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.
Information Disclosure Statements
The Information Disclosure Statement filed on 8 April 2024 has been received and considered by the Examiner.
Drawings
The drawings are objected to because they are blurry, particularly Figs. 2, 3 and 6, though the clarity of all figures could be improved. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Specification
The use of the terms Nafion, Teflon, Millipore and BioLogic, which are trade names or marks used in commerce, has been noted in this application, for example in [0056]-[0061]. The terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because the specification contains several minor informalities. For example, extra characters (“[“) are often present (e.g. in p. 3 l. 16 and p. 9, l. 7 and 17); inappropriate capitalization is used sporadically (e.g., p. 9, l. 8 and 28; p. 12, l. 9); and the unit of coulomb requires a capital “C” (p. 17, line 11). Applicant should carefully review the specification for more instances of such minor informalities. Appropriate correction is required.
Claim Objections
Claims 1 and 4 are objected to because of the following informalities:
Claim 1 has an extra open bracket and capital letter and should be amended to recite “…adding 20-25 mM of cobalt(II) chloride hexahydrate…”
Claim 3 should use spaces between the quantities and the associated units.
Appropriate correction is required.
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 1-5 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 1 contains the trademark/trade name “Teflon”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the material lining the autoclave and, accordingly, the identification/description is indefinite. Replacement of the term “Teflon-lined” with “PTFE-lined” is recommended.
Claims 2-5 depend upon claim 1 and are likewise rejected.
Claim 2 recites the limitation "the precursor for Co and V sources" in line 2. There is insufficient antecedent basis for this limitation in the claim, as neither claim 2 nor claim 1 recite a precursor for Co and V sources.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 purports to further limit claim 1 by limiting by reciting specific cobalt and vanadium starting materials used in the method of claim 1, but these materials are already required by claim 1. Claim 2 therefore fails to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (CN 108190968 A; document 6 on the IDS filed 8 April 2024) in view of Wikipedia ("Sonication," Archived 2020-02-12 by Wayback Machine. Retrieved from <URL: https://web.archive.org/web/20200212050442/https://en. wikipedia.org/wiki/Sonication>), Lee et al. (Journal of Power Sources 486 (2021) 229341), Wen et al. (CN 111268744 A), and Abellán Sáez et al. (WO 2022/171855 A1; published 18 August 2022, effectively filed 12 February 2021). The provided English machine translations of Huang (CN 108190968 A) and Wen (CN 111268744 A) are relied upon in the analysis below.
Regarding claim 1, Huang teaches a process for the preparation of vanadium doped cobalt chloride carbonate hydroxide nanostructures (cobalt vanadium bimetallic hydroxide nanosheets; [0002]), the process comprising the steps of:
(a) adding 53 mM of cobalt (II) chloride hexahydrate, 21 mM vanadium chloride, and 185 mM of urea in 20 mL water, and stirring to obtain a reaction mixture solution (Cobalt chloride hexahydrate, vanadium chloride and urea were added to 20 ml of deionized water and stirred magnetically at room temperature to obtain a clear solution A with a cobalt salt concentration of 0.053 mol/L. The molar ratio of cobalt chloride hexahydrate: vanadium chloride: urea is 2.286:0.914:8; [0031]-[0032]);
(b) transferring the reaction mixture solution as obtained in step (a) to a lined reaction vessel and heating to 120 °C for 15 hrs to result in a precipitate; (Pour the clarified solution A from step 1) into the reaction liner at a filling ratio of 60% and seal it. Then, place the liner into the outer vessel and place it in a homogeneous reactor to react at 120°C for 15 hours; [0033]; such a process will inherently form a precipitate);
(c) collecting the precipitate as obtained in step (b) after cooling down to room temperature and washing with water followed by ethanol to obtain a material (After the hydrothermal reaction is completed, the reactor is naturally cooled to room temperature. The product after the reaction is washed three times with water and alcohol alternately; [0034]);
(d) drying the material as obtained in step (c) in an oven for a time period of 12 hours (The product is then collected and vacuum dried at 30°C for 12 hours to obtain CoV-LDH nanosheets; [0034]).
It is held that one of ordinary skill in the art would understand that Huang’s recitation of “cobalt chloride hexahydrate” and “vanadium chloride” refer specifically to cobalt(II) chloride hexahydrate and vanadium(III) chloride. However, even if one of ordinary skill in the art would not understand cobalt chloride hexahydrate to be cobalt(II) hexahydrate and vanadium chloride to be vanadium(III) chloride, Lee teaches that cobalt(II) and vanadium(III) precursors are used in an analogous process to generate similar cobalt-vanadium double layered hydroxide materials (Sections 2.1 and 2.2). Therefore, it would have been obvious to use cobalt(II) chloride hexahydrate cand vanadium(III) chloride in the method of Huang. One of ordinary skill in the art would have been motivated to do so because while Huang is silent on oxidation states other than to indicate that one is M3+ and the other M2+ ([0004]), Lee teaches that these Co(II) and V(III) generate the desired layered double hydroxide product.
Huang differs from the instant claim in the following ways: the solution volume and concentration of cobalt chloride hexahydrate, vanadium chloride, and urea are outside the instantly claimed ranges; Huang does not teach sonicating or the time of stirring used to prepared the reaction mixture solution in step (a); Huang does not teach a reactor volume of 50 mL or the materials from which the reactor is constructed; Huang is silent on whether the water in step (c) is deionized; Huang does not teach drying at 50 °C to 70 °C; Huang is silent on the size of the particles obtained; and, Huang does not teach storage of the material in a desiccator until further use.
Regarding the stirring and sonication required in step(a) of the instant claim, Huang teaches that their solution of cobalt, vanadium, and urea is prepared by stirring ([0026]) but does not mention sonication. However, Wikipedia teaches that sonication can speed dissolution (p. 2, ¶ 1 of the provided PDF).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the solution of cobalt, vanadium and urea used in the method of Huang by including a sonication step, as taught by Wikipedia. One of ordinary skill in the art would have been motivated to do so in order to speed the dissolution required to generate the solution of Huang.
Regarding the time of stirring and sonicating, it is well known to persons of ordinary skill in the art that the time of process steps in chemical processes affect the completion of process. Absent new and unexpected results, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to optimize by routine experimentation the time of stirring and sonication, including into the instantly claimed ranges. One of ordinary skill in the art would have been motivated to do so in order to provide a completely homogenous solution in the minimum time required.
Regarding the 30 mL of solution and the 50 mL autoclave, Huang teaches 20 mL volume of solution and a 60% fill ratio for the reaction vessel, which would correspond to a 33 mL reactor ([0031] and [0033]). However, it would have been obvious to one of ordinary skill in the art to select a scale on which to perform the reaction of Huang consistent with the desired amount of products, including a 30 mL reaction, as instantly required. One of ordinary skill would have been motivated to do so in order to synthesize a larger amount of product without the time and effort required to repeat smaller scale reactions. Once scaled up to 30 mL, a 60% fill ratio would correspond to a 50 mL autoclave volume, as required in step (b).
It is further noted that the courts have held that changing the scale of a process known in the prior art does not give rise to patentability. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) MPEP 2144.04(IV)(A).
Regarding washing with deionized water and ethanol, while Huang teaches washing with water and alcohol, they do not specify deionized water or specifically ethanol. However, presented with the teaching of Huang to wash with water and alcohol, the use of deionized water and ethanol would be the most obvious choices to one of ordinary skill in the art because deionized water avoids introducing impurities and because unspecified “alcohol” typically refers to ethanol.
Furthermore, Lee also teaches an analogous method for preparing cobalt–vanadium layered double hydroxides (abstract and Section 2.2) and Lee also teaches that these materials are washed with deionized (distilled) water and ethanol, and subsequently dried at 60 °C in a vacuum oven (Section 2.2). Lee further teaches that the hydrothermal reaction of step (b) is carried out in a Teflon-lined stainless steel autoclave reactor (Section 2.2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the heating of Huang in a Teflon-lined stainless steel autoclave reactor, as taught by Lee. It would have been further obvious to wash the material obtained by the method of Huang with deionized water and ethanol and then to dry it at 60 °C, as also taught by Lee.
One of ordinary skill in the art would have been motivated to use a Teflon-line stainless steel autoclave reactor because while Huang is silent on the liner material, Lee teaches that Teflon-lined stainless steel reactor is an appropriate vessel lining for an analogous reaction. One of ordinary skill in the art would have been additionally motivated to use the washing and drying conditions of Lee in the method of Huang because Lee teaches that such specific solvents can effectively purify the material and that drying at higher temperatures is also suitable for this material. Furthermore, it is well understood in the art that drying at higher temperature can more completely remove water, and so one would have been motivated to use the higher temperature of Lee in order to more effectively dry the material given that Lee teaches that such temperatures can be used without damaging the product.
Regarding the concentrations of cobalt and vanadium used in step (a), the method of Huang uses 53 mM of cobalt (II) chloride hexahydrate (cobalt chloride hexahydrate), 21 mM vanadium chloride, each of which lie outside the instantly claimed ranges.
However, Huang also teaches that the particle size of the material can be controlled by adjusting the concentration of reactants, along with other variables ([0018]). Lee additionally teaches that the ratio of metals can control product morphology (it can be observed that the morphology of CoV-LDH is greatly influenced by the precursor ratio as shown in Fig. 2; Section 3, ¶ 1). Lee further teaches using a cobalt concentration of 25 mM (2 mmol in 80 mL water; Section 2.2) with a 1:1 Co:V ratio to generate products with dimensions of ~100 nm, while an embodiment where the Co:V ratio is 2:1 generates similar but slightly smaller particles (Figure 2f-2i and Figure S21).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the concentration and ratio of cobalt and vanadium in the method of Huang, including into the instantly claimed ranges, as taught by Huang and Lee. One of ordinary skill in the art would have been motivated to do so because Lee teaches that different ratios give rise to different electrochemical performance (We controlled the molar ratio of cobalt/vanadium and confirmed that the molar ratio significantly affects the morphology and electrochemical performance of CoV-LDHs; Lee, Section 1, ¶ 3) and Huang teaches that concentration also controls particle morphology, which in turn would affect electrochemical performance, as suggested by Lee.
Regarding the concentration of the urea precipitant, Huang teaches a concentration of 185 mM of urea ([0031]-[0032]), which also lies outside the instantly claimed range of 220-240 mM.
However, Wen also teaches the preparation of bimetallic cobalt layered double hydroxides by an analogous hydrothermal method ([0070]), where Wen’s method uses 330 mM urea (10 mmol in 30 mL deionized water; [0070]). Therefore the range of urea concentrations encompassed by the prior art include at least 185 mM to 330 mM, which encompasses the instantly claimed range of 220-240 mM.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01). Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
It is also noted that, generally, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). There is nothing of record to suggest that the urea concentration is critical.
Regarding the size of the particles in the materials produced by the method of modified Huang, Huang describes there particles as nanosheets, which is interpreted as implying dimensions on the nanoscale, i.e., ~1-100 nm, which overlaps with the instantly claimed range. Furthermore, Lee teaches that the particles prepared by the method of modified Huang with a Co:V ratio of 2:1 are likely to have sizes in the range of ~100 nm, as illustrated in Figure S2, and that particles with similar sizes (CoV11, Fig 2) exhibit good charge storage behavior (abstract and Fig. 4). Therefore, the particles of modified Huang are held to either have sizes in the required range, or it would have been obvious to one of ordinary skill in the art before to optimize the sizes by routine experimentation, e.g. by varying the concentration and ratio or metals, such that they would have the required size. One of ordinary skill in the art would have been motivated to do so because Lee teaches that particles with these sizes have good charge storage behavior.
Regarding the storage in a desiccator until future use, Abellán Sáez also teaches the preparation of layered double hydroxide materials and their use in supercapacitive devices (abstract and p. 13, l. 27-31) and further teaches that it is appropriate to store such materials in a desiccator for future use after drying (the samples were dried…and kept in desiccators for further characterization; p. 14, lines 33-34).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to store the materials obtained by the method of modified Huang in a desiccator for future use. One of ordinary skill in the art would have been motivated to do so in order to keep them dry and suitable for future characterization, as taught by Abellán Sáez.
Regarding claim 2, modified Huang teaches the process of claim 1 where the cobalt and vanadium sources are CoCl2.6H2O and VCl3 (cobalt chloride hexahydrate and vanadium chloride; [0031]), as analyzed above.
Regarding claim 3, modified Huang teaches the process of claim 1, where Huang teaches that urea is the precipitant ([002]) and where urea, under substantially similar reaction conditions to the instant invention, will inherently perform the same role as a hydrolyzing agent for the precipitation and formation of V-C3H-NSs.
Regarding claim 5, modified Huang teaches the process of claim 1, where the material is prepared by a method substantially similar to that of the instant invention. Therefore, it is held that, like the materials of the instant invention, the materials produced by the method of modified Huang will also exhibit stability for electrochromic supercapacitor properties in alkaline and neutral aqueous solutions. It is additionally noted that Lee also teaches that their materials exhibit stability for supercapacitor properties in alkaline aqueous media (Figure 6g and Section 2.4).
Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 4 recites a process for generating a material with specific values of capacitance, optical modulation, and coloration efficiency. While modified Huang teaches the general method to use to generate similar materials, as analyzed above, there is no motivation in the prior art to modify the method of Huang in such a way to generate a material with this specific set of properties. Accordingly, the subject matter of the claim is allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
1 It is noted that the caption of Figure S2 appears to incorrectly label the figures as “(a) CoV21, (b) CoV12, and (c) CoV14” when it should instead read (a-c) VCo21, (d-f) CoV12, and (g-i) CoV14”, as analogous to the presentation of Figure 2.
Prosecution Insights