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 with traverse of Group I in the reply filed on 6/15/2026 is acknowledged. The traversal is on the ground(s) that there is not a serious search burden between Groups I and II. This is not found persuasive because Group I is drawn to a structure of battery, and Group II is drawn to a method, with each being different types of inventions and requiring different and distinct search strategies for each. A search for the structure of the battery of Group I will not necessarily return search results for the method limitations of Group II. This arises to the level of a serious search burden and thus this argument is not found persuasive.
The requirement is still deemed proper and is therefore made FINAL.
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 21-30 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 21 is drawn to “a battery”, which is a product having a static structure. A calcium silicide precursor is utilized within the battery to “manufacture” it. Ca ions are extracted from the calcium silicide precursor forming the structure of the negative electrode. However, as stated above, the battery of claim 21 is a product having a static structure. It appears utilizing the precursor of the instant claim introduces a component (the calcium silicide precursor) that changes upon extracting calcium ions therefrom. The calcium silicide precursor appears to be an intermediate component that changes over time. As such, it is unclear what the structure of the battery is. For the purposes of this office action, the final end structure of the battery will be given full patentable weight. It is noted the end structure of the battery does not have the structure of the “precursor” in it as set forth in line 3 of claim 21. Further, claims 22-30 are rejected since they depend from claim 21.
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 1, 3, 5, 21-24 and 26-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jun et al. (KR 10-2021-0128516, see Machine Translation).
Regarding claim 1, Jun et al. discloses in Figs 1-4, a battery that cycles sodium ions ([0001], [0004], [0005], [0048]), the battery comprising: a negative electrode ([0048]) comprising a silicon-based electroactive material ([0001], [0025]-[0029]) comprising two-dimensional silicon layers having a hexagonal crystal structure ([0025]-[0029]), the silicon-based electroactive material ([0025]-[0029]) being configured to intercalate sodium ions between the two-dimensional silicon layers ([0025]-[0029]) during charge of the battery ([0025]-[0029], [0048]) and form an alloy of silicon and sodium([0025]-[0029], [0048]); a positive electrode ([0048]) spaced apart from the negative electrode ([0048]) and comprising an electroactive positive electrode material ([0048]); and an electrolyte ([0048]) that provides a medium for conduction of sodium ions ([0048]) between the negative electrode ([0048]) and the positive electrode ([0048]).
Regarding claim 3, Jun et al. discloses all of the claim limitations as set forth above. Further regarding limitations recited in claim 3 which are directed to specific properties of silicon-based electroactive material recited in said claim, it is noted that once a silicon-based electroactive material is disclosed to comprise a two-dimensional silicon-based material having a structure as set forth at [0025]-[0029] of Jun et al., and therefore is substantially the same as the silicon-based electroactive material of claim 3, it will, inherently, display recited properties (“a specific capacity of greater than or equal to about 950 milliampere-hours per gram”). See MPEP 2112.
Regarding claim 5, Jun et al. discloses all of the claim limitations as set forth above and also discloses the silicon-based electroactive material is substantially free of crystalline silicon having a diamond, orthorhombic, or cubic crystal structure ([0063], Fig 1).
Regarding claims 21-23, Jun et al. discloses in Figs 1-4, a battery that cycles sodium ions ([0001], [0004], [0005], [0048]), the battery comprising: a negative electrode ([0048]) comprising a silicon-based electroactive material ([0001], [0025]-[0029]) comprising two-dimensional silicon layers having a hexagonal crystal structure ([0025]-[0029]), the silicon-based electroactive material ([0025]-[0029]) being configured to intercalate sodium ions between the two-dimensional silicon layers ([0025]-[0029]) during charge of the battery ([0025]-[0029], [0048]) and form an alloy of silicon and sodium ([0025]-[0029], [0048]); a positive electrode ([0048]) spaced apart from the negative electrode ([0048]).
Further regarding limitations recited in claims 21-23, which are directed to method of making said battery (e.g. “manufactured by…a calcium silicide precursor…calcium ions extracted…”, “applying an acid solution…”, and “heating the calcium silicide precursor…”) it is noted that said limitations are not given patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.). See MPEP 2113 and 2114. Therefore, since the battery as recited in claims 21-23 is the same as the battery disclosed by Jun et al., as set forth above, the claim is unpatentable even though the battery of Jun et al. was made by a different process. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Regarding claim 24, Jun et al. discloses all of the claim limitations as set forth above and also discloses the negative electrode further comprises a polymer binder ([0048]) and optionally an electrically conductive material ([0048]),
Regarding claim 26, Jun et al. discloses all of the claim limitations as set forth above. Further regarding limitations recited in claim 3 which are directed to specific properties of silicon-based electroactive material recited in said claim, it is noted that once a silicon-based electroactive material is disclosed to comprise a two-dimensional silicon-based material having a structure as set forth at [0025]-[0029] of Jun et al., and therefore is substantially the same as the silicon-based electroactive material of claim 3, it will, inherently, display recited properties (“a specific capacity of greater than or equal to about 950 milliampere-hours per gram”). See MPEP 2112.
Regarding claim 27, Jun et al. discloses all of the claim limitations as set forth above and also discloses the silicon-based electroactive material is substantially free of crystalline silicon having a diamond, orthorhombic, or cubic crystal structure ([0063], Fig 1).
Regarding claim 28, Jun et al. discloses all of the claim limitations as set forth above and also discloses the two-dimensional silicon layers are terminated by hydroxyl ions ([0029]-[0032]).
Regarding claim 29, Jun et al. discloses all of the claim limitations as set forth above and also discloses a positive electrode ([0048]) spaced apart from the negative electrode ([0048]) and comprising an electroactive positive electrode material ([0048]); and an electrolyte ([0048]) that provides a medium for conduction of sodium ions ([0048]) between the negative electrode ([0048]) and the positive electrode ([0048]).
Regarding claim 30, Jun et al. discloses all of the claim limitations as set forth above and also discloses the negative electrode ([0048]) further comprises sodium ions intercalated between the two-dimensional silicon layers of the silicon-based electroactive material ([0025]-[0029], [0048]).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2, 4 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Jun et al. (KR 10-2021-0128516, see Machine Translation) as applied to claims 1 and 21 above, and further in view of Ikeda et al. (US 2015/0280220).
Regarding claims 2, 4 and 25, Jun et al. discloses all of the claim limitations as set forth above and also discloses the negative electrode further comprises a polymer binder ([0048]) and optionally an electrically conductive material ([0048]), and the negative electrode ([0048]) is disposed on a major surface of a current collector ([0048]), but does not explicitly disclose the negative electrode has a thickness of greater than or equal to about 30 micrometers and less than or equal to about 500 micrometers, and the collector is metal.
Ikeda et al. discloses in Figs 1-25, a sodium secondary battery (Title, Abstract) including a negative electrode having a thickness of 200 microns ([0089]) and a metal collector ([0089]-[0090]). This configuration enhances the capacity of the battery ([0089]).
Ikeda et al. and Jun et al. are analogous since both deal in the same field of endeavor, namely, batteries.
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the negative electrode of thickness and metal collector disclosed by Ikeda et al. into the negative electrode of Jun et al. to enhance battery capacity.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Park et al. (US 2015/0243997) discloses in Figs 1-9, a sodium secondary battery ([0091]) including a silicon nano structured negative electrode material ([0056]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH J DOUYETTE whose telephone number is (571)270-1212. The examiner can normally be reached Monday - Friday 8A - 4P EST.
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/KENNETH J DOUYETTE/Primary Examiner, Art Unit 1725
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