “major plateau region” nor does the specification provide a standard for ascertaining the requisite degree of a “major plateau region”. Thus, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of prosecution, the examiner interprets claims 10-11 to require a relative flattening of the discharge voltage curve over a range of ~25 mAhg-1 as would be recognized by one skilled in the art. Claim 11 is rendered unclear as described above and also by virtue of its dependency on claim 10.
Claims 12, 13, and 17 recite the limitation "per VOPO4". There is insufficient antecedent basis for this limitation in the claims. Claims 1, 13, and 17 recite “a VOPO4 lattice”; thus, it is unclear whether claims 12, 13, and 17 (respectively) are referring to the VOPO4 lattice or are further claiming VOPO4 as a material. For the purposes of prosecution, the examiner interprets claims 12, 13, and 17 to require a VOPO4 lattice comprising VOPO4 units and wherein the claimed “per VOPO4” limitations are instead per VOPO4 unit. Claims 14-16 are rendered unclear by virtue of their dependency on claim 13 and claims 18-20 are rendered unclear by virtue of their dependency on claim 17.
Claim 14 recites the limitation "the NaVOPO4". There is insufficient antecedent basis for this limitation in the claim. Claim 13 recites “a NaVOPO4 electrode” and “a VOPO4 lattice” thus, it is unclear whether claim 14 is referring to the NaVOPO4 electrode of claim 13, the VOPO4 lattice of claim 13, or another NaVOPO4 material. Further, claim 14 is a product-by-process claim and thus the process is given patentable weight only insofar as the process provides structural implications for the product and not for the actual manipulations involved therein. "[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.” See MPEP 2113(I). However, from the claim language it is unclear whether claim 14 requires: 1) the orthorhombic symmetry with space group Pna21 is formed by the replacement of potassium in KVOPO4 with sodium , or 2): that the KVOPO4 already has orthorhombic symmetry with space group Pna21 and NaVOPO4 is then further formed by the process. Thus, it is unclear what structural limitations are implied by the process. For the purposes of prosecution, the examiner interprets claim 14 to require the VOPO4 lattice having the orthorhombic symmetry with space group Pna21 and the NaVOPO4 electrode comprises NaVOPO4 formed by replacement of at least a portion of potassium in solid phase synthesized KVOPO4 with sodium. Claim 15 is rendered unclear by virtue of its dependency on claim 14.
Claim 16 is dependent on the independent claim 13 directed at a NaVOPO4 electrode; however, claim 16 further claims the NaVOPO4 electrode in combination with a sodium battery anode and a non-aqueous sodium ion transport electrolyte to form a battery. Thus, it is unclear what invention the applicant is claiming, a NaVOPO4 electrode, a battery using the NaVOPO4 electrode in combination with other elements, or the other recited components of the battery. For the purposes of prosecution, the examiner interprets the recitation of claim 16 “in combination with a sodium battery anode and a non-aqueous sodium ion transport electrolyte to form a sodium ion battery, the sodium ion battery having a capacity of at least C=133 mAhg⁻¹, and a discharge voltage curve comprising a first voltage plateau region comprising 3.8 V, and a second voltage plateau region comprising 2 V” merely to be intended use language. See MPEP 2111(II).
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 1-6, 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Song et al. (Chem. Commun., 2013, 49, 5280), hereinafter “Song”, in view of Nose (US 9,716,274 B2) and Mai et al (CN 104638228 A), hereinafter “Mai”, wherein an English machine translation of Mai is used and cited herein.
Regarding claim 1, Song teaches a sodium ion battery (Song, pg. 1 abstract), a metallic-sodium anode (corresponding to the claimed sodium ion donor anode), a NaClO4 in propylene carbonate electrolyte (corresponding to the claimed sodium ion transport electrolyte), and a NaVOPO4 (hereinafter referred to as the VOPO4 material) cathode (corresponding to the claimed cathode and its VOPO4 lattice as NaVOPO4 would be expected to have a VOPO4 lattice) (Song, pg. 1 col. 2 par. 3).
Song does not teach an orthorhombic crystal structure or the Pna21 space group of the VOPO4 lattice.
However, Nose teaches that a crystal structure belonging to the space group Pn21a is the same as the crystal structure belonging to space group Pna21 and that a cathode active material for sodium batteries preferably has a crystal structure belonging to the space group Pn21a because all Na ions in the crystal structure are aligned in all directions and have very high mobility. Mai teaches potassium vanadium phosphate as a positive electrode material for sodium ion batteries wherein the material is directly increased due to the intercalation of potassium ions resulting in better ion diffusion channels (Mai, [0006]) relative to its sodium and lithium counterparts. Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the Pna21 taught by Nose for the space group of Song’s NaVOPO4 due to its alignment of Na ions allowing high mobility as taught by (Nose, col. 50 ln. 50-65) and to substitute Na with K in order to provide better ion diffusion channels as taught by Mai (Mai, [0006]) providing a KVOPO4 electrode (corresponding to the claimed VOPO4 lattice) with the Pna21 space group (corresponding to the claimed orthorhombic crystal structure because Pna21 is a space group of orthorhombic crystal systems).
Regarding claim 2, as interpreted in view of the 35 U.S.C. 112(b) issues identified above, Song teaches propylene carbonate as the electrolyte solvent (corresponding to the claimed electrolyte being non-aqueous because propylene carbonate is an organic solvent) (Song, pg. 1 col. 2 par. 3).
Regarding claims 3 and 4, Song further teaches the VOPO4 material was then ball milled with acetylene black (corresponding to claim 3’s claimed insoluble conductive additive and claim 4’s claimed insoluble conductive additive comprising a conductive carbon additive because acetylene black is a known conductive carbon material insoluble in water and organic solvents) (Song, pg. 1 col. 2 par. 2).
Regarding claim 5, claim 5 is a product-by-process claim and thus the process is given patentable weight only insofar as the process provides structural implications for the product and not for the actual manipulations involved therein. "[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.” See MPEP 2113(I). In this case, one of ordinary skill would recognize the claimed product-by-process limitations to merely impart a VOPO4 lattice including NaVOPO4 and which may also include KVOPO4. Song further teaches reversible Na+ extraction and insertion (Song, pg. 2 par. 3), which one skilled in the art would recognize would result in at least a partial exchange of Na+ for potassium in the KVOPO4 electrode suggested by Song modified by Nose and Mai (corresponding to the claimed VOPO4 electrode comprising Na and K as implied by the process).
Regarding claim 6, claim 6 is a product-by-process claim and thus the process is given patentable weight only insofar as the process provides structural implications for the product and not for the actual manipulations involved therein. "[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.” See MPEP 2113(I). One of ordinary skill would recognize that the claimed product-by-process steps merely further require carbon black and a binder mixed with the VOPO4 material. Song further teaches preparation of the cathode by ball milling the VOPO4 material with acetylene black (corresponding to claim 3’s claimed insoluble conductive additive and claim 4’s claimed insoluble conductive additive comprising a conductive carbon additive) (Song, pg. 1 col. 2 par. 2).
Regarding claim 9, 10, and 11, Song does not expressly teach a capacity of 133 mAhg-1, a discharge voltage curve with two major plateau regions, a first voltage plateau region of at least 3.8 V, or a second voltage plateau region of at least 2 V. However, Song modified by Nose and Mai suggest a substantially similar KVOPO4 cathode and sodium ion battery, as described above with regard to claim 1, and Song further teaches a substantially similar process for sodium ion exchange.
Instant disclosure
Song
sodium metal as both counter and reference electrode ([0016])
metallic-sodium anode (pg. 1 col. 2 par. 3)
propylene carbonate electrolyte ([0016])
propylene carbonate electrolyte (pg. 1 col. 2 par. 3)
The pristine electrode was first galvanostatically charged to a high cut-off voltage of 4.7 V ([0016])
galvanostatic cycling was carried out in the voltage window 2.0-4.4 V (pg. 1 col. 2 par. 3, Fig. 4(c))
Thus, the claimed capacity of at least 133 mAhg-1 (as claimed in claim 10), and discharge voltage curve comprising two major plateau regions (as claimed in claim 11) wherein the first voltage plateau occurs at 3.8 V and the second voltage plateau occurs at 2 V (as claimed in claim 12) would be the natural result of the combination of elements explicitly disclosed by the prior art. See MPEP 2112(IV).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Song in view of Nose and Mai as applied to claim 1 above, and further in view of Saka et al. (US 8,795,889 B2), hereinafter “Saka”, and Seol et al. (US 2018/0159131 A1), hereinafter “Seol”.
Regarding claim 7, Song modified by Nose and Mai suggests the KVOPO4 (a VOPO4 material) cathode as described with regard to claim 1 but Song does not teach the claimed particle sizes of the VOPO4 material or acetylene black.
However, Saka teaches a transition metal phosphate (corresponding to the claimed VOPO4) positive electrode (corresponding to the claimed cathode) for a sodium ion secondary battery (Saka, col. 1 ln. 65-67, col. 2 ln. 1-5) wherein the D50 of the transition metal phosphate particulate substance is preferably from 0.01 to 50 µm. If the D50 is outside of the range the battery may fail in obtaining sufficient output at high current rate (Saka, col. 4 ln. 35-45). Seol teaches a positive electrode material mixture (corresponding to the claimed cathode) for a secondary battery (Seol, [0002]) including a plate-shaped conductive agent (corresponding to the claimed conductive additive particles) (Seol, [0036]) which may have a D50 of 2 - 4 µm allowing for a more uniform distribution in the positive electrode material mixture resulting in improved electrical conductivity and reduced resistance characteristics (Seol, [0055]). In the case where the claimed ranges or values “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP §2144.05. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute Saka's transition metal phosphate D50 range and Seol’s plate-shaped conductive agent particle D50 range for Song’s VOPO4 and acetylene black particle size ranges respectively, in order to ensure a battery with sufficient output at high current rate (Saka, col. 4 ln. 35-45) and to achieve an improved electrical conductivity and reduced resistance (Seol, [0055]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Song in view of Nose, Mai, Saka, and Seol as applied to claim 7 above, and further in view of Inoue et al. (US 2006/0222953 A1), hereinafter “Inoue”.
Regarding claim 8, Song further teaches preparation of the cathode by rolling the VOPO4 material with polytetrafluoroethylene binder (corresponding to the claimed binder) (Song, pg. 1 col. 2 par. 3) but does not teach poly(vinylidene fluoride).
However, Inoue teaches a polymer fluoride as a binder in the positive electrode active material layer (corresponding to the claimed cathode) for a nonaqueous electrolyte battery (Inoue, [0016]) wherein the polymer fluoride includes polyvinylidene fluoride. With the introduction of polyvinylidene fluoride into the positive electrode active material layer, the flexibility of the positive electrode active material layer can be easily improved (Inoue, [0017]). Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the polytetrafluoroethylene binder of Song with polyvinylidene fluoride in order to increase the flexibility of the cathode taught by Song (Inoue, [0017]).
Claims 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Song in view of Nose and Mai as applied to claim 1 above, and further evidenced by Chihara et al. (Chem. Commun., 2017, 53, 5208, Supplementary Information), hereinafter “Chihara”.
Regarding claim 12, as interpreted in view of the 35 U.S.C. 112(b) issues identified above, Song modified by Nose and Mai suggests the battery according to claim 1 having a KVOPO4 positive electrode wherein the KVOPO4 is of the Pna21 space group. Chihara teaches KVOPO4 with the space group Pna21 wherein the material crystallizes with a ~852 Å3 lattice volume and 2 formula units per unit cell (Chihara, pg. 3), giving a per VOPO4 lattice volume of ~426 Å3. Thus, the battery including KVOPO4 with the Pna21 space group as the positive electrode material suggested by Song modified by Nose and Mai would have had a lattice volume of greater than 90 Å3 per VOPO4 as evidenced by Chihara (Chihara, pg. 3).
Regarding claim 13, as interpreted in view of the 35 U.S.C. 112(b) issues identified above, Song teaches NaVOPO4 as a cathode material for a sodium ion battery (Song, pg. 1 abstract) including a metallic-sodium anode. Song further discloses a per VOPO4 lattice volume of ~354 Å3 (corresponding to the claimed volume greater than 90 Å3 per VOPO4) but does not teach two sodium ions per VOPO4.
However, Nose teaches that the crystal structure belonging to the space group Pn21a is the same as the crystal structure belonging to space group Pna21 and that the cathode active material for sodium batteries preferably has a crystal structure belonging to the space group Pn21a because all Na ions in the crystal structure are aligned in all directions and have very high mobility (Nose, col. 5 ln. 50-65). Mai teaches potassium vanadium phosphate as a positive electrode material for sodium ion batteries wherein the material is directly increased due to the intercalation of potassium ions resulting in better ion diffusion channels (Mai, [0006]) relative to its sodium and lithium counterparts. Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the Pna21 taught by Nose for the space group of Song’s NaVOPO4 due to its alignment of Na ions allowing high mobility as taught by (Nose, col. 50 ln. 50-65) and to substitute Na with K in order to provide better ion diffusion channels as taught by Mai (Mai, [0006]). The resulting combination suggests a VOPO4 based (being KVOPO4) electrode having the space group Pna21. Chihara teaches KVOPO4 of space group Pna21 has a lattice volume of 426 Å3 per VOPO4 (Chihara, pg. 3). Thus, the VOPO4 based material in the electrode suggested by Saka modified by Nose and Mai would have had a lattice volume of greater than 90 Å3 per VOPO4 as evidenced by Chihara. Song further teaches reversible Na+ extraction and insertion in the cathode described above used in a battery (Song, pg. 2 col. 1 par. 3), which one skilled in the art would recognize as resulting in the exchange of a portion of the potassium in the VOPO4 based material for sodium resulting (corresponding to the claimed NaVOPO4 electrode). While Song does not expressly disclose a portion of the VOPO4 lattice having two sodium ions per VOPO4, the NaVOPO4 cathode suggested by Song modified by Nose and Mai is substantially the same as that of the instant disclosure. Thus, a portion of the VOPO4 lattice having two sodium ions per VOPO4 would be a natural result of the combination explicitly disclosed by the prior art. MPEP 2112(IV).
Regarding claim 14, as interpreted in view of the 35 U.S.C. 112(b) issues identified above, Saka further discloses an orthorhombic crystal structure for the transition metal phosphate positive electrode material. Claim 14 is a product-by-process claim and thus the process is given patentable weight only insofar as the process provides structural implications for the product and not for the actual manipulations involved therein. "[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.” See MPEP 2113(I). One of ordinary skill in the art would recognize that the claimed product-by-process steps merely imply a structure the NaVOPO4 electrode may include KVOPO4. As described for claim 13, Song modified by Nose and Mai and evidenced by Chihara suggests a KVOPO4 electrode wherein a portion of the potassium is exchanged with sodium (corresponding to the portion of the claimed NaVOPO4 electrode comprising K as implied by the recited process).
Regarding claim 15, as interpreted in view of the 35 U.S.C. 112(b) issues identified above. Claim 15 is a product-by-process claim and thus the process is given patentable weight only insofar as the process provides structural implications for the product and not for the actual manipulations involved therein. "[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.” See MPEP 2113(I). One of ordinary skill in the art would recognize that the claimed product-by-process steps merely imply the NaVOPO4 electrode of claim 14 including carbon particles. Song further teaches the VOPO4 material is ball milled with acetylene black (corresponding to the inclusion of carbon particles implied by the recited process) (Song, pg. 1 col. 2 par. 2).
Regarding claim 16, as interpreted in view of the 35 U.S.C. 112(b) issues identified above. Song modified by Nose and Mai and evidenced by Chihara suggests the NaVOPO4 electrode of claim 13. Claim 16 includes intended use language as interpreted above, “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.” MPEP 2111(II). As claim 13 fully and intrinsically sets forth all limitations of the claimed invention, the intended use recitation of claim 16 is not considered a limitation and claim 16 does not further limit the NaVOPO4 electrode of claim 13. Accordingly, the electrode of the prior art would be entirely capable of being used for a battery with resulting properties as claimed.
Regarding claim 17, as interpreted in view of the 35 U.S.C. 112(b) issues identified above. Claim 17 is a product-by-process claim and thus the process is given patentable weight only insofar as the process provides structural implications for the product and not for the actual manipulations involved therein. "[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.” See MPEP 2113(I). One of ordinary skill in the art would recognize that the claimed product-by-process steps merely imply a structure wherein the electrode comprises a VOPO4 lattice which includes NaVOPO4 and which may include KVOPO4. As described above with regard to claim 1, Song teaches NaVOPO4 as a cathode material for a sodium ion battery (Song, pg. 1 abstract) including a metallic-sodium anode. Song further discloses a per VOPO4 lattice volume of ~354 Å3 (corresponding to the claimed volume greater than 90 Å3 per VOPO4) but does not teach two sodium ions per VOPO4.
However, Nose teaches that the crystal structure belonging to the space group Pn21a is the same as the crystal structure belonging to space group Pna21 and that the cathode active material for sodium batteries preferably has a crystal structure belonging to the space group Pn21a because all Na ions in the crystal structure are aligned in all directions and have very high mobility (Nose, col. 5 ln. 50-65). Mai teaches potassium vanadium phosphate as a positive electrode material for sodium ion batteries wherein the material is directly increased due to the intercalation of potassium ions resulting in better ion diffusion channels (Mai, [0006]) relative to its sodium and lithium counterparts. Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the Pna21 taught by Nose for the space group of Song’s NaVOPO4 due to its alignment of Na ions allowing high mobility as taught by (Nose, col. 50 ln. 50-65) and to substitute Na with K in order to provide better ion diffusion channels as taught by Mai (Mai, [0006]).
The resulting combination suggests a VOPO4 based (being KVOPO4) electrode having the space group Pna21. Chihara teaches KVOPO4 of space group Pna21 has a lattice volume of 426 Å3 per VOPO4 (Chihara, pg. 3). Thus, the VOPO4 based material in the electrode suggested by Saka modified by Nose and Mai would have had a lattice volume of greater than 90 Å3 per VOPO4 as evidenced by Chihara. Song further teaches reversible Na+ extraction and insertion (Song, pg. 2 col. 1 par. 3) in the VOPO4 material of the sodium ion battery described above, which one skilled in the art would recognize as resulting in the exchange of a portion of the potassium in the VOPO4 based material for sodium (corresponding to the claimed electrode including NaVOPO4 as implied by instantly the recited process). While Song does not expressly disclose a portion of the lattice having a sodium exchange capacity of two sodium ions per VOPO4, the NaVOPO4 cathode suggested by Song modified by Nose and Mai is substantially the same as that of the instant disclosure. Thus, a portion of the lattice having a sodium exchange capacity of two sodium ions per VOPO4 would be a natural result of the combination explicitly disclosed by the prior art. MPEP 2112(IV).
Regarding claim 18, as interpreted in view of the 35 U.S.C. 112(b) issues identified above. Claim 18 is a product-by-process claim and thus the process is given patentable weight only insofar as the process provides structural implications for the product and not for the actual manipulations involved therein. "[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.” See MPEP 2113(I). One of ordinary skill in the art would recognize that the claimed product-by-process steps merely imply the NaVOPO4 electrode of claim 14 including carbon particles. Song further teaches the VOPO4 material is ball milled with acetylene black (corresponding to the inclusion of carbon particles implied by the process) (Song, pg. 1 col. 2 par. 2).
Regarding claim 19, as interpreted in view of the 35 U.S.C. 112(b) issues identified above, Song further teaches the cathodes were prepared by rolling the VOPO4 material and acetylene black (corresponding to the claimed carbon conductive particles) mixtures with polytetrafluoroethylene binder (Song, pg. 1 col. 2 par. 3).
Regarding claim 20, as interpreted in view of the 35 U.S.C. 112(b) issues identified above, the electrode suggested by Song modified by Nose and Mai and evidenced by Chihara includes a VOPO4 lattice having the Pna21 space group (corresponding to the claimed crystalline structure having orthorhombic symmetry as Pna21 is a space group of orthorhombic crystal systems).
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.
The examiner notes that the instant application is a divisional of application 17/705,780 resulting from a product and process of making restriction filed on 27 April 2023 wherein the method was elected. Further, the 780 application is a divisional of the application 15/633,240 resulting from a product and process of making restriction filed on 20 August 2019 wherein the product was elected. Notably, while the 780 application was filed as a result of a restriction, it is the method claims that were deemed distinct from the products presented in the 240 application. Thus, the claims of the application under examination and claims of the 240 application and its patent (U.S. Patent No. 11,289,700) are not consonant with the restriction requirement made by the examiner, since the claims have been changed in material respects from the claims at the time the requirement was made. For example, the divisional application filed includes additional claims not consonant in scope with the original claims subject to restriction in the parent. MPEP 804.01(B). Namely, in addition to the unelected method, the 780 application reintroduced products not consonant with the restriction requirement filed on 20 August 2019. Thus, the prohibition against nonstatutory double patenting rejections under 35 U.S.C. 121 does not apply to the product claims presented in the 780 application and in turn those of the instant application over the claims of the 700 patent.
Claims 1 and 9 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of the 700 patent recites all limitations of the instant claims 1 and 9.
Claims 1, 2, 10-11 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 11,289,700 in view of Saka.
Regarding claim 1, claim 13 of the 700 patent recites an electrode including all the limitations of the instantly claimed cathode (see claim 1 of the 700 patent), but does not recite a battery, a sodium ion donor anode, or a sodium ion transport electrolyte.
However, Saka teaches a sodium ion battery having a transition metal phosphate positive electrode wherein a sodium ion battery is preferred as sodium is in higher abundance and is cheaper than lithium (Saka, col. 1 ln. 30-40). Saka also teaches a metal such as sodium metal as a negative electrode (corresponding to the claimed sodium ion donor anode) as it is capable of being doped/dedoped with sodium ions at a lower potential than the positive electrode (Saka, col. 12 ln. 39-45), and a solid electrolyte such as Na2S-SiS2 (corresponding to the claimed sodium ion transport electrolyte) so to enhance the safety (Saka, col. 16 ln. 40-50). Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add the battery, anode, and electrolyte taught by Saka to the electrode claimed by the 700 patent in order to produce a battery from cheaper and more abundant materials than a lithium ion battery (Saka, col. 1 ln. 30-40), having an anode to be doped and dedoped by sodium ions (Saka, col. 12 ln. 39-45) and a solid electrolyte to enhance the safety (Saka, col. 16 ln. 40-50).
Regarding claim 2, Saka’s solid electrolyte further corresponds to a non-aqueous electrolyte.
Regarding claims 10-11, claim 13 of the 700 patent further recites all limitations of the instant claims 10 and 11 (see also claim 12 of the 700 patent).
Claims 1, 5, 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of the 700 patent recites all limitations of the instant claims 1, 5, and 12.
Claim 2 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 11,289,700 in view of Saka.
Regarding claim 2, claim 15 of the 700 patent recites all limitations of the instant claim 2 except the electrolyte being nonaqueous.
However, Saka teaches a sodium ion battery (Saka, col. 1 ln. 30-40) having a solid electrolyte such as Na2S-SiS2 (understood to be nonaqueous and thus, corresponding to the claimed nonaqueous electrolyte) so to enhance the safety (Saka, col. 16 ln. 40-50). Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the electrolyte recited by claim 15 of the 700 patent with Saka’s solid electrolyte in order to increase the safety of the battery (Saka, col. 16 ln. 40-50).
Claims 3-4, 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 19 of the 700 patent recites all limitations of the instant claims 3-4, and 6.
Regarding claim 6, the instant claim 6 is a product-by-process claim as discussed above. The structural implications implied by the instant claim 6’s recited process is a NaVOPO4 structure mixed with carbon black as recited by claim 19 of the 700 patent.
Claim 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 of the 700 patent recites all limitations of the instant claim 8.
Claims 13-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of the 700 patent recites all limitations of the instant claims 13-15 (see also claim 1 of the 700 patent).
Claims 13, 16 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 13, claim 2 does not explicitly recite a VOPO4 lattice volume greater than 90 Å3, but instead recites a process for forming NaVOPO4 substantially identical to that of the instant specification.
Claim 1 of the 700 patent
Instant specification
solid phase synthesis process from a heated powdered mixture of ammonium metavanadate, ammonium phosphate monobasic, and potassium carbonate
1.17 g of ammonium metavanadate, 1.15 g of ammonium phosphate monobasic and 0.69 g of potassium carbonate were uniformly mixed by 4 hours planetary ball milling [0102] The pellets were heated to 700°C with a heating rate of 5°C per min, maintained at 700°C for 10 hours [0103]
Followed by substitution of the potassium ions with sodium ions
The pristine electrode was first galvanostatically charged to a high cut-off voltage of 4.7 V vs. Na/Na+ in order to furthest remove the potassium ion from the structure [0116] The subsequent discharge process should insert sodium into the electrode [0117]
Thus, the claimed lattice volume greater than 90 Å3 per VOPO4 would naturally flow from the recitation of the 700 patent.
Regarding claim 16, claim 2 of the 700 patent further recites all limitations of the instant claim 2.
Claims 13-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of the of the 700 patent recites all the limitations of the instant claims 13 and 14.
Claims 13-16, rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 13, claim 20 of the 700 patent recites a NaVOPO4 electrode for a sodium ion battery indistinct from the instant claim 13 and recites a substantially identical process for forming the NaVOPO4 (corresponding to the claimed NaVOPO4 electrode) as that of the instant specification.
Claim 20 of the 700 patent
Instant specification
milling a mixture of ammonium metavanadate, ammonium phosphate monobasic, and potassium carbonate
1.17 g of ammonium metavanadate, 1.15 g of ammonium phosphate monobasic and 0.69 g of potassium carbonate were uniformly mixed by 4 hours planetary ball milling [0102]
heating the milled mixture to a reaction temperature, and holding the reaction temperature until a solid phase synthesis of KVOPO4 occurs
The pellets were heated to 700°C with a heating rate of 5°C per min, maintained at 700°C for 10 hours [0103]
electrochemically removing potassium from the 25 KVOPO4
The pristine electrode was first galvanostatically charged to a high cut-off voltage of 4.7 V vs. Na/Na+ in order to furthest remove the potassium ion from the structure [0116]
Thus, the claimed lattice volume greater than 90 Å3 per VOPO4, and portion of the VOPO4 lattice having two sodium ions per VOPO4 would naturally flow from the recitation of the 700 patent. Furthermore, one skilled in the art would recognize that the two voltage plateaus corresponding to two redox couples of vanadium cations in the context of a sodium ion battery as recited by claim 20 of the 700 patent would correspond to a portion of the VOPO4 lattice having two sodium ions per VOPO4-.
Regarding claims 14-16, claim 20 of the 700 patent further recites all the limitations of claims 14-16.
Claims 17-18, 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the 700 patent recites all limitations of the instant claims 17-18, and 20.
Claims 17-18, 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 recites all limitations of the instant claims 17-18, and 20.
Claims 17-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 11,289,700. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 17, claim 20 of the 700 patent recites an electrode for a reversible sodium battery indistinct from the claimed electrode of claim 17 and recites a substantially identical process for forming the NaVOPO4 as that recited in the instant claim 13. Thus, the claimed lattice volume greater than 90 Å3 per VOPO4, and sodium exchange capacity of two sodium ions per VOPO4 would naturally flow from the recitation of the 700 patent. Furthermore, one skilled in the art would recognize that the two voltage plateaus corresponding to two redox couples of vanadium cations in the context of a sodium ion battery as recited by claim 20 of the 700 patent would correspond to at least a portion of the VOPO4 lattice having a sodium exchange capacity of two sodium ions per VOPO4-.
Regarding claims 18-20, claim 20 of the 700 patent further recites all the limitations of the instant claims 18-20.
Claim 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,289,700 in view of Inoue.
Regarding claim 19, claim 8 of the 700 patent recites all limitations of the instant claim 19 (see also claims 18 and 15 of the 700 patent) except the instantly claimed binder material.
However, Inoue teaches a polymer fluoride as a binder in the positive electrode active material layer (corresponding to the claimed cathode) for a nonaqueous electrolyte battery (Inoue, [0016]) wherein the polymer fluoride includes polyvinylidene fluoride. With the introduction of polyvinylidene fluoride into the positive electrode active material layer, the flexibility of the positive electrode active material layer can be easily improved (Inoue, [0017]). Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the polytetrafluoroethylene binder of Song with polyvinylidene fluoride in order to increase the flexibility of the cathode taught by Song (Inoue, [0017]).
Claim 19 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 11,289,700 in view of Inoue.
Regarding claim 19, claim 19 of the 700 patent recites all limitations of the instant claim 19 (see also claims 18 and 15 of the 700 patent) except the instantly claimed binder material.
However, Inoue teaches a polymer fluoride as a binder in the positive electrode active material layer (corresponding to the claimed cathode) for a nonaqueous electrolyte battery (Inoue, [0016]) wherein the polymer fluoride includes polyvinylidene fluoride. With the introduction of polyvinylidene fluoride into the positive electrode active material layer, the flexibility of the positive electrode active material layer can be easily improved (Inoue, [0017]). Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute the polytetrafluoroethylene binder of Song with polyvinylidene fluoride in order to increase the flexibility of the cathode taught by Song (Inoue, [0017]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yang et al. (CN 117673310 A) teaches the invention of claim 1 but is not prior art. Barker et al. teaches the use of NaVOPO4 in alkali metal batteries (for example US 7,901,810, US 10,050,271, US 10,170,212) and sodium ion batteries (US 7,759,008, US 2011/0052986 A1). Chen et al. (J. Electrochem. Soc. 2015, 162, A2093-A2098) teaches NaVOPO4 in a sodium ion battery. Liu et al. (CN 104078676 A) teaches a preparation of NaVOPO4 for sodium ion batteries similar to the instant disclosure. Qu et al. (CN 101241802 A) teaches Na2VOPO4 and K2VOPO4 for sodium and potassium ion batteries.
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/SIMRAN S. SAUND/Examiner, Art Unit 1734
/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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