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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/05 1,624
`
`08/01/2018
`
`KOICHI SAWADA
`
`083710-2303
`
`2979
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`GATEWOOD,DANIEL S
`
`1729
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/17/2021
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`16/051,624
`SAWADAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`DANIEL S GATEWOOD
`1729
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 2/9/2021.
`LC} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)l¥) This action is FINAL.
`2b) (J This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\(Z Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-12 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`CJ] Claim(s)__ is/are allowed.
`Claim(s) 1-12 is/are rejected.
`OO Claim(s)__is/are objectedto.
`CC) Claim(s)
`are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)0) The drawing(s) filedon__ is/are: a)) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)0) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)X None ofthe:
`b)L) Some**
`a)L) All
`1... Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210211
`
`

`

`Application/Control Number: 16/051,624
`Art Unit: 1729
`
`Page 2
`
`POSITIVE ELECTRODE FOR AIR BATTERY
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthefirst
`
`inventorto file provisions of the AJA.
`
`2.
`
`In response to communication filed on 2/9/2021:
`
`Response to Amendment
`
`a.
`
`b.
`
`No claims have been amended; no new matter has been entered.
`
`Previous rejections under 35 USC 103 have been upheld.
`
`3.
`
`Applicant’s arguments filed 2/9/2021 have been fully considered but
`
`they are not
`
`Response to Arguments
`
`persuasive.
`
`4,
`
`The Applicant discloses: “Feaver discloses that the prior art carbons include macropores
`
`(second pores) greater than 50 nm, and the inventive carbon in Feaver includes at least 50%
`
`mesoporous (first pores), which, according to paragraph [0087], are in the range of 2-50 nm. Thus,
`
`Feaver discloses 2 different types of carbons, one including macropores and the including
`
`mesopores. Feaver does not disclose a single carbon body having the claimed quantities of
`
`macropores and the mesopores. Anandan does notdisclose the aforementioned features of claim
`
`1.”
`
`

`

`Application/Control Number: 16/051,624
`Art Unit: 1729
`
`Page 3
`
`5.
`
`The Examiner respectfully traverses. While Feaver may disclose two different types of
`
`carbons, Anandan discloses a cathode comprising both mesopores and macropores (See
`
`paragraphs 0037 and 0040).
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`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 for the rejection will not be considered a new ground ofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`7.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
`
`rejectionsset 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 mannerin which the invention was made.
`
`8.
`
`Thetext of those sections of Title 35, U.S. Code not included in this action can be found
`
`in a prior Office action.
`
`9,
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459
`
`(1966), that are applied for establishing a backgroundfor determining obviousness under 35 U.S.C.
`
`103 are summarized as follows:
`
`1. Determining the scope and contents of the priorart.
`
`2. Ascertaining the differences betweenthe prior art and the claimsat issue.
`
`3. Resolving the level of ordinary skill in the pertinent art.
`
`4. Considering objective evidence present in the application indicating obviousness or
`
`nonobviousness.
`
`

`

`Application/Control Number: 16/051,624
`Art Unit: 1729
`
`Page 4
`
`10.
`
`Claims 1-3 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Feaver
`
`et al. (US 2011/0223494 A1) and further in view of Anandanet al. (US 2014/0255799 A1).
`
`11.
`
`Regarding claim 1 and 8-11, Feaveret al. teach a positive electrode for an air battery, the
`
`positive electrode comprising a porous body including carbon and a binder having a content
`
`between 1 mass% and 40 mass % (Abstract and paragraphs 0005-0008 disclose a cathode
`
`comprising a porous carbon structure for a metal air battery. Paragraph 0303 discloses the
`
`use of a binder with mass% ranging from 3-80.),
`
`12.
`
`wherein the porous body includesfirst pores each having a pore diameter of 4 nm or more
`
`and less than 100 nm (Paragraph 0142 discloses at least 50% of intraparticle pores are
`
`mesoporous which, according to paragraph 0087, are in the range of 2-50 nm.) and second
`
`pores each having a pore diameter of 100 nm or more and 10 um or less (Paragraph 0142
`
`discloses macropores which can begreater than 50 nm.)
`
`13.
`
`However, Feaver do not specifically teach that the porous body includes both ofthe first
`
`and second type pores together, a second pore volume is greater than a first pore volume, the
`
`second pore volume being a cumulative pore volume of the second pores, the first pore volume
`
`being a cumulative pore volumeofthe first pores (Paragraph 0142 discloses the mesoporous
`
`carbons comprise monodisperse mesopores. As used herein, the term ''monodisperse" when
`
`used in reference to a pore size refers generally to a span (further defined as (Dv90-Dv10)/Dv,
`
`50 where Dv10, Dv50 and Dv90 refer to the pore size at 10%, 50% and 90% of the
`
`distribution by volumeof 3 orless, 2 or less or 1.5 orless.).
`
`14.
`
`However, Anandanet al. teach a positive electrode for an air battery, the positive electrode
`
`comprising a porous bodyincluding carbon and a binder (Abstract and paragraphs 0014-0016
`
`disclose a cathode comprising a porous carbon structure for a metal air battery. Paragraph
`
`

`

`Application/Control Number: 16/051,624
`Art Unit: 1729
`
`Page 5
`
`0038 discloses the cathode comprises carbon and a binder.), wherein the porous bodyincludes
`
`first pores each having a pore diameter of 4 nm or more andless than 100 nm and second pores
`
`each having a pore diameter of 100 nm or more and 10 um orless (Paragraphs 0037 and 0040
`
`disclose the cathode comprises both mesopores, which are within 2-50 nm, and macropores,
`
`which are > 50 nm.), in the porous body , a second pore volumeis greater than a first pore volume,
`
`the second pore volumebeing a cumulative pore volumeof the second pores, the first pore volume
`
`being a cumulative pore volumeofthe first pores (Paragraph 0037 discloses the carbon contains
`
`macropores (50-80% porosity) and mesopores (10-25% porosity).).
`
`15.
`
`Therefore, it would have been obvious to one of ordinary skill in the art to modify Feaver
`
`with Anandanin order to improvecyclelife.
`
`16.
`
`Regarding claim 2, Feaver and Anandan etal. teach the positive electrode according to
`
`claim 1. Further, Feaver et al. teach wherein a sum ofthe first pore volume and the second pore
`
`volumeis 2.6 cm?/g or more and 4.0 cm*/g or less. (Paragraph 0143 discloses carbon materials
`
`comprise a pore volumeofat least 1 cc/g, at least 2 cc/g, at least 3 cc/g, at least 4 cc/g, at least
`
`5 cc/g, at least 6 cc/g, or at least 7 cc/g.)
`
`17.
`
`Regarding claim 3, Feaver and Anandanet al. teach the positive electrode according to
`
`claim 1. Further, Feaveret al. teach wherein the second pore volumeis 1.4 cm3/g or more and 3.0
`
`cm?/g orless. (Paragraph 0143 discloses carbon materials comprise a pore volumeofat least
`
`1 ce/g, at least 2 cc/g, at least 3 cc/g, at least 4 cc/g, at least 5 cc/g, at least 6 cc/g, or at least 7
`
`cc/g.)
`
`18.
`
`Regarding claim 12, Feaver et al. teach an air battery comprising: a positive electrode
`
`including a porous body including carbon and a binder a binder having a content between 1 mass%
`
`and 40 mass % (Abstract and paragraphs 0005-0008 disclose a cathode comprising a porous
`
`

`

`Application/Control Number: 16/051,624
`Art Unit: 1729
`
`Page 6
`
`carbon structure for a metal air battery. Paragraph 0303 discloses the use of a binder with
`
`mass% ranging from 3-80.),
`
`19.
`
`20.
`
`a negative electrode that occludes and releases metal ions (Claim 20); and
`
`an electrolyte layer disposed between the positive electrode and the negative electrode
`
`(Claim 20),
`
`21.
`
`wherein the porous body includesfirst pores each having a pore diameter of 4 nm or more
`
`and less than 100 nm (Paragraph 0142 discloses at least 50% of intraparticle pores are
`
`mesoporous which, according to paragraph 0087, are in the range of 2-50 nm.) and second
`
`pores each having a pore diameter of 100 nm or more and 10 um or less (Paragraph 0142
`
`discloses macropores which can begreater than 50 nm.)
`
`22.
`
`However, Feaver do not specifically teach that the porous body includes both ofthe first
`
`and second type pores together, a second pore volume is greater than a first pore volume, the
`
`second pore volume being a cumulative pore volume of the second pores, the first pore volume
`
`being a cumulative pore volumeofthe first pores (Paragraph 0142 discloses the mesoporous
`
`carbons comprise monodisperse mesopores. As used herein, the term ''monodisperse" when
`
`used in reference to a pore size refers generally to a span (further defined as (Dv90-Dv10)/Dv,
`
`50 where Dv10, Dv50 and Dv90 refer to the pore size at 10%, 50% and 90% of the
`
`distribution by volumeof 3 orless, 2 or less or 1.5 orless.).
`
`23.
`
`However, Anandanet al. teach a positive electrode for an air battery, the positive electrode
`
`comprising a porous bodyincluding carbon and a binder (Abstract and paragraphs 0014-0016
`
`disclose a cathode comprising a porous carbon structure for a metal air battery. Paragraph
`
`0038 discloses the cathode comprises carbon and a binder.), wherein the porous bodyincludes
`
`first pores each having a pore diameter of 4 nm or more andless than 100 nm and second pores
`
`

`

`Application/Control Number: 16/051,624
`Art Unit: 1729
`
`Page 7
`
`each having a pore diameter of 100 nm or more and 10 um orless (Paragraphs 0037 and 0040
`
`disclose the cathode comprises both mesopores, which are within 2-50 nm, and macropores,
`
`which are > 50 nm.), in the porous body , a second pore volumeis greater than a first pore volume,
`
`the second pore volumebeing a cumulative pore volumeof the second pores, the first pore volume
`
`being a cumulative pore volumeofthe first pores (Paragraph 0037 discloses the carbon contains
`
`macropores (50-80% porosity) and mesopores (10-25% porosity).).
`
`24.
`
`Therefore, it would have been obvious to one of ordinary skill in the art to modify Feaver
`
`with Anandanin order to improvecyclelife.
`
`25.
`
`Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Feaveretal.
`
`(US 2011/0223494 A1) and Anandanet al. (US 2014/0255799 A1) applied to claim 1 above, and
`
`further in view of Kitajima et al. (US 2007/0041147 Al).
`
`26.
`
`Regarding claims 4 and 5, Feaver and Anandanetal. teach the positive electrode according
`
`to claim 1. However, they do not teach wherein an amountof surface functional groups of the
`
`carbon includedin the porous bodyis 0.3 mmol/g or more and 1.4 mmol/g orless; or 0.38 mmol/g
`
`or more and 1.34 mmol/gorless.
`
`27.
`
`Kitajima et al. teach a carbon based electrode for a double layer capacitor which contains
`
`a specific amountof surface functional groups (Abstract). Further, the total amounts of the surface
`
`functional groups are shown in Table 1 and range from 0.324-0.990 mmol/g (Table 2 discloses
`
`these amounts for examples that contain activated carbon and ketjen black. The surface
`
`functional groups measuredare for carbonxyl, phenolic hydroxyl, lactonic carboxyl groups.)
`
`28.
`
`Therefore, it would have been obvious to modify the carbon of Feaver and Anandan with
`
`the carbon of Kitajima in order to improve internal resistance and durability.
`
`

`

`Application/Control Number: 16/051,624
`Art Unit: 1729
`
`Page 8
`
`29.
`
`Claims6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Feaveretal.
`
`(US 2011/0223494 A1) and Anandanet al. (US 2014/0255799 A1) applied to claim 1 above, and
`
`further in view of Kim et al. (US 2016/0372807 A1).
`
`30.
`
`Regarding claims6 and 7, the combination of Feaver and Anandanetal. teach the positive
`
`electrode according to claim 1. However, they do not teach wherein the positive electrode uses
`
`oxygenfrom air as a positive electrode active material and includes a positive electrode layer that
`
`oxidizes and reduces the oxygen, the porous bodyis includedin the positive electrode laye, and
`
`31.
`
`a volumeresistivity of the positive electrode layer in a direction parallel to a major surface
`
`of the positive electrode layer, as measured on the major surface, is 5500 mOhm-cm orless
`
`32.
`
`Kim et al. teach a positive electrode for an air battery, the positive electrode comprising
`
`a porous body including carbon (Title and abstract disclose a cathode comprising a porous
`
`carbon structure for a metal air battery.). Further, Kim et al. teach the positive electrode uses
`
`oxygenfrom air as a positive electrode active material and includes a positive electrode layer that
`
`oxidizes and reduces the oxygen (Paragraph 0005), the porous body is included in the positive
`
`electrode layer (Abstract), and
`
`33.
`
`a volumeresistivity of the positive electrode layer in a direction parallel to a major surface
`
`of the positive electrode layer, as measured on the major surface, is 5500 mOhm-cmorless (The
`
`volumeresistivity, using data from paragraph 0052, is 1000 Ohm/cm? * 0.000035 cm = 0.035
`
`Ohm.cm)= 35 mOhm.cm.).
`
`34.
`
`Therefore, it would have been obvious to one of ordinary skill in the art to modify Feaver
`
`and Anandan with that of Kim in order to improve conductivity.
`
`

`

`Application/Control Number: 16/051,624
`Art Unit: 1729
`
`Page 9
`
`Conclusion
`
`35.
`
`THIS ACTION IS MADEFINAL.Applicant is reminded of the extension of time policy
`
`as set forth in 37 CFR 1.136(a).
`
`A shortened statutory period for reply to this final action is set to expire THREE MONTHS
`
`from the mailing date of this action.
`
`In the eventa first reply is filed within TWO MONTHSof
`
`the mailing date of this final action and the advisory action is not mailed until after the end of the
`
`THREE-MONTHshortenedstatutory period, then the shortened statutory period will expire on
`
`the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be
`
`calculated from the mailing date of the advisory action.
`
`In no event, however, will the statutory
`
`period for reply expire later than SIX MONTHSfrom the mailing date of this final action.
`
`36.
`
`Anyinquiry concerning this communication or earlier communications from the examiner
`
`should be directed to DANIEL S GATEWOODwhosetelephone numberis (571)270-7958. The
`
`examiner can normally be reached on M-F 9-5:30.
`
`Examinerinterviews 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
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`USPTO
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`Request
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`at
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Ula Ruddock can be reached on 571-272-1481. The fax phone numberfor the organization where
`
`this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`

`

`Application/Control Number: 16/051,624
`Art Unit: 1729
`
`Page 10
`
`applicationsis available through Private PAIR only. For more information about the PAIR system,
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`
`Daniel S. Gatewood, Ph.D.
`Primary Examiner
`Art Unit 1729
`
`/DANIEL S GATEWOOD, Ph. D/
`Primary Examiner, Art Unit 1729
`
`