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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11, drawn to a metal-air battery, classified in H01M 12/06.
II. Claims 12-15, drawn to a method of using a metal-air battery, classified in Y02E 60/10.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the process of sorting electrical energy in a metal air battery could apply to another materially different battery, such as a lithium battery.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions require a different fields of search in H01M 12/06 and Y02E 60/10.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Christopher Lutz on 8/5/2026 a provisional election was made without traverse to prosecute the invention of the metal-air battery, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/463,666, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claim 7 recites “a posolyte in communication with the atmospheric air for forming a positive electrode; and a negolyte in communication with the opposed electrode for forming a negative electrode” wherein the posolyte and negolyte are not described in the provisional instant specification.
Claim 8 recites “a gallium film between the negolyte and the gallium metal” wherein the gallium film is not described in the provisional instant specification.
Claim 9 recites “the gallium film includes gallium oxide or gallium hydroxide” wherein the gallium film including gallium oxide or gallium hydroxide is not described in the provisional instant specification.
Accordingly, claims 7- 9 are not entitled to the benefit of the prior application.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 202. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2-11 objected to because of the following informalities:
In claims 2-11, “The device” should read --The metal-air battery--.
In claim 5, “for recharging the metal air battery” should read --for recharging the metal-air battery--.
In claim 7, “in communication with the atmospheric air” should read --in communication with atmospheric air--.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a posolyte in communication with the atmospheric air for forming a positive electrode” and “a negolyte in communication with the opposed electrode for forming a negative electrode” in claim 7. The instant specification describes an electrolyte comprising at least two substances: a posolyte and a negolyte (Instant specification, pg. 5, lines 19-21). Based on the instant specification, examiner interprets a posolyte and a negolyte as any two substances that are part of an electrolyte.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 1 is 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 1 recites the limitation “a liquid metal at an ambient room temperature”, which renders the claim indefinite, because it is unclear which temperatures correspond to ambient room temperature. For example, ambient room temperature could refer to 25 °C, or a higher temperature inside the metal-air battery system as the chemical reaction occurs. Examiner notes that dependent claim 11 recites a temperature range of 20 °C to 40 °C. For the purposes of examination, examiner interprets “a liquid metal at an ambient room temperature” as a liquid at a temperature range of range of 20 °C to 40 °C.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Xing et al. (Xing et al. “Perspective on gallium-based room temperature liquid metal batteries”, 2022, Energy, 16(1): 23-48), hereinafter “Xing”, as cited in the IDS dated 11/19/2024.
Regarding claim 1, Xing teaches a gallium based room-temperature liquid metals (GBRTLMs)-air galvanic cell (corresponding to the claimed metal-air battery), wherein the negative electrode comprises GBRTLMs (corresponding to the claimed opposed electrode defined by a liquid metal at an ambient room temperature) (Xing, Sect. 3.1.2, Para. 1, lines 2-5). Xing also teaches that air in the GBRTLMs-air cell serves as a cathode, such that oxygen in the air is reduced (corresponding to the claimed electrode defined by gaseous oxygen) (Xing, Sect. 3.1.2, Para. 1, lines 2-5; Sect. 3.1.1, Para. 1, lines 42-43).
Examiner notes that “for generating a current discharge flow” is an instance of functional language which only imparts a structure that is capable of achieving the claimed electrode conductivity. See MPEP 2173.05(g). The instant specification describes a liquid metal electrode comprising gallium (Instant specification, pg. 6, lines 1-3). Xing’s galvanic cell comprises a gallium based room-temperature liquid metal (GBRTLMs) electrode, which corresponds and is identical to the disclosed gallium liquid metal electrode of the instant specification. Since Xing’s GBRTLMs electrode is identical to applicant’s liquid metal electrode, Xing’s GBRTLMs electrode would also be capable of achieving the claimed electrode conductivity.
Further regarding claim 1, Xing teaches another embodiment of a battery comprising a GaIn10 anode, a platinum coated carbon fiber yarn cathode, and a 37.5% potassium hydroxide (KOH) electrolyte solution (corresponding to the claimed electrolyte) (Xing, Sect. 3.1.2. Para. 1, lines 11-13). Therefore, the claimed metal-air battery would result from the combination of Xing’s GBRTLMs galvanic cell and KOH electrolyte, explicitly disclosed by the prior art. See §MPEP 2112. Examiner notes that “for ion diffusion including oxygen to the opposed electrode” is an instance of functional language which only imparts a structure that is capable of achieving the claimed ion permeability. See MPEP 2173.05(g). The instant specification describes a gallium-based system comprising a KOH electrolyte (Instant specification, pg. 7, lines 21-23; Table 1; Fig. 1). Xing’s battery comprises a KOH electrolyte, which corresponds and is identical to the disclosed KOH electrolyte of the instant specification. Since Xing’s electrolyte is identical to application’s electrolyte, Xing’s electrolyte would also be capable of achieving the claimed ion permeability.
Regarding claim 2, Xing teaches a GBRTLMs-air galvanic cell, wherein the negative electrode comprises GBRTLMs (corresponding to the claimed liquid metal defines a negative electrode) and an air cathode (corresponding to the claimed positive electrode) wherein oxygen in air is reduced (corresponding to the claimed atmospheric oxygen), as stated in the rejection of claim 1 above (Xing, Sect. 3.1.2, Para. 1, lines 2-5; Sect. 3.1.1, Para. 1, lines 42-43).
Regarding claim 3, Xing teaches a GBRTLMs-air galvanic cell, wherein the negative electrode comprises GBRTLMs (corresponding to the claimed opposed electrode includes gallium defining a negative electrode), as stated in the rejection of claim 1 above (Xing, Sect. 3.1.2. Para. 1, lines 2-5).
Regarding claim 4, Xing teaches an air cathode (corresponding to the claimed positive electrode) wherein oxygen in air is reduced (corresponding to the claimed electrode defined by gaseous oxygen), as stated in the rejection of claim 1 above (Xing, Sect. 3.1.2, Para. 1, lines 2-5; Sect. 3.1.1, Para. 1, lines 42-43).
Regarding claim 5, Xing teaches secondary batteries comprising GBRTLMs electrodes (Xing, Sect. 3.1.2, Para. 1, lines 1-2). Therefore, the claimed metal-air battery that is responsive to a negative current flow for recharging the metal air battery would result from the combination of the secondary battery comprising an GBRTLMs electrode and the GBRTLMs-air galvanic cell, explicitly disclosed by the prior art. See §MPEP 2112.
Regarding claim 6, Xing teaches batteries containing GBRTLMs electrodes, further comprising packaging materials, such as poly(dimethylsiloxane) (PDMS), polyvinyl chloride (PVC) tape, and thermoplastic polyurethane (TPU) (corresponding to the claimed containment) (Xing, Sect. 3.1.1, Para. 3, lines 2-8). As stated in the rejection of claim 5, Xing also teaches that secondary batteries comprising GBRTLMs electrodes (Xing, Sect. 3.1.2, Para. 1, lines 1-2). Therefore, the claimed containment configured for a reversible oxidation/reduction reaction between the electrode and the opposed electrode would result from the combination of Xing’s packaging materials and GBRTLMs secondary battery, explicitly disclosed by the prior art. See §MPEP 2112.
Regarding claim 10, Xing teaches a GBRTLMs-air galvanic cell, wherein the negative electrode comprises GBRTLMs (corresponding to the claimed liquid metal is gallium metal), as stated in the rejection of claim 1 above (Xing, Sect. 3.1.2, Para. 1, lines 2-5). Examiner notes that “for supporting a recharge current flow” is an instance of functional language which only imparts a structure that is capable of achieving the claimed recharge current flow. See MPEP 2173.05(g). Xing teaches that GBRTLMs batteries require contact between reactive materials and the electrolyte (Xing, Sect. 2.2.1, Para. 3, lines 10-16), which corresponds to the claimed structure of the gallium in communication with the electrolyte. Since Xing’s contact between electrolyte and GBRTLM active materials corresponds to application’s communication between electrolyte and gallium, Xing’s contact between electrolyte and GBRTLM active materials would also be capable of achieving the claimed recharge current flow.
Regarding claim 11, Xing teaches a GBRTLMs-air electrode, wherein room-temperature is commonly known as 25 °C (corresponding to the claimed liquid metal is at a temperature between 20 °C and 40 °C), as stated in the rejection of claim 1 (Xing, Sect. 3.1.2. Para. 1, lines 2-5).
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.
Claims 7-9 is rejected under 35 U.S.C. 103 as being unpatentable over Xing (Xing et al. “Perspective on gallium-based room temperature liquid metal batteries”, 2022, Energy, 16(1): 23-48), as cited in the IDS dated 11/19/2024, in view of Friesen et al. (US 20100285375 A1), hereinafter “Friesen”.
Regarding claim 7, Xing does not teach an electrolyte further comprising a posolyte in communication with the atmospheric air for forming a positive electrode, a negolyte in communication with the opposed electrode for forming a negative electrode, nor a separator between the posolyte and the negolyte. Freisen teaches an electrochemical metal-air cell comprising an ionic liquid (corresponding to the claimed electrolyte), wherein the ionic liquid may further comprise an ionically conductive medium contacting one electrode (corresponding to the claimed posolyte in communication with the atmospheric air) and another ionically conductive medium contacting the other electrode (corresponding to the claimed negolyte in communication with the opposed electrode) (Friesen, [0064], lines 1-8). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute Friesen's ionically conductive mediums for the electrolyte of Xing in order to provide ion conductivity (Friesen, [0003], lines 1-4).
Friesen further teaches an interface between the two ionically conductive layers that may be a flexible permeable membrane (corresponding to the claimed separator between the posolyte and the negolyte) (Friesen, [0064], lines 1-8). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Friesen’s flexible permeable membrane to the galvanic cell of Xing in order to prevent electrical contact between the fuel electrode and the air electrode (Friesen, [0034], lines 3-7).
Friesen also teaches a flexible separator that is permeable to oxidant flow (corresponding to the claimed separator adapted for ion diffusion of hydroxide ions) (Friesen, [0036], lines 3-7). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to add Friesen’s flexible separator to the galvanic cell of Xing in order to prevent electrical contact between the fuel electrode and the air electrode (Friesen, [0034], lines 3-7). Examiner notes that “for combining with gallium metal defining the liquid metal” is an instance of functional language which only imparts a structure that is capable of achieving the claimed hydroxide ion transport. See MPEP 2173.05(g). Friesen’s flexible permeable membrane is between two ionically conductive layers (Friesen, [0064], lines 1-8), which corresponds to the claimed structure of the separator between the posolyte and the negolyte. Since Friesen’s flexible permeable membrane corresponds to applicant’s separator, Friesen’s flexible permeable membrane would also be capable of achieving the claimed hydroxide ion transport. As mentioned above, Friesen also teaches a flexible separator permeable to oxidant flow. Therefore, the claimed separator would result from the combination of Friesen’s flexible permeable membrane and flexible separator, explicitly disclosed by the prior art. See §MPEP 2112.
Regarding claims 8 and 9, oxide layers are known to form spontaneously on liquid metal (LM) Galinstan (ie. gallium alloy) anodes of liquid metal-air batteries (LMAB) (Wang, Sect. 1, Para. 4, lines 1-2; Sect. 2.1, Para. 1, lines 1-2). Therefore, it’s the examiner’s position that a gallium oxide layer would also form spontaneously between the modified Xing’s gallium-containing electrode and negolyte (corresponding to the claimed gallium film between the negolyte and the gallium metal and the claimed gallium film includes gallium oxide).
Examiner notes that “responsive to passing hydroxide ions for forming gallium oxide” is an instance of functional language which only imparts a structure that is capable of achieving passivity to hydroxide ions. See MPEP 2173.05(g). Xing’s GBRTLMs-air galvanic cell comprises a negative GBRTLM electrode, which spontaneously forms an oxide layer (Xing, Sect. 3.1.2, Para. 1, lines 2-5; Wang, Sect. 1, Para. 4, lines 1-2; Sect. 2.1, Para. 1, lines 1-2), corresponding to the claimed structure of the gallium film including gallium oxide. Since Xing’s gallium oxide is identical and corresponds to application’s gallium oxide film, Xing’s gallium would also be capable of achieving the claimed passivity to hydroxide ions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rachel Avina whose telephone number is (571)270-0429. The examiner can normally be reached M-F 7:30am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at (571) 272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.M.A./ Examiner, Art Unit 1734
/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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