DETAILED ACTION
Notice to Applicant
The reply filed 2026-08-28 in response to the Restriction Requirement of 2026-07-24 is acknowledged. Applicant has elected claims 1-9, without traverse. Claims 10-11 are withdrawn, pertaining to an unelected method.
Claims 1-11 are pending; claims 10-11 being withdrawn. Claims 1-9 are examined herein. This is the first action on the merits.
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 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.
Claims 1-9 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The simplest way to state the problem is that the claimed formula and the description do not match. But it is not something that appears to be a simple typo, because the “not matching” extends to multiple different types of not matching. Moreover, the computed values of the inventive examples appear to conflict with the claims (and other portions of the description).
Claim 1 requires a cathode with a Prussian blue-type material (PB), that is subject to the following inequality:
0.1
≤
R
2
∙
(
M
1
+
M
4
)
(
M
2
+
M
3
)
∙
R
1
≤
9
The instant specification describes this equation at paragraphs 0006, 0012, and 0028.
R1 is the resistivity of “the positive electrode sheet”
R2 is the resistivity of the current collector
M1 “represents a thermogravimetric loss rate of the Prussian blue-type material containing crystal water at 200 °C [-] 400°C”
M2 is the mass proportion of the conductive agent
M3 is the mass proportion of the binder
M4 is the mass proportion of “the gelatinous non-aqueous electrolyte in the positive electrode material layer”
The quantity is written differently at paragraphs 0069 and 0071 to compute a ratio:
R
2
∙
(
M
1
)
(
M
2
+
M
3
+
M
4
)
∙
R
1
It is unclear whether this is a typo. It is unclear why this value is being computed. Moreover, the values listed—0.012 and 0.046—do not appear to be equivalent to either the claimed formula or the formula as written in paragraphs 0069-0071.
For example, in paragraph 0070: M1=3.4, M2=1, M3=2, M4=9, R1=3.5 and R2=0.03. If the claim 1 expression is used, the computed value should be 0.035429. If the formula printed in paragraph 0070 is used, the computed value should be 0.002429. Paragraph 0070 actually gives a value of 0.012. It is totally unclear what is going on, what that number means, or how it was arrived at.
Instant Table 1, describing the inventive embodiments, supposedly lists values for M1, M2, M3, M4, R1, and R2, while listing a computed ratio that matches the claimed ratio in claim 1. None of the claimed ratio values shown in Table 1 are accurate, however. The Table instead appears to be consistently calculating:
M
1
∙
(
R
2
+
M
4
)
(
M
2
+
M
3
)
∙
R
1
No explanation is given for why. More significantly, when the ratio of claim 1 is used with the given values for each variable to compute the actual claimed ratio of the inventive examples, many fall outside the claimed range of 0.1 – 9, including examples 2, 3, and 5.
In addition, while R2 is described as the “resistivity” of the current collector (i.e. aluminum in the examples), the given value varies from 0.04-0.06 Ω·m, which is about a million higher than expected. It is not clear how this value is being measured.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). See MPEP 2164.01(a).
In the instant case, the claimed ratio appears to be an empirically determined ratio that supposedly corresponds to some performance characteristics. Why it takes the shape it does, or what the physical explanation for this formula might be, is not discussed. The claimed ratio is not consistent with the description, and no single typo will reconcile the inconsistencies. Some of the values being plugged into the ratio (e.g., R2) seem implausible, and it is not clear how they are being measured, or if they are just inaccurate.
In considering the Wands factors, the breadth of the claims is indeterminate, because the ratio is indeterminate. The nature of the invention appears to be an idiosyncratic empirical relationship between several quantities. While the level of skill in the battery arts was high, the description and claims are so internally inconsistent and vague that it would be impossible for one of ordinary skill in the art to know if they were even achieving the invention. The claims are therefore rejected for lack of enablement.
Claims 1-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
As discussed above, the description and claims are at odds with each other. The ratio is unsupported by the specification’s examples. The inventive examples do not compute the same ratio, do not fall within the claimed range, and use values that appear implausible. It is therefore unclear what the metes and bounds of the claims actually are. In addition, the claim language referring to “a thermogravimetric loss rate” is indefinite because it is not clear what units that variable, M1, is supposed to be in, or under what conditions “a loss rate” is measured, as opposed to something like a water content. The dependent claims are rejected for depending on claim 1.
Specification
35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, requires the specification to be written in “full, clear, concise, and exact terms.” The specification is replete with terms which are not clear, concise and exact. The specification should be revised carefully in order to comply with 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112. See the inconsistencies discussed above with respect to the lack of enablement. It is not clear how to fully amend the specification without adding new matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
Gao et al. “Stabilizing a High-Energy-Density Rechargeable Sodium Battery with a Solid Electrolyte.” Cell Press: Chem 4, 833-844, April 12, 2018.
Khudyshkina et al. “Poly(ethylene oxide)-Based Electrolytes for Solid-State Potassium Metal Batteries with a Prussian Blue Positive Electrode.” ACS Appl. Polym. Mater. 2022, 4, 2734-2746.
Xie et al. “Achieving long-life Prussian blue analogue cathode for Na-ion batteries via triple-cation lattice substitution and coordinated water capture.” Nano Energy 61 (2019) 201-210.
Xie et al. “An interface-reinforced rhombohedral Prussian blue analogue in semi-solid state electrolyte for sodium-ion battery.” Energy Storage Materials 36 (2021) 99-107.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Dignan, whose telephone number is (571) 272-6425. The examiner can normally be reached from Monday to Friday between 10 AM and 6:30 PM. If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Tiffany Legette, can be reached at (571)270-7078. Another resource that is available to applicants is the Patent Application Information Retrieval (PAIR). Information regarding the status of an application can be obtained from the (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAX. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). Applicants are invited to contact the Office to schedule an in-person interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
/MICHAEL L DIGNAN/Examiner, Art Unit 1723
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