DETAILED ACTION
(1)
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 . This is the first office action on the merits. Applicant’s preliminary amendment, filed September 10, 2024, is entered. Applicant amended claims 1-10 and added claims 11 and 12. No new matter is entered. Claims 1-12 are pending before the Office for review.
(2)
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 the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method for delithiating a lithium and transition metal nitride selected from the group consisting of Li7Mn4, Li3FeN2, Li2.6Co0.4N, Li2.0Ni0.67N and Li2.57Cu0.43N, the method comprising mixing the lithium and transition metal nitride with cobaltocenium salt in a molar ratio of cobaltocenium salt to lithium and transition metal nitride of 0.5 to 3, followed by recovering the material obtained from the oxidizing step, does not reasonably provide enablement for a method for delithiating a lithium and transition metal nitride, the method comprising mixing an oxidizing agent with the lithium and transition metal nitride and recovering a material obtained at the end. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
There are many factors to consider when determining whether a disclosure does not satisfy the enablement requirement and whether under experimentation is necessary. The factors include, but are not limited to:
(A) The breadth of the claims;
The claimed invention and the specification contain similar language regarding the method. However, the specification contains greater detail as to how the method is performed, including specific materials and relative concentrations. Accordingly, there is no parity between the specification and the claimed invention.
(B) The nature of the invention;
The claimed invention is directed toward a method of delithiating a lithium transition metal nitride by reacting the lithium transition metal nitride with an oxidizing agent and recovering the delithiated material.
(C) The state of the prior art;
The closest prior art is to Suzuki et al., Solid State Ionics, 116, 1999, 1-9, which is cited in Applicant’s information disclosure statement. Suzuki teaches a method of electrochemically delithiating Li7MnN4 to obtain Li6MnN4. Sec. 2. Experimental.
(D) The level of one of ordinary skill;
The level of one ordinarily skilled in the art is an individual having experience with lithium transition metal nitride and their production methods.
(E) The level of predictability in the art;
The predictability in the art is unclear. Although lithium transition metal nitrides are known, it's unclear how to predict how the known lithium transition metal nitrides will react in the presence of an oxidizing agent and whether this will cause delithiation.
(F) The amount of direction provided by the inventor;
The amount of direction provided by the inventor is limited to a specific listing of lithium transition metal nitride materials and a specific type of oxidizing agent, wherein the two are reacted in a specific molar ratio. The scope of the claimed invention is broader than the direction provided by the inventor and is not limited to a molar ratio or a specific oxidizing agent or lithium transition metal nitride material. There is no direction provided by the inventor regarding the basis for selecting the various disclosed materials.
(G) The existence of working examples; and
The specification, as noted above, contains working examples, but the working examples do not cover the full scope of the claimed invention. Specifically, the working example is a narrow example limited to a specific transition metal nitride material, molar ratio and oxidizing agent and Applicant has not provided any separate working examples or corresponding explanation indicating how to determine how other materials should be treated.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A complete analysis of the above-identified factors leads to a finding that the claimed invention is not enabled for its full scope. Although the working examples and direction from the inventor contain features within the scope of the claimed invention, the direction and working examples do not enable one ordinarily skilled in the art to practice the full scope of the claimed invention without undue experimentation. Therefore, claims 1-12 are not enabled for their full scope.
(3)
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 6 and 10 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 6 recites the limitation "the molar ratio" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 is a product-by-process claim directed toward a negative electrode active material obtained from the material produced in claim 1. It’s unclear how this feature of the claimed invention should be interpreted. Specifically, claim 1 does not require a specific lithium material, making it unclear how to determine the material is delithiated. In claim 1, the invention is clear because the material, although not specifically defined, is required to have less lithium than at the beginning of the method. In the context of a product-by-process claim, the claim limitation is insolubly ambiguous because the scope of the material cannot be ascertained.
Therefore, the claims are indefinite because their scope is unascertainable to one ordinarily skilled in the art.
(4)
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.
Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al., Solid State Ionics, 116, 1999, 1-9, which is cited in Applicant’s information disclosure statement.
With respect to claim 10, Examiner notes the claim is a product-by-process claim. “If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985); MPEP 2113. In this case, the claimed invention requires the active material be obtained using a specific method.
Suzuki teaches a negative electrode active material for a lithium-ion battery comprising Li6Mn4, which is obtained by delithiating Li7Mn4. Sec. 2. Experimental.
(5)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI S MEKHLIN whose telephone number is (571)270-7597. The examiner can normally be reached Monday-Friday 7:00 am to 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELI S MEKHLIN/Primary Examiner, Art Unit 1759
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