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 .
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.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
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.
Claim(s) 1-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa (JP 2019-164961 A, cited in IDS filed 10/11/23) in view of Clarke et al (“Controlling Dimensionality in the Ni-Bi System with Pressure”).
Regarding claim 1, Ichikawa teaches a battery (paragraph [0084], energy storage apparatus) comprising:
a first electrode (paragraph [0051], negative electrode);
a second electrode (paragraph [0064], positive electrode); and
an electrolyte solution (paragraph [0073-0076], non-aqueous solvent and electrolyte salt),
wherein the first electrode includes a current collector (paragraph [0053], negative electrode substrate, may be a metal such as nickel) and an active material layer (paragraph [0055], active material), the active material layer contains BiNi (paragraph [0027], paragraph [0032], examples of alloys including NiBi, Ni2Bi, Ni4Bi, Ni5Bi, paragraph [0036], Ni6Bi, Ni7Bi, Ni8Bi, Ni9Bi, paragraph [0039], NiBi3).
Ichikawa is quiet to the BiNi has a crystal structure, a space group of the crystal structure belonging to C2/m.
However, note that Ichikawa teaches that the lower limit of the content ratio of the transition metal (nickel) to bismuth in the alloy is preferably 1:3 (paragraph [0043]) with an upper limit of preferably 9:1 (paragraph [0043]). Ichikawa discloses examples of a ratio of 1:3 with a space group of Pnma (paragraph [0039]), a space group of 1:1 to 5:1 with a space group of P63/mmc (paragraph [0032]), and a ratio of 6:1 to 9:1 with a space group Fm-3m (paragraph [0036]). Note that although Ichikawa discloses a lower limit of 1:3 to an upper limit of 9:1, Ichikawa is quiet to an example of 1:2 which would be within the range.
Clarke et al teaches the Ni-Bi system (p.955 col 1), noting that intermetallic NiBi2 (p.955) has a monoclinic space group C2/m (p.956, col 2, last paragraph).
As Ichikawa teaches that the Nickel to Bismuth content ratio may be in a range from 1:3 to 9:1, it would have been obvious to one of ordinary skill in the art, to try a NiBi2 having a monoclinic space group C2/m, as NiBi2 falls within the range of nickel to bismuth as taught in Ichikawa, and that Clarke et al suggests that the new materials can have unexpected physical and electronic properties (p.955 col 1). The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397. MPEP 2143(I)(E).
Further note that "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112(I).
Regarding claim 2, the combination is quiet to wherein in an X-ray diffraction pattern of the active material layer obtained by surface X-ray diffraction measurement using a Cu-Kα ray, an intensity ratio I(2)/I(1) of an intensity I(2) to an intensity I(1) is less than or equal to 0.28, where the intensity I(1) is a height intensity of a maximum peak present in a range of a diffraction angle 2θ of from 29° to 31°, inclusive, and the intensity I(2) is a height intensity of a maximum peak present in a range of a diffraction angle 2θ of from 41° to 43° inclusive.
However, note that the particular X-ray diffraction pattern is a measure of whether the NiBi alloy has the space group C2/m (applicant’s specification, paragraph [0136]). As the above combination suggests the use of a space group of C2/m, the claimed property is presumed to be inherent.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Additionally note that Ichikawa discloses X-ray diffraction patterns (fig 3) showing a trend where the ratio of the peak intensities (I2/I1) decreases as the amount of nickel to bismuth decreases (note example 9 having a high I2/I1, whereas example 2 has a low I2/I1).
Regarding claim 3, Ichikawa teaches wherein the active material layer contains at least one selected from the group consisting of LiBi and Li3Bi (implied, as the anode active material includes bismuth, and the battery undergoes charging and discharging (lithium intercalation into the anode active material during charging)).
Regarding claim 4, Ichikawa teaches wherein the active material layer contains no solid electrolyte (paragraph [0073-0076], an ionic liquid).
Regarding claim 5, Ichikawa teaches wherein the active material layer contains the BiNi as a main component of an active material (paragraph [0014-0017], alloy of transition metal element and bismuth, paragraph [0016], preferably nickel, paragraph [0056]).
Regarding claim 6, Ichikawa teaches wherein the active material layer contains substantially only the BiNi as the active material (paragraph [0014-0017], alloy of transition metal element and bismuth, paragraph [0016], preferably nickel, paragraph [0056]).
Regarding claim 7, Ichikawa teaches wherein the current collector contains Ni (paragraph [0053]).
Regarding claim 8, note that the limitation of wherein the active material layer is a heat-treated plating layer is a product-by-process limitation (MPEP 2113) where patentability does not depend on its method of production, but based on the product itself. Ichikawa teaches the claimed structure of a BiNi layer (see claim 1 above). Note that the negative electrode of Ishikawa was heated (paragraph [0086]).
Regarding claim 9, Ichikawa teaches wherein the electrolyte solution contains an aprotic solvent and a lithium salt which is dissolved in the aprotic solvent (paragraph [0073-0076], note the exemplary non-aqueous solvents are aprotic solvents, e.g., ethylene carbonate).
Regarding claim 10, Ichikawa teaches wherein the aprotic solvent contains at least one selected from the group consisting of vinylene carbonate, 2-methyltetrahydrofuran, fluoroethylene carbonate, and ethylene carbonate (paragraph [0074], ethylene carbonate).
Regarding claim 12, Ichikawa teaches wherein the first electrode is a negative electrode (paragraph [0051], negative electrode), and the second electrode is a positive electrode (paragraph [0064], positive electrode).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa as modified by Clarke et al as applied to claim 9 above, and further in view of Yamada (US 2011/0111295).
Regarding claim 11, Ichikawa teaches that known electrolytes usually used in a non-aqueous electrolyte secondary battery can be used (paragraph [0073]), with examples including ethylene carbonate (EC), propylene carbonate (PC), cyclic carbonates such as butylene carbonate (BC), and chain carbonates such as diethyl carbonate (DEC), dimethyl carbonate (DMC), and ethyl methyl carbonate (EMC).
Ichikawa is quiet to the solvent comprising vinylene carbonate and chain carbonate.
Yamada teaches a nonaqueous electrolyte secondary cell and an anode composite (paragraph [0001]). The electrode active material to be used as the anode composite may be a metal, an alloy, an oxide of a metal or an alloy, a sulfide or a nitride, etc (paragraph [0029]), including bismuth as a metal (paragraph [0029]). Yamada teaches exemplary organic solvents including ring carbonates such as propylene carbonate, ethylene carbonate or vinylene carbonate, chain carbonates such as diethyl carbonate, dimethyl carbonate, or methylethyl carbonate, and that one organic solvent or a mixture of at least two organic solvents may be used (paragraph [0091]).
It would have been obvious to one of ordinary skill in the art to modify the combination such that the organic solvent comprises vinylene carbonate and chain carbonate, as Ichikawa recognizes that known electrolytes can be used (paragraph [0073]), and that Yamada teaches vinylene carbonate and chain carbonates as known organic solvents for use in nonaqueous electrolyte secondary batteries (paragraph [0091]). The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. MPEP 2143(I)(B).
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.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-12 of copending Application No. 18/294,192 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending application anticipate the instant claims.
Claim 1 of the instant application differs from claim 1 of the copending application in further requiring a current collector. Note that the copending application discloses a first electrode as having a base material that is a porous body, which can be construed as the claimed current collector.
Regarding claim 2 of the instant application, note that the X-ray diffraction pattern is a material property of the BiNi having a space group of C2/m and are the values obtained that confirm the BiNi has the C2/m space group.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JACKY YUEN/
Examiner
Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
Prosecution Insights