DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claim 1 is objected to because of the following informalities: the limitation “ a sodium ion secondary” in line 1 includes a drafting error. For the purpose of this Office Action, the limitation has been interpreted as “ a sodium ion secondary battery”. Appropriate correction is required.
Claim Rejections - 35 USC § 103
3. 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.
4. 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.
5. 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.
6. Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama (US 2015/0044558) as cited in IDS dated 4/1/24 in view of Yushin et al. (US 2020/0343580).
Regarding claim 1, Nakayama discloses a method of producing a sodium ion secondary battery([0078]), comprising: forming one of a positive electrode active material layer and a negative electrode active material layer([0052]), which contains a cyclic organic compound as an active material, the cyclic organic compound having at least two carbonyl groups —C(═O)—, and the at least two carbonyl groups being bonded via a single bond or at least one conjugated double bond ([0034]-[0046]) and forming the negative electrode active material layer containing the cyclic organic compound([0034]-[0046]), disposing the solid electrolyte layer between the positive electrode active material layer and the negative electrode active material layer ([0068], [0071]), the solid electrolyte material is not particularly limited so long as it has a desired Na ion conductivity, but examples thereof include oxide solid electrolyte materials and sulfide solid electrolyte materials such as Na3Zr2Si2PO12, β alumina solid electrolytes (for example Na2O-11Al2O3) and Na2S—P2S5 and the like ([0071]) but does not explicitly disclose forming the negative electrode active material layer containing the cyclic organic compound or a solid electrolyte layer, which contains NaCB9H10, NaCB11H12, or NaAlH4 as a solid electrolyte.
Yushin teaches liquid-infiltrated solid-state electrolyte and rechargeable batteries comprising same (title). Yushin teaches examples in the context of rechargeable (often called “secondary”) Li metal and Li-ion batteries, it will be appreciated that various aspects may be applicable to other rechargeable as well as co-called “primary” (non-rechargeable) batteries, such as secondary and primary metal and metal-ion batteries (such as Na and Na-ion, Mg and Mg-ion, Al and Al-ion, K and K-ion, Cs and Cs-ion, Ca and Ca-ion, Zn and Zn-ion, Fe and Fe-ion and others)([0021]). Yushin teaches anode examples (for use in combination with melt-infiltrated and other suitable solid electrolytes) in the context of “pure” conversion-type chemistry or “pure” intercalation-type chemistry or “pure” metal (e.g., Li) deposition chemistry or “pure” Li alloy chemistry of active anode materials, it will be appreciated that various aspects may be applicable to mixed type active materials where two or more mechanism types of Li ion storage (e.g., (a) intercalation-type, (b) conversion-type, (c) metal (e.g., Li) deposition and (d) metal (e.g., Li) alloying) in the anode may take place during battery cell operation([0031]). Yushin teaches in some designs, hydride solid electrolytes may comprise a mixture (alloy) of two, three, four or more of the following hydrides their compositions including NaAlH4 ([0103]). Yushin teaches in some designs, one, two or more non-Li alkali metal closo-borate salts may be advantageously used in the closo-borate-based SSEs and such salts may include, but are not limited to: NaCB11H12, NaCB9H10 among others ([0109]).
It would have been obvious to one of ordinary skill in the art to modify the method of Nakayama with a solid electrolyte layer, which contains NaCB9H10, NaCB11H12, or NaAlH4 as a solid electrolyte as taught by Yushin as obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. See MPEP 2143.
Regarding claim 2, modified Nakayama discloses the cyclic organic compound has an unsaturated cyclic structure (Nakayama [0034]-[0046]).
Regarding claim 3, modified Nakayama discloses the cyclic organic compound is an aromatic compound, and the aromatic compound has an aromatic ring structure and two or more COONa groups bonded to the aromatic ring structure(Nakayama [0034]-[0046]).
Regarding claim 4, modified Nakayama discloses the aromatic compound has one aromatic ring structure and two COONa groups bonded to the aromatic ring structure(Nakayama [0034]-[0046]).
Regarding claim 5, modified Nakayama discloses the cyclic organic compound is composited with a carbon material(Nakayama [0047]-[0049]).
Regarding claim 6, modified Nakayama discloses the solid electrolyte is NaCB9H10 or NaCB11H12 (Yushin [0109]).
Regarding claim 7, modified Nakayama discloses the solid electrolyte is NaCB9H10 (Yushin [0109]).
Regarding claim 8, modified Nakayama discloses the solid electrolyte is NaCB11H12 (Yushin [0109]).
Regarding claim 9, modified Nakayama discloses the solid electrolyte is NaAlH4 (Yushin [0103]).
Regarding claim 10, modified Nakayama discloses including the cyclic organic compound as a negative electrode active material (Nakayama [0034]-[0049]).
Double Patenting
7. 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.
8. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of U.S. Patent No. 11,984,597 in view of Yushin et al. (US 2020/0343580).
Regarding instant claim 1, claims 1 and 8 of U.S. Patent No. 11,984,597 teach a sodium ion secondary battery having all of the limitations of instant claim 1, except for a solid electrolyte layer, which contains NaCB9H10, NaCB11H12, or NaAlH4 as a solid electrolyte.
Yushin teaches in some designs, hydride solid electrolytes may comprise a mixture (alloy) of two, three, four or more of the following hydrides their compositions including NaAlH4 ([0103]). Yushin teaches in some designs, one, two or more non-Li alkali metal closo-borate salts may be advantageously used in the closo-borate-based SSEs and such salts may include, but are not limited to: NaCB11H12, NaCB9H10 among others ([0109]).
It would have been obvious to one of ordinary skill in the art to modify the method of Nakayama with a solid electrolyte layer, which contains NaCB9H10, NaCB11H12, or NaAlH4 as a solid electrolyte as taught by Yushin as obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. See MPEP 2143.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA HOM LYNCH whose telephone number is (571)272-0489. The examiner can normally be reached 7:30 AM - 4:30 PM EST M-F.
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/VICTORIA H LYNCH/Primary Examiner, Art Unit 1724